Intellectual Property Appellate Board (IPAB) is a committee to which the decisions of the Central Government or Patent Controller, Registrar underneath the Trade Marks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999, can be appealed against. The IPAB is a competent authority or confreres the jurisdiction to appeal to against verdict of the Controller or Central Government of India in matters about the denial of a request for non-compliance with the requirements of its Act; directives of a divisional implementation; directives on either the date of issuance; decisions relating to jubilation; decisions and cases relating to the potential infringement; directives pertaining towards the application substitution; directives pertaining regarding the revocation of the patent regarding the public interest; clerical errors corrections, etc.
Directives issued by the Central Government of India in the relation of defence-related innovations, including directives of confidentiality relating to these innovations, withdrawal where if the patent is detrimental to or prejudicial to the public interest or referring to atomic energy, are exempted from the competence of IPAB to appeal.
A Controller’s order that an extension of time is granted under any clause of the Patent Act 1970 is also not subject to appeal.
It shall file the Appeal regarding the application towards the patent in the given prescribed time limit along with the pre-determined fee. The format for the appeal must be strictly followed according to the grounds of filling; further, the appeal must also be accompanied by the sign of the appellant.
IPAB is headquartered in Chennai and there are circuit sessions in Mumbai, Delhi, Kolkata and Ahmedabad. The Intellectual Property Appellate Board (IPAB) Delhi registration system-cum-bench was officially established on 31 August 2015 by the high court of Delhi Chief Justice G. Rohini. As a product of this extension, appeals for patent applications and patents filed or issued at the Delhi Patent Office could now be registered at Delhi registration system-cum-bench of IPAB. Issues related to patent applications or patents are being reviewed at Mumbai, Kolkata and Chennai Patent Office are still to be filed at IPAB, Chennai.
Procedure of Appeal
According to the Section 117A (4) of the patents Act, 1970, there must be an appeal filed under the three months period after the date of the decision, order or direction, as the case maybe, received by the Controller or the Central GovernmentRecently, though, the IPAB Circuit Serving Bench in Delhi issued a decree in the case of ‘Microsoft Corporation USA& Assistant v. Controller Of Patent And Design New Delhi’in the behalf of Microsoft Corporation wherein the issue to be addressed here is whether the three-month limitation period specified under section 117A(4) of the Patents Act , 1970, for filing an application before the IPAB, opposing the decision of the controller would begin to run from the date of the order or date of the receipt of order.
The relevant part of the order;
“The limitation period referred to in Section 117A(4), namely three months from the date of the ruling, shall be read as being three months from the date of notification or issuance of the order, and the appeal shall not be prohibited by restriction, so the same shall be maintainable. We make it quite clear, moreover, that even in such a case of making the above interpretation of Section 117A(4), that it’s the petitioner ‘s obligation to produce documents to establish that they have acquired the challenged order on such and such a date”
Furthermore, there is also an extension available towards filling the appeal by way of condonation of delay (COD) petition, followed with the determined official fees. However, there shall be genuine reasons in the COD regarding the delay.
With ‘Pfizer Products Inc v. The Controller of Patents’IPAB permitted a delay of 33 months and 12 days to be condoned because perhaps the delay occurred owing to the filing and disposal of the evaluation application. The said petition was allowed since the delay was neither wilful nor oblivious.
The relevant part of the order;
“’The fact of the matter remains that, by order of 09/06/2011, the petitioner favoured the review application the same has been dismissed on 27/03/2014, which culminated in a delay of 33 months and 12 days. The petitioner also received a verified copy of the order on 20/08/2014 from this Bench. However, the limitation towards the filling of the appeal commences from the date of the decision, i.e., 09/06/2011.We are of the constrained opinion that the applicant has not only given legitimate purpose but also provided ample cause to approve the delay”
In the case of ‘Flextronics International USA, Inc.’ the IPAB allowed for a condonation of delay for a period of 461 Days relying on the fact, That the applicant, upon receiving of the contested order, approached the attorneys through their agents; nevertheless, owing to the unavailability of communication between both the attorneys and the agents, the change of agents and the petitioner’s misconception also that appeal was already preferred, there had been a delay of 461 days, a delay that was neither deliberate nor gross negligence.
The relevant part of the order;
“It has been shown that there’s been a switch of agents for the petitioner which has culminated in a discrepancy in communication with the lawyers and it is clearly reported that the petitioner had the idea that the appeal has already been chosen but resulting in some delay. We are of the opinion that the petitioner has given legitimate reasons and has shown ample cause to support the delay. Hence, petition is allowed”.
- Cover text- showing document listing;
- Patent application in duplicate in Form 1 [Sections 7, 54 & 135 and Rule 20(1)];
- Full / provisional type 2 definition in parallel [Section 10; Rule 13]
- Form 3 Declarations and Undertaking [Section 8; Rule 12];
- Power of Attorney as given in Form 26 (original) (Rule 3.3(a) (ii)); (if filed by counsel)
- Innovator-ship declaration in Form 5 (for an Indian Application only; (Rule 4.17) ;
- Request for assessment: Form 18
- Statutory Fees Required (cheque / DD)
- Demand for publication. It is optional (Form 9) if it requires express release.
- Small agency only needed to apply Form 28
Options after the rejection of Patent Application
If the Controller of Patents has rejected a patent application, the claimant still gets a grant. There lie two different options regarding the same —
- An appeal in the Intellectual Property Appellate Board
- Application of Review before Controller of Patents
Appeal in the Intellectual Property Appellate Board
In the case, the controller rejects the approval of the patent; the claimant can bring this decision before the Intellectual Property Appeals Court. The board was established in 2003 by the Central Government to hear and determine all appeals originating from the judgments and orders of the Registrar previously under the jurisdiction of the High Courts and Section 116 of the Patents Act, 1970, such a Board is also the Board of Appeals for this Act.
- When can the board hear the appeal
The section sets out all the circumstances under which an appeal may arise from the Controller’s decision to the Board. Section 117A of the Patents Act, 1970 concerns with appeals to the Appellate Board against any judgment, directive or direction taken or issued by the Central Government under the Act or any act or order of the Controller.The relevant instance for the purpose of this article resides in Section 15 of the Patents Act, 1970, and Section 25(4). Section 15 interacts with the controller’s right to dismiss patent grant applications and Section 25(4) indicates that, after allowing the claimant and the complainant the opportunity to be heard, the Controller shall request that the patent be retained or changed or revoked. this means that once the controller provides the claimant the required time to make the adjustments and to also conduct a hearing of both parties and believes that now the specifications of the Act have not been met or that a pre-grant opposition of the patent has merit and is effective, he may pass an order declining to grant the patent of the claimant. It may bring this order refusing the grant before the Appellate Board against the applicant.
2. Appeal Filling Time
Under Section 117A (4) of the Act, an appeal to be heard by the Board shall be filed in less than 3 months of the verdict. The appeal can also be lodged at a later date but that will be subject to the rules made by the Board themselves if any. A recent analysis of a Board’s Bench circuit further explained that the three-month period will start from delivery of the order confirmation and not from the decision. Under Section 117A (3), a description of the order must follow the appeal against which they have appealed it and the prescribed payment for the same.
3. Challenging the decision further
Now that we have defined the power of the Board of Appeals for Intellectual Property to hear and resolve appeals, the question that arises is what besides that? Can the applicant make further appeals against the Board’s order?
It is necessary to pay close attention to Section 117C of the Act which specifically shows that neither court nor other authority has jurisdiction over the matters referred to under Section 117A. This implies that when the Board has issued its verdict on an appeal it against Controller’s decision denying approving the patent, no further appeal can lie with either the High Court or the Supreme Court. Under Section 117D of the Act, it transmits the order passed by the Appellate Board to the Controller and the Controller shall give force to the same as prescribed.
Application of Review before Controller of Patents
Besides lodging an appeal in the Intellectual Property Appeals Court, the claimant has another remedy in case the Controller rejects his application. The claimant has the alternative of making an appeal for review before the Patent Controller.In this situation, under exceptional situations or circumstances that are rare, the Controller who passed the decision will reconsider his / her judgment and may change his / her judgement. This power in the Controller is defined under section 77(1) (f) of the 1970 Patents Act.
- Section 77 (1) (f)
Clause (f) of Section 77(1) of The Patents Act, 1970 specifically deals with the Controller’s right to review its own decisions. This provision requires an applicant to file a request for approval with the Controller under Form 24 of the 2003 Patent Rules.
Section 77 in the Patents Act, 1970: Controller has a certain power of a civil court –
(1) “Theme to any rules laid down in that name, in any proceedings before the Controller under this Act, the Civil Court will have the power to bring a deed under the 1908 (5 of 1908) Code of Civil Procedure regarding the following matters: —
(f) Checking its own decision on the request made within the specified period and in the manner specified
The power conferred under section 77 is directly comparable to the powers of a Civil Court (under section 114 of the 1908 Code of Civil Procedure), and one that extends the powers of the Controller. That authority allows the controller to examine and test a case falling under the 1908 Code of Civil Procedure in violation of Section 77(1) (f) of The Patents Act, 1970.
Such a request must be filed within one month of the date on which such a decision is issued to the claimant or within a period not exceeding one month. Thereafter, as allowed by the Controller on request in Form 4. Where the judgment in question corresponds to any person other than just the claimant, the controller shall immediately transmit a copy of each request and the declaration to the individual concerned.
3. Ground for the Review
Although the power conferred under section 77(1) (f) is similar to that conferred under section 114 of the Civil Procedure Code, 1908, both provisions share the very same foundation for review. The following could be the basis for a review request –
Unearthing of fresh and imperative evidence or mater.
On the account of mistake/error, face of the record of apparent; or
For any other appropriate object
It is clear that the appeal process for applicants has been simplified by IPAB. In addition, the establishment of IPAB’s Delhi registry-cum-bench provided appellants with a forum to lodge appeals on patent disputes within the jurisdiction of Delhi. This move would also help to reduce the backlog of cases before the Board, especially given that Delhi has the highest number of cases. Decisions which held that three months will begin from the “date of contact or receipt of the appeal order” would be beneficial to applicants, as many factors must be considered before filing an appeal.
Frequently Asked Questions (FAQS)
- What is the Patent Procedure?
- What all documentation needed for filling a patent procedure?
- How much of a delay can be made for the filling?
- What are the options for after the rejection of patent appeal?
- What are the limitations of the after rejection options?
- What is Condonation of delay?
- Can there be further appeal be filed after the rejection of patent appeal by the Controller of Patent?
- What is the section 77 (1) (f)?
- Neetu Kumari, India: IPAB Appeal Procedure in India, https://www.mondaq.com/india/patent/448040/ipab-appeal-procedure-in-india
- Microsoft Corporation USA & Assistant v. Controller of Patent & Design, New Delhi
- Pfizer Products Inc. v. The Controller of Patents
- Flextronics International USA
- Alstom Technology Limited v. The Controller General of Patents & Design & Ors.
- UCB Farchim v. CIPLA Ltd
- Sec 77 of the Patents Act, 1970
- Rule 130 (1) of Patents Rule, 2003
- Sec 114 read with the order 47 of Code of Civil Procedure,1908
- Sec 117A of Patents Act, 1970