Delhi HC settles dispute on territorial jurisdiction of patent appeals post abolition of IPAB

New Delhi, November 12, 2022:

Putting an end to a dispute on the territorial jurisdiction of patent appeals following the abolishment of the Intellectual Property Appellate Board (IPAB), the Delhi High Court has said that the appeals challenging the order or direction of the Patent Office has to be filed before the High Court having territorial jurisdiction over the office from where the patent application originates and which is the situs (place where the said application is located in law) of the application.

The Court, considering the arguments on maintainability of a revocation petition filed by Dr Reddy’s Laboratories and MSN Laboratories against BoehringerIngelheim’s patent IN 268846 related to certain Benzol derivatives and medicinal preparations containing the said derivatives, said that the petition is maintainable before the Court. The Single Judge considered the matter along with two other similar matters which involved dispute on the maintainability of the cases before the Court.

With the enactment of the Tribunal Reforms Act 2021 (TRA), the IPAB was abolished and all matters which stood pending before the IPAB stood transferred to the High Courts. Post the TRA, jurisdiction in respect of appeals and revocation petitions under the Patent Act, 1970 has been transferred back to the High Courts, but the question arose was whether all High Courts can entertain revocation petitions and appeals and how the jurisdiction in respect of such matters are to be determined.

After hearing the counsels from the parties involved and various other counsels practising in the field of Intellectual Property law, Justice Prathiba M Singh observed that the term ‘appropriate office’ of immense significance in the process of prosecution and grant of patent application in the country and only in exceptional circumstances the change of appropriate office is possible under the Rules.

In recent times, for administrative exigencies the Office of Controller General of Patents, Designs and Trademarks (CGPDTM) allocates examination of applications between Patent Offices. However, the Court opined that it is not convinced that a mere arrangement made for administrative convenience by the CGPDTM would give rise to facts that would vest territorial jurisdiction in the Court.

“Merely holding of hearing virtually by the Controller, who is in Delhi, and passing of the impugned order by the Delhi Patent Office, while the appropriate office in respect of such an application continues to remain in Mumbai, cannot vest jurisdiction in Delhi High Court to entertain an appeal,” said the Order. Going by the Rules, administrative exigencies would not change the appropriate office of the patent application, it added.

In view of this, an order passed by the Delhi Patent Office as part of arrangement put in place by the Office of CGPDTM, though within the territorial limits of the Delhi High Court, would not vest territorial jurisdiction in the High Court under Section 117 A of the Act, 1970.

“In this background, it is clear that even after the enactment of the TRA, 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,” said the Court.

“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 added.

In the matter of revocation petition filed by Dr Reddy’s and MSN Laboratories, the Court observed that while BoehringerIngelheim filed suits for infringement against both the companies in the High Court of Himachal Pradesh and received interim injunctions, revocation petition before the Delhi High Court was filed prior to the suits for infringement themselves.

Ideally, after the filing of infringement proceedings, the defendant, if it wishes to seek revocation, ought to prefer the counterclaim in the said suit so as to avoid multiplicity of proceedings and possibility of contradictory judgements.

“However, in the present case, since the revocation petition was filed prior to filing of the suits of infringement and the patent was itself granted by the Delhi Patent Office, and the appropriate office is the Delhi Patent Office. Hence, the present petition is maintainable before this Court,” concluded Justice Singh.Pharmabiz