Delhi High Court
Novartis Ag vs Union Of India & Ors on 23 October, 2019
$~62
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 23rd October, 2019
+ W.P.(C) 11346/2019
NOVARTIS AG ..... Petitioner
Through: Mr. Hemant Singh, Ms. Mamta Jha,
Dr. Shilpa Arora, Mr. Ankit Arvind &
Mr. Rohan Krishnan, Advocates (M-
9599480570)
versus
UNION OF INDIA & ORS ..... Respondents
Through: Mr. Waize Ali Noor, Advocate for R-
1 to 3 (M-8527837602)
Mr. Sanjeev Sindhwani, Sr. Advocate
with Ms. Rajeshwari H., Mr. Sai
Prasharan, Mr. Ansari, Ms. Swapnil
Gauri & Mr. Tahir, Advocates for R-4
(M-9897905254)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
CM APPL. 46770/2019 (for exemption)
1. Allowed, subject to all just exceptions. Application is disposed of.
W.P.(C) 11346/2019 & CM APPL. 46769/2019
2. The present petition has been filed by the Petitioner as its Appeal
against the order of the Patent office dated 16th August 2019, by which the
patent granted to it in respect of the drug `Ceritinib' was challenged before
the Intellectual Property Appellate Board (hereinafter, "IPAB") is not being
heard as the said Tribunal is not functional.
3. The petition under Article 227 has thus been filed under extraordinary
circumstances as the functioning of the IPAB has come to a complete
standstill, owing to the fact that the Chairman has demitted office and only
one technical member is available.
4. The IPAB established under Section 83 of the Trade Marks Act 1999
is the Appellate Board under Section 116 of the Patents Act, 1970
(hereinafter, "Patents Act") for hearing appeals against orders passed by the
Patent office as also revocation petitions etc., The Bench of the Appellate
Board, for any particular matter, has to consist of one judicial member and
one technical member. Sections 84 of the Trade Marks Act and 116 of the
Patents Act are set out below:
"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. ...
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;"
5. As of today, there are no judicial members functioning in the IPAB.
There is also only one technical member, as per ld. counsel for the parties.
6. The IPAB is a specialized forum which was constituted under the
Trade Marks Act and the Patents Act in order to ensure expeditious
disposals of intellectual property matters. The manner in which the IPAB
has been functioning during the last over 15 years shows that at every stage,
there has been delay in the appointments being made to the IPAB, both of
judicial members and technical members. Further, adequate infrastructure
and autonomy is also not granted to the IPAB in order to make its
functioning efficient and smooth. The statement of objects and reasons when
the Trade Marks Act was amended, clearly records that the purpose of the
IPAB is for speedy disposal of appeals and rectification applications, which
at that time was jurisdiction which was vested in the High Courts. However,
this purpose has been completely set at naught owing to the manner in which
the IPAB has been functioning since the time it has been constituted.
7. The Trade Marks Act was notified on 15th September, 2003. The
provisions relating to the Appellate Board were also notified with effect
from the said date. Thus, more than 16 years have passed since the IPAB has
been constituted. However, the process of functioning of the IPAB has not
been streamlined. Under these circumstances, some emergent steps need to
be taken by the Government to ensure that the IPAB functions in an efficient
and smooth manner for the purpose for which it has been constituted.
8. Accordingly, issue notice to Ms. Maninder Acharya, ld. ASG, to seek
instructions as to the following:
i) Total number of cases pending before the IPAB;
ii) Conditions of appointment and Status of appointment of
Chairperson of IPAB;
iii) Status of appointment of technical members of IPAB;
iii) Financial autonomy given to IPAB;
iv) Recruitment of staff of IPAB and processes thereof;
9. Mr. Waize Ali Noor, ld. counsel for the Union of India, is directed to
communicate this order to the ld. ASG, as also the Secretary,
Department for Promotion of Industry and Internal Trade (DPIIT).
10. List on 24th October, 2019.
11. A copy of this order be given dasti under signature of the Court
Master.
PRATHIBA M. SINGH
JUDGE
OCTOBER 23, 2019
Rahul
