The Tribunals Reforms Act passed in April 2021 dissolved eight tribunals, including the Intellectual PropertyAppellate Board ("IPAB"). The IPAB had the original and appellate jurisdiction under various IPR-related Acts, including the Patents Act of 1970. Under Chapter VIII of the Tribunal Reforms Act ("TRA"), amendments have been made to the
Indian Patents Act 1970, and the functions of the IPAB have now been transferred to the High Courts. With this fundamental change in the Patents Act, numerous issues have arisen concerning the jurisdiction of the High Courts, and the gaps in the amendment act have become apparent. One of these issues has been dealt by the Delhi High Court in the case of Dr. Reddy's Laboratories Limited & Anr V. The Controller of Patents & Ors, where the court considered the question of whether all the High Courts in the country would have the jurisdiction to entertain appeals and revocation petitions irrespective of the registration office of the Patent. The court clubbed two revocation petitions under Section 64 and an appeal under Section 116 as common question of law with regard to the jurisdiction of the High Court had arisen.
HISTORICAL PERSPECTIVE
Historically, under the Patents and Designs Act, 1911, the revocation petition could be brought before the High Court. Under the Patent Act of 1970 similar provisions were added and any "interested person" could bring an application under the said section. Also, an appeal could be filed from the decision of the Controller before the High Court in those jurisdictions the Controller exercised his powers. This position was altered with the enactment of the Trademark Act 1999, which established the IPAB. All the petitions and appeals were now directed towards the IPAB. But with the recent amendment brought by the TRA, and the abolition of the IPAB, the jurisdiction under the Patents Act has shifted back again to the High Courts. Under the previous regime, the issue of jurisdiction was treated in a flexible manner and parties decided jurisdiction based on the Patent office where the original application was filled. Nevertheless, the issue with regard to the jurisdiction had to be re-analyzed in light of the recent developments.
JURISDICTION UNDER PATENTS ACTS
The Indian Patent Office are responsible for administering the law of patents, including patent administration, patent duration, and patent renewal among other things. Any suit for Patent infringement can be brought before the District Courts. It is the lowest court before which a suit for patent infringement can be brought. An appeal from the decision of the District Court lies in the High Court and progressively in the Supreme Court. Nevertheless, the original jurisdiction with regard to certain other matters (like Revocation Petitions and Appeals) lie only with the High Court from whose decision, an appeal can lie to the Supreme Court.
- REVOCATION PETITION
A revocation petition under Section 64 could be originally filed before the IPAB and only the counter-claims could be filed before the appropriate High Court. With the enactment of the TRA, now the High Court can even entertain original revocation petitions. Nevertheless, the question that arises for consideration is which High Court has the jurisdiction to entertain the original petition under Section 64. Under Section 64, any person interested could institute a suit for revocation. "Persons Interested" has been defined by the court in Aloys Wobben v. Yogesh Mehra as manufacturers, sellers, exporters, importers of a product related to the patented invention; or persons engaged in research in the field of the invention; or persons who may be funding such research among others. Thus, a wide amplitude of people could initiate a petition under Section 64 of the Act. This was majorly because the grant of patent has an "All-India Effect" i.e., the effect of grant of patent is not limited to the office where the patent has been granted. Considering these facts, the Delhi High Court held that the grant of the patent under the Act should not be determined based on the office of the patent filling but based on the place where the cause of action has arisen.
The court also noted what all circumstances could give rise to a cause of action. Thus, the original jurisdiction under Section 64 of the Act would extend not only to the High Court where the original patent filing is done but would also extend to all other High Courts where the lis/ cause of action arises. For this, the court relied on the 1978 decision of Delhi High Court in Girdhari Lal Gupta v. K. Gian Chand Jain & Co. In the above case, the court formulated the test of "static" effect and "dynamic" effect of the grant of Patent. While the "static" effect meant the place where the registration was done, while the "dynamic" effect meant the places where the "commercial" interest of the "interested parties" lay. A similar observation was made by the Delhi High Court in context of the Patents Act in the case ofAjay Industrial Corporation v. Shiro Kanao of Ibaraki City where a petition under Section 64 could be filed in any High Court. In this regard, the court also referred to the judgement of Himachal Pradesh High Court in the case ofMSN Laboratories Pvt. Ltd. v. The Controller of Patent where similar observations were made.
- APPEAL AGAINST ORDER
"APPROPRIATE OFFICE"
On the second question of where an appeal against the decision of the Patent Office would lie, the court went into the question of "appropriate office". The court analysed the rules to determine what constitutes an "appropriate office". The appropriate office is the office where the Patent is originally filled. It is decided based on the following:
- Place of residence, domicile or business of the applicant) or,
- Place from where an invention actually originated or,
- Address for service in India given by the applicant, when the Applicant has no place of business or domicile in India (Foreign applicants).
Under the Act, four separate zones have been formulated, and states have been grouped. Any patent application from the states within a zone would be filled at the particular office of that zone. The jurisdiction of the patent office is different for administrative or prosecutorial actions and Enforcement of Patent. While the former rests with the Patent Office, the later rests with the Civil Courts.
"APPEALS UNDER SECTION 116"
All the appeals from the decision of the patent office must lie to the High Court under whose jurisdiction the Patent Offices falls. The reasons given by the High Court for the same was both legal and administrative. Legally, an appeal is a continuation of the original application; rules specify that the concerned applicant would be domiciled or carry-on business within the said territorial jurisdiction, or the invention might have arisen from the jurisdiction of the High Court. Administratively, it would also be convenient since all the requisite documents would be readily available. The court rejected the argument that the cause of action should also play a role in determining the jurisdiction. The court relied on the judgement of the Delhi High Court inScooters India Ltd. v. Jaya Hind Industries Ltd. where the Court explicitly rejected the argument that an appeal against the order of a Patent Office would not only be limited to the High Court within the territorial jurisdiction of which the appropriate office is situated. This view was also upheld by the Supreme Court in Godrej Sara Lee Limited v. Reckitt Benckiser Australia where the court gave a similar ruling and rejected the decision inGirdhari Lal Gupta (Supra) which had held that cause of action would also play a role in determining the place of appeal.
The court also rejected the argument that virtual hearing by the Controller of an office other than the "appropriate office" or the passing of the impugned order would vest the Delhi High Court with the jurisdiction to hear the appeal since the same was only done for "administrative convenience". Also, the court took reference from the judgment in Bharat Bhogilal, to hold that the any arrangement made between the parties shall also not constitute any ground to allow jurisdiction to a High Court other the one in whose jurisdictions the "appropriate office" is situated. Thus, the court concluded that the order even though the passed by the Delhi Patent Office would still not vest the jurisdiction in the Delhi High Court since the order was passed because of "administrative convenience" and because the "appropriate office" was not within the jurisdiction of the Delhi High Court.
SETTLING THE CONUNDRUM
The Tribunals Reforms Act had thrown open the question of jurisdiction of High Court to entertain applications under certain provisions of the Act. The Delhi High Court has not added any new jurisprudence in this area and has ratified the system as it existed before the establishment of the IPAB. With the recent pronouncement, an application under Section 116 can lie only in the four High Courts of Madras, Mumbai, Delhi and Calcutta. Nevertheless, as far as a revocation petition is concerned, it can be filed in any High Court if the cause of action arises within the jurisdiction of the said High Court.
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