LI Network
Published on: November 27, 2023 at 16:45 IST
Justice C. Hari Shankar of the Delhi High Court recently clarified that the location of the “appropriate office” under Rule 4 of the Patent Rules determines the situs of the High Court for hearing an appeal under Section 117A of the Patents Act.
This clarification was made in response to a territorial jurisdiction objection raised in an appeal filed under Section 117A(2) challenging the rejection of a patent application before the Mumbai Patent Office.
The objection was based on the decision in Dr. Reddys Laboratories v. Controller of Patents by a Coordinate Bench.
The appellant argued that, according to a combined reading of Sections 2(1)(i) and 117A(2) of the Patents Act, the appeal should be heard by the High Court with territorial jurisdiction over the Controller who passed the order. The appellant contested reliance on Rule 4 of the Patent Rules.
The court observed that there is no provision in the Patents Act identifying the High Court with jurisdiction under Section 117A(2). Referring to Rule 4(1)(i) and Rule 4(2), the court concluded that the “appropriate office” for all proceedings under the Act is the Patent Office where the patent application is initially filed. Once decided, the appropriate office ordinarily does not change.
The appellant suggested replacing “High Court” in Section 117(2) with “the High Court having territorial jurisdiction in that State or Union Territory.” However, the court found no legal justification for this, stating that Section 117A(2) does not refer to the “High Court” with respect to any State or Union Territory.
The court accepted the appellant’s argument that the order by the Controller triggered the cause of action for filing the appeal but clarified that this did not determine the situs of the High Court for the appeal.
The court declined to overturn the findings in Dr. Reddys Laboratories, which held jurisdiction with the Bombay High Court under similar circumstances.
Justice Shankar dismissed the appeal, upholding the preliminary objection of the respondents, with the appellant granted the liberty to approach the appropriate forum.
Case Title: Filo Edtech Inc v. Union of India & Anr., C.A.(COMM.IPD-PAT) 30/2023