Appealing to the Intellectual Property Appellate Board

Although the Intellectual Property Appellate Board (IPAB) has been operating for some time, its real powers are yet to be clarified.

For example, there is confusion as to which orders of the controller of patents are appealable before the IPAB. In particular, can an interim order passed by the controller of patents or the Opposition Board in a pre-grant or post-grant opposition proceeding be appealed before the IPAB? Specifically, does Section 117A of the Patents Act, which deals with appeals to the IPAB, allow for appeals from interim orders? If the answer is no, is a writ petition the only recourse against such interim orders?

Section 117A of the act reads as follows:

"(1) Save as otherwise expressly provided in sub-section (2), 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 for the purpose of giving effect to any such decision, order or direction.

(2) An appeal shall lie to the Appellate Board from any decision, order or direction of the Controller or Central Govt under... sub-section (4) of Section 25." (Emphasis added.)

To understand whether an appeal stems from an interim order passed by the Opposition Board in a post-grant opposition, it is important to comprehend the combined effect of the emphasised parts of the provision.

• Section 117A(1) states that the appealable order, decision or direction must be “expressly provided” for in Section 117A(2).
• In turn, Section 117A(2) says that an appeal shall lie from “any decision, order or direction of the Controller” under all provisions specifically mentioned therein, including Section 25(4).
• Section 25(4) refers to an order of the Opposition Board in a post-grant opposition proceeding to either “maintain or amend or to revoke” the patent.

Since Section 25(4) refers only to an order to maintain, amend or revoke the patent, is there scope to state that an interim order passed in a post-grant opposition proceeding is appealable under Section 117A?

A possible argument to support the appealability of interim orders could be based on the wording of Section 117A(2), which refers to “any decision or order or direction”. If the intention of the legislature was to restrict appealability to final orders passed only, and not to interim orders or directions, the provision would not have included the words 'any decision', nor would it have made a reference to 'order or direction'.

In addition, the constitution of the IPAB as an appellate authority would be rendered otiose if parties approach the high courts against interim orders of the controller or the Opposition Board.

Further, the fundamentals of writ jurisprudence must be taken into account. In a writ jurisdiction, the high court’s power to deal with the merits of the case is limited. This is because in a writ proceeding, the court is entitled to reverse the decision only if there is an egregious error which is against the express provisions of the law or canons of natural justice.

In other words, when flexing writ jurisdiction, a high court does not sit in appeal over findings on the merits. Therefore, to file a writ against an interim order of the controller to challenge his or her findings on merits could be impermissible under the law.

Consequently, it can be concluded that the IPAB must entertain an appeal from interim orders passed by the controller in circumstances envisaged under Section 117A.