Patent

SpicyIP Tidbits: Clarification on Jurisdiction of High Courts after the Tribunals Reform Act 2021, and Need for Reasoned Orders for Rejecting Patent Applications.


Delhi High Court clarifies the position on the jurisdiction of High Courts after the Tribunal Reforms Act

[Note: The present tidbit is from a quick skim of this order and we’ll try to bring out a detailed assessment soon.]

Image from here

To address issues pertaining to jurisdiction of High Court(s) in aftermath of scrapping Intellectual Property Appellate Board (IPAB) via the Tribunals Reforms Act, 2021, Delhi High Court passed an order clubbing three matters together. The three cases pertained to revocation of patents (Dr. Reddys Laboratories Limited & Anr V. The Controller Of Patents & Ors; Thyssenkrupp Rothe Erde Germany Gmbh V. The Controller Of Patents & Anr) and appeal under Section 117A (Elta Systems Ltd. V. The Controller Of Patents) and it’s under this context the Delhi High Court ruled on the territorial jurisdiction of High Courts post the Tribunal Reforms Act.

With regard to revocation petitions filed afresh: The Court ruled that apart from the place of where a patent is granted, and the place where the infringement suit is filed, High Courts of places where “the commercial interest” of the person interested may be affected, will also have the jurisdiction to hear revocation petitions. This reasoning of the court stems from the dynamic effect of the patent by which exclusivity out of a patent runs across the country and is not just limited to the place where the patent was granted. 

With regard to the appeals under Section 117A against the orders passed by the Patent Office: The court ruled that any challenge to such an order will lie before the High Court in whose jurisdiction such office is located. For this, the court relied not only on the importance given to the ‘appropriate office’ under the Patent Act, Patent Manual, the Patent Rules but also because of the following reasons:

  1. The appeal is a continuation of the original proceeding;
  2. The entire record of the patent application is readily available at
  3. the appropriate office;
  4. As per the scheme of the Rules, the concerned applicant would be
  5. domiciled, carrying on business or normally residing within the said territorial jurisdiction;
  6. The invention may have originally originated from the said territory;
  7. The address of service in India in case of a foreign applicant would be in the territory where the appropriate office is located.

[Hattip to an anonymous reader for sharing and explaining the nuances of the order.]

Ceres Intellectual Property Company Limited v/s Controller of Patents: Another case where the High Court rebukes the Patent Office for lack of reasoned orders

In a move to uphold principles of natural justice, Bombay High Court set aside an order passed by the Controller of Patents on the grounds that it doesn’t include proper reasons for rejecting the application for a patent filed by the Petitioner (pdf). The impugned order in question had rejected the application for a patent on the method for deposition of ceramic films for use in manufacture of solid oxide fuel cells on the ground that since the invention relates to atomic energy, no patent can be granted on it. The Controller of Patents in its arguments before the court highlighted that as per Section 4 of the Patent Act and Section 20 of the Atomic Energy Act, no patent can be granted on the said invention. The court, however, set the impugned order aside, holding it to lack proper reasons, and instructed the Controller to reconsider the application on its merits.

This is not the first instance of a blanket dismissal of the applications by the Controllers, without justifying the reason behind it. In fact, recently Delhi High Court reprimanded the Patent Office to provide the details of the ‘Known Substance’ on basis of which the application was rejected under Section 3(d) of the Patent Act.

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