Delhi High Court in its recent judgement opined that the “doctrine of necessity” can be invoked to hear urgent matters under IP laws. This case deals with the writ petition filed by Mylan Laboratories (hereinafter referred as Mylan) asking for a stay on the order passed by Deputy Controller of Patents and Design against them. Mylan has to approach the Delhi HC due to the vacant seats of appropriate officers at the Intellectual Property Appellate Board (IPAB) and hence Mylan challenged that the previous order passed against it cannot be heard. Brief facts of the case are as follows:
- Mylan challenged the order passed by the Deputy Controller of Patents and Designs, dismissing the pre-grant opposition filed by Mylan and granting the patent in respect of ‘Methods of Evaluating Peptide Mixtures’ to the respondent.
- On 17th May 2019 Mylan filed an appeal with the IPAB along with stay application.
- Mylan approached the single judge of Delhi High Court for urgent hearing of his stay application as the IPAB was not functioning due to non-availability of Technical Member (Patents) since May 4, 2016.
- After this, on 21st May 2019 the Court directed the Deputy Registrar to file a status report regarding the vacancies at IPAB.
- On 24th May, 2019, Deputy Registrar submitted a report according to which a total of 3,935 cases are pending before the IPAB across all its benches due to vacancies.
- Further as per this report the post of technical member for patents and trademarks have been vacant since May 4, 2016 and December 5, 2018, respectively. Moreover, no technical member for copyright has been appointed till date.
Issues
The core issue involved in this case was whether the Chairman of IPAB can hear matters in the absence of a technical member.
Arguments
- By Plaintiff i.e., Mylan
- Mylan contended that the available technical member i.e., of plant varieties protection should hear pending patent matters along with the Chairman of IPAB.
- They argued that as per Section 115 of the Patents Act, 1970 a scientific advisor should be appointed to adjudicate pending disputes.
- They contended that presence of a technical member is necessary to dispose of matters as per Section 116 of the Patents Act, 1970 which deals with the requirement and appointment of a technical member.
- They also contended that the Chairman should hold the office till his successor is appointed by the government.
- They further argued that the doctrine of necessity must be invoked to hear urgent matters and the orders passed should not suffer invalidity due to lack of quoram.
- By Union of India
- The Chairman isn’t empowered to hear appeals alone, with technical member who is qualified under Section 116(2) of Patents Act.
- They contended that appointment of technical member has been initiated hence; there is no need for interim measures.
In this case the court had appointed amicus curiae to put forth its submissions as to the status of the cases pending before the IPAB and provide its suggestions.
Submission by Amicus Curiae
- It suggests that for filling up of vacancies on a fast track basis, the Trade Marks Act should be amended to allow single-member benches along with division benches.
- It also suggested the appointment of Ad-hoc members to fill in vacancies to avoid pendency, which is a suitable solution to resolve the pending cases.
Judgement
Court relying on various judgements held that:
“On 8th July 2019 the Hon’ble Delhi High Court ordered the Chairman, IPAB and the technical member of the plant varieties protection to hear the stay application filed by Mylan and to dispose it off within six weeks. The court further clarified that the Chairman, IPAB and Technical Member are at the liberty to hear urgent matters under the IP Laws i.e., Trade Marks, Patents and Copyright. The single judge of Delhi High Court invoked the doctrine of necessity. It held that the legislative intent is of the continuity of the IPAB and not its cessation because of a vacancy in its technical membership. It further said that the orders passed would not suffer invalidity on the ground of lack of quorum. The Chairman, IPAB is at liberty to proceed with hearing an urgent matter, even in the absence of a Technical Member or he can take the opinion of a scientific expert as has been notified under section 115 of the Patents Act.”
This is a surprising decision given by the Delhi High Court on several grounds. The doctrine of necessity, which the Court applied in this case, is an exception to the rule of “Official Bias”. The legislative intent is not only that of adjudication, but that of correct adjudication supported by the necessary expertise. The provisions of all the intellectual property laws very clearly mandate the requirement of a Technical Member for the IPAB. The legislative intent here is that of the need for technical expertise and efficient adjudication. Ideally, the Court should have directed the executive machinery to appoint the requisite technical members immediately, instead of directly stepping into the shoes of the executive.
By: Runjhun Sharma, School of Law, Mody University
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