Delhi High Court
Mylan Laboratories Limited vs Union Of India & Ors on 8 July, 2019
Author: J.R. Midha
Bench: J.R. Midha
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 08th July, 2019
+ W.P.(C) 5571/2019 & C.M. Appln. 24540/2019 & 26833/2019
MYLAN LABORATORIES LIMITED ..... Petitioner
Through: Ms.Rajeshwari H., Advocate
versus
UNION OF INDIA & ORS ..... Respondents
Through: Mr.Gaurang Kanth, CGSC with
Mr.Santosh Kr. Pandey, GP with
Mr.N.K. Ramesh, Deputy Registrar,
IPAB and Mr.S.S. Singh, Deputy
Controller, Patents for R-1 & R-2
Mr. J.P. Sengh, Senior Advocate
(Amicus Curiae)
Mr. Rajiv Nayar, Senior Advocate
(Amicus Curiae)
CORAM:
HON'BLE MR. JUSTICE J.R. MIDHA
JUDGMEN T
1. The petitioner has challenged the order dated 14th March, 2019 passed
by the Deputy Controller of Patents and Designs whereby the Controller
dismissed the pre-grant opposition filed by the petitioner and granted the
patent to respondent No.3 in respect of „Methods of Evaluating Peptide
Mixtures‟.
2. The Patents Act provides a remedy of an appeal to the petitioner
against the impugned order dated 14th March, 2019 and the petitioner availed
the same by filing an appeal along with a stay application before Intellectual
W.P.(C) 5571/2019 Page 1 of 32
Property Appellate Board (IPAB) on 17th May, 2019. The petitioner has
approached this Court for urgent hearing of the stay application as IPAB is
not functioning because there is no Technical Member (Patents) since 04 th
May, 2016.
3. Vide order dated 21st May, 2019, this Court directed the Deputy
Registrar of IPAB to file the status report with respect to the vacancy
position of the Technical Members of IPAB. The relevant portion of the
order dated 21st May, 2019 is reproduced hereunder:-
"4. Learned counsel for the petitioner submits that the petitioner
filed an appeal against the order dated 14th March, 2019 along with
the stay application before the Intellectual Property Appellate Board
(IPAB) on 17th May, 2019. However, the stay application has not yet
been taken up for hearing for lack of Coram.
5. Learned counsel for the petitioner submits that the post of
Technical Member of IPAB is lying vacant for a long time due to
which no appeals are being taken up for hearing which has resulted
in a logjam. It is submitted that the petitioner‟s writ petition be taken
up for hearing for consideration of the interim relief. Alternatively, it
is submitted that the Chairman being the Judicial Member be
directed to hear the matter with liberty to take the assistance of a
scientific expert from the panel of experts under Section 115 of the
Patents Act, 1970. Reference is made to Election Commission of
India v. Dr. Subramanian Swamy, (1996) 4 SCC 104; Kwality
Restaurant v. The Commissioner of VAT, (2012) 194 DLT 195
(DB); Talluri Srinivas v. Union of India, 2018 SCC OnLine Del
7765 and ST. Appl. No.74 of 2014 titled Bharat Bijlee Limited v.
Commissioner Of Trade & Taxes.
6. Learned Standing Counsel for Central Government shall take
instructions from the Government with respect to the above
submissions. Learned Standing Counsel shall place on record the
status report since when the vacancy of the Technical Members are
lying vacant; action taken by the Government to fill up the vacancies
and the reasons for delay in filling up the vacancies. The competent
officer of the Central Government shall remain present in Court on
W.P.(C) 5571/2019 Page 2 of 32
the next date of hearing.
7. The Deputy Registrar of IPAB shall also remain present in Court
on the next date of hearing along with the status report as to the
number of pending cases which are not being taken up for hearing
for want of Coram. The Deputy Registrar shall also file the status
report giving particulars of the period when the post of Chairman
and Technical Members of IPAB remained vacant, since its
inception."
4. On 24th May, 2019, the Deputy Registrar of IPAB handed over the
status report in terms of the order dated 21 st May, 2019. As per the status
report, IPAB was established on 15th September, 2003. IPAB has
jurisdiction to deal with the matter under the Patents Act, Trade Marks Act,
Copyright Act and Plant Varieties Protection Act. As per Section 84(2) of
the Trade Marks Act, the IPAB Bench comprises of one Judicial Member
and one Technical Member. For cases relating to the Patents Act, the Bench
shall comprise of a Judicial Member and a Technical Member (Patents); for
cases relating to the Trade Marks Act, the Bench shall comprise of a Judicial
Member and a Technical Member (Trade Marks); for cases relating to the
Copyright, the Bench shall comprise of a Judicial Member and a Technical
Member (Copyright) and for cases relating to the Plant Varieties Protection,
the Bench shall comprise of a Judicial Member and a Technical Member
(Plant Varieties Protection). As per the status report, no Technical Member
(Copyright) has been appointed till date. With respect to Patents, the post of
Technical Member (Patents) lying vacant since 04th May, 2016. With
respect to Trade Marks, the post of Technical Member (Trade Marks) lying
vacant since 05th December, 2018. There is only one Technical Member
relating to Plant Varieties Protection.
W.P.(C) 5571/2019 Page 3 of 32
5. The report submitted by the Deputy Registrar by IPAB is reproduced
hereunder:-
"I. Establishment of Intellectual Property Appellate Board
1. Central Government in exercise of powers conferred by Section
83 of the Trade marks Act, 1999, established the Intellectual
Property Appellate Board wef.15/09/2003 vide Gazette Notification
S.O.1049(E) dated 15/09/2003
2. Vide Gazette Notification S.O.1049(E) dated 15/09/2003, the
Central Government, in exercise of the powers conferred by Section
84 (2) specifies Ahmadabad, Chennai, Delhi, Mumbai and Kolkata
as the places at which a bench of the IPAB shall sit.
3. By Gazette Notification S.O.1049(E) dated 01/10/2003, the
Central Government in exercise of the powers conferred by Section
100, notified on 06/10/2003 as the date for transfer of pending
proceedings before any High Court to IPAB.
4. Hon‟ble Justice S. Jagadeesan, retired Madras High Court
Judge appointed as Chairman who joined IPAB on 15/09/2003.
5. Shri. Raghbir Singh, retired from Indian Legal Service
appointed as Vice-Chairman, joined IPAB on 15/09/2003.
6. Shri T.R. Subramaniam, retired Joint Registrar of Trademarks
appointed as Technical Member of Trade Marks, joined IPAB on
15/09/2003.
7. IPAB commences its function from 15/09/2003. The bench was
constituted by the Hon‟ble Chairman and the Trademark cases
transferred from the various High Courts were listed before IPAB
for hearing and disposed of.
8. Shri T.R. Subramaniam, Technical Member of Trademarks
resigned on 20/02/2004. In view of the resignation of Technical
Member, the IPAB became standstill as the bench could not be
constituted without Technical Member as per Section 84 of the Trade
Marks Act, 1999. To overcome the above, Trade Marks (Removal of
Difficulties) Order, 2004 was published the Gazette Notification Vide
S.O. 540(E) dated 28/04/2004. The contents of Para 2 is reproduced
hereunder:
"During the vacancy in the office of Technical member, due to
leave of absence of a Technical member appointed as such, then
a Bench of the Intellectual Property Appellate Board may
W.P.(C) 5571/2019 Page 4 of 32
consist of the Chairman and the Vice-Chairman."
9. Till the appointment of Technical Member, Mr. Syed Obaidur
Rahman on 06/02/2006, the Hon‟ble Chairman and Vice-Chairman
constituted the Bench and conducted the hearings and disposed of
Trademarks matters.
II. Geographical Indications
1. The Central Government vide Gazette Notification S.O.
1051(E) in exercise of the powers conferred of Section 1(3) of
Geographical Indication of Goods (Registration and Protection) Act,
1999 appointed the 15/09/2003 as the date on which all the
provisions of said Act shall come into force.
2. But the IPAB received the Geographical Indication appeals
from the year 2009 only and till date 12 appeals have been disposed
of.
3. The Technical Member of Trademarks will join the bench as
Technical Member for hearing the Geographical Indication matters
along with the Hon‟ble Chairman or Vice-Chairman
III. Patents
1. As per Section 117(B) The Patents Act 1970 the provisions of
sub section (2) to (6) Sections 84, 87, 92, 95, 96 of the Trademarks
Act, 1999, shall apply to the Appellate Board in the discharge of its
functions under this Act as they apply to it in the discharge of its
functions under the Trade Marks Act, 1999.
2. Vide Gazette Notification S.O .514(E) central government in
exercise of the powers conferred by Section 117(G) of the Patents
Act, 1970 the central government notifies 2/4/2007 as the date on
which all cases of appeals against any order or decision of the
Controller and all cases pertaining to revocation of patent other
than on a counter claim in a suit for infringement and rectification of
register pending before any high court shall stands to Appellate
Board.
3. Shri S. Chandrasekar former Joint Controller of Patents &
Designs was appointed as Technical Member (Patents) on
02/04/2007 and IPAB commences its hearing and disposes the
patents matters from there on.
W.P.(C) 5571/2019 Page 5 of 32
IV. Copyright
Vide order File No.7/16/2016-IPR-1 dated 21/06/2016, the
Ministry, DPIIT conveyed the approval that in pursuance of Finance
Act, 2017 (7 of 2017) which has come into force on 26th May, 2017,
it has been decided to transfer all physical assets and manpower of
Copyright Board for being placed under the physical and
administrative control of the Appellate Board under Trademark Act,
1999 (47 of 1999) i.e. Intellectual Property Appellate Board with
immediate effect. Accordingly, the then Acting Chairman had taken
over the case files as is where is basis on 6th July, 2017 along with
sanction post, other administrative and accounts documents and
physical assets. As on date, total number of 691 cases relates to
copyright subject is pending for adjudication at Delhi and Chennai.
The bench could not be constituted to hear the copyright matters for
the reason that the post of Technical Member of Copyright is lying
vacant till date.
V. Plant Varieties Protection Appellate Tribunal
1. As per provisions of Chapter VI Section 54(II) PPV&FR Act,
2001, the Plant Varieties Protection Appellate Tribunal having
judicial powers to dispose of appeals made against orders and
decision of Plant Varieties and Farmers‟ Right Authority has not
been established as yet. However, Dr. Onkar Nath Singh, previously
holding post of Head, Crop Improvement Division, ICAR-National
Rice Research Institute, Cuttack, was appointed as Technical
Member (Plant Varieties Protection Appellate Tribunal) on
deputation basis w.e.f. 04/07/2018 by invoking the transitional
provision under Section 59 of PPV&FR Act, 2001 which says:-
Transitional Provision :- As contained under Section 59 of
PPV&FR, Act-2001 Notwithstanding anything contained in this Act,
till the establishment of the Tribunal under Section 54, the
Intellectual Property Appellate Board established under Section 83
of the Trade Marks Act, 1999 shall exercise the jurisdiction,
powers and authority conferred on the Tribunal under this Act
subject to the modification that in any Bench of such Intellectual
Property Appellate Board constituted for the purposes of this
section for the Technical member referred to in sub-section (2) of
W.P.(C) 5571/2019 Page 6 of 32
Section 84 of the said Trade Marks Act, the Technical Member
shall be appointed under this Act and he shall be deemed to be the
Technical member for constituting the bench under the said sub-
section (2) of the section 84 for the purposes of this Act.
2. The Gazette Notification of establishment of PVPAT is yet to be
published by the Central Government. On publication of the
notification, the bench can be constituted with Hon‟ble Chairman
and Technical Member PVPAT and the matters will be heard and
disposed of.
VI. Present status of IPAB
1. After retirement of Hon‟ble Justice K.N. Basha w.e.f.
13/05/2016, the office of the Chairman was vacant till the
appointment of Hon‟ble Justice Manmohan Singh w.e.f. 01.01.2018.
During the period from 14/05/2016 to 31/12/2017, no hearing was
conducted as the bench could not be constituted for the reason that
the then Technical Member of Trademarks was only available.
2. After retirement of Shri DPS Parmar, Technical Member
(Patents), the post is lying vacant till date, hence the hearing could
not be conducted after 04/05/2016 with respect to Patent Cases.
3. No Technical Member was appointed for Copyright, hence no
hearing has taken place for copyright cases.
4. After appointment of present Chairman, Hon‟ble Justice
Manmohan Singh, the trademark bench was constituted along with
the then Technical Member of Trademarks and 720 cases have been
disposed of for the period from 01.01.2018 to 04.12.2018.
5. The post of Technical member of trademarks is lying vacant
from 05/12/2018.
6. The Hon‟ble Chairman is conducting sittings at Delhi, Mumbai
& Chennai in the absence of Technical Member. But no effective
hearing could be taken place and only administrative orders were
passed by the Hon‟ble Chairman in view of Section 84(2) Trade
Marks Act, 1999. The section 84 of the Trade Marks Act 1999 is re-
produced as hereunder;
"84. Composition of Appellate Board
(1) The Appellate Board shall consist of a Chairman, Vice-
Chairman and such number of other Members, as the Central
Government may, deem fit and, subject to the other provisions
W.P.(C) 5571/2019 Page 7 of 32
of this Act, the jurisdiction, powers and authority of the
Appellate Board may be exercised by Benches thereof.
(2) Subject to the other provisions of this Act, a Bench shall
consist of one Judicial Member and one Technical Member and
shall sit at such place as the Central Government may, by
notification in the Official Gazette, specify.
(3) Notwithstanding anything contained in sub-section (2), the
Chairman-
(a) may, in addition to discharging the functions of the
Judicial Member or Technical Member of the Bench to which
he is appointed, discharge the functions of the Judicial Member
or, as the case may be, the Technical Member, of any other
Bench;
(b) may transfer a Member from one Bench to another Bench;
(c) may authorise the Vice-Chairman, the Judicial Member or
the Technical Member appointed to one Bench to discharge
also the functions of the Judicial Member or the Technical
member, as the case may be, of another Bench.
(4) Where any Benches are constituted, the Central
Government may, from time to time, by notification, make
provisions as to the distribution of the business of the Appellate
Board amongst the Benches and specify the matters which may
be dealt with by each Bench.
(5) If any question arises as to whether any matter falls within
the purview of the business allocated to a Bench, the decision of
the Chairman shall be final.
Explanation : For the removal of doubts, it is hereby declared
that the expression matter" includes an appeal under section
91.
(6) If the Members of a Bench differ in opinion on any point,
they shall state the point or points on which they differ, and
make a reference to the Chairman who shall either hear the
point or points himself or refer the case for hearing on such
point or points by one or more of the other Members and such
point or points shall be decided according to the opinion of the
majority of the Members who have heard the case, including
those who first heard it."
W.P.(C) 5571/2019 Page 8 of 32
7. In view of the Section 84 (2) of the Trade Marks Act, 1999, the
bench could not be constituted for the period from 14/05/2016 to
31/12/2017 and beyond 05/12/2018 to conduct the hearing of cases.
8. As of now, 2626 Trademarks cases, 617 Patent cases, 691
Copyright cases, 01 Geographical Indication case, are pending with
IPAB.
9. Further, the Hon‟ble Supreme Court and Hon‟ble High Courts
gave directions to the IPAB to dispose of the cases in a time bound
manner in some of the appeals filed before the Hon‟ble Courts. In
view of the Section 84(2) of the Trademarks Act, 1999, the bench
could not be constituted and the remanded cases could not be listed
for hearing.
10. From 05/12/2018, only the Hon‟ble Chairman is available at
IPAB without appointment of any Technical Members for
Trademark, Patents & Copyright except Plant Variety Protection
Appellate Tribunal. Hence, Chairman could not conduct any
effective hearing and the matters are pending before IPAB.
VII. Details of Pending Cases
S. Subject of Cases No. of Cases
No. Pending
as on 23/05/2019
1. Trade Mark 2626
2. Patent 617
3. Geographical 01
Indication
4. Copyright 691
VIII. Vacancy Particulars and the period for the Post of Chairman,
Vice-Chairman & Technical Members of IPAB from 15/09/2003 to
till date
S.No. Name of From To
the Post
1. Chairman 19/03/2006 28/11/2006
11/08/2010 08/05/2011
09/08/2013 28/08/2013
W.P.(C) 5571/2019 Page 9 of 32
14/05/2016 31/12/2017
2. Vice-Chairman 15/03/2005 26/02/2006
20/03/2008 21/06/2009
22/06/2014 Vacant till date
3. Technical Member 21/02/2004 05/02/2006
(Trademarks) 06/02/2011 01/01/2012
01/12/2013 04/12/2013
05/12/2018 Vacant till date
4. Technical Member 03/12/2010 03/05/2011
(Patents) 04/05/2016 Vacant till date
5. Technical Member Vacant Vacant
(Copyright)
IX. After appointment of present Chairman, Hon'ble Justice Manmohan
Singh, the trademark bench was constituted along with the then
Technical Member of Trademarks and 720 cases have been disposed of
for the period from 01.01.2018 to 04.12.2018.
(Emphasis supplied)
Submissions of the petitioner
6. The Intellectual Property Appellate Board (IPAB) was created as
there was a need for an expert body to adjudicate issues that are technical in
nature. This is more so in case of special legislation such as Patents Act,
1970 and the Protection of Plant Varieties and Farmers' Right Act, 2001.
However, for various reasons, the true objectives of establishing the IPAB
has not been successfully achieved, leading to denial of justice.
7. The current status is that the Intellectual Property Appellate Board
(IPAB) has a total of more than 3000 odd cases pending adjudication (with
respect to trademarks, copyright and patents). Patent matters alone account
for 617, which are pending in the form of appeals or revocation proceedings.
The term of a patent is only 20 years and in many cases, due to lack of
Coram, the patents have expired and the matters have become infructuous
W.P.(C) 5571/2019 Page 10 of 32
and rights of parties have been severely prejudiced. The post of Technical
Member (Patents) has been lying vacant for more than 2 years (from 2016).
8. Possible Solutions
8.1 As an interim arrangement, the Chairman along with Dr. Onkar
Nath Singh could conduct hearings:
On 20th July, 2018, the Government of India appointed Dr. Onkar
Nath Singh as Technical Member of the Plant Varieties Protection
Appellate Tribunal for a period of 3 years. Dr. Onkar Nath Singh
holds a Ph.D in genetics, plant breeding and crop improvement. The
Chairman, IPAB along with Dr. Onkar Nath Singh could, in the
interim period, hear patent matters pending before the Intellectual
Property Appellate Board (IPAB).
8.2 The Chairman may sit together with any Scientific expert from
the panel of Scientific Advisors available and notified under
Section 115 of the Patents Act, 1970:
The Chairman may sit along with any Scientific Expert chosen from
the roll of Scientific Advisors appointed under Section 115 of the
Patents Act, 1970. This would enable the IPAB to adjudicate the
disputes pending before it.
8.3 The Chairman may be directed to hold office until fresh
appointment:
The Chairman, as per the report of the Union of India, is likely to
demit office in around September, 2019. The process of appointment
of a fresh chairman would again plague the system and leave the
IPAB dysfunctional. It would be in the interest of justice that the
Chairman, IPAB be directed to continue to hold office until the
appointment of a new Chairman. This is permissible under Section 89
W.P.(C) 5571/2019 Page 11 of 32
of the Trade Marks Act, 1999 which provides that the Chairman may
continue to hold office until expiry of 3 months from the date of
receipt of notice or until a person is duly appointed as successor,
enters upon his office or until the expiry of his term of office,
whichever is earlier.
9. The doctrine of necessity be invoked to solve the present impasse.
Orders passed by such a Tribunal would be protected and would not be
invalid as per the doctrine of de facto orders.
Submissions of respondents No.1 and 2
10. Section 84(2) of the Trade Marks Act prescribes that the Coram of the
IPAB shall consist of one Judicial Member and one Technical Member. The
Technical Member of the Appellate Board is required to have the
qualifications specified in Section 116(2) of the Patents Act. In view of the
above, the Chairman alone is not empowered under the statute to hear the
appeals alone. The process for appointment of Technical Member of IPAB
has already been initiated. Hence, the interim arrangement suggested by the
petitioner is not warranted.
Submissions of Mr. J.P. Sengh, Senior Advocate as amicus curiae
11. Union of India has miserably failed to uphold the right to access to
justice of the citizens of India with respect to the adjudication of Intellectual
Property disputes in the country. Vacancies have not been filled up for
several years which has crippled the functioning of the IPAB.
12. Some of the statistics from the status report which bring forth the
gravity of the issue at hand are as follows;
a. A total 3935 cases are pending adjudication in the IPAB across all
benches.
W.P.(C) 5571/2019 Page 12 of 32
b. The IPAB has not heard even a single case pertaining to copyrights,
since its inception in 2003, due to the sheer failure of the Government
in appointing a Technical Member for copyrights.
c. The post of the Chairman of the IPAB lay vacant for a total of almost
3 years since the inception of IPAB in 2003.
d. The post of the Vice-Chairman of the IPAB lay vacant for a total of
almost 7 years and is currently vacant since the last 5 years.
e. The post of Technical Member for Trade Marks has been lying vacant
for the last 6 months.
f. The post of Technical Member for Patents has been lying vacant for
the last more than 2 years. As a result, no effective hearing of the
appeals relating to Patents has taken place since the last 2 years.
13. The inaction on the part of the Union of India in filling up the
vacancies in IPAB is glaring from the face of the record. This has led to a
large number of litigants approaching this Court for urgent hearings. In
many cases such as the one at hand, the appeals filed by the litigants are not
even being numbered. This is in complete violation of the right to access to
justice as guaranteed under Article 21 of the Constitution of India, according
to the dictum of the Constitution Bench of the Supreme Court in the case of
Anita Kushwaha v. Pushap Sudan, (2016) 8 SCC 509.
14. The major reason for the current crisis of pendency and non-
functioning of the IPAB is owing to vacancies not being filled up.
15. The other major reason for the high pendency and the non-functioning
of the IPAB is owing to the stringent condition in Section 84 of the Trade
Marks Act, 1999. Section 84(2) of the Act inter-alia states that a Bench of
the IPAB „shall‟ consist of one Judicial Member and one Technical Member.
W.P.(C) 5571/2019 Page 13 of 32
Thus, as a corollary this Section makes it imperative for an appeal to the
IPAB to be heard by a Bench of at least two members.
16. Section 84 makes it virtually impossible for the IPAB to dispose of
cases in the absence of the required Coram, as is the case presently. What is
peculiar about section 84 of the Trade Marks Act, 1999 is that it is at
contrast with similar provisions, lying down composition of Tribunals, in
several other Acts, which allow those Tribunals to sit in single benches and
decide matters.
17. This is not the first time such a crisis has arisen in context of
composition of a Tribunal. The Tribunals have time and again faced such a
crisis of non-functioning due to non-filling up of the vacancies. But the
approach to fix such a crisis shouldn‟t be the kind to look for a temporary
solution but one which aims at resolving the issue once and for all.
18. A permanent and more pragmatic solution to the non-functioning of
the IPAB is not only to expedite the process of the filling up of the vacancies
in the Tribunal but to amend the Trade Marks Act to bring in the provisions
for the IPAB to sit in Single Benches apart from the Bench of two members
(One Judicial and one Technical), as currently prescribed under the Act.
19. Cue must be taken from the Consumer Protection (Amendment) Bill,
2001 which brought in a change to the scheme of the Consumer Protection
Act, 1986 by adding Sub-Section (1B) to Section 16 and Sub-Section (1A)
to 20, which empowers the President of the State Commission/National
Commission to constitute a Bench with one or more members. The object
and reasons of the Amending Bill of 2001, which was then passed as an Act,
clearly mentions to facilitate quicker disposal of consumer cases as one of
W.P.(C) 5571/2019 Page 14 of 32
the object/reason for amending Section 16 and Section 20 of Consumer
Protection Act.
20. Further provision ought to be made for employing experts as Ad-hoc
Members till a member is appointed as a Technical Member under the Act,
so as to avoid logjams in the functioning of the Tribunal. For this cue must
be taken from Conference Proceedings of „National Initiative to Reduce
Pendency and delay in Judicial System‟ organized by the Supreme Court
of India which took place on 27-28th July, 2018, wherein one of the solutions
deliberated upon for reduction in the pendency and delay in the Judicial
System was the introduction of the scheme of appointment of Ad-hoc judges
to the Higher Courts of India.
Relevant Provisions
21. Section 84(2) in the Trade Marks Act, 1999
Section 84--Composition of Appellate Board.
(2) Subject to the other provisions of this Act, a Bench shall consist of
one Judicial Member and one Technical Member and shall sit at such
place as the Central Government may, by notification in the Official
Gazette, specify.
Section 115 of the Patents Act, 1970
Section 115 --Scientific advisers.
(1) In any suit for infringement or in any proceeding before a 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 or to inquire and
report upon any such question of fact or of opinion (not involving a
question of interpretation of law) as it may formulate for the purpose.
(2) The remuneration of the scientific adviser shall be fixed by the
court and shall include the costs of making a report and a proper
daily fee for any day on which the scientific adviser may be required
to attend before the court, and such remuneration shall be defrayed
out of moneys provided by Parliament by law for the purpose.
W.P.(C) 5571/2019 Page 15 of 32
Section 116 of the Patents Act, 1970
Section 116 --Appellate Board
(1) Subject to the provisions of this Act, the Appellate Board
established under section 83 of the Trade Marks Act, 1999 shall be
the Appellate Board for the purposes of this Act and the said
Appellate Board shall exercise the jurisdiction, power and authority
conferred on it by or under this Act:
Provided that the Technical Member of the Appellate Board for the
purposes of this Act shall have the qualifications specified in sub-
section (2).
(2) A person shall not be qualified for appointment as a Technical
Member for the purposes of this Act unless he-
(a) has, at least five years held the post of Controller under this Act or
has exercised the functions of the Controller under this Act for at least
five years; or
(b) has, for at least ten years functioned as a Registered Patent Agent
and possesses a degree in engineering or technology or a masters
degree in science from any University established under law for the
time being in force or equivalent; or"
Relevant Judgments
22. In Anita Kushwaha v. Pushap Sudan, (supra) five Judges Bench of
Supreme Court declared the access to justice to be valuable right which
includes effective adjudicatory mechanism. Relevant portion of the said
judgment is reproduced hereunder:-
"29.To sum up: access to justice is and has been recognised as a part
and parcel of right to life in India and in all civilised societies around
the globe. The right is so basic and inalienable that no system of
governance can possibly ignore its significance, leave alone afford to
deny the same to its citizens. The Magna Carta, the Universal
Declaration of Human Rights, the International Covenant on Civil
and Political Rights, 1966, the ancient Roman jurisprudential
maxim ubi jus ibi remedium, the development of fundamental
principles of common law by judicial pronouncements of the courts
over centuries past have all contributed to the acceptance of access to
W.P.(C) 5571/2019 Page 16 of 32
justice as a basic and inalienable human right which all civilised
societies and systems recognise and enforce.
xxx xxx xxx
31. Given the fact that pronouncements mentioned above have
interpreted and understood the word "life" appearing in Article 21 of
the Constitution on a broad spectrum of rights considered incidental
and/or integral to the right to life, there is no real reason why access
to justice should be considered to be falling outside the class and
category of the said rights, which already stands recognised as being
a part and parcel of Article 21 of the Constitution of India. If "life"
implies not only life in the physical sense but a bundle of rights that
makes life worth living, there is no juristic or other basis for holding
that denial of "access to justice" will not affect the quality of human
life so as to take access to justice out of the purview of right to life
guaranteed under Article 21. We have, therefore, no hesitation in
holding that access to justice is indeed a facet of right to life
guaranteed under Article 21 of the Constitution. We need only add
that access to justice may as well be the facet of the right guaranteed
under Article 14 of the Constitution, which guarantees equality before
law and equal protection of laws to not only citizens but non-citizens
also. We say so because equality before law and equal protection of
laws is not limited in its application to the realm of executive action
that enforces the law. It is as much available in relation to
proceedings before courts and tribunal and adjudicatory fora where
law is applied and justice administered. The citizen's inability to
access courts or any other adjudicatory mechanism provided for
determination of rights and obligations is bound to result in denial of
the guarantee contained in Article 14 both in relation to equality
before law as well as equal protection of laws. Absence of any
adjudicatory mechanism or the inadequacy of such mechanism,
needless to say, is bound to prevent those looking for enforcement of
their right to equality before laws and equal protection of the laws
from seeking redress and thereby negate the guarantee of equality
before laws or equal protection of laws and reduce it to a mere
teasing illusion. Article 21 of the Constitution apart, access to justice
can be said to be part of the guarantee contained in Article 14 as well.
W.P.(C) 5571/2019 Page 17 of 32
32. What then is the sweep and content of that right is the next
question that must be answered for a fuller understanding of the
principle and its significance in real life situations.
33. Four main facets that, in our opinion, constitute the essence of
access to justice are:
(i) the State must provide an effective adjudicatory mechanism;
(ii) the mechanism so provided must be reasonably accessible
in terms of distance;
(iii) the process of adjudication must be speedy; and
(iv) the litigant's access to the adjudicatory process must be
affordable.
(i) The need for adjudicatory mechanism
34. One of the most fundamental requirements for providing to
the citizens access to justice is to set up an adjudicatory
mechanism whether described as a court, tribunal, commission
or authority or called by any other name whatsoever, where a
citizen can agitate his grievance and seek adjudication of what
he may perceive as a breach of his right by another citizen or
by the State or any one of its instrumentalities. In order that the
right of a citizen to access justice is protected, the mechanism
so provided must not only be effective but must also be just, fair
and objective in its approach. So also the procedure which the
court, tribunal or authority may adopt for adjudication, must,
in itself be just and fair and in keeping with the well-recognised
principles of natural justice.
(ii) The mechanism must be conveniently accessible in terms of
distance
36. "Access to justice" as a constitutional value will be a mere
illusion if justice is not speedy. Justice delayed, it is famously
said, is justice denied. If the process of administration of justice
is so time-consuming, laborious, indolent and frustrating for
those who seek justice that it dissuades or deters them from
even considering resort to that process as an option, it would
tantamount to denial of not only access to justice but justice
itself. In Sheela Barse case [Sheela Barse v. Union of India,
(1988) 4 SCC 226] this Court declared speedy trial as a facet
of right to life, for if the trial of a citizen goes on endlessly his
right to life itself is violated. There is jurisprudentially no
W.P.(C) 5571/2019 Page 18 of 32
qualitative difference between denial of speedy trial in a
criminal case, on the one hand, and civil suit, appeal or other
proceedings, on the other, for ought we to know that civil
disputes can at times have an equally, if not more, severe
impact on a citizen's life or the quality of it. Access to justice
would, therefore, be a constitutional value of any significance
and utility only if the delivery of justice to the citizen is speedy,
for otherwise, the right to access to justice is no more than a
hollow slogan of no use or inspiration for the citizen."
(Emphasis Supplied)
23. In Election Commission of India v. Dr.Subramaniam Swamy, 1996
4 SCC 104, one of the members of the Commission was under disability to
hear the matter on account of the allegations of bias. The Supreme Court
invoked the Doctrine of Necessity and observed that if the choice is between
allowing biased person to act or to stifle the action altogether, the choice
must fall in favour of the former as it is the only way to promote decision-
making. The Supreme Court held that if the two Election Commissioners are
able to reach a unanimous decision, there is no need for the Chief Election
Commissioner to participate but if the two Election Commissioners are
unable to reach a unanimous decision then the doctrine of necessity may
have to be he invoked and Chief Election Commissioner would be
compelled to express his views so that the majority opinion can be formed,
notwithstanding the allegations of biasness. The relevant portion of the said
judgment is as under:-
"16. We must have a clear conception of the doctrine. It is well settled
that the law permits certain things to be done as a matter of necessity
which it would otherwise not countenance on the touchstone of
judicial propriety. Stated differently, the doctrine of necessity makes it
imperative for the authority to decide and considerations of judicial
propriety must yield. It is often invoked in cases of bias where there is
no other authority or Judge to decide the issue. If the doctrine of
W.P.(C) 5571/2019 Page 19 of 32
necessity is not allowed full play in certain unavoidable situations, it
would impede the course of justice itself and the defaulting party
would benefit therefrom. Take the case of a certain taxing statute
which taxes certain perquisites allowed to Judges. If the validity of
such a provision is challenged who but the members of the judiciary
must decide it. If all the Judges are disqualified on the plea that
striking down of such a legislation would benefit them, a stalemate
situation may develop. In such cases the doctrine of necessity comes
into play. If the choice is between allowing a biased person to act or
to stifle the action altogether, the choice must fall in favour of the
former as it is the only way to promote decision-making. In the
present case also if the two Election Commissioners are able to reach
a unanimous decision, there is no need for the Chief Election
Commissioner to participate, if not the doctrine of necessity may have
to be invoked.
17. We think that is the only alternative in such a situation. We are,
therefore. of the opinion that the proper course to follow is that the
Chief Election Commissioner should call a meeting of the selection
Commission to adjudicate on the issue of disqualification of Ms.
J.Jayalalitha on the groans alleged by Dr.Swamy. After calling the
meeting he should act as the Chairman but then he may recuse himself
by announcing that he would not participate in the formation of
opinion. If the two Election Commissioners reach a unanimous
opinion, the Chief Election Commissioner will have the opinion
communicated to the Governor. If the two Election Commissioners do
not reach a unanimous decision in the Matter of expressing their
opinion on the issue referred to the Election Commission, it would be
necessary for the Chief Election Commissioner to express his opinion
on the doctrine of necessity."
(Emphasis Supplied)
24. In M/s Kwality Restaurant and Ice Cream Co. v. The Commissioner
of VAT, Trade and Tax Department, (2012) 194 DLT 195 (DB), the
Assessee therein had its appeal heard by a two-member Appellate Tribunal
at a time when the Appellate Tribunal comprised of three members. The
hearing of the appeal was more or less concluded and it was at the stage of
W.P.(C) 5571/2019 Page 20 of 32
final arguments when the third member of the Appellate Tribunal joined the
proceedings. An objection was immediately raised by the Assessee therein to
the expansion of the Coram of the Appellate Tribunal to include the Member
(Technical) who had till then been away on account of leave or absence and
had not participated in the hearing. With the Appellate Tribunal negativing
the objection, the Assessee filed a writ petition in this Court questioning the
correctness of the said order of the Appellate Tribunal. This Court took note
of the fact that under Regulation 35(3) of the Appellate Tribunal
Regulations, there can be a situation where the full Coram of the Appellate
Tribunal is not available since one or more members could withdraw on the
ground of conflict of interest vis-a-vis the subject matter of the proceedings
before the Appellate Tribunal. The relevant portion of the said judgment is
reproduced hereunder:-
"8. The Petitioner's grievance is simple enough; it contends that once the
Tribunal - which at the relevant time consisted of two functioning
members, the third having gone on leave- heard its appeals, substantially
and the arguments of the revenue were scheduled, it was not open, mid-
stream, as it were, for a change in composition of that body. Its argument
is of prejudice, since the third member joining the proceeding, does not
have the benefit of hearing its submissions. The revenue's argument is
that the Tribunal is a composite body of three members; whatever its
compulsions in hearing the appeals during the absence of one member,
the moment she returned, there is no irregularity in all the three members
participating in the hearing, so long as the hearing has not concluded. It
also argues that there is no power with the Chairman of the Tribunal to
constitute benches, or hear appeals in composition of less than the full
membership of that body."
The Court further proceeded to observe that the conspectus of the Delhi
Value Added Tax Act, 2004 and the Appellate Tribunal Regulations reveal
W.P.(C) 5571/2019 Page 21 of 32
that an Appellate Tribunal discharges judicial functions. Even if there were
anomalies in the provisions, anything which tends to undermine the public
confidence in the Appellate Tribunal has to be "shunned and wherever
necessary, cured". In the facts and circumstances, the Court passed an order
forbearing the third Member (Technical) from participating in the
proceedings in the appeal in question any further and also directed the
appeal to be disposed of by the Appellate Tribunal comprising two members
who heard it at the first place. This decision underscores that the legislative
intent was that of continuity of the Appellate Tribunal and not its cessation
because of a vacancy in its membership. The relevant portion of the said
judgment is reproduced hereunder:-
9. Facially, the provisions of the Act and Regulations suggest that the
Tribunal, whenever it consists of a plurality of members has to hold
sittings en-banc. However, at the same time, Sections 73 (4) contemplates
a situation where a vacancy might arise in the membership of the
Tribunal. This is not perceived to be an impediment in its functioning or
cause such a hiatus as to require a separate provision, to enable the
existing members to continue with their functioning. Nor does the statute
ordain a minimum quorum for the hearing of appeals. It, therefore,
appears that the statute is neutral about the consequences which follow
in the event of a member's absence from the Tribunal for a temporary
period, as in this case. This aspect is important, because the absence of
any prohibition either in the negative form, enjoining members from
functioning and hearing appeals during the absence of one of them, or
absence of a provision mandating a minimum quorum, implies that the
Legislature did not contemplate a logjam, in the Tribunal's functioning.
The argument of the revenue about a restrictive class of cases which
deals with absence of a member, i.e. in terms of Regulation 35, is
insubstantial. For one, that Regulation is not part of the statute;
secondly, it states an obvious rule, which all members of judicial and
quasi judicial bodies have to follow. Its absence would in no whit
undermine the principle it gives shape to. It would be useful to recollect
that every Tribunal is clothed with incidental and ancillary powers to
W.P.(C) 5571/2019 Page 22 of 32
effectuate its orders, and W.P.(C) 5621/2012 carry out its functions
effectively (Ref. Union of India v Paras Laminates (P) Ltd AIR 1991 SC
696). Thus, a temporary absence of one of the members of the VAT
Tribunal can, by no stretch of the imagination, result in its becoming
dysfunctional, or being unable to function.
xxx xxx xxx
14. In view of the above discussion, this Court hereby directs the Delhi
VAT Tribunal to forbear hearing of Appeal Nos. 81-83/ATVAT/11-12 in
the composition it had on 29-8-2012 and 7-9-2012, and continue the
hearing with the two members (i.e. the Chairman and Mr. D.C. Anand)
according to its previous composition, when the matter was part heard,
and the petitioner's arguments had been concluded, on 27-8-2012. It is
clarified that Ms. Nita Bali, Member (Administrative) shall not
participate in the proceedings; she is however entitled to sit and hear all
other cases in which she was a participant, either before her leave of
absence, or after her re- joining the Tribunal, except in part heard cases
or appeals, like in the present instance."
(Emphasis Supplied)
25. In Talluri Srinivas v. Union of India, Ministry of Corporate Affairs,
2018 SCC OnLine Del 7765, the Division Bench of this Court following
Kwality Restaurant (supra) directed the matters to be heard by four
members whereas the Chartered Accountants Act, 1947 provides the
Appellate Authority to comprise of five members. The relevant portion of
the said judgment is reproduced hereunder:-
"19...The CA Act does prescribe that the Appellate Authority will be a
body constitute of five persons, but does not prescribe and does not fix
a minimum quorum. The statute is silent on the procedure to be
followed and adopted when one or more members cannot participate.
In absence of a provision and stipulation to the contrary, quorum in
such cases is in order and complete when majority of the members are
present and participate. Therefore, if one of the members of the
Appellate Authority for valid and good reason has recused and does
not want to participate, hearing in the appeal can proceed and would
not suffer invalidity on the ground of lack of quorum.
W.P.(C) 5571/2019 Page 23 of 32
20. In the present case no vacancy has arisen which can be filled
up as the said fifth member has neither resigned nor has been
removed. There is no provision in the enactment to fill up "vacancy"
by recusal in a particular case by any other mode. Temporary
absence or recusal of a member in a particular appeal, would not
make the Appellate Tribunal dysfunctional till a new member is
appointed, which as recorded above as per the CA Act is
impermissible....
xxx xxx xxx
33. The rationale behind the Rule is that the litigation cannot be a
non sequitur. In other words, there cannot be a litigation system in
which it is impossible to litigate a given case. It is on the aforesaid
principle that we have examined the statutory provisions of the CA
Act and the effect of recusal of one member of the five-members of the
Appellate Authority and held that recusal will not stall hearing and
decision of the Appeal. Contention of lack of quorum on account of
recusal of one member of the five member Appellate Authority for the
aforesaid reasons fails and is rejected."
(Emphasis Supplied)
26. In Bharat Bijlee Limited v. Commissioner of Trade and Taxes,
(2016) 231 DLT (CN) 2 (DB), the Division Bench of this Court, following
Kwality Restaurant (supra), directed the hearing to be conducted by two
members instead of three members of Appellate Tribunal under Delhi Value
Added Tax Act. The relevant portion of the said judgment is reproduced
hereunder:-
"...17. Turning to Section 73(4) of the DVAT Act, it is seen that the
legislative intent is to ensure continuity of the functioning of the AT even
if a vacancy is caused in the membership of the Act. The wording of
Section 73(4) of the Act makes this position explicit. It states that the
Government will endeavour to fill up the vacancy "as soon as
practicable". It does not say that till such time the vacancy is not filled
up, the AT cannot function as such. In the absence of any prohibition in
the AT functioning as such with the remaining members when a vacancy
W.P.(C) 5571/2019 Page 24 of 32
is caused, it cannot be presumed that an AT with a lesser number of
members than those appointed initially cannot function as an AT.
xxx xxx xxx
20. In Kwality Restaurant & Ice Cream Co. v. Commissioner, VAT
(supra), this Court took note of the fact that under Regulation 35(3) of
the AT Regulations, there can be a situation where the full quorum of the
AT is not available since one or more members could withdraw on the
ground of conflict of interest vis-a-vis the subject matter of the
proceedings before the AT. It was observed by the Court as under:"
21. The Court further proceeded to observe that the conspectus of
the DVAT Act and the AT regulations reveal that an AT discharges
judicial functions. Even if there were anomalies in the provisions,
anything which tends to undermine the public confidence in the AT has to
be "shunned and wherever necessary, cured". In the facts and
circumstances, the Court passed an order forbearing the third Member
(Technical) from participating in the proceedings in the appeal in
question any further and also directed the appeal to be disposed of by the
AT comprising two members who heard it at the first place. The decision
in Kwality Restaurant & Ice Cream Co. v. Commissioner, VAT (supra)
underscores that the legislative intent was that of continuity of the AT
and not its cessation because of a vacancy in its membership.
22. As far as the present case is concerned, the Court finds that it is only
on account of the vacancies created by the removal of the two of the three
members comprising the AT, that the remaining single Member (Judicial)
had to function as AT with effect from 1st August 2013. Since he was the
only member, there was no question of constituting benches by issuing a
notification under Section 73 (9) of the DVAT Act. Also in terms of
Section 73(1) of the DVAT Act, since one or more members could
function as an AT, there was no illegality attached to the single Member
functioning as an AT. This is also in consonance with the legislative
intent behind Section 73 (4) of the DVAT Act which contemplates
continuity of the proceedings before the AT notwithstanding the
vacancies created in its membership.
xxx xxx xxx
29. The Court is of the view that on a collective reading of Section 73(1),
(4) and (9) of the Act together with the AT Regulations, the position that
emerges is that as long as there is only one remaining member of the AT
by virtue of the others being either removed or the vacancies not being
W.P.(C) 5571/2019 Page 25 of 32
filled up, such member can, subject to being otherwise qualified, validly
function as an AT.
xxx xxx xxx
32. The result of the above discussion is that the Court negatives the plea
of the Assessees and holds that the single Member (Judicial) could
validly function as the AT between 1 st August 2013 and 20th July 2014.
Further, even assuming that during the aforementioned period he lacked
jurisdiction, the de facto doctrine would apply and the decisions taken by
him during the said period shall not be invalidated."
(Emphasis supplied)
27. In Radio Next Webcastion Pvt. Ltd. v. Union of India, (2018) 254
DLT 660, this Court held that the absence of Member Technical
(Copyright), does not in any manner impinge upon the jurisdiction of the
Appellate Board as constituted under Section 83 of the Trade Marks Act and
a conjoint reading of Section 11 of the Copyright Act and Section 83 of the
Trade Marks Act clearly indicates that the Appellate Board as constituted
under Section 83 of the Trade Marks Act would also have the jurisdiction to
perform the functions under the Copyright Act as well. The relevant portion
of the said judgment is reproduced hereunder:-
"1. The petitioner has filed the present petition, inter alia,
impugning an Administrative Order dated 16.05.2018 (impugned
order) passed by the Registry of Intellectual Property Appellate Board
(hereafter „the Appellate Board‟) declining to place the petitioner„s
application filed under Section 31D of the Copyright Act, 1957
(hereafter „the Copyright Act‟) before the Appellate Board. The
impugned order indicates that the petitioner„s application is declined
on the ground that there is no technical member (copyright) to place
the application before the Appellate Board and, therefore, till such
time that a technical member (copyright) is appointed, the matters
relating to Copyright Act would not be listed before the Appellate
Board.
2. Ms. Shiva Lakshmi, counsel appearing for the respondents
states that steps are being taken for appointing a technical member
W.P.(C) 5571/2019 Page 26 of 32
(copyright) in terms of Rule 3 of the Copyright Rules, 2013 and states
that advertisement for such posts have been issued and is it expected
that such appointment would be made shortly.
3. Although, a technical member (copyright) has not been
appointed as yet, it is not disputed that the Appellate Board is
functional and is hearing the matters with regard to the Trademarks
Act, 1999 as well as the Patent Act, 1970.
4. The only question that falls for consideration of this Court is
whether the Appellate Board, as presently constituted, has the
jurisdiction to examine matters relating to the Copyright Act.
xxx xxx xxx
10. Having stated the above, it may be apposite for the respondent
to also appoint a member technical (copyright), however, a vacancy
in this regard does not in any manner impinge upon the jurisdiction of
the Appellate Board as constituted under Section 83 of the Trade
Marks Act.
11. A conjoint reading of Section 11 of the Copyright Act and
Section 83 of the Trade Marks Act clearly indicates that the Appellate
Board as constituted under Section 83 of the Trade Marks Act would
also have the jurisdiction to perform the functions under the
Copyright Act as well. There is no dispute that an Appellate Board
has been validly constituted in terms of Section 84 of the Trade Marks
Act and is now functional. Thus, it is also required to "exercise the
jurisdiction, powers and authority conferred on it by or under this Act
the Copyright Act".
12. In the aforesaid view, the impugned order is unsustainable and
is, accordingly, set aside. It is directed that the petitioner's
application be placed before the Appellate Board as is currently
constituted. The Appellate Board shall examine the same in
accordance with law.
13. The petition is disposed of in the above terms. All pending
applications stand disposed of."
28. In Natco Pharma Limited v. Union of India, S.L.P.(C) Nos.1323-
1337/2008, there was no Technical Member in the Intellectual Property
Appellant Board (IPAB). The Supreme Court vide order dated 01st October,
2008 appointed Dr. P. C. Chakraborti, Deputy Controller of Patents &
W.P.(C) 5571/2019 Page 27 of 32
Designs as Technical Member (Patent) of IPAB for hearing the particular
appeal. The relevant portion of the order is reproduced hereunder:-
"A piquant situation has arisen in this case on account of absence of
Technical Member in the Intellectual Property Appellant Board
(IPAB) constituted under the provisions of Section 116 of the Patents
Act, 1970.
On 2nd April, 2007, Central Government appointed
S.Chandrasekaran as Technical Member (Patent) of IPAB vide
notification of even date. On 3rd April, 2007, notification was issued
notifying 2nd April, 2007 as the date for transfer of appeals pending
before any High Court to IPAB. The appeals were transferred to the
IPAB by the High Court vide its order dated 4th April, 2007.
On 16th June, 2007, Misc. Petition Nos.1 and 2 of 2007 were filed by
respondent No.4 herein before IPAB praying for the appointment of
another Technical Member in place of S.Chandrasekaran on the
ground that the said Member had earlier filed an affidavit in the
matter taking a particular position in the dispute which has a direct
bearing on the case in hand.
It is under these peculiar facts and circumstances of the case
and, particularly, in view of the fact that the controversy involved
before IPAB is concerning crystal modification of a N-Phenyl-2-
Pyrimidineamine derivative and since the dispute is regarding
patentability of the process as well as the product that we are of the
view that such complicated disputes need to be resolved by IPAB
which must have a Technical Member in it.
In the above facts and circumstances of this case only and without
making our order a precedent for future cases, we called for a
panel/list of Controllers duly qualified under Section 116 of the
Patents Act, as amended by the Patents (Amendment) Act, 2006.
From that list submitted to us, we have opted for the name of
Dr.P.C.Chakraborti, Deputy Controller of Patents & Designs, who
holds post- graduate degree of M.Sc.(Chemistry) as well as Ph.D.
We, accordingly, direct that all preliminaries will be completed by the
parties in the month of October, 2008 and the IPAB duly reconstituted
under our orders, which would include Dr. P.C.Chakraborti, would
hear and decide the pending Appeal Nos.TA/001/2007/PT/CH to
TA/005/2007/PT/CH preferably in the month of November, 2008. We
W.P.(C) 5571/2019 Page 28 of 32
direct the IPAB to list the above Appeals before it for directions on
3rd November, 2008. The matter will be heard and disposed of on
day- to-day basis.
As a special case, Dr.P.C.Chakraborti will continue to be the Member
of the said Board till the hearing and final disposal of the said
appeals. He will be the Member of the IPAB only for the said
Appeals."
29. In Kudrat Sandhu v. Union Of India, W.P.(C) No(s).279/2017, the
Supreme Court vide order dated 11th May, 2018 extended the term of the
President and the other members of National Consumer Disputes Redressal
Commission (NCDRC) till fresh appointments are made by the Central
Government.
30. In Rojer Mathew v. South Indian Bank Ltd , S.L.P.(C)15804/2017,
the Supreme Court vide order dated 29th May, 2019 extended the term of a
Judicial Member of National Consumer Disputes Redressal Commission by
one year or till the process of fresh appointment is completed, whichever is
earlier.
Discussions and Findings
31. IPAB was established on 15th September, 2003. IPAB has jurisdiction
to deal with the matters under the Patents Act, Trade Marks Act, Copyright
Act and Plant Varieties Protection Act. As per Section 84(2) of the Trade
Marks Act, the IPAB Bench comprises of one Judicial Member and one
Technical Member (Trade Marks). For cases relating to the Patents Act, the
Bench shall comprise of a Judicial Member and a Technical Member
(Patents); for cases relating to the Copyright, the Bench shall comprise of a
Judicial Member and a Technical Member (Copyright) and for cases relating
W.P.(C) 5571/2019 Page 29 of 32
to the Plant Varieties Protection, the Bench shall comprise of a Judicial
Member and a Technical Member (Plant Varieties Protection).
32. This Court is pained to note that no Technical Member (Copyright)
has been appointed till date. The post of Technical Member (Patents) is lying
vacant since 04th May, 2016 whereas the post of Technical Member (Trade
Marks) is lying vacant since 05th December, 2018. IPAB has only one
Technical Member relating to Plant Varieties Protection.
33. About 3935 cases are pending adjudication before IPAB across all its
Benches. However, cases relating to trademarks, copyrights and patents are
not being taken up as there is no Technical Member relating to those
specialties. The term of a patent is only 20 years and in many cases, due to
lack of Coram, the patents have expired and the matters have become
infructuous and rights of parties have been severely prejudiced.
34. Section 84(2) of the Trade Marks Act provides that the IPAB Bench
shall comprise of a Judicial Member and a Technical Member. However,
the Statute is silent on the procedure to be followed and adopted when there
is a vacancy of a Technical Member or a Technical Member is there but he
cannot participate.
35. This Court is of the view that the doctrine of necessity has to be
invoked in the present case. The legislative intent is of the continuity of
IPAB and not its cessation because of a vacancy in its technical membership.
If the post of the Technical Member is lying vacant, IPAB can proceed to
hear the urgent matters and the orders passed would not suffer invalidity on
the ground of lack of Coram.
36. Applying the doctrine of necessity and following the principles laid
down in Election Commission of India (supra), Kwality Restaurant (supra),
W.P.(C) 5571/2019 Page 30 of 32
Talluri Srinivas (supra) and Bharat Bijlee Limited (supra), this Court holds
that the Chairman, IPAB and the Technical Member (Plant Varieties
Protection) are competent to hear the urgent matters relating to the Patents,
Trade Marks and Copyright till the vacancies of other Technical Members
are filled up and the orders passed would not suffer invalidity on the ground
of lack of Coram.
37. If the Technical Member (Plant Varieties Protection) is not available
for any reason or recuses, Chairman, IPAB can proceed to hear the urgent
matters.
38. In Patent matters, the Chairman, IPAB is at liberty to take the expert
opinion of a scientific advisor from the panel of scientific advisors notified
under Section 115 of the Patents Act.
39. The Chairman, IPAB shall ensure compliance of these directions to
ensure continuity of the functioning of the IPAB.
Conclusion
40. The Chairman, IPAB and the Technical Member (Plant Varieties
Protection) are directed to take up the stay application of the petitioner for
hearing in terms of this order and endeavor to decide the same within a
period of six weeks.
41. The Chairman, IPAB and the Technical Member (Plant Varieties
Protection) are at liberty to take up other urgent matters relating to the
Patents, Trade Marks and Copyright.
42. List for directions on 20th August, 2019.
43. The petitioner‟s submission mentioned in paras 8.2 and 8.3 and the
suggestions of the learned amicus curiae shall be considered on the next date
of hearing.
W.P.(C) 5571/2019 Page 31 of 32
44. Copy of this judgment be sent to respondent No.3.
45. Copy of this judgment be given dasti to counsel for the parties under
signatures of Court Master.
J.R. MIDHA, J.
JULY 08, 2019 ak W.P.(C) 5571/2019 Page 32 of 32