Patent Dispute Advisory System in India

Patent Dispute Advisory System in Indi

Can the ends of justice be met without an expertise?

This article is written by Vijeta Mahara of Chanakya Law College, Rudrapur Uttrakhand and curated by Himanshu Raj of CNLU Patna.

An Introduction to the Patents: A patent is a right granted by the government so that any invention or discovery can be freely commercialised or utilised by an individual or a company without any threats of infringement or piracy of the same. It is dealt under the segment of Intellectual Property Right Laws. The Indian Patent Office is administered by the Office of the Controller General of Patents, Designs & Trademarks (CGPDTM), a subordinate office of the Government of India which reports to Department of Industrial Policy and Promotion (DIPP) under the Ministry of Commerce and Industry which administers the Patent Office, Design Registry, Trademark Registry, Geographical Indication Registry, Patent Information System and Rajiv Gandhi Institute of Intellectual Property Management. In India we have four offices as per jurisdiction i.e. Delhi, Mumbai, Chennai and Kolkata and the term for every patent is 20 years. The patent is governed by The Indian Patents Act 1970 that has been amended at various times as per the need and demand of time. A law made in 2015 now brings it to the ambit of Commercial Courts so that the resolution of patent disputes can be handled in a faster and easier manner, in which this article also finds its roots by discussing the extent of appointment of an external expert opinion or scientific advisor so that the resolution of patent disputes can get real effective and worthwhile.


Need for the appointment of a scientific advisor: Now the basic question that comes to the mind is what can be the fruitfulness of outsourcing an expertise in the matter of patent disputes when we already have an established commercial court system for the determination of disputes and well qualified appointed judges. The simple answer is found in the basics of our procedural law. If we look at the section 45 of Indian Evidence Act, it lays out the calling of an expert opinion in some specialized matters. And it seems quite logical as a judge also ultimately being a human has some limitations for extended and vast knowledge of every field involved in the subject matter of dispute. Similarly whenever there is a dispute regarding a particular patent and its infringement, it is essential to get the minute and specific details about the matter in order to serve the impartial and just decision. A patent and dispute regarding it has some exclusive technical tangling which are difficult for a layman or even a judge who does not have the complete knowledge regarding the field. And thus, hereby, is justified the appointment of a scientific advisor in the patent disputes. A scientific Advisor whom we are talking about here is an expert appointed by the court to assist it on matters of technical importance which the court does not possess knowledge about to help them understand the case in a better manner. The brief about technological aspects of the patent involved with the legal perceptive to the judge and attorney enabling them to understand it more easily. The said expert can be appointed by the parties individually of their choice by requesting the court and correspondingly, the court can also appoint an individual expert. While the framing of decisions, the opinion of this expert is considered of utmost importance in imparting justice.

Patent Advisor in the light of some judgments: In the case of NATCO PHARMA LTD VS. UNION OF INDIA & ORS. The court set aside the objection pertaining to hearing of an appeal by IPAB revoking the patent based on the ground that the appropriate technical member was not appointed.

In the case of SUN MOBILITY PVT LTD VS. ARUMUGUM RAJENDRA BABU, the former i.e. Sun Mobility and the others went in appeal to a Division Bench of the High Court, taking objection to the appointment of Scientific Advisors and contended it unnecessary while considering the application for an interim injunction. The High Court however observed that the object of appointing the Scientific Advisor is to decide the interim application on merits.


Law backing the appointment of scientific advisors: Section 115 of The Indian Patents Act provides for the appointment of a scientific advisor in patent disputes which lays down as:

In any suit for infringement or in any proceeding before a 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 or to inquire and report upon any such question of fact or of opinion (not involving a question of interpretation of law) as it may formulate for the purpose.

The remuneration of the scientific adviser shall be fixed by the court and shall include the costs of making a report and a proper daily fee for any day on which the scientific adviser may be required to attend before the court, and such remuneration shall be defrayed out of moneys provided by Parliament by law for the purpose.


Conclusion: In Spite of the abrupt need of scientific officers in patent disputes and clear provision in the act for it, there is still confusion as to is the provision utilised adequately in Indian Courts? And those who are appointed are they efficiently able to provide quality technical opinions that truly assist courts in making better decisions. Till the time these questions just remain unanswered but one thing is well comprehensible that if the courts wish to fairly meet the ends of justice , there must be laid an emphasis on the advancement and better technical training of legal officers and their appointment as patent advisors.