The Role and Qualifications of Technical Member Patents in IPAB

Patent disputes are rarely simple. They often hinge on questions that sit at the intersection of cutting-edge science and intricate legal doctrine – whether a claimed invention is truly novel, whether a pharmaceutical compound meets the patentability threshold, or whether a biotechnological process qualifies as an invention under Indian law. Adjudicating such disputes demands more than legal acumen alone. This is precisely why the Intellectual Property Appellate Board (IPAB) was designed with a built-in technical expert on every bench – the Technical Member (Patents). Understanding who this person must be, and what qualifies them for the role, reveals a great deal about how India approached the adjudication of complex patent matters.

What was the IPAB and why did it need technical expertise? 🔗

The IPAB was constituted on September 15, 2003, primarily to hear appeals against decisions of the Registrar under the Trade Marks Act, 1999. Its jurisdiction was later expanded, and from April 2, 2007, it was also authorized to hear appeals against orders passed by the Controller of Patents under the Patents Act, 1970. This meant that all pending patent appeals before various High Courts were transferred to the IPAB.

The inclusion of a Technical Member was not an afterthought. Patent cases routinely involve evaluating inventions in pharmaceuticals, electronics, biotechnology, and advanced engineering – areas where a purely legal lens is simply insufficient. A judge trained in law might excel at procedural reasoning but would struggle to independently assess whether a claimed invention is novel over a piece of prior art involving, say, polymorph chemistry or semiconductor architecture. The IPAB’s bench structure – one Judicial Member and one Technical Member – was designed to address this gap directly.

The legal basis: section 116(2) of the Patents Act, 1970 🔗

Section 116 of the Patents Act, 1970 governs the establishment and composition of the IPAB as it applied to patent matters. Sub-section (2) specifically lays down the qualifications required for appointment as a Technical Member for the purposes of the Patents Act. Two alternative pathways were prescribed, and a candidate had to satisfy at least one of them.

Pathway 1: experience as a Controller of Patents 🔗

The first qualification route is through direct experience within India’s patent administration system. A person must have held the post of Controller of Patents – or exercised the functions of the Controller – for a minimum of five years under the Patents Act. The Controller is the senior-most administrative authority within the Patent Office responsible for examining applications, granting patents, hearing oppositions, and issuing orders on compulsory licensing. Someone who has spent at least five years in that role brings firsthand, practical knowledge of how India’s patent system operates from the inside – including an understanding of examination standards, procedural requirements, and the kinds of technical assessments that routinely arise in patent disputes.

Pathway 2: registered patent agent with a technical degree 🔗

The second route is aimed at practitioners rather than officials. A person must have functioned as a registered patent agent for at least ten years and must hold a degree in engineering or technology, or a master’s degree in science from a university established under law. Both conditions must be met simultaneously – the professional experience alone is not enough without the qualifying academic background, and vice versa.

A registered patent agent in India is someone who has passed the Patent Agent Examination conducted by the Office of the Controller General of Patents, Designs and Trade Marks. Patent agents are specialized legal-technical advisors whose work involves drafting patent specifications, filing applications, managing prosecution correspondence, responding to examination objections, and representing clients in opposition proceedings. Ten years in that role means a Technical Member appointed through this pathway would have extensive, hands-on experience navigating patent law from both its technical and procedural dimensions.

The 2017 rules: codifying the qualifications further 🔗

In June 2017, the Central Government notified the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017, under Section 184 of the Finance Act, 2017. These rules applied to 19 appellate tribunals, including the IPAB, and formally codified the qualification criteria already found in the Patents Act.

Under these rules, the same two-track qualification framework was retained: five years as Controller, or ten years as a registered patent agent with an engineering or science degree. The rules also established a search-cum-selection committee for the post of Technical Member (Patents). This committee included a government nominee as chairperson, the Secretary to the Government of India from the Department of Industrial Policy and Promotion, another Secretary nominated by the Central Government, and two domain experts nominated by the Central Government. The involvement of technical experts in the selection process itself reflected an acknowledgment that evaluating candidates for such a specialized role required more than standard bureaucratic review.

Why technical knowledge – and not legal knowledge – was the primary criterion 🔗

An important feature of the Technical Member (Patents) qualification framework is what it does not require: a law degree. This was a deliberate legislative choice, and one that courts have explicitly commented upon. The Madras High Court, in its 2015 orders examining the constitutionality of IPAB’s composition, noted that the basis for appointment as a technical member under the Patents Act is technical knowledge – distinguishing this sharply from the Trademarks Act’s parallel provisions, which required legal knowledge as a basis for appointment of technical members on that side.

The court observed that the legislative intent behind the Patents Act was to “infuse more technical knowledge” into the adjudicatory process for patent disputes. Patent adjudication, unlike trademark adjudication, frequently demands an independent scientific assessment of the claimed invention – whether it is new, whether it involves an inventive step, whether the specification discloses the invention sufficiently. These are questions that a legally trained person can reason about with the right assistance, but that a technically qualified expert can assess with much greater confidence and independence.

This also explains why the role of the Technical Member in patent cases was understood by the Madras High Court as being primarily about supplying technical knowledge to the bench – the court specifically noted that the technical member’s function was to render technical advice, which had implications for the extent to which technical members could independently author IPAB decisions in patent matters.

How the bench structure worked in practice 🔗

Each bench of the IPAB consisted of one Judicial Member and one Technical Member. The Chairman could discharge functions of either a judicial or technical member on any bench, and could also transfer members between benches. In situations where the judicial member and technical member disagreed on a decision, the Chairman’s opinion would carry the matter – a provision designed to prevent deadlock while preserving institutional coherence.

This dual-member structure meant that a patent dispute was never decided by someone looking at technical evidence through a purely legal filter. The Technical Member could assess the substance of the claimed invention, evaluate the prior art, and bring domain expertise to bear on the very questions that are most likely to determine the outcome of a patent appeal.

The abolition of IPAB and its legacy 🔗

In April 2021, the IPAB was abolished through an ordinance that dissolved it along with eight other appellate bodies. The powers and functions previously exercised by the IPAB in patent matters were transferred back to the High Courts. Sections 116 and 117 of the Patents Act – the very provisions that established the IPAB and set out the qualifications for Technical Members – were omitted from the statute.

The abolition reignited debates about whether technical expertise in patent adjudication should be institutionalized at the tribunal level. High Courts do not have permanent technical members hearing patent cases, which means patent appeals are once again being decided by benches without guaranteed domain expertise. The IPAB’s model – imperfect as its implementation sometimes was – had at least recognized that patent disputes require a qualitatively different kind of adjudicator. That recognition, and the qualification framework built around it, remains a significant chapter in India’s IP institutional history.

What the qualification framework tells us about patent adjudication 🔗

The qualifications prescribed for the Technical Member (Patents) reflect a coherent philosophy: that someone who decides patent appeals must have done the work – either as an administrator who examined and granted patents for five years, or as a practitioner who filed and prosecuted patents for a decade. This is not a role for generalists with a passing interest in technology. It demands people who have lived with the technical and legal complexities of patent practice long enough to exercise mature, independent judgment.

The framework also signals something broader about India’s approach to IP adjudication – that specialist institutions require specialist people, and that the credibility of those institutions depends on the rigour with which their members are selected. Whether through experience in the Patent Office or through years of registered patent agency practice, the Technical Member brought to the IPAB what no amount of legal reasoning could substitute for: the capacity to genuinely understand what an invention is, and whether it deserves the protection being claimed for it.

What do you think? Given that patent appeals in India are now decided by High Courts without a permanent technical member on the bench, do you think the absence of institutionalized technical expertise creates a meaningful gap in the quality of patent adjudication? And should India revisit a specialized tribunal model – with stricter and clearer qualification criteria – to handle the growing complexity of patent disputes in areas like artificial intelligence, pharmaceuticals, and biotechnology?

References

1. https://ipindia.gov.in/writereaddata/portal/ev/sections/ps116.html
2. https://www.intepat.com/blog/intellectual-property-appellate-board-ipab-india/
3. https://www.wipo.int/wipolex/en/text/128091
4. https://jashvaidya.wordpress.com/2015/11/28/role-of-intellectual-property-appellate-board-ipab/
5. https://patentsrewind.wordpress.com/2017/06/14/rules-for-appointment-of-ipab-chairman-vice-chairman-technical-member/
6. https://www.ipaindia.co.in/patent-course.html
7. https://spicyip.com/2015/04/ipab-constitutionality-revised-order-vis-a-vis-patents-act.html
8. https://www.lexology.com/library/detail.aspx?g=05d579e3-9f51-4104-b085-42c47ef67271