Intellectual Property Appellate Board

Dr Urmila Aswar

Sinhgad Institute of Pharmacy, Pune

• Section 83 of The Trade Marks Act, 1999 (Act), provides for the establishment of an Appellate Board to be known as the Intellectual Property Appellate Board (IPAB).

• Intellectual Property Appellate Board has been constituted by a Gazette notification of the Central Government in the Ministry of Commerce and Industry on 15th September 2003 (Gazette Notification No. S.O.1049(E) ).

Location

• The Intellectual Property Appellate Board has its headquarters at Chennai and shall have sittings at Chennai, Mumbai, Delhi , Kolkata and Ahmedabad.

Purpose

• To hear appeals against the decisions of theRegistrar under the Trade Marks Act, 1999 andthe Geographical Indications of Goods(Registration and Protection) Act, 1999.

• All the Appeals pending before the various HighCourts, are transferred to the IPAB.

• Fresh Rectification Applications under thePatents Act, 1970, will have to be filed before theIPAB.

• Appeals from an order or decision of theRegistrar under rule 162 of The Trade MarksRules, 2002 shall also be heard by the IPAB.

• It is provided that similar matters arisingunder the Geographical Indications of Goods (Registration and Protection ) Act, 1999 shallalso be heard and decided by IPAB.

• Composition (as on 14th March, 2012)

• Chairman : Smt. Justice Prabha Sridevan

•

• Vice Chairman : Ms. S. Usha

• Technical Member (Patent): Shri D.P.S. Parmar

• Technical Member (Trade Marks): V. Ravi

• Deputy Registrar: N. Anbazhagan

ection of the Trade Marks Act, 1999/ Rule of the Trade Marks Rules, 2002

On What Payable Fees (Rs.) Corresponding Form Number

Section 47/57/125 On application under section 47, 57 or 125 for removal of a trademark from the register or rectification of the register.

5,000 Form 1

Section 91 On appeal from an order or decision of the Registrar of Trade Marks in respect of goods or services falling in one class.

5,000 Form 2

Section 91 On appeal from an order or decision of the Registrar of Trade Marks in respect of goods or services falling in two or more classes.

10,000 Form 3

Section 91 read with rule 162 of the Trade Marks Rules, 2002

On appeal from an order or decision of the Registrar of Trade Marks in regard to the registration or removal of a trade marks agent from the register of trade marks agents.

3,000 Form 4

Section 91 On application for condoning delay for filing appeal.

2,500 for delay of per month or part thereof

Form 5

Example

VS

Patent Infringment

• Patent infringement is the execution of a prohibited act with respect to a patented inventionwithoutpermission from the patent holder.

• The definition of patent infringement may vary by jurisdiction, but it typically includes using or selling the patented invention.

• Permission must be taken from Patent holder before commercially using any invention.

• In many countries, a use is required to be commercial (or to have a commercial purpose) to constitute patent infringement.

Infringement and Claims

• Claims: The claims inform the public of what is not allowed without the permission of the patent holder.

• Patents are territorial, and infringement is only possible in a country where a patent is in force.

• For example, if a patent is filed in the United States, then anyone in the United States is prohibited from making, using, selling or importing the patented item, while people in other countries may be free to make the patented item in their country.

• Typically, a party (other than the patentee or licensee of the patentee) that manufactures, imports, uses, sells, or offers for sale patented technology without permission/license from the patentee, during the term of the patent and within the country that issued the patent, is considered to infringe the paten

• In response to allegations of infringement, an accused infringingparty

1. it was not practicing the patented invention;2. it was not performing any infringing act in the territory covered by

the patent;3. the patent has expired;4. the patent (or the particular claim(s) alleged to be infringed) is

invalid, because the invention in question does not meetpatentability or includes a formal defect, rendering the patentinvalid or unenforceable;

5. it has obtained a license under the patent;6. the patent holder is infringing patent rights belonging to the

accused infringing party, and the party may resolve the dispute insettlement or cross-licensing.

When to file the suit

1. After publication of patent.2. When the term of the patent has expired and infringement

occurred during the term of the patent, a suit can be institutedduring the term of even after the expiry of the term.

3. In case a patent had lapsed and was subsequently restored.4. When a patent was obtained wrongfully by a person and later

granted to the true and first Inventor, no suit for infringement canbe instituted for any infringement occurring before the period ofsuch grant to the true and first inventor.

• The plaintiff (person who makes a plaint, i.e., institutes a suit) is notobliged to give a notice to the defendant (infringer) beforeinstituting a suit.

Period of limitation

• The period a limitation for instituting a suitfor patent infringement is three yearsfrom the date of infringement.

Who can file

• Only the person who has a right in the patent can institute a suit for infringement.

• The following persons are entitled to sue:-• (1) The patentee.• (2) The exclusive licensee if the licence is registered.• (3) A compulsory licensee when the patentee refuses or

neglects to institute proceedings.• (4) A licensee other than the above two licensees can bring

an action for infringement upon the terms of the contract between the licensor and licensee.

• (5) Assignee, he can sue only after the application for registration of the assignment in his favour has been filed.

Code of civil procedure

• Section 104 of the Act provides that a suit forinfringement shall not be instituted in anycourt inferior to a District Court havingjurisdiction to try the suit.

• When an action for infringement has beeninstituted in a District Court can be tranferredto the High Court for decision