Establishment Of Intellectual Property Division

By-Saijeet Mohanty


Introduction

Intellectual property is a result of human intellect and the rights granted on it permit its owner to profit with the products of intellectual endeavor by making a monopoly over it. Such advantage isn't generally a basic right, however, requires acknowledgment by a statute. In India, protected innovation rights perceived under resolution are:

  • The Patents Act, 1970;

  • The Trade Marks Act, 1999;

  • The Copyright Act, 1957;

  • The Designs Act, 2000;

  • The Geographical Indications of Goods (Registration & Protection) Act, 1999;

  • The Semiconductor Integrated Circuits Layout Design Act, 2000;

  • The Biological Diversity Act, 2002;

  • The Protection of Plant Varieties and Farmers' Rights Act, 2001.

Intellectual property rights (IPRs) assume a critical part in each area and have become the reason for important investment choices. IPRs are elite rights and hence there is consistently a test to find some kind of harmony between the interests of visionaries and the interests of the general public. Another significant factor is having an adequate lawful structure to protect the interests of trend-setters and motivate certainty that their intellectual property will be secured, thus setting off further innovation.

IPR litigation in India is very different attributable to the huge number of courts, fluctuating level of experience of the legal officials in IPR matters and changing habits of practice. Thus, a few courts have become favoured forums over others. Also, the vast majority of the suits for infringement are filed particularly in High Courts.


Intellectual Property Appellate Board: A Brief History

The Intellectual Property Appellate Board (IPAB) was established on September 15, 2003, by the Indian Government to hear and resolve the bids against the choices of the administrator centre under the Indian Trademarks Act, 1999[1] and the Geographical Indications of Goods (Registration and Protection) Act, 1999.[2] Since April 2, 2007, IPAB has been approved to hear and settle upon the appeals from the greater part of the choices, orders or headings made by the Patent controller under the Patents Act.

In IPAB an allure can be made against the decision of the controller or central Government of India in issue identified with the refusal of an application for inability to consent to the requirements of the Act; orders identified with a divisional application; orders identified with dating of use; choices identified with expectation; orders and instances of likely infringement; orders in regards to replacement of applicants; renouncement of patents in public interest; revision of administrative mistakes, and so forth.

Be that as it may, the orders passed by the Central Government of India regarding inventions identified with safeguard purposes, including bearings of secrecy for the regard of such inventions, cancellation if the patent is opposing or biased to the public interest, or identified with atomic energy, are absolved from the ambit of allure for IPAB. Additionally, a request for the controller, conceding an extension of time under any provision of the Patent Act, 1970 is likewise not appealable.

The IPAB has re-appraising jurisdiction against the choice of the controller or central Government of India in after issue:[3]

  • Any decisions identified with innovator names

  • Any bearings given to co-proprietors of the patent

  • Any decisions identified with Patent of Expansion

  • Any orders identifying with divisional application

  • Any orders identifying with dating of use

  • Refusal of application for inability to consent to any provisions of the Act

  • Any decisions identifying with expectation

  • Any decisions and instances of likely encroachment.

  • In regard to rectification of administrative errors.

  • Any decisions identified with a mandatory permit of a patent.

  • Any decisions identified with a disavowal of the patent for non-working.

  • Any decisions identifying with the replacement of candidates.

  • Any decisions in regard to any change/repudiation of patent.

  • Any decisions identified with revision of use and determination.

  • Any decisions identified with the rebuilding of passed licenses.

  • Any decisions identified with giving up of licenses.

  • In regard to denial of patent to fulfil public interest.

  • In regard to any enrolment of patent tasks.

The Appellate Board can obtain, hear and arrange all advances from any order or decision of the controller and all cases identified with the disavowal of a patent, amendment of register; otherwise through a counter-claim in a suit for encroachment. IPAB has the position to continue with the matter either all over again or from the stage at which it was moved on appeal. The jurisdiction to hear patent encroachment cases proceeds with the High Courts.

The IPAB is the sole position holder to practice the forces and mediate procedures emerging from an allure against an order of the controller. In the event of a counter-claim in a suit for infringement, the equipped authority to settle on the matter is the Indian High Court.


Abolishment of IPAB and establishment of IPD

On July 06, 2021, the Hon'ble Delhi High Court had given an official statement, announcing their mandate to make an Intellectual Property Division (IPD) in the Delhi High Court to keep away from the duplicity of proceedings and to stay away from the plausibility of clashing choices as for the same trademark, patents and so forth. The said Intellectual Property Division, other than managing the original issue, will likewise manage the Writ Petitions (Civil), CMM, RFA, FAO identifying with intellectual property Rights disputes, aside from those cases which are to be managed by the Division Bench of this Hon'ble Court (under the Commercial Courts Act). The abolition of IPAB (Intellectual Property Appellate Board) was observed from the legal system for which was disintegrated by the Government via The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021[4], given by the Ministry of Law and Justice.

All procedures which were forthcoming with the IPAB will be moved to the Court before which it would have been recorded had this ordinance been in power on the date of documenting such allure or application. In this manner, the functions of the IPAB have been moved to the suitable High Courts. The disintegration of the IPAB, which was explicitly established to manage IP cases, prompted exceptionally appropriate inquiries in regards to the fate of the forthcoming cases with the IPAB and brought up the issue in regards to whether the individual High Courts would have the option to quickly and proficiently resolve such IP cases, taking into account that pendency of an enormous number of cases from the IPAB would now fall on their generally troubled shoulders. The Hon'ble Delhi High Court as of late managed these particular issues and give a way forward to alleviate such substantial feelings of dread and concerns.

In facilitation of the already mentioned official statement, the high court, based on the suggestions of the advisory group including Hon'ble Ms Justice Pratibha M. Singh and Hon'ble Mr Justice Sanjeev Narula, has now distributed an office request dated July 07, 2021[5], wherein headings have been passed regarding the recently made IPD. Alluding to the request, some Intellectual Property Rights which will be dealt with and arbitrated by the Hon'ble Delhi High Court are:

  • Original and Appellate Proceedings

  • Writ Petitions(Civil)

  • Regular First Appeals (RFA)

  • First Appeal from Order (FAO)

  • All fresh Filings in all the IPR categories

  • IPR suits

  • Revocation Applications

  • Cancellations applications

  • Or any other appeals from the office of registrar of trademarks, Controller of Patents, Copyright Registrar;

  • All other proceedings which were maintainable before the erstwhile IPAB under the Trademarks, Copyrights, Patent and Designs Act.

The Delhi High Court's official statement dated July 06 uncovered that there are roughly 3000 cases[6], which have been moved from the past IPAB to the Hon'ble Delhi High Court. The Delhi High Court, being a court of Original Civil Jurisdiction, is as of now seized of different IPR matters like Civil suits for encroachment of Trademarks, copyright, licenses, designs, writ petitions, modification of petitions etc.


Issues And Challenges

A portion of the legitimate worries of all stakeholders were (I) the hearing of correcting petitions being moved from the IPAB and the forthcoming infringement suits by two distinctive single seats; and (ii) way in which the amendment petitions will presently be recorded under the Trademarks Act, for example, a composite suit seeking for order and correction or an amendment appeal in the High Court followed by an infringement suit in the High Court or a Locale Court.

The Hon'ble Delhi High Court is currently outlining thorough principles for the Intellectual Property Division. Further, the exclusive seats for the Division will be made and told every now and then. An office request will be given soon to bring clarity as for nomenclatures to be given to such petitions and instalment of applicable court charges. It is trusted that the coming weeks would bring greater clearness in regards to the issues in question.


Conclusion

Such Intellectual Property Divisions of Courts, which essentially manage just IP questions, is certainly not a novel idea and they indeed exist in different countries, like UK, Japan, Malaysia, Thailand, China, and so on Be that as it may no such Division has at any point existed in India, and accordingly are an undiscovered area for the High Courts of India. Accordingly, the formation of a particularly Intellectual Property Division which solely manages a wide range of IP debates is a critical advance for the Hon'ble Delhi High Court and a stage that is in accordance with worldwide practices continued in such manner. We trust that such Intellectual Property Divisions (IPDs) are comprised by other High Courts, for speedy and powerful removal of all issues identifying with Intellectual Property Rights.

[1] Indian Trademarks Act, 1999. Available at; https://legislative.gov.in/sites/default/files/A1999-47_0.pdf [2] The Geographical Indications of Goods (Registration and Protection) Act, 1999 No.48 of 1999. Available at; https://ipindia.gov.in/act-1999.htm [3] Intepat Team, India: The Intellectual Property Appellate Board: Power & Constitution, Mondaq, 18 July,2017, https://www.mondaq.com/india/trademark/611548/the-intellectual-property-appellate-board-power-constitution [4] The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021. Available at; https://copyright.gov.in/Documents/Pdf/Tribunals_Reforms__Rationalisation_And_Conditions_Of_Service__Ordinance__2021.pdf [5] https://delhihighcourt.nic.in/writereaddata/Upload/PublicNotices/PublicNotice_4W1UGE3WNT9.PDF [6] Indialegallive, https://www.indialegallive.com/constitutional-law-news/courts-news/delhi-high-court-creates-intellectual-property-division-to-deal-with-intellectual-property-rights-matters/ ,(last visited 10/07/2021)



Author: Saijeet Mohanty

Year: 2nd year

Collage: Xavier’s Institute of Management, Bhubaneswar

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