The Intellectual Property Appellate Board (IPAB) was constituted on September 15, 2003 by the Indian Government to hear and resolve the appeals against the decisions of the registrar under the Indian Trademarks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999.
Since April 2, 2007, IPAB has been authorized to hear and adjudicate upon the appeals from most of the decisions, orders or directions made by the Patent Controller under the Patents Act. Therefore all pending appeals of Indian High Courts under the Patents Act were transferred to IPAB.
The headquarter of the IPAB is located in Chennai. IPAB also has sittings at Chennai, Delhi, Kolkata and Ahmedabad.
In IPAB an appeal can be made against the decision of the Controller or Central Government of India in matters related to refusal of application for failure to comply with the requirements of the Act; orders related to divisional application; orders related to dating of application; decisions related to anticipation; decisions and cases of potential infringement; orders regarding substitution of applicants; revocation of patents in public interest; correction of clerical errors, etc.
But, the orders passed by the Central Government of India with respect to inventions related to defense purposes, including directions of secrecy in respect of such inventions, revocation if the patent is contrary or prejudicial to public interest, or related to atomic energy, are exempted from the ambit of appeal to IPAB. Also an order of the Controller, granting an extension of time under any provision of the Patent Act 1970 is also not appealable.
Organization of an IPAB Bench: Each Bench of the IPAB includes a Judicial Member and a Technical Member. The qualifications for appointment as a technical member of the IPAB are mentioned in The Trade Marks Act and the Patents Act.
Jurisdiction: Appeals from the decision of the Controller to the IPAB must be made within three months from the date of the decision/ order or direction, according to the, or within such further time as the IPAB permits, with the appropriate fees.
An extension is available for filing the appeal by way of a Condonation of Delay (COD) petition. The pre-requisite for filing COD is that there must be genuine reasons of delay, along with the prescribed official fees.
The IPAB has appellate jurisdiction against the decision of the Controller or Central Government of India in following matters:
- Any decisions related to inventor names
- Any directions given to co-owners of the patent
- Any decisions related to Patent of Addition
- Any orders relating to divisional application
- Any orders relating to dating of application
- Refusal of application for failure to comply with any provisions of the Act
- Any decisions relating to anticipation
- Any decisions and cases of potential infringement.
- In respect to a correction of clerical errors.
- Any decisions related to compulsory license of a patent.
- Any decisions related to revocation of patent for non-working.
- Any decisions relating to substitution of applicants.
- Any decision in respect to any amendment/revocation of patent.
- Any decisions related to amendment of application and specification.
- Any decisions related to restoration of lapsed patents.
- Any decisions related to surrender of patents.
- In respect to revocation of patents to satisfy public interest.
- In respect to any registration of patent assignments.
Exclusive Jurisdiction: The Appellate Board can receive, hear and dispose all appeals from any order or decision of the Controller and all cases related to the revocation of a patent, rectification of register; other than through a counter-claim in a suit for infringement. IPAB has the authority to proceed with the matter either de novo or from the stage at which it was transferred on appeal. The jurisdiction to hear patent infringement cases continues with the High Courts.
The IPAB is the sole authority to exercise the powers and adjudicate proceedings arising from an appeal against an order or decision of the Controller.
In case of a counter-claim in a suit for infringement, the competent authority to adjudicate on the matter is the Indian High Court.
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.