By raising the issue of whether Mr Chandrasekar, the Technical Member of the IPAB can sit on appeal in a matter in which he was involved as a Controller, Novartis has put the IPAB in a fix as it now has to decide its own competence that too in its very first case. What is now raised before the IPAB is a jurisdiction issue and whichever way the IPAB, which reserved orders after hearing the parties on 10th July 2007, decides will have a bearing on the way the institution functions in the future. While the IPAB has reserved its verdict, subject to whatever it would have to say, the following issues must be looked into.
The scheme of the Patents Act 1970 and the Patents Rules 2003 shows that the Controller acts in two capacities – acts done directly by the Controller and acts done on behalf of the Controller. First, all actions taken by the officers (examiners) shall be done under the 'superintendence and directions of the Controller such functions of the Controller under this Act as he may, from time to time by general or special order in writing, authorise them to discharge'[s 73(3)]. These actions represent delegated actions carried on behalf of the Controller. Then there are the actions carried on directly by the Controller [s 73(4), where the Controller may 'deal with such matter himself…'].
The Act and the Rules takes care to avoid conflict of interest. As per rule 56(3), an examiner who has dealt with the application for patent during the proceeding for grant of patent is made ineligible to be a member of the Opposition Board. It would be futile to argue that the examiner discharged a function of the Controller and hence the decision amounts to a decision by the Controller. Such arguments do not find a place in an Act which provides for post-grant opposition before the Controller.
Section 116(2) of the Patents Act which deals with the qualifications of the Technical Member clearly leans in favour of appointing person who has been a Controller for at least five years. That being the case, it would be quite natural for a Controller who was involved in the grant or rejection of a patent application to preside in appeal at a later point of time as a member of the IPAB. Then, the challenge, if any, must be directed to section 116 (2)(a) itself.