The Hon’ble High Court of Delhi has published the draft rules for the Intellectual Property Rights Division Rules, 2021 (hereinafter referred to as ‘the draft rules’). The Hon’ble Court had invited comments from the stakeholders on the same. An Executive summary of the proposed rules has been produced below.
The draft rules defined the provisions under which an appeal can be filed before it. As per Section 2 (d) of the rules, an Appeal can be preferred before the IPD under the following provisions:
| Serial No. | Act | Appeal Provision |
| 1. | Trade Marks Act, 1999 | Section 91 |
| 2. | Copyright Act, 1957 | Section 72 |
| 3. | The Patents Act, 1970 | Section 117A |
| 4. | The Geographical Indications of Goods (Registration and Protection) Act, 1999 | Section 31 |
| 5. | The Protection of Plant Varieties and Farmers Rights Act, 2001 | Section 56 |
| 6. | Semiconductor Integrated Circuits Layout – Design Act, 2000 | Section 42 |
| 7. | Design Act, 2000 | Section 36 |
The rules have further defined the forms and substance in which any proceedings have been filed before the IPD. All the applications made to the Intellectual Property Division shall be made in the formats given under Schedule I of the Rules. Further, the details regarding court fees for different Applications have been given in Schedule II of the Rules.
In addition to the traditional forms of IPR, the rules have also included within its ambit rights such as trade secrets, breach of confidential information, privacy, data protection, and data exclusivity. Matters covered under the IT Act, 2000 such as rights and liabilities of intermediaries, online marketplaces, e-commerce platforms involving IP rights have been included under these rules.
The rules have done away with the requirement of a 2-member quorum as was the earlier procedure. Now, every matter shall be heard and adjudicated by a Single Judge of the IPD.
The new rules have also defined the new nomenclature under which cases belonging to different forms of intellectual property will be filed with the IPD. The new nomenclature has been produced below for different forms:
| Serial No. | Nature of Case | Nomenclature |
| APPEALS | ||
| 1. | Trademarks | C.A. (Comm. IPD-TM) |
| 2. | Copyright | C.A. (Comm. IPD-CR) |
| 3. | Patents | C.A. (Comm. IPD-PAT) |
| 4. | Geographical Indication | C.A. (Comm. IPD-GI) |
| 5. | Plants Variety | C.A. (Comm. IPD-PV) |
| 6. | Semiconductor Design | C.A. (Comm. IPD-SCD) |
| 7. | Design | C.A. (Comm. IPD-DE) |
| CIVIL ORIGINAL PETITIONS | ||
| 1. | Trademarks | C.O. (Comm. IPD-TM) |
| 2. | Copyright | C.O. (Comm. IPD-CR) |
| 3. | Patents | C.O. (Comm. IPD-PAT) |
| 4. | Geographical Indication | C.O. (Comm. IPD-GI) |
| 5. | Plants Variety | C.O. (Comm. IPD-PV) |
| 6. | Semiconductor Design | C.O. (Comm. IPD-SCD) |
| 7. | Design | C.O. (Comm. IPD-DE) |
| WRIT PETITIONS (CIVIL) | ||
| 1. | ANY | Writ Petition (C)-IPD |
| CIVIL MISCELLANEOUS MAIN | ||
| 1. | ANY | Civil Misc. (Main)-IPD |
| REGULAR FIRST APPEAL (RFA) | ||
| 1. | ANY | RFA-IPD |
| EXECUTION FIRST APPEAL (EFA) | ||
| 1. | ANY | EFA-IPD |
| CIVIL REVISION PETITION (CRP) | ||
| 1. | ANY | CRP-IPD |
The procedure to be followed before the IPD, as well as the contents of the plaints, has also been defined in the draft rules. It has also circumscribed the amount of evidence that can be submitted before the IPD. The procedure for various proceedings has been briefly produced as under:
| Serial No | Nature of Proceedings | Prescribed Procedure |
| 1. | Appeals | Shall consist of the following: 1. Memorandum of parties 2. List of dates 3. A brief memorandum of appeal 4. Grounds of challenge in appeal 5. Impugned Order 6. Affidavit of party filing Appeal Every document that has formed part of the proceeding before the IPO shall be adduced No other document shall be adduced except with the leave of the court No evidence shall be recorded in Appeals Respective IPO shall be made a Party (Respondent) Respondents can only file a reply with the leave of the Court and shall be entitled only to submit copies of records Reply, if allowed by the Court, shall be filed within 60 days Rejoinder shall be filed within 30 days |
| 2. | Civil Original Petition | Shall consist of the following: 1. Memorandum of Parties 2. Synopsis 3. List of Dates 4. Affidavit of the filing party Document forming part of IPO proceeding shall be specifically averred All IPO documents shall form part of the record unless challenged. The challenge shall be made during Reply or Rejoinder stage only Framing of Issues shall not be compulsory Evidence shall be filed only if directed by the Court and shall be filed in the form of Affidavits. Other documents, in addition to the ones submitted with IPO, can also be filed in support of the relief sought For Patent cases, complete specifications along with different versions/claims shall also be filed Reply, if allowed by the Court, shall be filed within 60 days Rejoinder shall be filed within 30 days |
| 3. | Writs | Shall consist of the following: 1. Synopsis 2. List of Dates 3. Memo of Parties 4. Memorandum of the writ (Grounds of Challenge, Prayer/Relief, Affidavit in Support) 5. Details of any other remedy availed must be given in Application as well as Affidavit 6. Impugned Order |
| 4. | Civil Misc. Main Petition | Filed for challenging orders passed by Commercial Courts or District Courts in formats as per the Delhi High Court Rules and Orders Shall consist of the following: 1. Memo of the Parties 2. Synopsis 3. List of Dates 4. Civil Misc. Main Petition 5. Grounds for Challenge 6. Prayer/Relief 7. Affidavit 8. Impugned Order 9. Pleadings of Original Trial (Order sheets, Issues framed, Pleadings in relevant interim applications) No right for the opposite party to file a reply The opposite party can file documents in support |
| 5. | Regular First Appeal | Shall be filed as per the procedure given under Delhi High Court Rules and Orders/Practice |
| 6. | First Appeal from Order | Shall be filed as per the procedure given under Delhi High Court Rules and Orders/Practice |
| 7. | Civil Revision Petition | Shall be filed as per the procedure given under Delhi High Court Rules and Orders/Practice |
Pleadings before the IPD shall be accompanied by an affidavit of the authorized representative along with such document establishing the authorization such as Board Resolution and Power of Attorney. The procedure of the suits shall be governed by the Commercial Courts Act, 2015, Patent Suit Rules, 2021, and Delhi High Court Rules, 2018.
An advance copy shall be served upon the Opposite party at least 48 hours in advance, including the copy filed through email. The likely date of listing of the matter shall also be intimated in such correspondence. No further notice is required. Different IPOs are allowed to nominate counsels that they want to appear on their behalf before the IPD.
In cases other than those involving rights in Patents, the IPD may pass summary judgments without an application seeking summary adjudication of the dispute. There shall be no request from any party for summary adjudication and the IPD shall judge on its own on this question. They shall follow the principles as given under Order XIIIA of the CPC, 1908. The following Patent cases can also be adjudicated summarily:
- Where the remaining term of the patent is 5 years or less;
- A certificate of validity of the said patent has already been issued by any High Court or the Supreme Court;
- If the Defendant is a repeated infringer of the same or related Patent;
- If the validity of the Patent is admitted and only infringement is denied.
The IPD may also apply the provisions of the Commercial Courts Act, 2015 and Patent Suit Rules 2021 for the cases that may have come before it. Further, for any proceeding for which no procedure has been defined under the rules, the provisions of Civil Procedure Code, 1908 as amended by the Commercial Courts Act, 2015 and the Delhi High Court (Original Side) Rules, 2018 shall be applicable.
Opinions from experts may be sought if deemed necessary from a panel of experts maintained by IPD for this purpose. The judges of the IPD may also be allowed to appoint law researchers for techno-legal aspects for a minimum of 6 months. The rules have provision to award actual costs for the cases that come before it in accordance with the Delhi High Court (Original Side) Rules, 2018.
These rules are sure a welcome move for Intellectual Property enforcement in the country. The rules have given due regard for the swift disposal of cases, which was the reason behind the dissolution of various tribunals. But the rules seem to be encompassing more than just IP disputes and this may lead to pendency and slow disposal of cases. This will defeat the aim behind the creation of IPD and hence efforts shall be made to avoid such a fate before the final rules come into power.