Situs Of High Court For Appeal U/S 117A Of Patents Act Determined By “Appropriate Office” Under Patent Rules: Delhi High Court

The observation came to be made pursuant to raising of an objection to territorial jurisdiction in an appeal filed u/s 117A(2) of the Patents Act, whereby rejection of a patent application filed before the Mumbai Patent Office was assailed before the Delhi High Court.

The respondents’ objection was based on the decision of a Coordinate Bench in Dr. Reddys Laboratories v. Controller of Patents.

The appellant countered by averring that on a conjoint reading of Sections 2(1)(i) and 117A(2) of the Patents Act, appeal lay before the High Court having territorial jurisdiction over the Controller who passed the impugned order. It was contended that there was no justification for placing reliance on Rule 4 of the Patent Rules.

Observing that there was no provision in the Patents Act identifying the High Court which could exercise jurisdiction u/s 117A(2), the court opined that there was no infirmity in referring to the Patent Rules to ascertain situs of the High Court which could exercise such jurisdiction.

Reference was made to Rule 4(1)(i), which states that “for all proceedings under the Act”, the appropriate office shall be the Patent Office where application seeking grant of patent is initially filed.

The court also considered Rule 4(2), which stipulates that the appropriate office, once decided in respect of any proceedings under the Act, shall ordinarily not be changed.

After analyzing the Rules, it was concluded,

“The words “for all proceedings under the Act” would clearly embrace all proceedings from the stage of filing of the application before the Patent Office under Section 7 till the filing of the appeal before the High Court under Section 117A.”

Insofar as the appellant had suggested substitution of the words “High Court” in Section 117(2) with the words “the High Court having territorial jurisdiction in that State or Union Territory” [from Section 2(1)(i)], Justice Shankar held that there was no legal justification for the same.

It was noted that Section 2(1)(i) does not define “High Court” in absolute terms and is in relation to a State or Union Territory. But, Section 117A(2) does not refer to the “High Court” apropos any State or Union Territory.

The appellant’s contention that passing of order by the Controller gave rise to cause of action for filing appeal before High Court was accepted. Although, the court said, the same was not determinative of the situs of the High Court which could entertain the appeal.

Justice Shankar refused to upset the findings in Dr. Reddys Laboratories, where under similar circumstances, jurisdiction was said to lie with the High Court of Bombay.

“The Coordinate Bench, in Dr. Reddys Laboratories, has taken a conscious decision that the geographical location of the High Court, which could exercise jurisdiction under Section 117A(2) would have to be determined on the basis of the geographical location of the “appropriate office” having dominion over the application within the meaning of Rule 4(2) of the Patent Rules.”

Notably, the appellant had also relied on Principal Commissioner of Income Tax-I, Chandigarh v. ABC Papers Ltd, where the appropriate High Court for exercise of appellate jurisdiction u/s 260A of the Income Tax Act was held to be one which had territorial jurisdiction over the assessing officer.

In this regard, Justice Shankar said that the issues involved in the two cases were qualitatively different. Even on applying ABC Papers, it was maintained that the High Court exercising jurisdiction over the “appropriate office” was the appropriate High Court for hearing the appeal u/s 117A.

In closing, the preliminary objection of the respondents was upheld and the appeal dismissed, with liberty to the appellant to approach appropriate forum.

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

CGSC Harish Vaidyanathan Shankar with Advocates Srish Kumar Mishra, Alexander Mathai Paikaday and Krishnan V appeared for respondents

Case Title: Filo Edtech Inc v. Union of India & Anr., C.A.(COMM.IPD-PAT) 30/2023

Citation: 2023 LiveLaw (Del) 1174