Image from here.
Nation’s Third, A New IPD at Calcutta High Court!
Later but not late. In the gazette notification dated 20th September 2024 the Intellectual Property Rights Division Rules of the High Court, Calcutta, 2023 were notified. Vide the Rules, the following two divisions were constituted in the Calcutta High Court: the Intellectual Property Rights Division (IPRD) and the Intellectual Property Rights Appellate Division (IPRAD). It was noted that all the original, appellate, writ and miscellaneous jurisdictions shall be exercised under these Divisions.
The Role of Independent Experts
Jumping right into understanding the aspects of ‘experts’ that have been formulated under these Rules, we see that in Rule 21 (e) under the Recording of Evidence, it has been directed that in case of evidence by experts, the same may be recorded by resorting to procedures such as hot-tubbing or such other modes, as the IPRD/IPRAD deems fit and necessary. (Although several provisions only mention ‘IPRD’, Rule 14 confirms the applicability to both IPRD and IPRAD for Rules 15-30. For convenience, the term “IPD” will be used henceforth to refer to both). Almost immediately we jump into the Rules directing the appointment, regulation and consideration of “Independent Experts” (IE) in Rule 22.
Rule 22 begins with the direction of the manner of the appointment of an IE if sought by the parties. The IPRD on receipt of such request may appoint such experts if it is of the opinion that view of such IE is, “necessary to be obtained on specific points and/of questions to be formulated by it.” The process of such appointment shall follow the following order; the parties shall be asked initially to submit a list of qualified experts and the objections regarding the same shall be obtained. Thereupon the IPRD, if it sees that there are no agreement with regard to the list of IE, may appoint such Expert/I.E. as it deems “fit and proper”, which may include appointing such experts who may not be included in the party-made list but rather feature in an independent list registered and maintained by the Department; this appointment can be done by IPRD on its own motion. Apart from the directions regarding the appointment and designated remuneration of the IE, the IPRD may give the IE such appropriate power to perform such examination or inspection or experiments or tests as may be necessary and for the designated costs. This IE may be asked to appear in person or virtually in order to be examined by the Parties. The General duties of the IE includes as follows: (i) a general no-conflict declaration for fair and impartial assistance to the Court, (ii) a written report to be submitted unless otherwise specified, and (iii) wherein in that report, all substance of the material instructions has to be specified, on whose basis the report was written.
Now to critique the present rules. I feel, as before (Please see here for the Comments on Draft IPR Division Rules of High Court at Calcutta, 2023), there is still a lack of clarity over IEs under Rule 22. The provisions for the IEs are commendable considering that many IP matters are highly technical in nature. However, the proposed Rules do not state anything about the criteria for selecting experts for these lists.
For example, in the American case Daubert v. Merrell Dow Pharmaceuticals, Inc.,(1993), the U.S. Supreme Court had established important guidelines for the admissibility of expert testimony in consonance with the Federal Rules of Evidence. The Court had emphasized that judges play a crucial role, as “gatekeepers”, in assessing the validity of the methodology and reasoning behind an expert’s testimony, ensuring it is scientifically sound and relevant to the case at hand. Thus, Daubert (in consonance with Federal Rules of Evidence, Rule 702) had laid the ground that experts must possess more than just academic qualifications—they must have a solid grounding in their discipline’s methods to ensure their testimony is reliable and based on well-established scientific principles.
Judges having experience in dealing with IP matters
The Rules elucidate that the Chief Justice of the Calcutta High Court shall nominate such a number of Judges of the High Court, as may be necessary, to preside over the IPRD and IPRAD. Such Judges shall preferably have experience in dealing with intellectual property subject matter. The stress in selection of Judges having preferably experience in dealing with intellectual property matters could be a problem since such preference for specialist judges is not encouraged in a non-Tribunal forum in the Indian Court System. Delhi High Court IPD Rules do not talk about “experience” of the judges in IP cases.; and instead create a pool of Law Researchers with technical qualifications to assist IPD judges, in addition to regularly appointed law researchers for judges Interestingly, the Calcutta High Court does not mention anything about Legal Researchers dedicated to the IP benches.
Whither go the good things?
“What is this thing they call progress, but a creeping vine?
Slow and steady, it climbs the walls of time,
Changing all within its grasp, yet leaving none the same.”
The Calcutta High Court must keep pace with technological advancements, especially within the IP domain. An IP bench may not always be fully abreast of the latest developments in science and technology, which is why experts play a crucial role.
There are various ways in which these experts can assist the Bench. The Delhi IPD Rules and Patent Suit Rules have addressed this by introducing novel methods of expert engagement, such as technical primers, appointing panels of advisors, and establishing confidentiality clubs. However, the absence of any mention of technical primers, confidentiality clubs, or panels of experts in the current Calcutta High Court Rules makes me worry. I believe that this omission may deprive the Bench of important epistemological tools.
High Court Of Delhi Rules Governing Patent Suits, 2022 define a technical primer as a document either in text form or electronic form, including PowerPoint presentation or audio or video files, giving an introduction to the basic science and/or technology covering the patent, preferably in simplified language. It is also mentioned therein that the Court may direct filing of a technical primer jointly by the parties prior to the First Case Management Hearing to understand the basic science and technology covering the patents.
The Rule 13 of the Patent Suit Rules of the Delhi high Court on the other hand also has the provision for a panel of advisors, to be periodically reviewed, to assist judges in resolving patent cases. These advisors may include professionals such as scientists, economists, academics, accountants, legal experts, patent agents with specialized knowledge, and officers from the Indian Patent Office. It is noted that before being appointed, each advisor ought to sign a declaration confirming the absence of any conflict of interest and committing to provide unbiased and fair assistance to the Court. When appointing advisors, the Court has been given the discretion to consider suggestions from the involved parties. Moreover, the compensation for the experts has been formulated based on their qualifications, experience, reputation, and expertise. It is noted that this panel will be separate from the expert panel formed under the Delhi High Court Intellectual Property Rights Division Rules, 2022.
Lastly, Confidentiality Club (CC) is an interesting development in the field of IP litigation. The recent IP cases and discussions (see here, and here) throw light on the fact that the Indian Benches are growing comfortable with the idea of a CC in IP litigation. I feel the lack of mention of the same here in the Calcutta IPRD Rules (unless you stretch Rule 21 (e) under Recording Evidence under “hot-tubbing and other such modes”) means puts the Calcutta High Court at a step back than the other forums. And no, just mentioning “Hot-tubbing” will not suffice.
I remember having an informal discussion with a legal practitioner about the expert evidence tradition in Calcutta High Court. He mentioned a very important aspect. He said, “Indian High Courts, for the sake of global parity, cannot forsake the adversarial system when it comes to expert engagement in IP Litigation”. I do not agree with him completely. I believe that even before a Bench could try to take a non-adversarial approach, one might note there is a general lack of cohesive IP Procedure rules or guidelines, especially in the context of Experts, in India which is aiding the developing confusion with regard to dis-similar rules.
Way Forward
A consolidated national rules after due discussion ought to be a matter of immediacy. National Seminars and Judicial Conclaves on Adjudication of IPR Disputes in India are welcome moves to raise both awareness and ensure national cohesiveness in rules and judicial understandings. However, we cannot just leave it to discussions and deliberations of few judicial minds but encourage all, extending such awareness to academicians, researchers and IP Experts themselves! Also, national cohesiveness ought to make way for international or trans-boundary cohesiveness. However might be the need, I also believe that it is always best to understand the national geography, polity and economy, before formulating any globally cohesive set of rules concerning a dynamic aspect of law. Thus, the need for a comprehensive and consolidated national (after due study of the International paradigm) IP procedural rules, at least in case of expert engagement, is an immediate requirement.
Endnote (Thank you Swaraj Barooah for pointing this out)
At a time when the Supreme Court itself (vide the Handbook concerning Persons with Disabilities, 2024 (accessible here)) is is of the view that, “Judges must ensure that all case documents are provided in accessible formats and that court registries are equipped to facilitate this”, and Rule 29 of the Calcutta IPD Rules simultaneously talking about “accessibility” within the realms of Rights of Persons with Disability, 2016, Act, (see here) the present IPD rules available in the public domain on the Calcutta High Court website (see here) is a scanned copy and not a optical character recognition (ocr) copy. An OCR copy or document enhances accessibility by converting non-accessible content, such as scanned documents or image-based PDFs, into machine-readable text. This enables screen readers to interpret and read the content aloud for individuals with visual impairments. The OCR content can also be repurposed into alternative formats like braille, large print, or audio, broadening access for users with different needs. In my opinion, as a teacher of disability law, the Apex Court’s effort to ensure an environment where all participants can engage effectively shall receive an positive push if its guidelines with regard to sensitisation of the Court staff (such as court administrative staff, including Stenographers, Court Assistants, and Court Masters etc.) is effectively followed. This effort can start with a small step, say, providing an OCR scanned copy/accessible copy of the Court Rules on the High Court website.