Appeal Against Orders Of Patent Office Would Lie Before High Court In Whose Jurisdiction Appropriate Office Is Located: Delhi High Court

The Delhi High Court on Thursday ruled that after the enactment of the Tribunal Reforms Act 2021, appeals challenging the order of the Patent Office would lie before the concerned High Courts having territorial jurisdiction over the "appropriate office" from where the patent application originates, as being the "situs of the said application."

Justice Pratibha M Singh observed that in such appeals, 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.

"Once orders are passed by the Patent Office on an application, any challenge to such order or direction would, therefore, ordinarily lie before the High Court in whose jurisdiction such appropriate office is located," the court said.

Perusing the relevant provisions of Patent Act and Rules framed thereunder, the court said that the term "appropriate office" is of immense significance in the process of prosecution and grant of patent application in India.

"All proceedings related to the patent application are conducted in the appropriate office itself, right from the filing of the patent application, filling of opposition to the patent application, reply statement and evidence, inspection of documents, all take place before the appropriate office," the court noted.

Noting that the office of Controller General of Patents, Designs & Trade Marks (CGPDTM) is allocating examination of applications between Patent Offices in recent times due to administrative exigencies, the court said that such exigencies would not change the appropriate office of the patent application.

"Even if the hearing is done by a Controller not based at the appropriate office through video conferencing, in view of Rule 28, such a hearing is "deemed‟ to have taken place at the appropriate office. Thus, for all purposes, the appropriate office is the Patent Office where all the procedures and proceedings related to the patent application have to take place and are deemed to have taken place. The appropriate office is, thus, the situs of the patent application," the court said.

The court thus concluded that once orders are passed by the Patent Office on an application, any challenge to such order or direction would lie before the High Court in whose jurisdiction such appropriate office is located.

The observations were made while dealing with three pleas raising the issue of maintainability under the Patents Act. While two pleas sought revocation of patents, the third plea challenged an order of the Patent Office under Section 117A.

The issue which arose in the pleas was whether all High Courts can entertain revocation petitions and appeals and how is jurisdiction in respect of such matters to be determined?

Answering the said question, the court was of the view that the High Court in whose jurisdiction the patent was granted would be one of the forums which would have jurisdiction for the reason that the cause of action consists of a series of events beginning with the grant of the patent.

"In the opinion of this Court, since the dynamic effect of the patent, as contemplated in Girdhari Lal Gupta (supra), would also extend to other places where the commercial interest of the person interested may be affected, such other High Courts would also have jurisdiction to entertain revocation petitions, under section 64 of the Act," the court said.

It added: "Thus, the expression 'High Court having territorial jurisdiction in that State or Union Territory' in case of revocation petitions would have to be decided on the basis of both the static effect and the dynamic effect of the grant of the patent. The place where the commercial interest of the applicant is affected would also be a relevant consideration to determine jurisdiction."

Title: DR. REDDYS LABORATORIES LIMITED & ANR v. THE CONTROLLER OF PATENTS & ORS.

Citation: 2022 LiveLaw (Del) 1069

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