INDIA: High Court adjudicates regarding jurisdictional powers of Courts in Patent matters
The Hon’ble High Court recently delved into the question of what constitutes “territorial jurisdiction” for the purposes of the provisions of the Indian Patent Act in respect of powers exercised by the High Court mainly in two types proceedings -
i. Revocation petitions under Section 64 of the 1970 Act filed as original proceedings before the High Court; and
ii. Appeals under section 117A of the 1970 Act against orders passed by the Patent Office.
It is pertinent to mention that after the enactment of Tribunal Reforms Act 2021 (‘TRA’), jurisdiction with regards to appeals and revocation petitions has been transferred to the High Courts. Therefore, in the matters of Dr. Reddy’s Laboratories Limited & Anr v. The Controller of Patents, Thyssenkrupp Rothe Erde Germany GmbH v. The Controller of Patents, and Elta Systems Ltd v. The Controller of Patents, two revocation petitions under Section 64 and an appeal under Section 117A of the Patents Act, 1970 were clubbed together to analyse their maintainability before the Hon’ble High Court.
· With regards to C.O.(COMM.IPD-PAT) 3/2021 titled Dr. Reddy’s Laboratories Limited& Anr. v. The Controller of Patents& Anr., Dr. Reddy’s Laboratories Limited (herein referred to as “Petitioner no. 1”) and MSN Laboratories Pvt. Ltd. (herein referred to as “Petitioner no. 2”) filed the present revocation petition on October 16, 2021 under Section 64 of the 1970 Act seeking revocation of patent no. IN 268846 granted in favor of Boehringer Ingelheim International GmbH (herein referred to as “Respondent no. 2”).
· In response, infringement suit against Petitioner no. 1 was initiated by Respondent no. 2 in Himachal Pradesh High Court on October 19, 2021 and subsequent interim injunction was granted to the latter. On October 25, 2021, Respondent no. 2 managed to obtain an interim injunction against Petitioner no. 2 as well. In addition, an interlocutory application (I.A.3420/2022) was filed by Respondent no. 2 u/s 10 of Civil Procedure Code (‘CPC’) seeking stay on the revocation petition until the adjudication of the infringement suits. The question with respect to maintainability has also been raised in the present matter.
· With regards to C.O.(COMM.IPD-PAT) 1/2022 titled Thyssenkrupp Rothe Erde Germany GmbH v. The Controller of Patents, the Thyssenkrupp Rothe Erde Germany GmbH (herein referred to as “Petitioner”) filed the present revocation petition under Section 64 of the 1970 Act seeking revocation of patent no. IN 254458 granted in favor of IMO Holding GmbH (herein referred to as “Respondent no. 2”). Despite the fact that both parties are based out of Germany, the original revocation petition was filed before IPAB Chennai in March 2021 as the appropriate office since the address of service is also at Chennai.
· In reply, IMO filed an interlocutory application (I.A. 3570/2022) under Order 7 Rule 11 CPC seeking rejection of the revocation petition filed by the Petitioner on the ground of lack of jurisdiction and concealment of revocation filed before the IPAB. The issue in perspective here relates to the maintainability of this revocation petition.
· With regards to C.A. (COMM.IPD-PAT) 169/2022 titled Elta Systems co Ltd. v. The Controller of Patents, an appeal has been filed by Elta Systems Ltd. (herein referred to as “Appellant”) against the learned Controller’s order dated July 30, 2021 of rejecting the Appellant’s patent application numbered 2286/MUMNP/2014 under Section 117A of the Patents Act.The Appellant filed a PCT application bearing no. PCT/IL2013/050360 titled “Estimating a Source Location of a Projectile” on April 25, 2013. The patent application in Indian phase was filed on November 12, 2014 at the Mumbai Patent Office. However, it is worth mentioning that the application was allotted to the Delhi Patent office for examination and subsequently, the First Examination Report (‘FER’) was issued by the learned Controller at Delhi office on February 25, 2019. In response, the Appellant filed a reply to the Mumbai Patent office on August 23, 2019.
· Thereafter, the hearing was held by video conferencing by the ld. Assistant Controller whose seat was at Delhi and finally, after the hearing, the said application was refused vide the impugned order, against which the present appeal has been filed. The issue in perspective here relates to whether this appeal is maintainable before the Bombay High Court or Delhi High Court.
OPINION OF THE BENCH
· The Hon’ble Court said that revocation petitions are original proceedings and appeals arise from orders passed by the patent office. Therefore, it is essential to understand the historical perspective behind different patent statutes. Prior to IPAB, the parties concluded the jurisdiction on the basis of the patent office where the patent application was originally filed. However post the enactment of the Tribunal Reforms Act 2021, the IPAB got abolished and all pending cases got transferred to the High Court.
· The Hon’ble court mentioned that the High Courts exercise both appellate and original jurisdiction and are bestowed with many powers under the Patents Act, 1970. The revocation petitions u/s 64 can be filed as original proceedings by the central government or any “person interested” or as counter claims in a suit for infringement of a patent.
· The High Court having territorial jurisdiction in respect of revocation petitions under section 64 of the Act has to be construed not merely on the basis of appropriate office or the examining office, but on the basis of where the ‘cause of action’ for filing a revocation petition arises.
· The Hon’ble Court said that the jurisdiction in cases of revocation petition would be concluded on the basis of static and dynamic effect of the patent. In sum and substance, wherever the effect of the patent is felt would be the place which has nexus with the lis and, there a revocation petition under Section 64 could be maintainable.
· It is worth mentioning that commercial interest of the Applicants shall also be considered while deciding the jurisdiction and the High Courts under the particular places shall also be taken into consideration.
· With regards to the appeal u/s 117A of the Patents Act, 1970, the Hon’ble Court said that appropriate office for patent applications is the one where all the proceedings pertaining to the application have to take place and are deemed to have taken place.
· Therefore, 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. In the case of appeals where challenges against orders of the Patent Office are raised, the concept of cause of action cannot be pleaded to vest jurisdiction in other High Courts i.e., other than the one in the territorial jurisdiction of which the appropriate office is located.
· It is pertinent to mention that the location of the appropriate office shall determine the jurisdiction because of the following reasons:
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;
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.
· With regards to C.O.(COMM.IPD-PAT) 3/2021, the Hon’ble court noted that the petition is maintainable since the revocation petition was filed prior to filing of the infringement suits and the Delhi Patent Office granted the patent, and therefore, it must be deemed as the appropriate office.
· With regards to C.O.(COMM.IPD-PAT) 1/2022, the Hon’ble court held that the petition is non-maintainable since the cause of action does not arise in Delhi. Besides, the Applicant had already filed a revocation petition and hence, it is rightly transferred to Madras High Court.
· With regards to C.A. (COMM.IPD-PAT) 169/2022, the Hon’ble court held that the petition is non-maintainable and the appeal against the impugned order shall lie before the Bombay High Court as the application was filed in the Mumbai Patent office.