Can A Patent Office Assign A Patent Application Filed Before It To Another Patent Office? Delhi High Court Asks

Hearing a case where an application seeking grant of patent, filed before the Bombay Patent Office, was assigned to the Delhi Patent Office, the Delhi High Court on Thursday posed two interesting questions – (i) whether such practice was permissible, and (ii) if permissible, whether it precluded an unsuccessful applicant from filing an appeal before the Delhi High Court.

Statedly, after the appellant’s patent application was assigned to the Delhi Patent Office, not only did the examination took place at Delhi, but also the First Examination Report (FER) was issued at Delhi.

In fact, the matter was finally heard and the impugned order passed by the Delhi Patent Office. Aggrieved by this order, the appellant had approached the Delhi High Court under Section 117A of the Patents Act, contending that it had territorial jurisdiction.

Contrarily, the respondents maintained that the appeal would lie before the Bombay High Court as the patent application was filed before the Bombay Patent Office. This argument was supported by the decision of a Coordinate Bench in Dr. Reddys Laboratories Ltd. v. The Controller of Patents.

Taking note of Dr. Reddys Laboratories, Justice C. Hari Shankar said that in that case, the court was influenced by Rule 4 of the Patent Rules, 2003, which defines ‘appropriate office’ as the office where a patent application is filed.

Thus, as per Dr. Reddys Laboratories, “at the time of filing of a patent application, the appropriate office in respect of the said patent application, ordinarily, is frozen”.

Observing that there was no provision under which a patent application filed in one Office could be assigned to another Patent Office at a different geographical location for examination, Justice Shankar exposited the two issues arising in the matter thus:

(i) “whether it was open to the respondent, in the absence of any statutory provision to that effect, to delegate the entire examination of the application, conducting of hearing and passing of final order to the Delhi Patent Office…”, and

(ii) “if, in fact, it was permissible for the respondent to do so …when the unsuccessful applicant, whose application was rejected, seeks to appeal against the decision of the Controller, he can be foreclosed from approaching this Court on the ground that the appropriate office was Bombay, even though the Bombay Patent Office did not, at any stage, from start to finish, deal with the petitioner’s application in any manner.”

The matter is next listed for consideration on 21.11.2023.

Mr. Vivek Ranjan, Tiwary, Ms. Radhika Pareva and Mr. Asavari Mathur, Advocates appeared for appellant

Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Alexander M. Paikaday, Mr. Krishnan V, Advocates appeared for respondents

Case Title: Filo Edtech Inc v. Union of India & Anr.

Citation: 2023 LiveLaw (Del) 1142

Click Here To Read/Download Order