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2019 Supreme(Del) 1536
IN THE HIGH COURT OF DELHI
J.R. MIDHA, J.
Mylan Laboratories Limited - Petitioner
Versus
Union of India & Others - Respondent
W.P.(C).No. 5571 of 2019 & C.M. Appln. No. 24540 of 2019 & 26833 of 2019
Decided On : 08-07-2019
Advocate Appeared:
For the Petitioner:H. Rajeshwari, Advocate.
For the Respondents:Gaurang Kanth, CGSC, Santosh Kr. Pandey, GP, N.K. Ramesh, Deputy Registrar, IPAB, S.S. Singh, Deputy Controller, J.P. Sengh, Rajiv Nayar, Senior Advocate (Amicus Curiae).
The doctrine of necessity can be invoked to ensure the continuity of a tribunal's functioning even in the face of vacancies, to prevent a stalemate in decision-making and to promote the administration of justice.
Headnote:
PATENTS - PRE-GRANT OPPOSITION - APPEAL - STAY - URGENCY - VACANCY OF TECHNICAL MEMBERS IN INTELLECTUAL PROPERTY APPELLATE BOARD (IPAB) - DOCTRINE OF NECESSITY - CHAIRMAN AND TECHNICAL MEMBER (PLANT VARIETIES PROTECTION) TO HEAR URGENT MATTERS - SCIENTIFIC ADVISOR TO ASSIST IN PATENT MATTERS.
Fact of the Case:
Petitioner challenged the order of the Deputy Controller of Patents and Designs dismissing the pre-grant opposition filed by the petitioner and granting the patent to respondent No.3 in respect of ‘Methods of Evaluating Peptide Mixtures’. Petitioner filed an appeal along with a stay application before IPAB, which was not taken up for hearing due to the vacancy of Technical Members in IPAB.
Finding of the Court:
The court noted the long-standing vacancies in the IPAB, particularly the Technical Member (Patents) since 2016 and the Technical Member (Trade Marks) since 2018, resulting in a logjam of cases. The court observed that the strict requirement of a Bench comprising one Judicial Member and one Technical Member under Section 84(2) of the Trade Marks Act made it virtually impossible for the IPAB to dispose of cases in the absence of the required Coram.
Issues: Whether the doctrine of necessity could be invoked to address the non-functioning of the IPAB due to vacancies in Technical Member positions.
Ratio Decidendi: The court held that the doctrine of necessity could be invoked to ensure the continuity of the IPAB's functioning. It relied on precedents such as Election Commission of India v. Dr. Subramaniam Swamy, Kwality Restaurant and Ice Cream Co. v. The Commissioner of VAT, Talluri Srinivas v. Union of India, and Bharat Bijlee Limited v. Commissioner of Trade and Taxes, which emphasized the need to prevent a stalemate in decision-making due to vacancies or bias. The court opined that if the choice was between allowing a biased person to act or stifling the action altogether, the choice must fall in favor of the former.
Final Decision: The court directed the Chairman, IPAB, and the Technical Member (Plant Varieties Protection) to hear urgent matters relating to Patents, Trade Marks, and Copyright till the vacancies of other Technical Members were filled up. The court also permitted the Chairman, IPAB, to take the expert opinion of a scientific advisor from the panel of scientific advisors notified under Section 115 of the Patents Act in Patent matters. The court listed the matter for directions on a future date to consider the petitioner's suggestions and the amicus curiae's submissions.
JUDGMENT :
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 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 04th 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 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 21st 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 Techni
