Over the last two years, the orders of Justice Pratibha Singh have clarified several aspects of patent law and practice, and have made important contributions to transparency and consistency of patent proceedings. On November 10, 2022, Justice Pratibha Singh clarified one ambiguous aspect of patent law with respect to the jurisdiction of High Courts in different proceedings. In Dr. Reddys Laboratories Limited vs. The Controller of Patents & Ors. before the Delhi High Court, the question was whether appeals from the Controller of Patents before a given patent office can be filed before any High Court, or should it lie only within the jurisdictional High Court of the patent office. A secondary question was whether the allotment of examination to a Controller from another patent office for administrative convenience would alter the jurisdiction.
Patent Revocation Petitions and Appeals from Controller’s Orders
In her usual lucid and methodical approach, Justice Singh dealt with this question by looking at three important circumstances under which patent appeals are filed. They are:
a. Appeals from orders of Patent Controllers; and
b. Petitions for revocation of patents under Section 64 of the Patents Act;
c. Writ petitions challenging Patent Office decisions.
Clearly pointing out that each of the circumstances stand on different legal footing, Justice Singh went on to answer the jurisdictional questions with respect to each.
a. Jurisdiction of High Courts from Patent Appeals
With respect to which High Court would have the jurisdiction to entertain appeals from orders of the Patent Office under Section 117A, Justice Singh stated that only the High Court within whose jurisdiction the Patent Office in question is located would have jurisdiction. In other words, for orders or decisions of Chennai, Mumbai, Kolkata, or Delhi Patent Office, Madras High Court, Bombay High Court, Calcutta High Court, and Delhi High Court would respectively have jurisdiction. The key question for determining jurisdiction will be where the patent application was filed, and not which patent office’s Controller examined the application. Mere examination of a patent application by a Patent Office will not give jurisdiction to a given High Court.
b. Jurisdiction of High Court for Revocation Petitions
For revocation applications, Justice Singh stated that any High Court within whose jurisdiction the effect is felt by a plaintiff/petitioner will have jurisdiction. If a person seeking revocation has commercial or business interests with respect to the patent in question, such a person can file for revocation before the High Court within whose jurisdiction commercial interests exist. Presence of cause of action can be a valid factor to lend jurisdiction in case of patent revocation applications.
c. Writ Petitions and Jurisdiction of High Courts in Patent Matters
In the context of writ petitions under Article 226, Justice Singh cited a case, which pointed out that if even a part of the cause of action arises within the jurisdiction of a High Court, that High Court would have jurisdiction. If more than one High Court has jurisdiction, it is up to the petitioner to decide which High Court the petitioner wishes to approach.
In the case, Justice Singh asked the Appellant to approach the appropriate High Court – Madras High Court and Bombay High Court – for each of the matters as relevant. You may read this judgment from para 71 to understand the Court’s analysis.
Case Citation: Dr. Reddys Laboratories Limited & … vs The Controller Of Patents & Ors., Decided by Delhi High Court on 10 November 2022, available at: https://indiankanoon.org/doc/199302757/, visited on 11th November 2022.