DELHI HIGH COURT CLARIFIES THE EXERCISE OF JURISDICTION IN REVOCATIONS FILED AS ORIGINAL PROCEEDINGS AND APPEALS

Prior to the enactment of the Tribunal Reforms Act (TRA), 2021, revocation petitions were maintainable both before the Intellectual Property Appellate Board (IPAB) as original proceedings and also before the High Court in a counter-claim in a suit for infringement of a patent.

However, consequent to the enactment of the TRA (leading to abolition of IPAB), both revocation petitions (i.e. as original proceedings and as counter-claim) and all the appeals are now to be instituted only at the High Court. Vide its order dated 10 November 2022, the Hon’ble Delhi High Court clarified the territorial jurisdiction of a High Court for the purpose of (i) revocation petitions under Section 64 filed as original proceedings before the High Court and (ii) Appeals under Section 117A against orders passed by the Patent Office.

Issues of maintainability raised in the following three proceedings was collectively heard and decided in this order.

a.??????(Dr. Reddy's Laboratories Limited & Anr. v. The Controller of Patents & Anr)

b.?????(Thyssenkrupp Rothe Erde Germany Gmbh?(Thyssenkrupp)?v. The Controller of Patents & Anr)

c.??????(Elta Systems Ltd. v. The Controller of Patents)

(a)?and (b) are revocation petitions as original proceedings whereas (c) is an appeal under Section 117A.

Territorial Jurisdiction of a High Court in Revocation matters as original proceedings

The Hon’ble High Court alluding to Girdhari Lal Gupta v. K. Gian Chand Jain & Co affirmed that the ‘cause of action’ in revocation matters could be invoked by an ‘interested party’ located in any part of the country where the factum of grant and its effect would affect the interest of that party. Hence, the High Court having territorial jurisdiction in respect of revocation petitions under Section 64 cannot be merely on the basis of the ‘appropriate office’ or ‘examining office’ but on the basis of where the cause of action for filing the revocation arises.

The cause of action could, inter-alia, arise at any of the following places:

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(i) Place where the patent application is filed;

(ii) Place where the patent is granted;

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(iii) Place where the manufacturing facility of a person interested is located;

(iv) Place where cease and desist notice may be served or replied from;

(v) Place where patentee resides or carries on business i.e., manufactures or sells the patented invention;

(vi) Place where the approval for manufacture or sale of product has been granted, but the same is prevented due to the existence of the patent;

(vii) Place where the import of the product may be interdicted due to the existence of the patent;

(viii) Place from where the export of product is being stopped due to existence of the patent;

(ix) Place where research on a commercial scale in respect of the patented subject matter is curtailed;

(x) Place where the suit for infringement has been filed;

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It was therefore summarized that wherever the effect of the patent is felt and the commercial interest of a person interested is affected, the High Court having territorial jurisdiction over that place would be considered to have nexus with the suit and a revocation petition under Section 64 could be maintainable in that High Court.

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Hence, as far as a revocation petition is concerned, it can be filed in any High Court where cause of action arises within the jurisdiction of such High Court.

Territorial Jurisdiction of a High Court in Appeal matters

On the inquiry of where an appeal against the decision of the Patent Office would lie,?The Hon’ble High Court affirmed that the ‘Appropriate office’ is the situs of the patent application. Although for administrative exigencies, patent applications are allocated for examination across offices, such exigencies would not change the ‘appropriate office’ of the patent application

Once orders are passed by the Patent Office on an application, any challenge to such order or direction would, therefore, ordinarily lie before the High Court in whose jurisdiction such ‘appropriate office’ is located.

This is because of the following reasons:

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i. The appeal is a continuation of the original proceeding;

ii. The entire record of the patent application is readily available at the appropriate office;

iii. As per the scheme of the Rules, the concerned applicant would be domiciled, carrying on business or normally residing within the said territorial jurisdiction;

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iv. The invention may have originally originated from the said territory;

v. The address of service in India in case of a foreign applicant would be in the territory where the appropriate office is located.

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The Court for the foregoing reasons noted that?“even after the enactment of the TRA, appeals under Section 117A challenging the order or direction of the Patent Office would lie before the High Court having territorial jurisdiction over the appropriate office from where the patent application originates and which is the situs of the said application.”???

With this pronouncement, appeals under Section 117A can lie only in the four High Courts of Madras, Mumbai, Delhi and Calcutta, within whose respective jurisdiction the appropriate office of the Patent Office, where the patent application is filed, is located.

-Divya Shekar