India: Writ Jurisdiction Of A High Court Not Dependent Upon Where The 'Appropriate Patent Office' Is Situated

Introduction

In the case of Filo Edtech Inc. vs Union of India & Anr [C.A.(COMM.IPD-PAT) 30/2023], the Hon'ble Delhi High Court held that the seat of High Court for filing an appeal would be based on the location of the appropriate office as defined in Rule 4 of the Patents Rules, 2003 (as amended). The filing of an appeal is a right of action as stipulated in the Patents Act under Section 117A(2) of the Patents Act, 1970 and therefore, the seat of the High Court will be governed by the definition of appropriate office as defined in Rule 4(2) of the Patents Rules which uses the expression "in respect of any proceeding under the act". It is well settled that the location where the patent application is filed is the appropriate office for that application, irrespective of where that application was examined and the hearing was conducted.

This is also clear from the proviso of Rule 28(6), which states that if a hearing is conducted through video conferencing, such a hearing shall be deemed to have taken place at the appropriate office. However, a writ proceeding is not stipulated under the Patents Act, and therefore, a legal issue arises as to which High Court will have jurisdiction to entertain a writ petition arising on any issue concerning any proceeding before the patent office.

For example, in the case of pre-grant opposition, when the opposition is dismissed, the Opponent has no remedy to file an appeal against the dismissal of its pre-grant opposition than to file a writ petition. In this circumstance, what will be the seat of the High Court to invoke writ jurisdiction if the patent application was filed in one office, whereas the hearing was conducted by a controller of another office? This question was settled by a division bench of the Madras High Court in the case of University Health Network vs Adiuvo Diagnostics Private Limited [Writ Appeal No.3076 of 2023].

Brief Facts of the Case

The Appellant in the above case filed a writ appeal under Clause 15 of Letters Patent to set aside the order of the learned Single Judge, dated 27.09.2023, passed in W.M.P.(IPD). No. 7 of 2023 in W.P.(IPD). No. 23 of 2023. The Appellant in this writ appeal is the fourth respondent in the writ petition filed by the respondent in the present writ appeal. The respondent/writ petitioner is a company based in Chennai and claims to be into creating platform technologies in the field of Optoelectronics. The respondent/writ petitioner had filed a pre-grant opposition against the Appellant's patent application no. 9067/DELNP/2010 which claims a patent in respect of a device and method for fluorescence-based imaging and monitoring. The said patent application was filed at the Delhi patent office.

However, this application was allotted to a controller located in Chennai for examination. The pre-grant opposition in this application was filed in Delhi by the respondent/writ petitioner. However, the pre-grant opposition was also assigned to the same Controller. The Controller examined the pre-grant opposition and conducted enquiry from Chennai, including physical hearings in Chennai on various dates. After the conclusion of the hearing, the Controller dismissed the opposition and granted the above patent application a patent no. 439474 on 19.07.2023.

Aggrieved by this order of the Ld. Controller, the respondent/writ petitioner filed a writ petition of Certiorarified Mandamus, challenging the orders dismissing the opposition as well as a grant of patent and with a consequential prayer to remand the matter for hearing the pre-grant opposition application afresh for violation of the principle of natural justice for the reason that the impugned order did not consider the expert evidence of the writ petitioner. It is also silent about the detailed written submissions filed by the writ petitioner.

The Hon'ble single bench had admitted the writ petition and held that since the petitioner and the fourth respondent were competitors in the market, granted an ad-interim order restraining the fourth respondent from prosecuting the petitioner based on Patent No.439474, provided that the petitioner uses devices and methods for fluorescence-based imaging and monitoring, based on its patent. During the proceeding in the writ petition, the Appellant/respondent no. 4 had raised an issue of non-jurisdiction of this High Court on the ground that since the patent in question was filed in Delhi, the appropriate office for this patent application is Delhi.

Therefore, the Delhi High Court is the correct forum to entertain this writ petition. However, the Hon'ble single bench rejected this argument and held that since a part of the cause of action arises in Chennai, this Court has jurisdiction to hear this writ petition. The Hon'ble Single bench held that the jurisdiction of this Court under Article 226 of the Constitution of India is not dependent upon where the 'appropriate patent office' is situated. Therefore, Rule 4 of the Patents Rules is not dispositive of the jurisdiction. Aggrieved by the decision of the Hon'ble single bench, the Appellant filed a writ appeal before the division bench of this Hon'ble Court.

Issue before the Division Bench

The issue before the division bench was whether the Writ Petition before this Court is without territorial jurisdiction considering the fact that the appropriate office for the subject patent application is Delhi and also the subject pre-grant opposition was filed before the Delhi patent office. The Delhi High Court would only be the convenient forum, and the action of the writ petitioner amounts to forum shopping.

Applicable RULE/LAW and Submission of the Parties

Section 2(1)(i) of the Patents Act, 1970 (hereinafter "the Act") gives the relation of the High Court with respect to a State or Union Territory. Rule 4 of the Patents Rules, 2003 (as amended) defines what is an appropriate office. Rule 28(6) of the Patents Rules states that a patent hearing may also be held through videoconferencing, which shall be deemed to have taken place at the appropriate office. Article 226(2) states that the power conferred by clause (1) to issue directions, orders or writs to any Government, authority or person may also be exercised by any High Court exercising jurisdiction in relation to the territories within which the cause of action, wholly or in part, arises for the exercise of such power, notwithstanding that the seat of such Government or authority or the residence of such person is not within those territories.

The Appellant submitted that the appropriate office, as per Rule 4 of the Patents Rules, is only the Delhi office. An automated system makes the allotment for administrative exigency, and as per Rule 28(6) of the Patents Rules, the hearing is deemed to have taken place only in Delhi. The Appellant further relied on the case of Dr. Reddy's Laboratories vs The Controller of Patents [(2014) 5 LW 289 (DB)] and Filo Edtech Inc vs Union of India and Anr, contending that a mere hearing at Chennai alone would not confer jurisdiction on the Madras High Court. The Appellant further claimed that the defect of jurisdiction strikes at the very authority of the Court to pass any order [Kiran Singh and Ors. vs Chaman Paswan and Ors (AIR 1954 SC 340)].

The writ petitioner/respondent contended that this Court has territorial jurisdiction as part of the cause of action that arose in Chennai. This Court cannot be termed an inconvenient forum and further submitted that the most critical parts happened only in Chennai, i.e., the hearing. The writ petitioner/respondent contended that when both the writ petitioner and the fourth respondent (Appellant) and their attorneys and agents have an office in Chennai, and the matter has been filed and entertained in Chennai, it cannot be said that the Madras High Court is an inconvenient forum.

Decision of the Court

The Hon'ble Court, after hearing both parties, held that since the instant matter was filed under Article 226 as a writ petition, the jurisdiction of the High Court will be based on the provision of Article 226(2), which states that any high court exercising jurisdiction in relation to the territories within which the cause of action, wholly or in part, arises. The Hon'ble division bench differentiated between the nature of the suit instituted and held that since the party has sought a remedy through a writ petition, therefore, irrespective of the location of the 'appropriate patent office', this Court would have territorial jurisdiction to entertain the matter if the part cause of action arose within its jurisdiction.

The Hon'ble division bench held that the writ petitioner has a patent and is conducting business in Chennai. The same is an integral part of the reason for the writ petitioner to oppose the grant of the patent. On the contrary, the fourth respondent is based in Canada and, through its attorney, is filing the application in India. Therefore, it cannot be said that the primary geographical area where the rights of parties play out is Delhi and that jurisdiction is artificially vested in Chennai.

If the geographical area in which the rights of parties play out is to be considered, then Chennai stands on a better footing than Delhi. The Hon'ble division bench further held that the main contention of the writ petitioner was that their expert evidence affidavit and written submission furnished post to a hearing held in Chennai was not considered; therefore, it cannot be contended that no part of the cause of action arose within the Jurisdiction of this Court. The Hon'ble division bench further clarified that deeming the provision of Rule 28(6) and definition of Appropriate office as per Rule 4 (2) of the Patents Rules is for specific purposes such as for filing of an appeal.

On the issue of forum conveniens, the Hon'ble division bench held that (i) the Appellant/fourth respondent is located in Canada and has filed the Patent Application through its attorneys; (ii) the writ petitioner is located in Chennai; (iii) both sides learned counsel and patent agents are having their offices also at Chennai, and therefore, there is no ground as why this Court should exercise restraint on the ground of forum conveniens. The Hon'ble division bench went on to state that with the advent of technology, in the times of quick and instant communication and virtual hearings, the ethos relating to forum conveniens and prejudice to the parties have all to be recalibrated. The Hon'ble division bench, in view of the above reasoning, dismission the present writ appeal.

Conclusion

On the issue of forum conveniens, one crucial factor that should have been considered for foreign companies is the address of service. In the instant matter, the Appellant filed a request for a change of agent and address of service on May 05, 2022, wherein they mentioned their address of service in Delhi. Also, the address of service of the agent of the Opponent is in Delhi. Even if a minuscule part of the cause of action arises within the jurisdiction of a Court, a Writ petition would be maintainable before the said Court. However, this is not the singular factor and the doctrine of forum convenient must be considered. The concept of forum conveniens means that it is obligatory on the part of the Court to see the convenience of all the parties before it [Sterling Agro Industries Ltd. vs Union of India & Ors. (2011 SCC OnLine Del 3162)].

Therefore, if this factor of address of service of the Applicant and Opponent had been considered, it would have settled all the considerations for the principle of forum conveniens. Rule 4(2) of the Patents Rules uses the expression "shall not ordinarily be changed". The use of "ordinarily" in Rule 4(2) raises the question of in what circumstance the appropriate office, once decided, can be changed, is still to be answered. However, it is clear now that the jurisdiction of a High Court under Article 226 of the Constitution of India is not dependent upon where the 'appropriate patent office' is situated, and therefore, Rule 4 of the Patent Rules is not dispositive of the jurisdiction.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.