INTELLECTUAL PROPERTY APPELLATE BOARD (IPAB)-INDIA

Establishment of Appellate Board

The Government of India constituted the Intellectual Property Appellate Board ("IPAB") on September 15, 2003 to hear and adjudicate the appeals against the decisions of the Registrar under the Indian Trade Marks Act, 1999 and the Indian Geographical Indications of Goods (Registration and Protection) Act, 1999.
The IPAB has since April 2, 2007 been extended to Patent law and is now authorized to hear and adjudicate upon appeals from most of the decisions, orders or directions made by the Patent Controller. ("Controller") Also vide a Notification all pending appeals from Indian High Courts under the Patents Act were to be transferred to the IPAB from April 2, 2007.

Qualifications for appointment as Chairman, Vice-Chairman, or other Members

Chairman:
He must be a judge of high court or has held the office of Vice Chairman for at least two years.

Vice-Chairman:
He must have held the office of a judicial Member or a technical member or has been a member of the Indian Legal Service and has held a post in Grade I of that Service or any higher post for at least five years.

Judicial Member:
He must have been a member of the Indian Legal Service and must have held the post in Grade 1 of that Service for at least three years; or has, for at least ten years, held a civil judicial office.

Technical Member:
He must have exercised functions of a tribunal for at least ten years and has held a post not lower than the post of a Joint Registrar for at least five years; or has been an advocate of a proven specialized experience in trade mark law for at least ten years.

The Chairman, Vice-Chairman and every other Member is appointed by the President of India and no appointment of a person as the Chairman is made without consultation with the Chief Justice of India.

Term of office of Chairman, Vice-Chairman and other Members

The Chairman, Vice-Chairman or other Members has a term of five years from the date on which he enters upon his office or;

• In the case of Chairman and Vice-Chairman, the age of sixty-five years; and
•   In the case of a Member, the age of sixty-two years, whichever is earlier.

Jurisdiction of the IPAB

Every appeal to the decision of the Controller to the IPAB must be made within 3 (three) months from the date of the decision, order or direction, as the case may be, or within such further time as the IPAB may permit, along with the prescribed fees.

The IPAB has appellate jurisdiction against the decision of the Controller or Central Government of India in matters pertaining to:

• Any decisions related to inventor names
• Any directions given to co-owners of the patent
• Any decisions related to Patent of Addition
• Any orders relating to divisional application
• Any orders relating to dating of application
• Refusal of application for failure to comply with any provisions of the Act
• Any decisions relating to anticipation
• Any decisions and cases of potential infringement
• In respect to an correction of clerical errors
• Any decisions related to compulsory license of a patent
• Any decisions related to revocation of patent for non-working
• Any decisions relating to substitution of applicants
• Any decision in respect to any amendment/revocation of patent
• Any decisions related to amendment of application and specification
• Any decisions related to restoration of lapsed patents
• Any decisions related to surrender of patents
• In respect to revocation of patents to satisfy public interest
• In respect to any registration of patent assignments

Exceptional case:

According to the IPAB (Procedure) Rules, 2003 ("Rules") that makes an exemption in respect to the orders passed by Central Government of India in regards to an inventions pertaining to defense purposes, including directions of secrecy in respect of such inventions, revocation if the patent is contrary to prejudicial to public interest, or pertains to atomic energy, from the purview of appeal to the IPAB.

An order of the controller granting an extension of time under any provision of the Patent Act 1970 is also not appealable.

Contents of memorandum of appeal

Every memorandum of appeal which is filed under the Act must contain the grounds of appeal without any argument or narrative, under distinct heads and the grounds must be numbered.

 Documents to accompany memorandum of appeal

• The memorandum of appeal (in triplicate) along with two copies (at least one of which shall be certified copy) of the order of Division Chief against which the appeal is filed;
• If the parties to the appeal are being represented by an agent, documents authorizing him to act as such agent, and if represented by a local practitioner, a duly executed Vakalatnama must also be submitted.
• Where a company is being represented by any of its Officers to act as Presenting Officer before the Appellate Tribunal, the document authorizing him to act as Presenting Officer must be submitted.

 Powers and functions of the Registrar

The Registrar has the custody of the records of the Appellate Tribunal, The official seal is kept in the custody of the Registrar; other than any general or special direction by the presiding officer, only the registrar can affix the seal of the Appellate Tribunal  Subject to any general or special direction by the Presiding Officer, the seal of the Appellate Tribunal  shall not be affixed to any order, summons or other process and to any certified copy issued by the Appellate Tribunal without the registrar’s authority.

Additional powers and duties of Registrar

• Receives all appeals and other documents;
• Decides any question arising out of the scrutiny of the appeals before they are registered;
•  Require any appeal presented to the Appellate Tribunal to be amended in accordance with the rules;
• To issue notice regarding the date of hearing of the appeal as directed by the presiding officer
• Directs any formal amendment of records;
• Orders grant of copies of documents to parties to proceedings;
• Grants leave to inspect the record of Appellate Tribunal;
• Disposes of all matters relating to the service of notices or other processes, application for the issue of fresh notice or for extending the time for or ordering a particular method of service on a respondent including a substituted service by publication of the notice by way of advertisements in the newspapers;
• To requisition records from the custody of any court or other authority.