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 the
Registrar under the Trade Marks Act, 1999 and
the Geographical Indications of Goods
(Registration and Protection) Act, 1999.
• All the Appeals pending before the various High
Courts, are transferred to the IPAB.
• Fresh Rectification Applications under the
Patents Act, 1970, will have to be filed before the
IPAB.
• Appeals from an order or decision of the
Registrar under rule 162 of The Trade Marks
Rules, 2002 shall also be heard by the IPAB.
• It is provided that similar matters arising
under the Geographical Indications of Goods (
Registration and Protection ) Act, 1999 shall
also 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 On What Payable Fees (Rs.) Corresponding Form
Act, 1999/ Rule of the Number
Trade Marks Rules, 2002
Section 47/57/125 On application 5,000 Form 1
under section 47, 57 or
125 for removal of a
trademark from the register
or rectification of the
register.
Section 91 On appeal from an order or 5,000 Form 2
decision of the Registrar of
Trade Marks in respect of
goods or services falling in
one class.
Section 91 On appeal from an order or 10,000 Form 3
decision of the Registrar of
Trade Marks in respect of
goods or services falling in
two or more classes.
Section 91 read with rule On appeal from an order or 3,000 Form 4
162 of the Trade Marks decision of the Registrar of
Rules, 2002 Trade Marks in regard to
the registration or removal
of a trade marks agent from
the register of trade marks
agents.
Section 91 On application for 2,500 for delay of per Form 5
condoning delay for filing month or part thereof
appeal.
Example

VS
 Patent Infringment
• Patent infringement is the execution of a prohibited
act with respect to a patented inventionwithout
permission 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 infringing
party
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 meet
patentability or includes a formal defect, rendering the patent
invalid 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 in
settlement 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 instituted
during 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 can
be instituted for any infringement occurring before the period of
such grant to the true and first inventor.

• The plaintiff (person who makes a plaint, i.e., institutes a suit) is not
obliged to give a notice to the defendant (infringer) before
instituting a suit.
 Period of limitation
• The period a limitation for instituting a suit
for patent infringement is three years
from 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 for
infringement shall not be instituted in any
court inferior to a District Court having
jurisdiction to try the suit.
• When an action for infringement has been
instituted in a District Court can be tranferred
to the High Court for decision