Patent law is one of the most complex areas of law and justice. Generally, the techno-legal aspect of patenting involves definite convolutions that challenges the ability of laymans, judges, lawyers and patent attorneys to conceptualize facts and technologies discussed during patent litigation cases. Patent disputes involve reviewing and deliberating upon complex technologies that cannot usually be resolved by judges alone. A patent specification (either provisional or complete) is a techno-legal document encompassing the different aspects of the underlying invention – claims, drawings, technical description, method of performing the invention, claims and other parts and training in the law is hardly sufficient to understand the nuances of these aspects. For this reason, courts are allowed to appoint independent Scientific Advisors to assist in the understanding of the scientific or technical questions pertaining to the dispute in question.
Scientific Advisers in India
In India, Section 115 of the Patents Act, 1970 provides that in any suit for infringement or in any proceeding before a court, the court may at any time, and whether or not an application has been made by any party for that purpose, appoint an independent scientific adviser, to assist the court or to inquire and report upon any such question of fact or of opinion (not involving a question of interpretation of law) as it may formulate for the purpose.
Rule 103 of the Patents Rule, 2003 provides that a person shall be qualified to have his name entered in the roll of scientific advisers, if he –
- holds a degree in science, engineering or technology or equivalent;
- has at least fifteen years’ technical, practical or research experience; and
- holds or has held a responsible post in a scientific or technical department of the Central or State Government or in any organisation.
Further, the Controller maintains a roll of scientific advisers and updates it annually. The roll contains the names, addresses, specimen signatures and photographs of scientific advisers, their designations, information regarding their educational qualifications, the disciplines of their specialisation and their technical, practical and research experience.
Additionally, the remuneration of the scientific adviser is fixed by the court and includes 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 is defrayed out of moneys provided by Parliament by law for the purpose.
Role and responsibilities of Scientific Advisers
A scientific advisor plays a crucial role in educating and presenting intricate technological issues, he/she helps translate complex technology and communicate the legal implications of conclusions into terms the judges and the patent attorneys can understand. Patent-inexperienced judges have to spend a considerable amount of time merely to understand the technological jargon used in technological issues. Hence, Courts mostly refer to expert opinions in formulating their judgment.
A court may appoint an independent expert for deciding on factual issues, in addition to party appointed experts. The opinion of the experts may be challenged by cross examinations. During patent infringement proceedings, the patented technology is sought to be analyzed in and out. Expert opinions relating to patent validity issues may cover diverse topics such as anticipation, inherency, the scope and content of the prior art, the differences between the prior art and the claimed invention, how a person of ordinary skill in the art would understand the teachings of the prior art and other aspects. The testimony of technical experts may be sought for enablement and written description issues as well.
Disqualification of Scientific Advisors
Rule 103A provides that a person shall not be eligible to be included in the roll of scientific advisors, if he
- has been adjudged by a competent court to be of unsound mind;
- is an undischarged insolvent;
- being a discharged insolvent, has not obtained from the court a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part;
- has been convicted by a competent court, whether within or outside India of an offence to undergo a term of imprisonment, unless the offence of which he has been convicted has been pardoned or unless on an application made by him, the Central Government has, by order in this behalf, removed the disability; or
- has been guilty of professional misconduct.
Judicial cases regarding Scientific Advisors
In case of Sun Mobility Private Limited vs Arumugam Rajendra Babu, the Madras HC clarified that the object of appointing the Scientific Advisor is to decide the interim application on merits. In absence of clarity on the subject matter of the patents there remains a need to effectively adjudicate counter-claims in infringement suits by appointing a Scientific Advisor. The Scientific Advisor may be appointed by the court in any suit for infringement or any proceeding under the Patents Act and critically at any point of time, regardless of whether an application has been made by a party to this effect.
In the case of Fresenius Kabi Oncology Limited v Glaxo Group Limited and Anor, the now defunct IPAB reiterated the importance of the opinion of independent experts appointed as neutral witnesses. The IPAB observed that, when parties furnish expert evidence, predictably the opposite side attacks the evidence. This problem would be obviated by the appointment of a court witness.
As of now, there are 37 Scientific Advisors as per the updated roll (2019). With the abolishment of IPAB and the increasing number of patent filing, the role of Scientific Advisors will ostensibly be of vital importance in patent litigation.