We’re pleased to bring to you this guest post by our former and one of the most prolific bloggers, Prashant Reddy.
The End of the IPAB and Lessons on Concentration of Judicial Powers
Prashant Reddy
India’s much troubled Intellectual Property Appellate Board (IPAB) was officially buried on August 14, 2021 when the President of India gave his assent to the Tribunals Reforms Act, 2021 enacted by Parliament. With the enactment of this law, the jurisdiction of the IPAB moves back to the High Courts and commercial courts.
For most of its existence, the IPAB has been in the news for mostly the wrong reasons, ranging from a lack of independence to a lack of appointments to poor quality of appointments to illegal appointments to a lack of resources. The one note-worthy appointment to the tribunal – Justice Prabha Sridevan, formerly from the Madras High Court, recommended the shutting down of the IPAB. Many of these travails of the IPAB have been dutifully documented on SpicyIP and are mostly attributable to the general dysfunctionality of the Indian tribunal system.
There is however one issue which has attracted relatively little discussion in context of the IPAB but is relevant in the context of developing countries trying to setup specialist IP courts/tribunals. This is the issue of concentration of judicial power in the hands of the few judges staffing a relevant IP tribunal or court and its effect on developing IP jurisprudence. In India, when IP litigation was left to the High Courts and District Courts, there was never any concentration of power in the hands of few judges because these cases could be filed in different courts across the country based on jurisdictional issues and even within those courts, a roster system prevented any judge from hearing the same cases through his tenure. This meant different judges hearing IP cases at different points thereby bringing in a diversity of viewpoints and enriching IP jurisprudence. While diversity of viewpoints often means conflicting precedents which take time to resolve through the appeals process, it also means an enriched body of jurisprudence that has drawn on the best strands of thoughts of different judges.
However, with the creation of the IPAB, this diversity of judicial viewpoints ran into trouble because the powers of the tribunal came to be concentrated in mostly one person i.e. the Chairperson of the IPAB who was typically a retired judge of a High Court. The IPAB was always a small body usually having one Chairperson, one judicial member and a few technical members for each of the specialist areas – trademarks, patents, copyright, plant variety. For effective quorum a bench had to have a judicial member (a Chairperson could sit as a judicial member) and a technical member. The Chairpersons, with their power to constitute benches to hear cases and allot cases to benches, had tremendous powers to influence outcomes of all litigation before the IPAB. The obvious problem with such concentration of power is that the ideological proclivity of the Chairperson of the IPAB could define all IP jurisprudence emanating from the IPAB for a duration of three years (i.e. their statutory tenure). There was not a single case, during the IPAB’s existence, where any member on the IPAB disagreed or dissented from the Chairperson’s ruling.
The power of one judge to shape a good portion of IP jurisprudence for more than a billion Indians is a worrying thought. It is possible that this inherent design flaw in the IPAB eventually contributed to its demise. I say this because in the months before the IPAB was given its legislative burial there was a raging litigation before the Supreme Court regarding an ‘extension’ granted to the then Chairperson of the IPAB – Manmohan Singh.
Under the law, the Chairperson of the IPAB had a tenure of 3 years or until they reached the retirement age of 65 years, whichever was earlier. As Manmohan Singh’s tenure was coming to an end, the India chapter of The International Association for the Protection of Intellectual Property (AIPPI) approached the Supreme Court asking it to extend his tenure. In the past, there have been instances of IP bar associations like the Asian Patent Attorney’s Association (APPA) approaching High Courts asking for better facilities for the IPAB or for appointments to be made to the IPAB because of unfilled vacancies. There has however never been a case where a particular group of IP lawyers asked a court to appoint/extend the tenure of a particular judge on the IPAB. That would come across as lobbying for a particular judge.
Technically, the Supreme Court does not have the legal powers to grant extensions but it did invoke its extraordinary powers to grant Manmohan Singh an extension for a year until certain constitutional litigation around a new set of tribunal service rules was decided. The fact that AIPPI was in effect ‘lobbying’ for an extension of Manmohan Singh’s tenure, knowing full well that its members were going to be litigating before him raised eyebrows from the standpoint of professional ethics. I had written about the propriety and ethics of lawyers from AIPPI appearing before a judge who continued in office because of their efforts. But what did happen as a result of the extension being granted to Manmohan Singh, the Indian Drug Manufacturers Association (IDMA) filed an intervention before the Supreme Court opposing any further extensions to Manmohan Singh in his role as the Chairperson of the IPAB.
The IDMA is the primary lobby group for small and medium generic pharmaceutical industry in India. Many of IDMA’s members were involved in patent litigation before the IPAB and it is possible that they lost confidence in Manmohan Singh for two reasons. The first being the demands for his extension on the bench by the AIPPI, which is heavy with the patentee friendly plaintiff bar – the president of its India chapter is one of the main litigators for Big Pharma. As a representative of primarily generic companies, IDMA had every reason to oppose all demands by AIPPI, since it was lawyers from AIPPI who would be appearing from Big Pharma before Manmohan Singh. Secondly, IDMA may have been spooked by certain remarks made by Manmohan Singh in one of his judgments undermining the pre-grant opposition system in India which is very actively used by the generic pharmaceutical industry in India. Big Pharma had lobbied long and hard for abolition of the pre-grant opposition system and almost succeeded in 2005 but Parliament did retain a watered-down version of a pre-grant opposition system which was then streamlined by High Courts through various pronouncements.
From a political perspective, this petition by the IDMA publicly taking on a judge of the IPAB was simply stunning because never before in the history of India has an industry lobby publicly and vociferously opposed the appointment/continuation of a judge in office, especially when the judge in question had the power to hear litigation involving several of its members. But given the design of the IPAB and the overwhelming power in the hands of the Chairperson, in this case Manmohan Singh, the IDMA did not have much of a choice in the matter.
The IDMA won that case before the Supreme Court when one of India’s finest IP judges – Justice Ravindra Bhat (formerly a colleague of Manmohan Singh at the Delhi High Court) writing on behalf of a bench of the Supreme Court denied any further extension to Manmohan Singh. And so ended that saga of not just Manmohan Singh’s tenure as the Chairperson of the IPAB but also the legitimacy of the IPAB as a credible institution.
The IDMA is a powerful voice in the Indian IP ecosystem. It prefers to operate in the shadows of policy making, like most lobby groups in India. For the IDMA to come out in public for a slugging match in the Supreme Court over the appointment of a single judge must have had far reaching reverberations in the corridors of power in New Delhi and in all likelihood, paved the way to abolish the IPAB. Last year, the government in response to a petition filed by me, along with Rahul Bajaj, had already indicated it was open to the idea of doing away with the IPAB. The IDMA litigation likely sealed that decision.
With the caseload of the IPAB being distributed across High Courts, I am confident that we will witness a plurality of Indian judges generating diverse judicial opinion that will enrich IP jurisprudence in the best traditions of common law.
I read the article twice but I couldn’t quite get the ‘lesson’ on concentration of judicial power. what was the lesson here? Concentration of judicial power will ultimately pave way to grave? First of all, I don’t quite get the abhorrent attitude of some sections towards IPAB, which despite certain notorious decisions, did quite well in setting several erroneous decisions of patent office straight for greater part of the period of its functioning. What marred the IPAB was lack of manpower, proper space for circuit hearings and funding, catering which was solely Govt’s job which it miserably failed to do, god knows why! As Supreme Court reiterated in Roger Mathews case, “The administrative support for all Tribunals should be from the Ministry of Law and Justice. Neither the Tribunals nor their members shall seek or be provided with facilities from the respective sponsoring or parent Ministries or Department concerned.” but for some reason, Ministry of Commerce and Industry retained administrative control of IPAB and did a rather abysmal job of appointment of members and funding the institution despite multiple requests and appeals from stake holders. Minister of Commerce and Industry went one step ahead and suggested the stake holders to prefer an appeal in court instead of waiting for appointments in IPAB. I only when Delhi HC ruled that IPAB can hear appeals without coram and that PVPAT member can hear patent appeals, there was some respite, albeit momentary. Since the appointment of technical members to IPAB in Aug 2020, board head and disposed the appeals off at a record pace, until it was shutdown by Govt rather abruptly. Having the IP appeals now be heard by different judges in court which might generate viewpoints and enriching IP jurisprudence, might appeal just for reading but high courts are already understaffed and overburdened, they will be inundated by cases once the physical hearing resumes and IP appeals will be one of the several classes of appeals they will be hearing which might cause undue delay in their disposal before which the patent term could have expired, so what good will it actually be of to the appellant? Specialised tribunals such as IPAB have been set up to hear appeals on matters dealing with specific laws and statutes so as to ensure their timely disposal thereby saving time and money for appellants. Tribulanization is not concentration of judicial power with far reaching implications but rather concentration of judicial power with limited scope for speedy dissemination of justice in certain matters and in a time bound manner, since disposal of such cases ordinarily in high court may take forever. Now, pondering on the solution and also based on what is in air in some circles, Govt may carve out localised appeal boards in patent offices which if materialise, would be like jumping from frying pan right into the fire. Let us be honest for a while and focus on a least discussed point which was also highlighted recently in IPwatchdog following Parliamentary committee report on IP regime in India that particularly highlighted the dismal filing rate in largest democracy. Is it because India’s IP regime is tough, or because Its IP regime is unattractive, with grants for patents for frivolous inventions with a worrisome error rate like an article ‘The elephant in the Patent Office’ by Prof. Feroz Ali in TheHindu somewhere in 2018 pointed out while refusing inventions billions of dollars are poured into and which can actually make this world a better place, with multitude of conflicting interpretations of statutes within the office, with no keenness on addressing the concerns raised by various stakeholders in meetings, with inordinate delay in disposal of applications and communication of information to applicants thereby keeping agents uninformed even until the patent terms expire, just to mention a few! Will having appellate boards in such an office against the decisions of very office be a progressive or regressive step, given the quality of work and officials of patent office. If applicants prefer an appeal before court out of decisions of such boards, is that ultimately going to make things easier or even irksome for applicants and stakeholders? Orders of IPAB from last Aug until last day reversed Patent office’s decisions in >90% of the instances which speaks volumes of quality of decisions coming from the Patent Office. When IPAB was perceived as a problem for various reasons right from no technical members to unsubstantiated notoriety of its chair person, what could have been ideally worked out are solutions to make such an organisation strong and better and that would have served as an institution for homegrown IP jurisprudence, instead of cheering from the sidelines while not having any plausible solution in Indian context that will either make things easier for applicants or make the India’s IP regime better and attractive.
Prashant, have you analysed the territorial jurisdiction of various HCs over pending and new cases which would have gone before IPAB? I think there is a huge miss in the amendment in that respect, and it might just give rise to jurisdiction litigation.
I agree with Shobhit. How will the statutory licence fee under section 31D of the Copyright Act, that one High Court fixes, apply in the jurisdiction of other High Courts? Statutory and compulsory licences, by their very nature, ought to apply all-India. Diverse judicial opinions are not a good idea here. Again, is price fixation a proper judicial function? And should one have to go to the High Court for rectifying the Register of Copyrights? The High Court is being asked to do things that ought to be infra dig for it. And there is much in what Brain and Long Beard says. I fear the whole decision was hasty, not thought through–astonishingly so.