India: IPAB Appeal Procedure In India

Last Updated: 1 December 2015
Article by Neetu Kumari

Introduction

Intellectual Property Appellate Board (IPAB) is a tribunal, before which the decisions of the Central Government or Controller of Patents, Registrar under the Trade Marks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999 can be appealed.

The IPAB has appellate jurisdiction against the decision of the Controller or Central Government of India in matters pertaining to refusal of application for failure to comply with the requirements of the Act; orders pertaining to divisional application; orders pertaining to dating of application; decisions pertaining to anticipation; decisions and cases of potential infringement; orders regarding substitution of applicants; revocation of patents in public interest; correction of clerical errors, etc.

However, the orders passed by the Central Government of India with respect to inventions pertaining to defence purposes, including directions of secrecy in respect of such inventions, revocation if the patent is contrary or prejudicial to public interest, or pertaining to atomic energy, are exempted from the purview of appeal to IPAB. An order of the Controller, granting an extension of time under any provision of the Patent Act 1970 is also not appealable.

Appeal Procedure

An appeal must be duly filed within the timeline given under the Patents Act along with the required fee. The format must be followed clearly stating the grounds for filing, and the appeal must be signed by the Appellant. The procedure is not at all complicated.

IPAB has its headquarters at Chennai, with circuit sittings also taking place at, Mumbai, Delhi, Kolkata and Ahmedabad. In a much welcomed development, the Delhi registry-cum-bench of the Intellectual Property Appellate Board (IPAB) was officially inaugurated on the 31st of August 2015, by Delhi High Court Chief Justice G Rohini. As a result of this expansion now appeals can be filed at Delhi registry-cum-bench of IPAB for Patent applications and patents filed or granted at the Delhi Patent Office. However, matters based on patent applications or patents being handled at Mumbai, Kolkata and Chennai Patent Offices are still to be filed at IPAB, Chennai.

Under Section 117A (4) of the Patents Act, 1970  an appeal should be filed within three months from the date of the decision, order or direction, as the case may be, of the Controller or the Central Government.  However, recently Bench of IPAB circuit sitting at Delhi passed an order (SR NO.350/2014/PT/DEL) in favor of Microsoft Corporation wherein the issue for consideration was whether the three-month limitation period set out in Section 117A (4) of the Patents Act, 1970, for filing an appeal before the IPAB, challenging the controller's decision should start to run from the date of the order or the date of receipt of the order.

The relevant part of the order is reproduced herein below:-

"period of limitation contemplated under Section 117A (4) namely three months from the date of decision is to be construed as three months from the date of communication or receipt of the order the appeal is not barred by limitation and the same is maintainable. However, we are making it very clear that even in such an event of making the above said interpretation of Section 117A (4), it is the burden of the appellant to produce documents to establish that they have received the impugned order on such and such date."

An extension is also available for filing the appeal by way of a condonation of delay (COD) petition, along with prescribed official fees. However, COD must contain the genuine reasons of delay.

In Pfizer Products Inc. case (COD No.16/2014), IPAB allowed a condonation of delay for 33 months and 12 days, on the fact that the delay was due to the filing of the review application and its disposal. Since the delay was neither wilful nor wanton, the said petition was allowed.

The relevant part of the order is reproduced herein below:-

"The fact remains that being aggrieved by the rejection of application claiming for patent by the order dated 09/06/2011 the petitioner preferred the review application and the same was also dismissed on 27/03/2014 which resulted in the delay of 33 months and 12 days. It is also brought to the notice of this Bench that the petitioner obtained the certified copy of the order on 20/08/2014. However, the limitation to file appeal is to commence from the date of decision i.e. on 09/06/2011. We are of the constrained view that the petitioner has not only assigned valid reason but also shown sufficient cause to condone the delay."

In Flextronics International USA, Inc. case (C.O.D. No. 1/2014 in S.R. No. 499/2013/PT/DEL), IPAB allowed a condonation of delay for 461 days on the fact that, that on receipt of the impugned order, the applicant contacted the attorneys through their agents; however due to lack of communication between the attorneys and the agents, change of agents and the misimpression of the  petitioner  that the appeal was already preferred  there was a delay of 461 days, a delay which  was neither wilful nor wanton.

The relevant part of the order is reproduced herein below:-

"It is seen that there is a change of agents for the petitioner which resulted in delay of communication with the attorneys and it is specifically stated that the petitioner was under the impression that the appeal was already preferred but resulted in some delay. We are of the considered view that the petitioner has assigned  valid  reasons  and  shown  sufficient  cause  to  condone  the  delay. Accordingly, the petition is allowed."

Conclusion

From the above, it is evident that IPAB has streamlined the appeal process for applicants. Moreover, opening of Delhi registry-cum-bench of IPAB has provided appellants with a forum to file appeals in matters pertaining to patents, within Delhi jurisdiction. This move will also serve in reducing the backlog of cases before the Board, and especially so in the light of the fact that Delhi has the maximum number of pending cases.  The decisions which held that three months will start from the "date of communication or receipt of the order of the appeal" will be helpful to applicants, as several factors have to be taken into account before filing an appeal. Such evaluation may take up a considerable amount of time and the difference of one or two weeks during the three-month period will give significant relief to applicants.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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