It was au revoir to one of India’s most astute Intellectual Property Judicial forums alias IPAB (Intellectual Property Appellate Tribunal) when the Ministry of Law and Justice notified in its official gazette the IPAB’s dissolution vide The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021. IPAB was established to deal with Intellectual Property matters and its dissolution arose many pertinent questions as to who will be dealing with all its pending cases. Eventually, all functions and proceedings pending with the IPAB got transferred to the apposite High Courts. It was questionable as to whether the High Courts would be able to deal with IP cases diligently amidst pending cases and multiplicity of proceedings.

 

Keeping all these conflicting signs of dissensions aside, Delhi High Court in its attempt to avoid these issues announced their directive of creating a separate Intellectual Property Division (IPD) in the Delhi High Court. IPD refers to the division presided over by Single Judges to deal with disputes and cases concerning IPR subject matters. On October 8, 2021, the Delhi High Court circulated IPD Rules, 2021 for inputs from the members of the Bar. The Draft Rules stated that all concerned rules will apply to all patent suits in India which might lie before the Intellectual Property Division of the Delhi High Court. For the purpose of these rules, the “Intellectual Property Rights” subject matter shall include matters pertaining to Patents, Copyrights, Trademarks, passing off, acts of unfair competition, disparagement, comparative advertising, Protection of trade secrets, confidential information Geographical Indications, Plant Varieties, Designs, Semiconductor integrated circuit layout-designs and many other related subject matters. Every IPR subject matter, case, proceeding or dispute filed before, or transferred to the IPD, shall be heard and adjudicated by a Single Judge of the IPD except those that are to be decided by a Division Bench as per Section 13 of the Commercial Courts Act, 2015.

 

As per the notification, in case of any inconsistency between the Delhi High Court (Original Side) Rules, 2018 and the Delhi High Court Intellectual Property Division Rules, 2021 then the present rules will prevail.

 

If we shed light on some sheer details, we might be able to elucidate it better. Starting off with clause Rule 2(b), which lays down that all suits seeking relief under Section 48, Sections 105, 106 including all counterclaims under Section 64, Sections 108, 109, 114 of the Patents Act, 1970 shall be governed by the provisions of this Rule.

 

Moving further, Rule 3A lucubrates the contents of the pleadings, providing details of the attachments a plaint must contain. The Rule regulates that the plaint must contain a brief background of the technology, technical details and description of the suit patent and the invention covered therein, description of the Plaintiff’s product Ownership, the details of the patent granted in India including the date of the application and brief summary of international corresponding patent along with relevant facts to show validity of the invention covered by the Patent. It must also contain an infringement analysis explained with reference to the granted claims in the specification. Whereas Rule 3B talks about the contents of a written statement by the Defendants which must be only inclusive of a technical analysis to support the non-infringement but other defences for non-grant of injunction and damages as well. Counter Claim (Rule 3 C) shall be precise as to the grounds that are raised under Section 64. All the prior arts and literature shall be attached to the counter claim.

 

Replication (Rule 3 D) shall initially summarise the Plaintiff’s case and the Defendant’s case. The Written statement to the Counterclaim and Replication in the Counterclaim must follow a similar pattern as specified above.

 

The Plaint shall contain the nature of the threat, whether oral or documentary in a suit under Section 106 of the Patents Act, 1970 for injunction against groundless threats and if the threat concerns a granted patent, it shall include an invalidity brief to accompany the Plaint.

At the first hearing, the patentee may seek interim injunction and also demand an appointment of a local commissioner for inspection. Service by email is considered as an adequate service. If the Defendant files a caveat, service by email must be made at least 48 hours before the first listing of the case. The Court will peruse the claim construction briefs, invalidity and infringement briefs, and strike the actual issues where there exists a dispute between the parties. The Court may also seek the assistance of an independent technical expert or call experts of the parties for assistance. However, if at any stage in the suit, the Court is of the opinion that the parties ought to explore mediation, it may appoint a qualified mediator or panel of mediators including, technical experts to explore amicable resolution of the dispute as mentioned under Rule 12.

 

Prior to the final hearing, the Court shall direct parties to present a summary of pleadings and evidence along with the specific page numbers of the files. The Court can direct the presence of at least one technical person from each side, to assist the Court during the final hearing.

Under Rule 16, in addition to the provisions in the Commercial Courts Act, 2015 for summary judgment, summary adjudication of Patent suits can be undertaken in matters where the remaining term of the patent is 5 years or less and where a certificate of validity of the said patent has already been issued or upheld by the erstwhile Intellectual Property Appellate Board, any High Court or the Supreme Court. Summary Adjudication of Patent suits can also be undertaken if the Defendant is a repeat infringer of the same or related Patent and if the validity of the Patent is admitted and only infringement is denied.

 

It is neither a novel concept nor does it carry any inventiveness to establish such Intellectual Property Divisions of Courts, which primarily deal with only IP disputes. However, no such Division has ever existed in India, and has been an undiscovered phenomenon for the High Courts of India. The Draft Rules present adaptability by simplifying litigation and increasing flexibility of the procedural law of India. It has clarified the concept and the contents to be included in the pleadings.