This article discusses the issues involved in the role and status of a technical member in the overall constitution of the Intellectual Property Appellate Board (IPAB).

Recently, in the Novartis case, the Madras High Court accepted the proposal of the government that the IPAB would proceed to hear the appeal filed by Novartis with the Chairman and the Vice-Chairman sitting on the Board and thereby excluding the Technical Member. This proposal is an antithesis to the very constitution of the IPAB.

The establishment of the Appellate Board for patents is a significant achievement in the development of IPR in India. Patent law is a multi-disciplinary subject. Patent law as a subject, as we all know is a blend of science and law. It is obvious that persons handling patent cases are expected to have technical knowledge for a better appreciation of the facts of the case.

The Board which served as a forum to decide appeals arising out of the Trade Marks Act, 1999 is also the Board to decide appeals arising for patents as well. Primarily, the object of creation of the Appellate Board is for speedy disposal of appeals and rectification applications which were pending before various High Courts. If this object has to be achieved, the appointment of a Technical Member to the Board is a sine qua non. It is with this objective, that the former Controller General of Patents was appointed as a Technical Member of the Board which includes a Chairman, who is a retired judge of a High Court.

However, the Madras High Court in the Novartis case has permitted the opposition proceedings to be carried out before the Board in the absence of a Technical Member. This is not conducive to the development of patent law.

Earlier, Novartis filed an appeal against the rejection of its patent application concerning the beta crystalline form of imatinib mesylate by the Patent Office. After the IPAB for patents was constituted, the appeal filed by Novartis stood transferred to it from the Madras High Court. Novartis took exception to the presence of the former Controller General as a Technical Member in the Board. Novartis's grievance was that the Technical Member had sworn an affidavit in the capacity of the Controller General earlier before the Madras High Court while the matter stood there. Therefore Novartis again moved the Madras High Court. The Government left with no alternative has relented and decided to replace the former Controller General with the Vice-Chairman of the Board who is not a technical member.

Now the matter thus, would proceed before Chairman and Vice-Chairman in- absentia of the Technical Member. It is to be seen whether the Board can effectually dispose the appeal in the absence of a Technical Member.

I wish the Government, could have come up with a better alternative, i.e. to take another Technical Member in the Board on a temporary basis in place of the former Controller General. It is provided under Section 115 of the Patents Act, that in any proceeding before the Court under this Act, the Court may at any time, and whether or not an application has been made by any party for that purpose, appoint an independent scientific adviser, to assist the Court to inquire and report upon any such question of fact or of opinion (not involving a question of interpretation of law).

Finally, the persons at the helm of affairs must take a decision. It now appears that Natco Pharma has petitioned the Supreme Court against the decision of the Madras High Court of proceeding with this matter without the Technical Member. This matter will not end here.

A particular criteria for appointment of a Technical Member to the Appellate Board is that he must have been a Controller of Patents. As a Controller of Patents, the concerned officer will have handled several hundreds of patent cases, if not more. In the case that any of the patents/patent applications, which he has handled in his previous incumbency, come up for adjudication before the IPAB, it will be open for any one of the parties to object to the technical member’s presence on the board. If the Madras High Court ruling is followed, then every time there will be a shuffling of the board by removal of the technical member, should such a situation arise. This was certainly not the intention of the legislature at the time of constituting the Appellate Board for patents.