Intellectual Property Appellate

Board
INTRODUCTION
 Constituted on 15th September, 2003 by the Indian
Government to hear and resolve appeals against the orders
passed by the Registrar of Trade Mark and Geographical
Indications of Goods.

 Since 2nd April, 2007, IPAB has been authorised to hear and
adjudicate upon the appeals from the orders and decision
of the Controller of Patents. Also, pending appeals before
the High Court were transferred to IPAB.

 Headquarters : Chennai

 Sittings at : Chennai, Delhi, Kolkata and Ahmedabad.

APPEALS
 Appeals can be made to the IPAB from
the decision of the –
◦ Controller : refusal of applications, revocation
of patents, dating of applications, correction of
clerical errors, etc.
◦ Central Government : with respect to
inventions relating to
 defense purposes, including directions of secrecy;
 revocation of patent if contrary or prejudicial to
public interest
 atomic energy
Organisation and Jurisdiction
 Organisation : Bench consists of a judicial member and a technical
member.

 Jurisdiction : Appeals must be made within a period of 3 months from

the date of the order of the Controller. Condonation of delay is possible
if the reason for delay are genuine.

 Exclusive Jurisdiction : The Appellate Board can receive, hear and

dispose all appeals from any order or decision of the Controller and all
cases related to the revocation of a patent, rectification of register;
other than through a counter-claim in a suit for infringement.

 IPAB has the authority to proceed with the matter either de novo or
from the stage at which it was transferred on appeal. The jurisdiction to
hear patent infringement cases continues with the High Courts.
Biotechnological Patents
Concept of Biotechnology
 Biotechnology is the branch of applied science that
utilizes living organisms and their derivatives in order to
produce products and processes. These products and
processes can apply to several aspects of the economy
ranging from healthcare and medicine to biofuels and
environmental safety.

 Biotechnological inventions refer to techniques that use

living organisms, or parts of them, in order to make or
modify products, or to improve or modify certain or all the
characteristics of plants, or animals, in order to develop
micro-organisms, and organisms intended for specific uses.
 Biotechnological Inventions as
Patentable Subject-Matter
 Under the Patent Act, 1970, any invention is patentable if it
◦ does not fall under Sec. 3 or 4 of the act and
◦ are novel, have inventive step and industrial application.
 Following are excluded from biotechnological patents :
◦ Sec. 3(b) : opposed to public morality,
◦ Sec. 3(c) : discoveries of living things or non-living substances existing in
nature,
◦ Sec. 3(d) : new form or uses of known substance,
◦ Sec. 3(e) : a substance obtained by mere admixture,
◦ Sec. 3(h) : a method of agriculture or horticulture,
◦ Sec. 3(i) : any method of treatment,
◦ Sec. 3(j) : plants and animals in whole or their parts, seeds, varieties and
species and essential biological processes for production and propagation of
plants and animals, however, micro-organisms are patentable subject-matter.
◦ Sec. 3(p) : traditional knowledge.
Patents to Micro-organism
 The case of Diamond v. Chakrabarty in 1980s, opened
gates for the patentability of microorganisms, wherein the
claim of a Micro-biologist Dr. Ananda Chakrabarty, for the
grant of patent for a live human made & genetically
engineered bacterium, capable of breaking the components
of crude oil was accepted by the US Supreme Court.
 Before the US Supreme Court's decision in the case of
Diamond v. Chakrabarty, Patent protection was not granted
to microorganisms as product claims, but only to the
process claims in which microorganisms was used as a
medium in inventions. First patent based on
microorganisms was made by Louis Pasteur on 28
January 1873, for the process of fermenting beer.
 Article 27(3)(b) of the TRIPS 1994, further established
that microorganisms and non-biological and
microbiological processes are patentable.
Indian Position
 The Indian Patents Act, 1970 added micro-organisms under
the purview of patentability through the Patents
(Amendment) Act, 2002, in compliance with the TRIPS.

 According to Section 3(j) of the Patents Act, 1970, a plant,

animal, seeds and biological processes, apart from micro-
organisms are not patentable. Therefore, section 3(j) of the
Indian patents act, allows patentability of microorganisms.

Dimminaco A.G. v. Controller of Patents & Designs

Monsanto Technology Pvt. Ltd. v. Nuziveedu Seeds

Deposit of Biological Material
Sec 10(4)(ii) and rule
 According to the provisions of Section
10 (4)(ii) of the Act, if the invention is
in relation to a micro-organism, then
alongwith the specification the micro-
organism shall be deposited in the
International Depository constituted
under the Budapest Treaty.