IPAB to Hear Novartis Case without the Technical Member

Recently, in the Novartis case, the Madras High Court has accepted the proposal of the Government that, IPAB would proceed to hear the Appeal filed by Novartis with the Chairman and the Vice-Chairman sitting on the Board and thereby excluding the Technical Member. This proposal is antithesis to the very constitution of IPAB.

The establishment of the Appellate Board for Patent is a significant achievement in the development of IPR in India. Patent law is a multi-disciplinary subject. Patent law as a subject, as we all know is a blend of Science and Law. It is obvious that persons handling Patent cases are expected to have technical knowledge for better appreciation of facts of the case.

The Board which served as a forum to decide Appeals arising out of the Trade Marks Act, 1999 is also the Board to decide Appeals arising out of the Patents Act as well. Primarily, the object of creation of the Appellate Board is for speedy disposal of Appeals and Rectification Application which were pending before various High Courts. If this object has to be achieved, the appointment of a Technical Member to the Board is sine qua non. It is with this objective, that the former Controller General of Patents was appointed as a Technical Member of the Board which includes a Chairman, who is a retired judge of a High Court.

However, the Madras High Court in the Novartis case has permitted the Opposition proceedings to be carried out before the Board in the absence of a Technical Member. This is not conducive to the Development of Patent Law.

Earlier, Novartis has filed its Appeal against the rejection of its Application for Patent concerning beta crystalline form of imatinib mesylate by the Patent Office. After the IPAB for Patents was constituted, the Appeal filed by Novartis stood transferred to it from the Madras High Court. Novartis has taken exception to the presence of former Controller General as a Technical Member in the Board. Novartis grievance is that the Technical Member had sworn an Affidavit in the capacity of the Controller General earlier before the Madras High Court while the matter stood there. Therefore Novartis again moved the Madras High Court. The Government left with no alternative has relented and decided to replace former Controller General with the Vice-Chairman of the Board who is not a technical member.

Now the matter thus, would proceed before Chairman and Vice-Chairman in- absentia of the Technical Member. It is to be seen, whether the Board can effectually dispose the Appeal in the absence of a Technical Member. I am instantly reminded of an off repeated quote of the Apex Court, that “Justice not only should be done but appears to be done”.

I wish, the Government, to remove the impasse, could have come with a better alternative, i.e. to take another Technical Member in the Board on a temporary basis in the place of former Controller General. It is also provided under Section 115 of the Patents Act, that in any proceeding before the Court under this Act, the Court may at any time, and whether or not an Application has been made by any party for that purpose, appoint an independent scientific adviser, to assist the Court to inquire and report upon any such question of fact or of opinion (not involving a question of interpretation of law).

Finally the persons at the helm of affairs must take a decision. It now appears that Natco Pharma, one of the opponent, in this case has petitioned the Supreme Court against the decision of Madras High Court of proceeding with this matter without the Technical Member. This matter will not end here.

A particular criteria for appointment of a Technical Member to the Appellate Board is that he must be a Controller of Patents. As a Controller of Patents the concerned officer will have handled several hundred patent cases if not more. In case any of these patents/ patent applications he has handled in his previous incumbency, comes up for adjudication before the IPAB it will now be open for any one of the parties to object to the technical member’s presence on the board and if the Madras High Court ruling is followed then every time there will have to be shuffling of the board by removal of the technical member. This was certainly not the intention of the legislature at the time of constituting the Appellate Board for Patents.