Chapter XIX: Appeals to the Appellate Board
CRITICAL CONTEXT: The Abolition of the Appellate Board (IPAB)
The sections in this Chapter describe the “Appellate Board” (the Intellectual Property Appellate Board, or IPAB), which was a special tribunal created to hear all appeals against the Patent Office.
In 2021, the Indian government abolished the IPAB.
Therefore, as you read this chapter, you must replace “Appellate Board” with “High Court” in your mind. All powers, functions, and appeals that this Act gave to the Board are now handled directly by India’s High Courts.
Section 116: Appellate Board. ( omitted )
This section (now historic) established the Board and its members.
- (1) …the Appellate Board established under section 83 of the Trade Marks Act, 1999 shall be the Appellate Board for the purposes of this Act…
- Plain English: The law didn’t create a separate “Patent Appellate Board.” It simply stated that the same specialized IP tribunal that handled Trade Mark disputes would also handle all Patent disputes.
- Proviso: …the Technical Member of the Appellate Board… shall have the qualifications specified in sub-section (2).
- Plain English: The law required that when the Board was hearing a patent case, it couldn’t just have legal judges. It also had to include a “Technical Member”—a subject-matter expert—who met specific patent-related qualifications.
- (2) A person shall not be qualified for appointment as a Technical Member… unless he-
- (a) has, at least five years held the post of Controller… or has exercised the functions of the Controller… 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…
- Plain English: This laid out the strict requirements for the expert judge (Technical Member). To qualify, a person had to be either:
- (a) A former head of the Patent Office (a “Controller”) for at least 5 years.
- (b) A highly experienced patent agent (at least 10 years) who also had a formal degree in science or engineering.
- Real-world Example: A company was appealing a complex biotech patent decision. The appeal would be heard by a legal judge and a Technical Member, who might be, for example, a person with 12 years of experience as a patent agent and a Ph.D. in microbiology. This ensured the judge had technical expertise on the panel.
- (c) [Omitted]
Section 117: Staff of Appellate Board.
- (1) The Central Government shall… provide the Appellate Board with such officers and other employees as it may think fit.
- (2) The salaries and allowances and conditions of service… shall be such as may be prescribed.
- (3) The officers and other employees… shall discharge their functions under the general superintendence of the Chairman…
- Plain English: This is a simple administrative section. It stated that the Appellate Board would have its own government-funded staff (like clerks, registrars, and administrative officers), who would be paid by the Central Government and report to the Board’s Chairman.
- Modern Context: Since the Board is gone, this section is no longer applicable. The High Courts use their own existing staff and registry.
Section 117A: Appeals to Appellate Board. ( Now Highcourt)
This is a very important section that lists what you can appeal, and when.
- (1) Save as otherwise expressly provided… no appeal shall lie from any decision, order or direction made or issued under this Act by the Central Government, or from any act or order of the Controller…
- Plain English: This sets the default rule: No appeal is allowed from any decision of the Controller or the Central Government, UNLESS it is specifically listed as an exception in sub-section (2).
- (2) An appeal shall lie to the Appellate Board from any decision, order or direction of the Controller or Central Government under section 15, section 16, section 17, section 18, section 19, section 20, sub-section (4) of section 25, section 28, section 51, section 54, section 57, section 60, section 61, section 63, section 66, sub-section (3) of section 69, section 78, sub-sections (1) to (5) of section 84, section 85, section 88, section 91, section 92 and section 94.
- Plain English: This is the “list of exceptions.” It means you can appeal any final decision made under these specific sections. This list covers almost every major decision a Controller can make, including:
- Refusing a patent application (S.15).
- Refusing to let you amend your patent (S.57).
- Refusing to restore your lapsed patent (S.60).
- Revoking your patent in the public interest (S.66).
- Granting a compulsory licence on your patent (S.84).
- Modern Context / Example: An inventor’s patent application is refused by the Controller under Section 15. Because Section 15 is on this “magic list,” the inventor has the right to file an appeal directly to the High Court (which now has the power of the former Appellate Board).
- Plain English: This is the “list of exceptions.” It means you can appeal any final decision made under these specific sections. This list covers almost every major decision a Controller can make, including:
- (3) Every appeal… shall be in the prescribed form… verified… accompanied by a copy of the decision… and by such fees…
- Plain English: You can’t just send a letter to appeal. You must use the official forms, “verify” (swear that the contents are true), attach a copy of the Controller’s decision you are appealing, and pay the official court filing fee.
- (4) Every appeal shall be made within three months from the date of the decision… or within such further time as the Appellate Board may… allow.
- Plain English: This is the critical deadline. You have three months from the day you receive the Controller’s decision to file your appeal. If you miss this deadline, the High Court might still hear your case if you can provide an excellent reason for the delay.
The Bare Act has omitted all these sections (117B through 117H).
Section 117B: Procedure and powers of Appellate Board.
- Plain English: This section is a cross-reference. It states that the Appellate Board, when hearing patent cases, will have the same powers and follow the same procedures as it does when hearing Trade Mark cases (as defined in the Trade Marks Act). This includes powers like a Civil Court: it can summon witnesses, demand documents, and hear evidence under oath.
Section 117C: Bar of jurisdiction of courts, etc.
- Plain English: This section states that no other court (like a District Court or a lower court) has the power (“jurisdiction”) to hear the appeals or applications listed in this chapter. It created an exclusive channel: from the Controller, you must go to the Appellate Board.
- Modern Context: This “bar” still applies, but now the exclusive channel is from the Controller to the High Court.
Section 117D: Procedure for application for rectification, etc., before Appellate Board.
- (1) An application for revocation of a patent… under section 64 and an application for rectification of the register… under section 71 shall be in such form as may be prescribed.
- Plain English: This clarifies that a person starting a new case at the Board (not just an appeal) must also follow the prescribed rules. The two main cases are:
- Revocation (S.64): A competitor files a case to cancel your patent.
- Rectification (S.71): A person files a case to fix an error in the official patent register (e.g., to have their name added as a co-owner).
- Plain English: This clarifies that a person starting a new case at the Board (not just an appeal) must also follow the prescribed rules. The two main cases are:
- (2) A certified copy of every order or judgment of the Appellate Board… shall be communicated to the Controller… and the Controller shall give effect to the order… and… amend the entries in, or rectify, the register…
- Plain English: The Controller must obey the Board’s (now the High Court’s) final decision. When the High Court issues a final order (e.g., “This patent is revoked”), a copy is sent to the Controller, who must then immediately update the official patent register to show that the patent is “Revoked.”
Section 117E: Appearance of Controller in legal proceedings.
- (1) The Controller shall have the right to appear and be heard-
- (a) in any legal proceedings before the Appellate Board…
- (b) in any appeal… (i) which is not opposed… or (ii) which has been opposed and the Controller considers that his appearance is necessary in the public interest…
- Plain English: This gives the Controller (the head of the Patent Office) the right to join an appeal hearing. The Controller will typically do this in two situations:
- (a) To defend the Patent Office’s general rules or procedures if they are being questioned.
- (b) To defend a decision in the “public interest,” especially if the original case was one-sided.
- Real-world Example: The Controller refuses a patent. The applicant appeals. The Controller might join the High Court hearing to explain to the judge why the refusal was correct and necessary to protect the public from an invalid patent.
- (2) Unless the Appellate Board otherwise directs, the Controller may, in lieu of appearing, submit a statement in writing… and such statement shall be evidence…
- Plain English: The Controller doesn’t have to show up in court in person. They can simply submit an official written statement explaining their reasoning, and the High Court must treat that statement as legal evidence in the case.
Section 117F: Costs of Controller in proceedings before Appellate Board.
- Plain English: This section protects the Controller (as a public official) from financial risk. It states:
- The High Court can order the losing party to pay the Controller’s legal fees.
- The High Court cannot order the Controller to pay the other party’s legal fees, even if the Controller loses the appeal.
Section 117G: Transfer of pending proceedings to Appellate Board.
- Plain English: This was a one-time “housekeeping” rule. When the Appellate Board (IPAB) was first created, this section ordered all patent appeal cases that were currently pending in the High Courts to be transferred to the new Board.
- Modern Context: In a reverse (and ironic) move, when the IPAB was abolished in 2021, all cases pending before it were transferred back to the High Courts.
Section 117H: Power of Appellate Board to make rules.
- Plain English: This section gave the Board the power to create its own internal rules of procedure (e.g., forms, deadlines, and hearing conduct), as long as they didn’t contradict the Patents Act.