[Vidhispeaks] Setting up an IP Division in High Courts: Delhi High Court bites the bullet

By Rahul Bajaj

As per the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 (later replaced by an Act of the same name), five appellate tribunals were abolished, including the Intellectual property Appellate Board (IPAB). Cases pending before such tribunals were transferred to High Courts. Consequently, the Delhi High Court issued apress release, creating an IP division (IPD) in the High Court.

The press release indicates that around 3,000 matters will get transferred from the IPAB to the High Court’s IPD. It further references the constitution of a committee, consisting of Justices Pratibha Singh and Sanjeev Narula (presumably) to create the conceptual and procedural road map for the creation of the IPD.

The IPD is empowered to hear all original proceedings concerning the principal Intellectual Property (IP) statutes, writ petitions, civil miscellaneous matters, regular first appeals and first appeals against orders, relating to IPR disputes, other than those to be heard by Division Benches. Further, as the press release points out, the setting up of the IPD is in line with the global best practice of creating an IP court/division, such as in UK and Japan.

Pertinently, the abolition of the IPAB marked the vindication of a longstanding demand that the IPAB be scrapped. Illustratively, one of India’s foremost IP experts, late Professor Shamnad Basheer, had argued more than a decade ago that it would be wise to scrap the IPAB and to transfer its functions to a high court in a metropolitan city. In a chapter in a study commissioned by the International Centre for Trade and Sustainable Development, he had argued that it would be desirable to substitute the IPAB with a specialized bench in existing High Courts.

This, he had reasoned, would: [a] facilitate the cultivation of specialized expertise; and [b] ensure the adjudication of IP disputes by judges with a range of expertise in different areas of the law, thus contributing to the emergence of a balanced IP jurisprudence.

Justice Prabha Sridevan, a retired judge of the Madras High Court and former IPAB Chairperson, has been one of the most vocal proponents for the scrapping of the IPAB and for the transfer of its functions to High Courts. In an article in the Hindu in 2013, she had mounted a sustained critique of the IPAB, arguing that it lacks the requisite independence and expertise to effectively adjudicate on IP disputes.

Responding to the claim that the IPAB’s continued existence is necessary to ensure the adjudication of IP disputes by judges possessing technical expertise, she had argued that the necessary technical inputs can always be provided by members of the bar. On this basis, she had concluded that, if the IPAB is not made ‘judicially and institutionally independent and empowered’, its jurisdiction would be better exercised by specialized benches in High Courts.

In a reiteration of the same position seven years later, she had argued that Constitutional Courts – in this case the High Courts – are alone equipped to account for the public interest implicated by IP disputes. She had also noted that High Courts have the power to adopt an inquisitorial approach, unlike tribunals which decide IP disputes purely according to the adversarial approach.

Further, in May 2020, Prashant Reddy and I had made a representation to the Union Minister for Commerce and Industry, Piyush Goyal, urging him to shut down the IPAB. We had argued that the IPAB was a victim of its own birth pangs, given that the rationale for its creation and its jurisdiction were unclear from the beginning. Further, we had outlined a series of arguments for shutting it down. These were, in brief:

- Refutation of the empirically flawed premise that IP adjudication always requires technical expertise on the bench;

- The prolonged period for which the IPAB has remained dysfunctional;

- The spectre of overlapping litigation between the IPAB and regular courts, given the conceptually messy division of functions between them;

- Infrastructural constraints in the functioning of the IPAB and lack of uniform physical access to the IPAB, given that it is only located in two cities; and

- A spate of lawsuits concerning the functioning of the IPAB.

Given all of these factors, we had argued that the functions of the IPAB should be transferred to the commercial divisions of High Courts. The Ministry of Commerce had forwarded this representation to the Controller General of Patents, Designs and Trademarks asking for his comments on the petition. The Controller General had agreed with most of our suggestions and had concluded that stakeholder consultations be conducted to take the idea forward. This petition may very well have been one of the final straws that sealed the fate of the IPAB.

As Eva Bishwal points out, the two key issues that the IPD will have to deal with are: [a] a heavy backlog of cases, given that it will be seized of all the cases pending before the IPAB; and [b] absence of technical expertise on the bench.

She proposes a range of possible solutions to deal with the latter problem. These include: [a] making experts part of the bench hearing disputes; or [b] the bench commissioning reports from technical experts; or [c] enabling parties to commission experts who submit their reports.

On December 12, 2021, the High Court finalized the Delhi High Court Intellectual Property Rights Division Rules, 2021. The following features stand out in the Rules. First, apropos the need for expert inputs, the Rules allow for the recording of expert testimony using a procedure called hot tubbing. In hot tubbing, experts of the parties give their inputs in each other’s presence and in front of the judge who puts the same questions to all experts present. Further, the IPD is empowered to take inputs from experts in the computation of damages.

Crucially, the IPD is empowered to maintain a panel of experts whose inputs can be sought as per the IPD’s discretion. Expert inputs are only of persuasive value. In the same vein, in addition to usual law researchers, every IPD judge is empowered to additionally appoint two law researchers to provide techno-legal inputs. These law researchers may possess a degree in any technical field, specialization in any IPR subject matter or experience in the field of intellectual property. Hopefully, this framework will ensure that the IPD’s jurisprudence is not found wanting in terms of technical robustness.

Second, in an admirable bid to streamline the process of oral arguments, Rule 33 empowers the court to direct the filing of written submissions in advance or to fix specific time slots and designate restricted time limits for oral arguments. Given the existing consensus on the need to make the process of oral argumentation more streamlined and disciplined in India, these Rules could herald a welcome shift.

Third, very crucially, as Banana IP notes, the Rules are the first of their kind in India that account for the needs of disabled lawyers and litigants appearing before the court. Specifically, Rule 36 states that all filings before the IPD have to be in a Portable Document Format with Optical Character Recognition (OCR) enabled with image resolution of at least 300 dots per inch (dpi). This will make filings enormously more accessible to persons with disabilities.

Further, the IPD is empowered, suo motu, or on receiving an application from a party, to grant any reasonable accommodation to a person with a specified disability to participate in the proceedings before the IPD. One hopes that this thrust on accessibility and reasonable accommodation by the IPD will get replicated in the practice directions of courts across India.

As per the Delhi High Court’s roster that is currently in force, the judges sitting on the IPD bench are Justices Suresh Kumar Kait, Yogesh Khanna, C Hari Shankar, Sanjeev Narula and Asha Menon. Let us hope that the IPD experiment prompts the emergence of a robust IP jurisprudence that prioritizes the public interest and is founded on rigorous reasoning and well thought out conclusions.

Rahul Bajaj is a Senior Resident Fellow at Vidhi Centre for Legal Policy.

Vidhispeaks is a fortnightly column on law and policy curated by Vidhi. The views expressed are of the fellow and do not reflect the views of Vidhi or Bar & Bench.