An International Guide to
Patent Case Management for Judges

6.11 Key challenges and efforts to improve patent case management

6.11.1 Lack of uniformity in decisions and specialized knowledge

Infringement cases are heard by judges of either the district courts or the High Courts not specially trained in the subject of patent law. A challenge that arises under the current regime of trial, especially before the district courts, is that the judges are not equipped to understand technical issues that arise in respect of patents. As the disputes arising under the Patents Act, 1970, are often highly technical in nature, a higher degree of understanding of the subject matter is required to ascertain a question of infringement or lack thereof.²⁵¹ For this purpose, specific rules of procedure, including for leading and examination of evidence, are desirable.

6.11.2 Delays in disposing of suits

The Supreme Court has held, pertaining to the issue of delays in the hearing and disposal of matters, that, in matters of patents, trademarks and copyrights, the state of affairs due to such delays is unsatisfactory.²⁵² It was held that there is a need to adhere to the provisions of Order XVII(1)(2) of the Code of Civil Procedure, whereby proceedings are to be held on a daily basis for quick disposal of the suit. The streamlined and expedited procedure under the Commercial Courts Act, 2015, has significantly helped in reducing delays, though more groundwork is needed. A recent development which has given further impetus to speedier adjudication of IP disputes is the establishment of the Intellectual Property Division in the Delhi High Court.

6.11.3 The IP Division, Delhi High Court

Post the abolition of the IPAB,²⁵³ all pending cases before the IPAB were transferred to High Courts. The High Courts were thus faced with the task of managing both the already pending IPR cases before them as well as the transferred IPAB cases. In the Delhi High Court, this number of pending IP cases was expected to be around 4,000–5,000. With a view to streamlining dispute resolution of IP cases, including patent litigation, the Delhi High Court constituted India’s first “IP Division,”²⁵⁴ The Division uses specialized sets of Rules, specifically, the Delhi High Court Intellectual Property Rights Division Rules, 2022²⁵⁵ and the High Court of Delhi Rules Governing Patent Suits, 2022. The Division is vested with various jurisdictions, including the original jurisdiction, the infringement jurisdiction, commercial suits, the appellate jurisdiction from the IP offices, the revisional jurisdiction from the commercial courts, and the extraordinary writ jurisdiction supervising all IP offices, including the Controller of Patents’ Office.²⁵⁶ Further, the Division provides for various novel features which are, illustratively, as under:

1. (i) New forms of evidence recording such as hot-tubbing and remote recording of evidence.²⁵⁷
2. (ii) Preservation of evidence and litigation hold notice.²⁵⁸
3. (iii) Guidance on computation of damages.²⁵⁹
4. (iv) Direction of consolidation of cases.²⁶⁰
5. (v) Constitution of Confidentiality Clubs and redaction of information.²⁶¹
6. (vi) Summary adjudication of disputes.²⁶²
7. (vii) Panel of experts and recruitment of law researchers who are technically qualified like engineers, chemists, pharmacists, or civil engineers, to assist the IP Division.²⁶³
8. (viii) Mediation and Early Neutral Evaluation.²⁶⁴

While the creation of the Division on a non-exclusive basis was notified in July, 2021,²⁶⁵ the Rules for the Division in its current form, that is the Delhi High Court Intellectual Property Rights Division Rules, 2022, vesting exclusive jurisdiction in the IP Division and laying down procedure for IP disputes, were notified in February 2022. This Division now consists of three Single Judge Benches exclusively dealing with IPR disputes. Since the setting up of the Division, the disposal rate for IP cases, specifically in patent matters, has witnessed substantial improvement. In addition the Delhi High Court has also nominated a non-exclusive IP Appellate Division consisting of a Bench of two Judges which hears appeals from the IP Division.

As of July 2022, the IP Division of the Delhi High Court has approximately 4,000 pending IP disputes out of which a substantial number are trademark and copyright disputes. Patent cases account for approximately 600–650 cases, most of which are appeals transferred from the IPAB. Notably, the filing of patent infringement actions has risen in recent times and approximately 50–60 actions are filed annually before the Court. In the IP Division, trends show that the disposal figures are rising and it is estimated that the Division should bring in greater efficiency.

The IP Division of the Delhi High Court has also been received well internationally. The recent USTR 2022 Special 301 Report discusses the establishment of the Delhi High Court’s IP Division as a positive development and emphasizes continued engagement of the U.S. with India on IP matters.²⁶⁶

As far as other states are concerned, in the Bombay High Court and the Madras High Court, post the abolition of the IPAB, the total number of pending patent disputes is, approximately, around 450–500 cases and 264 cases respectively. The Gujarat High Court has in fact nominated a non-exclusive bench for adjudication of all IP disputes.

On this note, a testament to the Delhi High Court IP Division’s efficacy in streamlining dispute resolution of IP cases may also be found in the fact that the Parliamentary Committee which had been set up to look into IP issues in India had earlier recommended (in 2021), to re-establish the IPAB, stating that the abolition decision was one taken in a hurry and there should have been stakeholder consultation.²⁶⁷ However, post-establishment of the IP Division in the Delhi High Court, in April 2022 the Committee revised its recommendation²⁶⁸ and recommended that IP divisions like at the Delhi High Court should be established in all High Courts in the country. The relevant observations of the Report dated April 6, 2022 read:

3.12 The Committee notes that the dissolution of IPAB would lead to transferring of all IP-related appeals including the pending cases to High Courts and Commercial Courts (in copyright matters). This may create additional burden on such courts which are already reeling under huge backlog of cases with inadequate expertise in hand to deal with IPR matters. It, therefore, opines that establishing an Intellectual Property Division (IPD) with dedicated IP benches as done by Delhi High Court in the wake of abolition of IPAB would ensure effective resolution of IPR cases on a timely basis. The Committee, therefore, recommends that the Government should take appropriate measures to encourage setting up of IPD in High Courts for providing alternative solution to resolve IPR cases.

Thus, the constitution of specialized IP Divisions for speedier and efficacious resolution of IP disputes, specifically patent litigation, seems to be the way forward for India.