In the matters of Dr. Reddys Laboratories Limited & Anr v. The Controller of Patents & Ors,1 Thyssenkrupp Rothe Erde Germany GmbH v. The Controller of Patents & Anr2 and Elta Systems Ltd v. The Controller of Patents, the Delhi High Court (Court), in a judgement and order dated 10 November 2022, resolved the uncertainty regarding jurisdiction of High Courts to entertain revocation petitions and appeals under The Patents Act, 1970 (Act).

Factual Matrix

The present cases are not pending cases transferred from the Intellectual Property Appellate Board (IPAB). Issues of maintainability and jurisdiction have been raised in the abovementioned three proceedings, instituted after the enactment of the Tribunal Reforms Act 2021 (TRA):

a. O.(COMM.IPD-PAT) No.3/2021 (Dr. Reddy's Laboratories Limited & Anr. v. The Controller of Patents & Anr):

Boehringer filed a patent application through the PCT route (under the Patent Cooperation Treaty) in the Patent Office of Delhi, which was subsequently granted. The present revocation petition was filed by Dr Reddy in the High Court of Delhi. Subsequently two different suits for infringement were filed by Boehringer in the High Court of Himachal Pradesh against Dr Reddy and MSN Laboratories Pvt Ltd (Petitioners). A preliminary objection as to the maintainability of the present revocation petition before the Delhi High Court has been raised.

b. O.(COMM.IPD-PAT) No.1/2022(Thyssenkrupp Rothe Erde Germany Gmbh (Thyssenkrupp) v. The Controller of Patents & Anr):

Thyssenkrupp had filed a revocation petition against IMO holding GmbH (IMO) before the Intellectual Property Appellate Board (IPAB) of Chennai. As Thyssenkrupp was unsure of the fate of its revocation petition after the enactment of TRA, it filed another revocation petition before the Delhi High Court in January 2022. IMO (Respondent No. 2) filed a suit inter alia seeking rejection of the subsequent revocation petition filed by Thyssenkrupp on the ground of lack of jurisdiction.

c. A.(COMM.IPD-PAT) 169/2022 (Elta Systems Ltd. v. The Controller of Patents):

Elta filed a national phase patent application at the Patent Office, Mumbai. A hearing was held through video conferencing by the Ld. Assistant Controller whose seat was at Delhi, and the patent application was refused by an order passed by the Patent Office, Delhi. The present appeal has been filed before the Delhi High Court challenging this refusal order and the issue to be decided is whether the appeal would be maintainable before the Delhi High Court or at the High Court at Bombay.

Findings and Decision

The Court heard the submissions made by all counsels, and before deciding on the issue of maintainability, discussed in detail in the judgement, the historical position under the various patent statutes that have been in force in India.

The Court emphasized that revocation petitions are original proceedings and appeals are continuation arising from original orders.

Revocation Petitions under Section 64 of the Act is to be Determined using the test of Dynamic Effect

Exclusive rights of the patentee spelt out in Section 48 of the Act extend to the entire country. The Court after relying on Girdhari Lal Gupta v. K. Gian Chand Jain & Co3 observed that the cause of action could, inter alia, arise at any of the following places:

i. Place where the patent application is filed or granted;

ii. Place where the manufacturing facility of a person interested is located or where the approval for manufacture / sale of product has been granted, but the same is prevented due to the existence of the patent;

iii. Place where cease and desist notice may be served / replied from or where the suit for infringement has been filed;

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

v. Place where the import of the product may be interdicted due to the existence of the patent or where the export of product is being stopped due to existence of the patent;

vi. Place where research on a commercial scale in respect of the patented subject matter is curtailed;

Therefore, a revocation petition under Section 64 of the Act could be maintainable, wherever the effect of the patent is felt which is a place that nexus with the lis.

The Court summarized that:

a. The static effect of the design registration has to be considered i.e., the High Court under whose territorial jurisdiction the Patent Office granting the registration is located would have jurisdiction to entertain the cancellation petition;

b. Dynamic effect of the design registration also has to be considered i.e., in the case of cancellation, wherever the commercial interest of the person interested is affected, such a High Court would have necessary nexus with the subject matter and thus jurisdiction to entertain the cancellation petition;

c. The jurisdictional facts would have to exist for a High Court to exercise jurisdiction.

Appeals Under Section 117A of the Patents Act, 1970

Ordinarily any challenge to orders or directions passed by the Patent Office on an application, would lie before the High Court in whose jurisdiction the appropriate office of the Patent Office is located. The dilemma of jurisdiction arises when a patent application is filed in one Patent Office but is randomly allocated for examination to a different Patent Office.

However, the Court after relying on Godrej Sara Lee Limited v. Reckitt Benckiser Australia4 and Bharat Bhogilal Patel v. Union of India5 took a strict interpretation of relevant rules and sections and concluded that Rule 28(6) of Patent Rules, 2003 makes it clear that even if the hearing is held through video-conferencing or audio-visual communication devices from a different location, the hearing is deemed to have been held at the appropriate office. Additionally, Rule 4(2) was also looked into which specifically states that the appropriate office shall not ordinarily be changed once the same is decided or frozen.

The Court also observed that the original forum and appellate forum of the High Court are two separate jurisdictions operating in two different fields and the doctrine of cause of action cannot be imported by a High Court, while acting as an appellate forum, to assume territorial jurisdiction.

In light of the above conclusions, the Court adjudged the suits in following manner:

  1. O. (COMM.IPD-PAT) 3/2021 was held to be maintainable before the Court since the revocation petition was filed prior to filing of the suits for infringement and the appropriate office as well as the patent was granted by the Delhi Patent Office;
  2. O. (COMM.IPD-PAT) 1/2022 was dismissed because the petitioner has already filed a petition seeking revocation of the patent before the IPAB which admittedly now stands transferred to the High Court of Madras. In view of these facts, the Court held that the present revocation petition is not maintainable. But court reiterated that if any of the elements of cause of action had arisen in Delhi, the Delhi High Court would have had jurisdiction to entertain the revocation petition;
  3. A. (COMM.IPD-PAT) 169/2022 was dismissed along with all pending applications with liberty to Elta Systems Ltd. to approach the High Court of Bombay. Since the patent application was filed in Mumbai Patent Office, it was the appropriate office and the appeal against the refusal order would lie before the High Court of Bombay. Although the Ld. Asst. Controller at the Delhi Patent Office passed the refusal order, the appeal would not be maintainable before the Delhi High Court.

Comments

The present judgement is a welcoming judgement which clarifies filing of revocation / cancellation petitions and appeals from orders from the IP Offices. After the enactment of the TRA, the Delhi High Court created an Intellectual Property Rights Division (IPD) to deal exclusively with intellectual property cases which has resulted in expeditious remedies to parties. However, in courts other than the Delhi High Court, there is still ambiguity regarding the listing of appeals that have been transferred from the IPAB when it was abolished, and therefore Delhi High Court had become a preferable jurisdiction for the applicants and litigants. With the present judgement, parties would not be able to approach Delhi High Court unless the situs of the matter is in Delhi. It is expected that other courts across India step up to frame rules to adjudicate on the appeals and hear them expeditiously.

Footnotes

1. Petitioner No.1- Dr Reddy's Laboratories Limited, and Petitioner No.2- MSN Laboratories Pvt. Ltd; Respondent No.2- Boehringer Ingelheim

2.Respondent No.2- IMO Holding GmbH

3. AIR 1978 Delhi 146

4. AIR 2010 SC 1331

5. MANU/TN/1915/2014

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