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Intellectual Property Rights -Actions Beyond Power in Indian IP Scenario

India is an agriculture based economy even when it is India being recognized as the global power in the key economic sectors with consistent high economic growth. Indian agriculture contributes to 8% global agricultural gross domestic product to support 18% of world population. Indian biodiversity boasts of nearly 8% of the world's documented animal and plant species. Agriculture contribution in the gross domestic product in India is about 15% and the agriculture sector provides employment to about 52% of the workforce. Therefore, conservation of natural resources, maintenance of biological wealth and acceleration of agricultural growth to feed the ever-increasing population are considered of paramount importance.

The Protection of Plant Varieties and Farmers' Rights Act, 2001 (PPVFRA), the Indian sui-generic statute for IPR over Plant varieties is therefore expected to have maximum impact on the Indian IPR regime. The Indian legislation is not only in conformity with International Union for the Protection of New Varieties of Plants (UPOV), 1978, but also have sufficient provisions to protect the interests of public sector breeding institutions and the farmers. The legislation recognizes the contributions of both commercial plant breeders and farmers in plant breeding activity and also provides to implement TRIPs in a way that supports the specific socio-economic interests of all the stakeholders.

The Plant Variety protection system is functional only for a decade and its first constitutional controversy has already reached the Apex Court in India. The PPVFRA is being reviewed by the Supreme Court of India for the provisional rights provided to the plant variety applications pending for registration before the Registrar of Patents which were declared void by the Delhi High Court.

Provisional protection under the Plant Variety Act (1)

The constitutional validity of Section 24(5) of the PPVFRA was challenged in a writ before the Delhi High Court which declared the said provision ultra vires in December 2016.

Section 24(5) empower the Registrar to issue "such directions to protect the interests of a breeder against any abusive act" during the period between filing of application for registration and decision taken by the Plant Variety Authority on such application. The said provision is under Chapter IV of the PPVFRA which is entitled "Duration and effect of registration and benefit sharing", with the heading of Section 24 being "Issue of Certificate of Registration". The specific clause under dispute reads:

Section 24(5) "The Registrar shall have power to issue such directions to protect the interests of a breeder against any abusive act committed by any third party during the period between filing of application for registration and decision taken by the Authority on such application."

This section was challenged on various grounds like:-

  • the provision does not envisage any compliance with principles of natural justice when such orders are issued;
  • the provision gives the power to issue interim directions even before the concerned breeder's application for registration has been accepted and any rights have accrued,
  • The provision does not provide any details of the orders that can be issued by the Registrar, such as, the conditions subject to which they can be issued, or the duration of their operation etc.
  • the Act does not provide for any appeal against the issuance of an order under the impugned provision, and therefore any error in the order is difficult to be corrected
  • the Act does not prescribe any qualifications for the Registrar who is empowered to issue such orders, and it is a well settled principle that substantial questions of law can only be decided by tribunals consisting of an adequate number of judicial members with legal qualifications

The counter arguments were mainly that this provision was in absolute unison with the UPOV directives and defects in implementation if any can be obviated by issuance of guidelines or regulations.

The High Court held that although the provision envisages the issuance of orders to injunct the commission of abusive acts, it does not explain what acts are to be considered abusive and held the provisions to be arbitrary and void. The High Court was of the opinion that the orders made under the impugned provision can have lasting adverse consequences, and there is no statutory provision ensuring that Registrars have minimum experience as quasi-judicial officials. Whilst the qualification of Registrars as technical experts allows them to be capable of deciding whether the DUS test (to determine infringement) is satisfied; it does not fully dispose to handle issue of the moment especially concerning interim measures.

The High Court believed that there is no appellate remedy against such orders which makes outcome fraught, undermining the rule of law and injecting arbitrariness to the entire exercise. However, Chapter VIII of the PPVFRA provides for a "Plant Varieties Protection Appellate Tribunal" which under Section 56(1) provides that "An appeal shall be preferred to the Tribunal within the prescribed period from any– (a) order or decision of the Authority or Registrar, relating to registration of a variety". The Supreme Court has currently stayed the High Court order in August 2017 (2) and is to hear the matter on urgent basis.

IPAB under the Trademark Act and Patent Act (3)

It is worth noting that recently the Madras High Court raised a question on the constitution of the Intellectual Property Appellate Board where the section 85 of the Trademarks Act, 1999 which provided provision for the establishment of the IPAB as "unconstitutional".

There was a writ petition which prayed for seeking relief of issuance of Writ of Declaration declaring Chapter XI of the Trade Marks Act, 1999, and Chapter XIX of the Patents Act, 1970 as ultra vires Articles 14, 19(1)(g), 21, 50, 245 of the Constitution of India and violative of the basic structure of the Constitution and hence void ab initio, in so far as it establishes the Intellectual Property Appellate Board (IPAB) and vests important judicial functions on this Board.

The Madras High Court held that the section providing for Indian government officers (ILS officers) to be elected as judicial members to the tribunal was invalid in law and that any committee constituted to select members to the tribunal should necessarily be predominated by judges or those with requisite judicial qualifications.

The Court also held that in the absence of requisite judicial qualifications, a technical member cannot become a Vice Chairman or a Chairman. Further, the court declared the provisions of the Trademarks Act important to the IPAB's composition unconstitutional. The petitioner believed that the entire process of the selection of the IPAB is flawed and baseless.

This case led to Rules for appointment of IPAB Chairman, Vice-Chairman, Technical Member IPAB under the patent and trademark statutes to be framed under the section 184 of the Finance Act, 2017 wherein the Central Government notified the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017 that these rules apply to 19 Appellate Tribunal as provided in the schedule of the Rules and also included in this list the IPAB.

If the arguments in the PPVFRA case is closely reviewed, it appears that the case is built of the premise of the Registrar not being qualified for taking judicial decisions such as what would constitute as abusive acts against a plant variety. If this is indeed the case then would the above case be used precedent which would change the procedure of appointment of the officials under the PPVFRA. However, the section 24(5) being unique among the different types of IP rights and also one among the world may have its own interesting story before the Apex Court.

The Indian IP scenario is not new to challenges to the constitutional validity of its unique provisions. The renowned section 3(d) of the Indian Patent Act has faced the same question before the Madras High Court (4) exactly a decade ago when the Courts upheld the provision but at the same time declined to have territorial jurisdiction to decide on the vires calling on the WTO dispute settlement mechanism

It remains to be seen as to how the Indian Supreme Court would interpret the provisional protection for the plant breeders under the PPVFRA in the present controversy regarding the section 24(5).

Cases:

  1. Prabhat Agri Biotech Pvt Ltd and others vs UOI and others 2016
  2. UOI and others vs Prabhat Agroseeds and others 2017
  3. Shamnad Basheer vs UOI and others 2015
  4. Novartis Ag vs UOI 2007