The Delhi High Court has directed the Intellectual  Property Appellate Board (IPAB) to take up urgent Patent and trademark matters. The Court also held that also held that the Chairman, IPAB and the Technical Member (Plant Varieties Protection) can hear the urgent matters relating to the Patents, Trade Marks and Copyright till the vacancies of other Technical Members are filled up.

Mylan Laboratories Limited challenged the order dated 14th March, 2019 passed by the Deputy Controller of Patents and Designs whereby the Controller dismissing the pre-grant opposition filed by Mylan in an appeal before the Intellectual  Property Appellate Board (IPAB).  The petitioner approached the Delhi High Court for urgent hearing of the stay application as IPAB is not functioning because there is no Technical Member (Patents) since 04th May, 2016.

During the proceedings the Delhi High Court directed vide its order dated 21st May, 2019, the Deputy Registrar of IPAB to file status report of vacancy position of Technical members of IPAB.  In response to said direction, status report was filed by Deputy Registrar of IPAB on 24th May, 2019 stating that post for Technical Member (Patent) and Technical Member (Trademark) has been lying vacant since 05th December, 2018 and 4th May, 2016 respectively. Whereas no Technical Member was appointed for Copyright related matters. However, said report stated that Technical member relating to Plant Varieties Protection has already been appointed.

The High Court cited the stringent condition of appointment of bench comprising Judicial Bench and one Technical member for functioning of IPAB under Section 84 of Trademark Act, thereby imposing mandatory condition of appeal to be heard by a Bench of at least two members. Court compared said provision with similar provisions laying down the composition of other Tribunals, which allow those Tribunals to sit in single Benches for deciding matters. However, the Court analysed that the statute (TM Act, 1999) is silent with respect to the procedure to be followed and adopted in case of a vacancy of a Technical Member or non-participation of a Technical Member.

 The High Court cited various judgements1 and invoked Doctrine of Necessity to hold that lack of availability of full quorum cannot be a ground for cessation of Bench and further underscored the legislative intent of continuity of Appellate Tribunal (IPAB).  The Court held that:-

• Even if post of Technical Member is lying vacant, IPAB can proceed to hear urgent matters and orders passed in such matters cannot be invalidated on the ground of lack of Coram.
• Further, the Court also held that the Chairman, IPAB and the Technical Member (Plant Varieties Protection) can hear the urgent matters relating to the Patents, Trade Marks and Copyright till the vacancies of other Technical Members are filled up.
• If the Technical Member (Plant Varieties Protection) is not available for any reason or recuses, the Chairman, IPAB can proceed to hear the urgent matters.
• For Patent matters, the Chairman, IPAB is at liberty to take the expert opinion of a scientific advisor from the panel of scientific advisors notified under Section 115 of the Patents Act.