Patent (Amendment) Rules, 2019 Published by Ministry of Commerce and industry

The Ministry of Commerce and industry, Department of Promotion of Industry and Internal trade has published the Patent (Amendment) Rules, 2019 which have come into force from 17th September 2019.

The main amendments to the Rules are as follows: –

  • Rule 6, Sub rule (1A) has been revised and as per the revise rule, originals are not required and all documents have to be filed electronically and only upon request, the originals have to be submitted within 15 days.
  • Rule 7 has been revised to specify that not only small entities but even start ups have to file Form-28 with every document for which a fee has been specified,
  • Rule 24C has been amended to expand the eligibility criteria for expedited examination. Expedited examination was earlier available for Applicants who had selected India as an International Searching Authority (ISA) or as an International Preliminary examining Authority (IPEA) in the corresponding International application, or the Applicant is a start-up. the definition has been expanded to also include applications for which applicant is a : –
  1. a small entity;
  2. a natural person or in the case of joint applicants, all the applicants are natural persons, then the applicant or at least one of the applicants is a female;
  3. a department of the Government;
  4. an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government;
  5. a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013); or
  6. an institution wholly or substantially financed by the Government;
  7. whose application pertains to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government;
  8. whose application is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office. (The patentability of patent applications filed under this clause will be in accordance with the relevant provisions of the Act).
  • Form-18A has been revised based on the above expansion of eligibility of expedited examination. The form also specifies the documents required for establishing eligibility.
  • The fees has also been revised. It has been specified that there is no fees now for transmittal of international application in case of ePCT filing and for preparation of certified copy of priority document and e-transmission through WIPO-DAS.

Government proposes to reduce fees for IPRs for MSMEs, startups

The government has proposed to reduce fees for various intellectual property rights (IPRs) like patents, designs and Geographical indications for micro, small and medium enterprises and (MSMEs) start-up’s to promote innovation.

Patent application filing cost is proposed to be reduced by 60% form 4000/4400 to 1600/1750. A 60% reduction is also proposed for fees for filing request for examination, and renewal of patents.

Design application filing cost is proposed to be reduced by 50% form 2000 to 1000. A 100% fee reduction is proposed for Geographical indication registration, issuance, and renewal.

Patent IN276026 for Ceritinib revoked by the Patent Office

The Deputy Controller of Patents, Dr. Kavita Taunk vide an order dated 16th August 2019 has revoked patent numbered IN276026 granted to Novartis.

 IN276026 was granted to Novartis AG on their Application No. 3951/DELNP/2009. Natco Pharma Limited filed notice of opposition. On completion of pleadings and on receiving the recommendation of the opposition board under Section 25(4) of the Act, a hearing under Rule 62(1) was fixed on April 9, 2019.

The Controller has refused the patent on grounds of lack of novelty, lack of inventive step and invention not patentable under section 3(d) of the Act.

As per the controller if the compounds claimed in the impugned patent IN276026 (3951/DELNP/2009) and prior art IN 232653 (2241/CHENP/2005) are compared then both Patents disclose substituted pyrimidine compounds.


The structure I is a structure claimed in claim-1 of impugned Patent IN276026 (3951/DELNP/2009). The structure II is the representative of the compounds claimed in IN232653 (2241/CHENP/2005). The controller from various substitutions provided for Structure II, held that Structure I is nothing but narrower Markush structure of Structure II. A similar reasoning was applied by the Controller for prior art IN240560 (553/CHENP/2006). The substituents as defined in IN240560 when substituted in markush structure of claim 1 of IN240560 as per the controller results compound claimed in IN276026. Based on the above analysis the Controller held that impugned Patent IN276026 (3951/DELNP/2009) lacks novelty with respect to IN232653 and IN240560.

Since the compounds lack novelty, the controller also held that the same are obvious and not patentable under Section 3(d) of The Patent Act, 1970. The Patentee as per the controller has also not provided any in vivo efficacy data in comparison to compounds disclosed in IN232653 (2241/CHENP/2005) and IN240560 (553/CHENP/2006).

The Controller also referred to the document relied upon by the Opponent relating to Patent term extension in USA by Patentee and Orange book to show the relationship of the impugned Patent 276026 (corresponding US patent no. 8377921) with cited documents IN 232653( corresponding US patent no. 7964592); IN240560 (corresponding US patent no. 7893074) and WO2001/64654 (corresponding US patent no. 7153964) and essentially that all said patents cover the commercial drug product of Novartis, Ceritinib.

An infringement suit was also pending in respect of Ceritinib before the Delhi High Court, however, taking note of the revocation of the patent, the court held that the infringement action is not maintainable.

DHC vacates injunction in favour of AstraZeneca for Ticagrelor

The Delhi High Court (DHC) has vacated an interim injunction granted in favor of AstraZeneca for their drug Ticagrelor as the court held that the Patents covering the drug are prima facie in-valid. Brief facts of the case and summary of the decision is provided below:


  1. Three suits were filed by the Astrazeneca (Astrazeneca AB & Ors. v. P. Kumar & Anr [CS(COMM) 749/2018], Astrazeneca AB & Anr v. T. Rao & Anr. [CS(COMM) 792/2018], Astrazeneca AB & Anr v. Dr. Reddys Laboratories Ltd. [CS(COMM) 1023/2008]) seeking a decree of permanent injunction to restrain the defendants from marketing, selling, distributing, etc. any product that infringes the subject matter of Indian Patent Nos. IN 209907 (hereinafter, IN 907, i.e. the Species Patent), IN 247984 (hereinafter, IN 984, i.e. the Polymorph Patent) and IN 272674 (hereinafter, IN 674, i.e. the Formulation Patent).
  2. The plaintiff contends that the drug in question, Ticagrelor falls within the scope of Indian Patent No.907 and 984. The finished formulation of Ticagrelor is said to be covered within the scope of IN 674. Additionally, the drug is said to have proved to be an effective platelet aggregation inhibitor.
  3. The plaintiffs received approval for the drug in the USA in 2011 and were marketed under the trademark BRILINTA. It has been approved in more than 100 countries. In India the plaintiff received drug regulatory approval in May 2012 and was commercially launched in India in October 2012 under the same trademark BRILINTA.

The Defendants had separately filed written statements and some of the main contentions raised are as follows: –

  1. Plaintiff’s have deliberately suppressed material facts due to their failure to mention that the patent No.241229 expressly covers and discloses TICAGRELOR and has expired on 14.7.2018. Further, the defendant stated that the plaintiff has given a false impression that the TICAGRELOR cannot be recognized from the said patent No.241229.
  2. The plaintiff have deliberately failed to state that the foreign patent equivalents of the said patent have been held invalid in contested proceedings in China, Europe and South Korea.
  3. The plaintiffs are attempting to illegally extend patent monopoly granted to them vide IN’229 and subsequently in IN’907 and IN’984 with respect to TICAGRELOR.
  4. Regarding the patent IN 907 the defendant has relied on Section 64(1)(a) of the Patents Act to state that IN 907 lacks novelty and is comprehensively covered in IN 229 which has an earlier priority date than IN907 i.e. 22.07.1997. Compounds as disclosed and covered in IN 907 are known and anticipated through prior claiming based on IN 229. Such compounds can be easily developed by a person skilled in the art based on performing routine/regular experimentation. The defendant has also stated that the subject matter of the claims IN 907 does not qualify as an invention within the meaning of the Patents Act.
  5. TICAGRELOR is covered within the generic scope of IN 229 genus patent which has expired on 14.07.2018. However, the plaintiffs are trying to create a false dichotomy of ‘coverage’ and ‘disclosure’ to artificially extend its monopoly through subsequent patents on TICAGRELOR.

The main contentions raised by the Plaintiff’s are as follows:

  1. On the plea of the defendants on anticipation i.e. section 13(1)(a) of the Act the plaintiff has stated that the genus patent (IN 229) was published on 2nd February 1999 i.e. after the priority date of the species patent (IN907) on 4.12.1998. Therefore, the genus patent cannot constitute a prior art document for evaluating the novelty of the species patent. It is further stated by the plaintiff that there is no specific or enabling disclosure of TICAGRELOR in the genus patent. A person of ordinary skill in the art would not have been able to identify or isolate TICAGRELOR based on the teaching of the genus patent.
  2. On the contention of the defendants of prior claiming i.e. section 13(1)(b) of the Act, the plaintiff stated that the same requires a specific individualized claim. A broad claim which may cover TICAGRELOR among millions of other compounds is insufficient for the purpose of prior claiming.
  3. On the applicability of section 3(d) of the Patent Act i.e. ‘Ever-greening’, the plaintiffs pleaded that the defendants have not been able to point out any known substance from the genus patent of which TICAGRELOR could be considered a new form/derivative. Further, the plaintiff states that mere structural similarity is not sufficient to trigger section 3(d) of the Act.
  4. On the argument about non-disclosure of various revocation proceedings outside India i.e. alleged non-compliance of Section 8 of the Act it is stated that equivalent of IN 907 was revoked in China but an appeal has been filed which implies an automatic stay of the operation of the revocation order. It is further stated that 57 countries have granted patent for the same. Regarding IN 984 it is accepted that in Europe and China the patent was revoked. However, as an appeal has been filed and there is an automatic stay in operation. It is reiterated that the patent has been granted in 55 countries. Regarding the patent IN 674 it is stated that there is no revocation order passed and the patent is subsisting in 60 countries. Further, there is substantial compliance of the statutory provisions by the plaintiff and there is no mala fide suppression and hence section 8 of the Patent Act would have no application.
  5. Regarding the reliance of the defendants on the alleged admissions made by the plaintiff in the US Patent Term extension applications and in form 27 filed by the plaintiff in India, it is stated that form 27 only states that the genus patent has worked through TICAGRELOR. This does not mean that TICAGRELOR has been disclosed therein. It is stated that multiple patents can cover a single product. Further, the genus patent discloses an entire class of compounds and thus does not pertain to a commercialized substance. It is the only after the act of isolation of TICAGRELOR through species patent that the plaintiff has been able to state that the genus patent is being worked or commercialized through Brilinta.

The various issues dealt with by the Hon’ble Court and the opinion of the Court regarding the same is provided below: –

ISSUE I: Is TICAGRELOR disclosed and covered in the now expired patent IN 229

The Court relied on the judgment passed by the Supreme Court in Novartis AGs v. Union of India & Ors. which held that “the scope of coverage is distinct from the scope of disclosure in a patent. It was further contended that coverage under a patent of the Markush kind cannot lead to any presumption of disclosure, much less any enabling disclosure of all the compounds”. The Supreme Court negated the argument that is sought by learned counsel for the plaintiff that coverage in a patent might go much beyond disclosure.

The plea of the plaintiff that genus patent has worked through TICAGRELOR though TICAGRELOR is not disclosed in IN 229 cannot be accepted at this stage. The plaintiff have prima facie failed to explain the admissions/conduct as contained in Form 27 filed as noted above and the litigation commenced in USA against Mylan INC.

The Court further held that the plaint is strikingly silent about the said aspect of the patent IN 229 especially keeping in view the own admissions of the plaintiff whereby they have claimed that IN 229 is worked through TICAGRELOR. The Court stated that:

“It is the case of the plaintiffs in their submissions that it is only the act of isolation of TICAGRELOR through the species patent i.e. IN 907 that the plaintiffs have been able to state that the genus patent is being worked or commercialized through Brilinta. Hence, the stand is that prior to isolation of TICAGRELOR through species patent, there was no commercial working of IN 229. Surprisingly, no such averment has been made in the plaint by the plaintiffs. The only averment in the plaint about the patent IN 229 is that the same is a genus patent covering vast number of compounds and TICAGRELOR is not specifically disclosed in the genus patent though it is technically within the generic scope of numerous compounds including in Formula-I of the said application. It is further stated that a person skilled in the art could not have recognized TICAGRELOR from the genus patent. That is the sum and substance of the averment made by the plaintiffs in the plaint regarding the patent IN 229 and it‘s connect with TICAGRELOR. None of the above facts/explanations were pleaded or stated in the plaint. There is no averment in the plaint to claim that IN 229 (genus patent) was worked through TICAGRELOR though not disclosed in the said patent as is now sought to be pleaded in course of arguments. There is no averment in the plaint that IN 229 does not pertain to a commercialized patent.”

The Court held that the facts of this case show that the plaintiffs have been showing working of IN 229 through TICAGRELOR to the Controller of Patents while filing Form 27. The Plaintiffs have filed proceedings for breach of IN 229 when the drug in question was TICAGRELOR in USA. The Court further held that these being material facts should have been revealed in full in the plaint. This is especially so keeping in view the fact that Micro Labs Ltd. had already filed an application for revocation of the suit patent before the IPAB in 2015 where various grounds were urged including the fact that the suit patents are disclosed and covered in IN 229.

ISSUE II: Objections under section 3(d) of the Patents Act

While addressing the issue u/s 3(d) of the Patent Act the court noted the admissions of the plaintiff as contained in the Form 27 filed before the concerned authority in India where the patent IN 229 is shown to be working through TICAGELOR and the admissions made in the proceedings in the American Court filed against Mylan INC. The Court came to the conclusion that the plaintiffs have not been able to explain these admissions as the suit patents cannot be said to be “something altogether new or completely unfamiliar”. The Court further held that the plaintiffs had to show compliance of section 3(d) of the Patent Act. However, the plaint is completely silent about any enhancement of known therapeutic efficacy for the suit patents.

On the point of the enhancement of therapeutic efficacy, the affidavit of filed states that equivalent of IN 907 shows advantage of a lower predicated dose and increased metabolic stability. The Court, at this point, observed that there is no explanation from the plaintiff as to how the lower dose and increased metabolic stability would tantamount to enhancement of therapeutic efficacy over IN 229. The Court relied on the judgment passed by Hon’ble Supreme Court in Novartis v. UOI where the court held that:

‘Not all advantageous or beneficial properties are relevant but only such properties that directly relate to therapeutic efficacy.’

 The Court in this case held that the plaintiff has failed to show enhancement of known efficacy of the suit patents over the products and failed the test of section 3(d) of the Act.

ISSUE III: Non-compliance of Section 8 read with section 64(1)(m) of the Act

In the present case the Court observed that the plaintiffs have given reasonable explanation about the proceedings abroad stating that IN 907 was revoked in China but an appeal was filed and there is an automatic stay of the operation of the impugned order. Similarly IN 984 was revoked by EPO and China and an appeal has been filed which initiated an automatic stay of the operations. The Court was of the opinion that the plaintiffs have not failed to disclose any relevant facts in this case and have complied with section 8 of the Act. The Court further states that the failure of the plaintiffs to mention about the proceedings in China, and the proceedings regarding the European Patent are not material enough to warrant vacation of the interim orders passed by this Court.

 ISSUE IV: Should the court continue the interim injunction granted earlier?

While addressing this issue, the Hon’ble Court relied on the judgment passed by the Division bench in F. Hoffmann-LA Roche Ltd. & Ors. vs. Cipla Ltd which held that:

‘(vi) Notwithstanding the above, assuming that the plaintiffs held a patent for the product which was the subject matter of the suit for infringement, the grant of such patent to the plaintiffs will not ipso facto entitle them to an interim injunction if the defendant is able to satisfy the court that there is a serious question to be tried as to the validity of the patent. In the present case, the defendant has raised a credible challenge to the validity of the patent by raising a serious triable and substantial question that renders it vulnerable to challenge.’

The Court observed that the plaintiffs have failed to make out a prima facie case. The balance of convenience is also in favour of the defendant. This is especially so as the original patent in question IN 229 has already expired on 14.07.2018. Further, the drugs being sold by the defendants are substantially at a lower price. The Court therefore vacated the interim order/injunction passed. The defendants however have been asked to continue to maintain correct and true accounts regarding the sale of the impugned drugs which are sold or dealt by them in any manner.

A MILEPOST DECISION: DHC validates DNA testing for contesting ones right on a plant variety

Justice Vibhu Bakhru of Delhi High Court (DHC) on July 1, 2019 has passed a milepost decision in a writ petition filed under the Protection of Plant Varieties and Farmers’ Rights Act, 2001. The decision at the first level has corrected the flaws in the procedures being adopted for granting a plant variety and for deciding opposition proceedings. But on the second level, for the first time in India have validated DNA testing for contesting ones right on a plant variety, including dispute proceedings.

  • Background:

  1. The main controversy involved in the present petitions relates to the acceptance of Kaveri’s application for registration of a variety of maize, referred to as KMH50 under the Protection of Plant Varieties and Farmers’ Rights Act, 2001 (hereafter the Act) by summarily concluding opposition proceedings merely based on a DUS test report findings. Thus, the procedure being followed by the Authority for registration of a plant variety and for deciding opposition proceedings were also argued at length in the present writs.
  2. Pioneer claims that KMH50 is identical/similar to its variety of maize referred to as 30V92 thus Kaveri has indulged in misappropriation of germplasm of Pioneer’s variety 30V92.
  3. Pioneer had not only filed an opposition against the application for registration of Kaveri’s impugned variety KMH50 and have led evidence demonstrating 99.45% – 99.80% similarity between the two varieties, but has also filed an application under Section 24(5) of the Act for conducting special test (DNA Test) by the authority also for determining the genetic similarity of KMH50 and 30V92 in support of its claim of germplasm theft. Pioneer prayed for an appropriate directions be issued to protect the interest of Pioneer and for rejection of Kaveri’s application for registration claiming that germplasm of KMH50 which was identical to 30V92 and the two varieties are one and the same. Pioneer also alleged that Kaveri abused the provision of the Act by making false declaration in its application form and had deliberately provided incorrect information. Kaveri misappropriated the germplasm of 30V92 and had deceived the public by showing different values for group characteristic.
  4. Against the opposition proceedings Kaveri by expressed intention did not file their counter statement nor contested the technical evidence or established lawful development and ownership of KMH-50.
  5. The said application for conducting special test was rejected vide order dated 27.08.2013 and it was held by the Registrar that the two varieties of maize (KMH50 and 30V92) were found to conform to the criteria of distinctiveness, uniformity and stability (DUS) pursuant to the tests conducted in this regard (hereafter ‘DUS test’), the said test was successful thus no special test was required.
  6. The said order was challenged in the present writ petition as also the letter dated 24.06.2013 sent by the Registrar to the Government of India stating that both the varieties – Pioneer’s 30V92 and Kaveri’s KMH50 – are distinct and are eligible for registration under the Act.
  7. Pioneer also impugns an order dated 09.09.2014, whereby its opposition to Kaveri’s application (application no. E2ZM40916 – KMH50) for registration of KMH50 was summarily closed in view of a successful DUS test and Kaveri’s variety KMH50 was directed to be registered.
  • Vide order dated 1 July 2019 of Hon’ble Justice Vibhu Bakhru, the petitions were disposed of in the following terms and conditions:

  1. The impugned orders dated 09.09.2014 and 27.08.2018 are set aside.
  2. The impugned letter dated 24.06.2013, to the extent that it confirms that Kaveri’s KMH-50 is eligible for registration under the Act, is set aside.
  3. Sub-rule (2) of Rule 29 of the 2003 Rules makes it clear that after initial scrutiny, if the Registrar is satisfied that the application is in order, he shall call upon the applicant to deposit the requisite fee within a period of two months for conducting the DUS Test.
  4. In view of the above, there can be little doubt that on receipt of the application, if the same is found to be in order then the next stage is to conduct the tests under Section 19 of the Act, which is the test to ascertain whether the variety conforms to the DUS criteria.
  5. Concededly, conformity with the DUS Criteria is essential for any variety to be registered. Therefore, it would not be possible for the Registrar to accept an application if he is not satisfied that the variety conforms to the DUS criteria. The contention that the Registrar can accept the application awaiting the DUS Test, was held to be erroneous. Only after acceptance of an application it could be advertised inviting any opposition. Thus DUS test report is not a binding on the objector and can be contested on the available grounds.
  6. The court also examined whether Pioneer’s opposition was required to be rejected only on the ground that Kaveri’s variety KMH-50 had qualified the DUS Test and held that the answer to this question was clearly in the negative.
  7. The court also ruled on the deeming provision that there is no ambiguity in the language of Sub-Section 21 (4) of the Act that if an applicant fails to file a counter statement on the grounds on which he relies on for his application, he would by legal fiction deemed to have abandoned his application. And, in such cases it would not be necessary for the Registrar to consider the opposition on merits.  Thus, by virtue of Section 21(4) of the Act, Kaveri’s application was deemed to have been abandoned.
  8. The court interpreted rule 29 establishing that the special test could be requested by a person aggrieved, be it an applicant for registering its plant variety in case where DUS test fails or even by an opponent challenging/contesting registration of a candidate variety. The court ruled that the reliance on rule 29(1) by the registrar for rejecting the application for conducting special test was misplaced.
  9. Pioneer’s application for conducting the special test in the nature of DNA profiling of the variety 30V92 and KMH-50 was restored to the file of the Registrar for considering it afresh, if necessary.
  10. The Court held that prima facie, even by evaluating the DUS test results it indicates that the characteristics, in respect of which the two varieties were found to have qualified the DUS test, are more or less identical when compared inter se. However, Court was not inclined to examine the said controversy any further as the same had not been considered in any of the impugned orders. However, it was held obvious that if the question whether the variety 30V92 and KMH-50 were different and distinct from each other was required to be determined, a meaningful examination of their essential characteristics would be relevant.

Annual Report of CGPDTM published

Annual Report of the Office of the Controller General of Patents, Designs, Trade Marks and Geographical Indications (CGPDTM) has been published.

According to Annual Report 2017-2018, filing of applications for protection of various Intellectual Property rights in IP offices under the administrative control of Controller General of Patents, Designs and Trademarks (CGPDTM) has been showing consistent growth over the years, in general.

Overall filing of applications for various Intellectual Property rights (3,50,546) has been almost same in financial year 2017-2018 as compared to the previous year (3,50,467). The increasing trend in filing of applications for Patents, Designs, Geographical indications and Copyright has been observed except for Trademarks where there is slight decrease as compared to 2016-17.


Total 47854 patent applications filed in financial 2017-2018. Patent application filing increases by 5.3%.

However there is a huge increase in the examination/disposal rate of the Patent Office:

During 2017-2018, the examination of patent application increases by 108.2% than in previous year.

Number of grant of patents increased by 32.5%.

Disposal of applications increased by 57.6%, as compared to 2016-17.

Domestic filing of patents applications in 2017-18 has also increased to 32.5% as Compared to 29.2% in 2016-17.


260 pre-grant oppositions were filed under section 25(1) of the Patents Act 1970, which is about 0.55% of the total published Applications.


During 2017-18, a total of 11837 design applications were filed.

Design application filing increases by 15.9% over last year.

The number of design applications examined were 11850 which is decreased by 0.75%.

Design registrations increased by 21.07% as compared to last year.

Disposal of design applications increased by 29.48% in 2017-18 as compared to 2016-17.

IPAB to take up urgent Patent, Trademark matters

The Delhi High Court has directed the Intellectual  Property Appellate Board (IPAB) to take up urgent Patent and trademark matters. The Court also held that also held that the Chairman, IPAB and the Technical Member (Plant Varieties Protection) can hear the urgent matters relating to the Patents, Trade Marks and Copyright till the vacancies of other Technical Members are filled up.

Mylan Laboratories Limited challenged the order dated 14th March, 2019 passed by the Deputy Controller of Patents and Designs whereby the Controller dismissing the pre-grant opposition filed by Mylan in an appeal before the Intellectual  Property Appellate Board (IPAB).  The petitioner approached the Delhi High Court for urgent hearing of the stay application as IPAB is not functioning because there is no Technical Member (Patents) since 04th May, 2016.

During the proceedings the Delhi High Court directed vide its order dated 21st May, 2019, the Deputy Registrar of IPAB to file status report of vacancy position of Technical members of IPABIn response to said direction, status report was filed by Deputy Registrar of IPAB on 24th May, 2019 stating that post for Technical Member (Patent) and Technical Member (Trademark) has been lying vacant since 05th December, 2018 and 4th May, 2016 respectively. Whereas no Technical Member was appointed for Copyright related matters. However, said report stated that Technical member relating to Plant Varieties Protection has already been appointed.

The High Court cited the stringent condition of appointment of bench comprising Judicial Bench and one Technical member for functioning of IPAB under Section 84 of Trademark Act, thereby imposing mandatory condition of appeal to be heard by a Bench of at least two members. Court compared said provision with similar provisions laying down the composition of other Tribunals, which allow those Tribunals to sit in single Benches for deciding matters. However, the Court analysed that the statute (TM Act, 1999) is silent with respect to the procedure to be followed and adopted in case of a vacancy of a Technical Member or non-participation of a Technical Member.

 The High Court cited various judgements1 and invoked Doctrine of Necessity to hold that lack of availability of full quorum cannot be a ground for cessation of Bench and further underscored the legislative intent of continuity of Appellate Tribunal (IPAB).  The Court held that:-

  • Even if post of Technical Member is lying vacant, IPAB can proceed to hear urgent matters and orders passed in such matters cannot be invalidated on the ground of lack of Coram.
  • Further, the Court also held that the Chairman, IPAB and the Technical Member (Plant Varieties Protection) can hear the urgent matters relating to the Patents, Trade Marks and Copyright till the vacancies of other Technical Members are filled up.
  • If the Technical Member (Plant Varieties Protection) is not available for any reason or recuses, the Chairman, IPAB can proceed to hear the urgent matters.
  • For Patent matters, the Chairman, IPAB is at liberty to take the expert opinion of a scientific advisor from the panel of scientific advisors notified under Section 115 of the Patents Act.