In its order dated 04th April, 2021, the Indian government promulgated the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance 2021, effectively abolishing India's IP Appellate Board (IPAB) and transferring its functions to the country's Commercial and High Courts.
Intellectual Property Appellate Board (IPAB) was constituted by the Central Government on September 15, 2003, to hears appeals against the decisions of the Registrar under the Trade Marks Act, 1999 and the Geographical Indications of Goods Act (Registration and Protection), 1999. After four years, in 2007 the IPAB jurisdiction was extended to the Patents Act, 1970. Later through the Finance Act, in 2017, it was further extended to the Copyright Act, 1957. IPAB was created with an objective to bring together the best set of expertise in the IP regime through technical members possessing technical and scientific knowledge due to which it has delivered various landmark judgments. However, it also succumbed to various difficulties due to being non[1]functional on account of lack of technical expertise for a number of years, which lead to pendency and delay of matters.
CHANGES TO THE IP LEGISLATIONS
The Patent Act, 1970
The ordinance has led to the abolishment of the Appellate Board, which possessed the power to hear appeals against the decisions of the Controller General of Patents regarding revocation, ratification of patents, etc. Under the provisions of the Act, 'Appellate Board' is substituted for the 'High Court'. As a consequence, the High Court is empowered, inter alia, to revoke the patent if granted to fraud and to grant a patent to the true and first inventor, to rectify the Register of Patents as per Section 71 by making variations or deletions, to allow an amendment to complete specification, to issue validity certificate of specification.
Copyright Act, 1957
The Appellate Board under the Copyright Act is dissolved, and the powers of the Board are transferred to the Commercial Courts and High Courts. Section 12 defining the powers and procedure of the Appellate Board has been deleted. The Commercial Courts now possess the power to make final calls on whether a work has been published, handle assignment dispute, decide the term of copyright in anonymous and pseudonymous work, grant compulsory and statutory licenses, to grant a license to produce and publish translations, to grant a license to reproduce and publish works, to hear disputes with regard to tariff schemes by Copyright Societies and to fix resale share right in original copies of the first author. Furthermore, the High Courts possess the power to rectify the Register of Copyrights as per Section 50. They also have the power under Section 70 to hear appeals against the orders of the Registrar of Copyrights.
The Trade Marks Act, 1999
With the abolishment of the IPAB, the power of appeals against the decision of the Registrar of Trade Marks has been transferred to the High Court. The word 'Tribunal' or 'Appellate Board' is replaced with 'Registrar or the High Court' per context. The powers conferred to the Registrar of Trademarks and the High Court are to remove a trademark from the register and to impose limitations on grounds of non-use, to require an applicant to furnish security, to vary registration and rectify the register, to deal with registration application of certification trademark, to admit evidence in proceedings, among others.
The primary reason for the ordinance was the IPAB's slow pace of justice delivery despite the huge burden on the public exchequer. The abolishment of IPAB amounts to the restoration of the status quo, as prior to the establishment of IPAB when the power to adjudicate was vested with the High Courts. The move is considered a step forward to deal with the pending cases and strengthen the IP protection and enforcement system. However, it is yet to be seen how the high courts with their existing backlog and absence of technical members specially in patent revocation and appeal matters will take the burden of IPAB which had been shouldering responsibilities for about 18 years old. The short-term result of such abolition can be seen on the current cases pending before IPAB which will now be further delayed for a year or more.
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