THE ROLE OF SCIENTIFIC ADVISORS IN A PATENT DISPUTE: A CRITICAL ANALYSIS

INTRODUCTION:

Patent infringement disputes are often complex involving technical terms and observations. It’s an area where judges, attorneys, and common people face difficulty while understanding facts, issues and principles to be used during the patent litigation cases. The judges often lack the scientific background and are ill-equipped to understand the technical issues that arise in these cases. This makes it problematic for them to interpret claims and to properly tailor general patent law doctrines to a specific technology. [1]

A scientific advisor in a layman’s term is an expert appointed by the court to assist them on certain matters of technical importance which the court does not possess knowledge about to help them understand the case in a better manner. The brief about technological aspects of the patent involved with the legal perceptive to the judge and attorney enabling them to understand it more easily. The parties have a right to appoint experts of their choice by requesting the court and correspondingly, the court can also appoint an individual expert. Therefore while framing the decision their assistance is of utmost importance to the judge.

LEGAL PROVISIONS FOR APPOINTMENT

  • Indian law : 

Section 115 of the Indian Patent Act, 1970 states;

  1. In any suit for infringement or in any proceeding before a court under this Act, the court may at any time, and whether or not an application has been made by any party for the purpose, appoint an independent scientific adviser, to assist the court or to inquire and report upon any such question of fact or opinion (not involving a question of interpretation of law) as it may formulate for the purpose.
  2. The remuneration of the scientific adviser shall be fixed by the court and shall include the costs of making a report and a proper daily fee for any day on which the scientific adviser may be required to attend before the court, and such remuneration shall be defrayed out of moneys provided by parliament by law for the purpose. [2]

By the virtue of the above section the court at any point of time can appoint a Scientific Advisor whenever necessary to inquire and look upon the question of facts and opinion as laid by the court but not the question of law. The court can make such appointments for any infringement suit or any proceeding under the act in any dispute of patent and at its discretion even if the application has not been made.

JUDGEMENT On APPOINTMENT Of SCIENTIFIC ADIVISOR:

Recently the matter of appointment of Scientific Advisor came up in the case of ‘Sun Mobility Pvt Ltd v. Mr. Arumugam Rajpendra Babu'[4] where the learned single judge observed that the claim for a patent which was being made by the plaintiff was in regards to an electric vehicle with a wind operated battery charging system whereas as the defendants were claiming patent over a product related to portable and standardized charging system after recording the findings the court concluded that the vehicle and charging station over which both the parties were making a claim was related to two different products. Therefore taking note of the technical complications involved in adjudication of the dispute between the parties the court by the virtue of Section 115 of the Patent Act1970, deemed it necessary to appoint a scientific advisor to assist the court for an effective adjudication.

By the appointment of the Scientific Advisor the court wanted to seek guidance on the following issues involved:

  1. Whether or not the essential features of the plaintiff patent are found in the electric vehicle of the defendants?
  2. Is there any overlapping in the technology and application between the plaintiff and defendant’s patents, technology, or product?
  3. Whether the concept of battery swapping interchangeable batteries is a part of plaintiff innovation?
  4. Whether the system in the plaintiff patent is completely different from the system of the defendant?
  5. Whether ‘smart battery’ solution for the mass electric mobility of Sun Mobility forms part of the plaintiff patents?

However, the appointment of Scientific Advisor was opposed by Sun Mobility along with few others in from of appeal before the Division Bench of the High Court contending that the appointment of Scientific Advisor at this point of time in the case while considering the interim injunction, will cause a delay as it would require a lot of time to submit its report and the application for an interim injunction should not be further delayed. They further contended that the report of the Scientific Advisor could be taken into consideration at the time of disposal of the main suit.

The Division Bench stated that the objective behind the appointment of Scientific Advisor was to decide the merit for allowing the application of interim injunction. Due to the technical complications involved, the court wanted a clearance which could only be provided by Scientific Advisor for a fair adjudication of the dispute hence the court decided to keep the application of interim injunction pending until further returning the matter to single Judge confirming the appointment of the Scientific Advisor.

CONCLUSION

Even though the Indian Patent Act explicitly provides for the appointment of Scientific Advisors during the cases for better and effective adjudication but still it is not being widely used by the court of law. Time and again different cases and court orders have asserted the need for the same, in fact the Madras High Court in an appeal from order of Intellectual Property Appellate Board (IPAB) raised the issue for importance and necessity of Scientific Advisors in cases stating that IPAB “ought to have sought the aid of experts or any scientific proof before arriving at a conclusion that the invention so made by the petitioners is not new or it is obvious or normal in the given field.”[5] “It is well settled that the Courts are not experts of expert to arrive at a finding with respect to intricate technicalities which are hard to follow or to scientifically evaluate a particular dispute and to render solution. In matters of this nature, this Court cannot render any finding in the absence of any scientific proof, therefore, this Court is left with no other option except to restrain from rendering any finding in this case.”[6]

It’s time for the justice imparters to realize the need and importance of such Advisors in cases, if they want to deliver a just and fair judgment because the training system of lawyers during their initial years does not enable them to gain knowledge of such expertise subjects and this inability to judge things could hamper the fate of companies and people at a later stage of their life. The law itself reveals the vulnerability of the adjudication system and hence to overcome those loopholes it crucial for the courts to use this power more often. In order to facilitate this Justice J.R .Midha has directed the central government to create a fund for Scientific Advisors by virtue of Section 115(2) the Indian Patent Act

REFERENCES:

  1. Jeanne C. Fromer, Bend or Break? The Patent System in Crisis: District Courts as Patent Laboratories, 1 U.C. IRVINE L. REV. 307, 315 (2011) (observing that district judges’ lack of relevant technical background “hard for them to understand often complex patented technologies and the industries in which they occur”)
  2.  Section 115 the Indian Patent Act, 1970  http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps115.html#:~:text=(1)%20In%20any%20suit%20for,question%20of%20fact%20or%20of
  3.  In re Ex Parte Peterson, 253 U.S. 300, 312 (1920)
  4.  Sun Mobility Private Limited v. Mr. Arumugam Rajpendra Babu, OSA 117 of 2020, Madras High Court, 4 June 2020. https://indiankanoon.org/doc/114082443/

Krishnamachari Ramu v. Srinivasa Raja , 24 Nov, 2011, Madras High Court, 14 June, 2018. https://indiankanoon.org/doc/194972262/

The author is Ritu Chaudhary.

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