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:-
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:-
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:-
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.
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