India: Comprehensive Study Of Section 117A Of The Patents Act, 1970

Introduction

The Patents Act, 1970 (hereinafter referred to as Act) being a gallant enactment to encourage research & development and innovation and providing monopoly over intellectual creations came into force on 20^th April 1972, supplanting the Indian Patents and Designs Act 1911. This enactment is currently in par with all the international arrangements as it gets amended regularly in accordance with the international conventions and treaties. The Act contains provisions regarding to application, registration, oppositions, anticipation, surrender and revocation, register of patents, patent offices, appeals, penalties etc. The provisions related to appeals are contained in Chapter XIX of the Act which lays down the exclusions from appeals, procedure of appeals and establishment of Appellate Board (hereinafter referred to as IPAB) etc.

Analysis of Section 117A

Section 117A in particular aims to deal with the appeals passed on from any decision, order or direction of the Controller or Central Government. Bare text of Section 117 A is extracted here for referral purposes:

117- A. Appeals to the Appellate Board. —(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 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.

(3) Every appeal under this section shall be in the prescribed form and shall be verified in such manner as may be prescribed and shall be accompanied by a copy of the decision, order or direction appealed against and by such fees as may be prescribed.

(4) Every appeal shall be made within three months from the date of the decision, order or direction, as the case may be, of the Controller or the Central Government or within such further time as the Appellate Board may, in accordance with the rules made by it allow.

While construing/interpreting this provision one must keep in mind that, it is well settled that no provision or word in a statute is to be read in isolation ¹, as true intent of the legislature behind enacting the provision can only be understood if a liberal approach is taken to interpret/construe. Scope of section 117A is apparently very extensive and is accordingly discussed and appraised in Yahoo! Inc., etc. v. Intellectual Property Appellate Board & Others (W.P. No. 4462 of 2010)² where Madras High Court while deciding a Writ Petition filed under Article 226 of the Constitution of India has discussed the capacious scope of the said provision.

A basic read of the text of section 117A reveals that sub-section 1 deals with matters that cannot be appealed with IPAB. It can be understood as an barring clause that refers to sub-section 2 and states that matters listed out in sub-section 2 are the ones that can only be appealed to IPAB. It is worth noting that sub-section 2 lays down the matters that can be appealed before IPAB. It points out certain provisions of the Act from which the right to appeal to the IPAB arises. Provisions listed in sub-section 2 of section 117A are as follows:

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.

One thing common in all these sections is that these all are either related to powers of controller or the orders passed by Controller. This sub-section explicitly excludes any other decision, order or direction passed under this Act by Central Government or Controller which is not mentioned in it. But even after such a clear-cut view expressed by the legislature in the provision, courts in Yahoo! Inc. (supra) went beyond the litera legis and interpreted Section 117-A of the Act. They mentioned the Apex Court's holding in Chandra Mohan v. State of Uttar Pradesh ³ – "The fundamental rule of interpretation is that in construing the provisions of the Constitution or the Act of the Parliament, the Court "will have to find out the express intention from the words of the Constitution or the Act as the case may be ....." and eschew the construction which will lead to absurdity and give rise to practical inconvenience or make the provisions of the existing law nugatory.". The courts also inculcated the principles of natural justice in their judgment as well by stating"Being the person who was responsible for the order passed against the petitioner, the respondent No.4 is entitled to be heard in law on the principles of natural justice. When an order is passed behind the back of a person whose presence is a necessity, it has got civil consequences". Finally, the Respondent No.1 (IPAB) in Yahoo! Inc. (supra) was asked to number an appeal and decide the case on merits.

Through this the courts expanded the very scope of Section 117A by holding that the order passed by Controller under Section 25(1) is to be construed as an order passed by Controller under Section 15 hence, should be appealable under Section 117A. The courts left Section 117 open for interpretation to be done by the courts in future.The courts also defined the scope of this provision as:

"9.Scope of Section 117A of the Patents Act, 1970:-

Section 117A of the Patents Act, 1970 deals with the appeals to the Appellate Board. Sub-section (1) of Section 117A deals with the decisions which are not appealable. In other words, sub-section(1) of Section 117A is an exclusion clause specifying certain actions from the purview of the Appellate Board. Section 117A(2)speaks about the appeal to the Appellate Board from any decision, order or direction of the Controller of Central Government. Therefore it is seen under Section 117A(2) an appeal would lie not only against the decision but also an order or direction of the Controller. A reading of the above said provisions would clearly show that an order of the Controller which in effect is the decision, order or direction made by the Central Government alone is exempted in so far as the applicant seeking a patent is concerned. Hence, Section 117A is exhaustive to include the orders passed by the Controller, in refusing an application for patent."

Subsequently, sub-section 3 of Section 117A deals with the proper procedure and formalities in which an appeal to IPAB should be made and sub section 4 of Section 117A lays down the time period in which the appeal should be filed and will remain amenable. It also gives IPAB a power to extend the time period for filing an appeal from the matters listed in Sub-section 2.

Conclusion

Hence, Section 117A is a provision under the Act that restricts certain appeals and allows certain appeals by explicitly mentioning the provisions under sub-section 2 but after referring to the courts in Yahoo! Inc. case it is evident that Section 117A has a wide scope hence, can be interpreted for the ends of justice.

Footnotes

1 ZAMEER AHMED LATIFUR REHMAN SHEIKH v. STATE OF MAHARASHTRA [(2010) 5 SCC 246]

2 (2010)5 LW 104 (Mad) (DB).

3 1967 (1) SCR 77

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