Dr Reddy's Laboratories Limited v Controller of Patents (2022)

Summary

“Issues of maintainability have been raised in these three proceedings under the Patents Act, 1970” (para 2): two “revocation petitions seeking revocation of granted patents under Section 64 of the 1970 Act” and “an appeal under Section 117A of the 1970 Act.” (para 2) “The enactment of the Tribunal Reforms Act 2021” ... “resulted in the abolishing of the Intellectual Property Appellate Board” ... “However, the question has arisenas to whether all High Courts can entertain revocation petitions and appeals.” (para 3) Dr. Reddy’s and MSN Laboratories sought “revocation of patent no. IN 268846 granted in favour of Respondent No.2- Boehringer Ingelheim International GmbH” (para 5), and “Three days after the filing of the present revocation petition, a suit for infringement was filed by Boehringer in the High Court of Himachal Pradesh” (para 7). Thyssenkrupp “had originally filed a revocation petition before the IPAB” (“Intellectual Property Appellate Board”) “, Chennai” (para 10), and Elta appealed against a refusal of “application number 2286/MUMNP/2014” (para 12), where “Due to the internal allocation mechanism adopted by the office of the CGPDTM, the application appears to have been marked for examination to the Controller of Patents at Delhi.” (para 13)

The Court held that “the High Court having territorial jurisdiction in respect of revocation petitions under section 64 of the Act has to be construed not merely on the basis of appropriate office or the examining office, but on the basis of where the cause of action for filing a revocation petition arises.” (para 71) “In sum and substance, wherever the effect of the patent is felt would be the place which has nexus with the lis and, there arevocation petition under Section 64 could be maintainable.” (para 74) By contrast, “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.” (para 103) “C.O. (COMM.IPD-PAT) 3/2021 is held to be maintainable before this Court.” (para 104) “Thyssenkrupp cannot sail in two boats before two different High Courts.” (para 106) Elta’s appeal “would lie before the Bombay High Court.” (para 110) “There shall be no orders as to costs in all these cases.” (para 112)

What the court decided

1. Revocation after the Tribunal Reforms Act. “However, with the enactment of the TRA” (“Tribunal Reforms Act 2021”) “, revocation petitions would only be maintainable before the High Court. Even if a suit for infringement is filed before the District Court, in view of the proviso to Section 104 of the 1970 Act, upon filing of the counter claim, the entire matter is to be mandatorily transferred to the concerned High Court.” (para 65)
2. The person interested. “The said terminology has been held by Courtsto mean any person who is affected by the grant or continuation of a patent on the Register of patents. Such person is usually a person who is aggrieved by the grant or who has opposed the grant, or who seeks revocation of the patent even in public interest.Thus, persons interested would, inter alia, include” “manufacturers, sellers, exporters, importers of a product related to the patented invention” and “persons engaged in research in the field of the invention” and “persons who may be funding such research, etc.” (para 67) “It is, therefore, clear that a large number of persons could be” “persons interested” “in respect of a patented invention.” (paras 67–69)
3. A nationwide grant. “The grant of a patent has an all-India effect. Once granted, the exclusive rights of the patentee spelt out in section 48 of the 1970 Act extend to the entire length and breadth of the country.” (para 69) “In either situation, the grant is not confined to the appropriate office or the examining office, as the effect is nationwide.” (para 70) “When viewed in this backdrop, the High Court having territorial jurisdiction in respect of revocation petitions under section 64 of the Act has to be construed not merely on the basis of appropriate office or the examining office, but on the basis of where the cause of action for filing a revocation petition arises.” (paras 69–71)
4. Where the cause of action arises. “In the context of a petition filed for revocation of patent, the cause of action could,inter alia, arise at any of the following places” including the “Place where the patent application is filed”, the “Place where the patent is granted”, the “Place where the manufacturing facility of a person interested is located”, the “Place where cease and desist notice may be served or replied from”, the “Place where patentee resides or carries on business”, the place where approval has been granted “but the same is prevented due to the existence of the patent”, the “Place where the import of the product may be interdicted”, the “Place from where the export of product is being stopped”, the “Place where research on a commercial scale in respect of the patented subject matter is curtailed” and the “Place where the suit for infringement has been filed” (para 73). “Though the above list is merely illustrative and non-exhaustive” ... “the High Court having territorial jurisdiction, in the context of an original revocation petition, would include a High Court in the jurisdiction of which any of the above causes of action could arise.” (paras 73–74)
5. Girdhari Lal Gupta and Ajay Industrial. “The ratio of Girdhari Lal Gupta (supra) can, therefore, to be summarized as under” that “The static effect of the designregistration has to be considered” and that “Dynamic effect of the designregistrationalso has to be considered i.e., in the case of cancellation, wherever the commercial interest of the person interested is affected, such a High Court would have necessary nexus with the subject matter and thus jurisdiction to entertain the cancellation petition” and that “The jurisdictional facts would have to exist for a High Court to exercise jurisdiction.” (para 77) Of Ajay Industrial Corporation v. Shiro Kanao of Ibaraki City, “The Division Bench held that a revocation petition could be filed where the registration is granted, where the suit for infringement has been field, and where a part of cause of action arises” (para 78). (paras 77–78)
6. Static and dynamic effect. “Undoubtedly, the High Court in whose jurisdiction the patent was granted would be one of the fora which would have jurisdiction as the cause of action consists of a series of events beginning with the grant of the patent. In the opinion of this Court, since the dynamic effect of the patent, as contemplated in Girdhari Lal Gupta (supra), would also extend to other places where the commercial interest of the person interested may be affected, such other High Courts would also have jurisdiction to entertain revocation petitions, under section 64 of the Act.” ... “The place where the commercial interest of the applicant is affected would also be a relevant consideration to determine jurisdiction.” (para 82)
7. Appeals from the Central Government. “It is the settled position in law that an appeal is a continuation of the original proceedings.” “If the appeal is against any decision, order or direction of the Central Government, the same would then be governed by the general principles of law as laid down in the decision rendered by the Supreme Court in Kusum Ingots and Alloys Ltd. v Union of India (supra)” (para 84)
8. The appropriate office. “Rule 28 makes it clear that even if the hearing is held through video-conferencing or audio- visual communication devices from a different location, the hearing is” “deemed” “to have been held at the appropriate office.” (para 91) “Going by the principle enshrined in Rule 28 which is location-neutral, administrative exigencies would not change the appropriate office of the patent application.” ... “The appropriate office is,thus, the situs of thepatent application.” (paras 91–92)
9. Where an appeal lies. “Once orders are passed by the Patent Office on an application, any challenge to such order or direction would, therefore, ordinarily lie before the High Court in whose jurisdiction such appropriate office is located. This is because of the following reasons” that “The appeal is a continuation of the original proceeding”, that “The entire record of the patent application is readily available at the appropriate office”, that the applicant “would be domiciled, carrying on business or normally residing within the said territorial jurisdiction”, that “The invention may have originally originated from the said territory” and that “The address of service in India in case of a foreign applicant would be in the territory where the appropriate office is located.” (para 93)
10. Cause of action and appeals. “Submissions have been made by ld. counsels to the effect that even in the case of appeals, the concept of cause of action ought to be merge into Section 117A in order to determine the High Court before which appealswould be maintainable. However, this Court does not agree with the said submission as the same is not legally tenable.” (para 94) “The doctrine of cause of action cannot be imported by a High Court, while acting as an appellate forum, to assume territorial jurisdiction. Thus, the dictum of Girdhari Lal Gupta(supra) cannot be applied to appellate proceedings.” (paras 94, 97)
11. Administrative allocation. “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.” (para 98) “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.” (paras 98, 103)
12. The Dr. Reddy’s petition. “revocation petition before this 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 counter claim in the said suit so as to avoid multiplicity of proceedings and possibility of contradictory judgments. However, in the present case, since the revocation petition was filed prior to filing of the suits for 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 maintainablebefore this Court.” “The application under Section 10 CPC would, however, be decided on its own merits.” (para 104)
13. The Thyssenkrupp petition. “On the basis of the findings given above, if any of the elements of cause of action had arisen in Delhi, this Court would have had jurisdiction. However, Thyssenkrupp has already filed a revocation petition seeking revocation of IN 254458 before the IPAB” (“Intellectual Property Appellate Board”) “which admittedly now stands transferred to the High Court of Madras. Thyssenkrupp cannot sail in two boats before two different High Courts. In view these facts, this Court holds that the present revocation petition is not maintainable.” (para 106) “Accordingly, I.A. 3570/2022 filed under Order 7 Rule 11CPC is allowed.” (paras 106, 108–109)
14. Procedure. The Elta appeal. “the appeal having originated from the patent application filed in the Mumbai Patent Office which is also the appropriate office in respect of the patent application in question, it is held that the appeal against the impugned order would lie before the Bombay High Court.” (para 110) “In view of the fact that the legal issue was pending adjudication before this Court, the period during which the appeal was pending before this Court, Appellant may seek condonation of delay which may be considered by the Appellate Court, if the need so arises.” (paras 110–111)

What the court did not decide

“For the present purposes, this Court is not dealing with suits for infringement of patents.” (para 62) Of counter claims for revocation, “In the present judgment, the Court is only concerned with the former and not with the latter, as in the case of a counter claim it would obviously be filed before the Court where the suit for infringement is already pending.” (para 63) Of Thyssenkrupp’s petition, “It is clarified that the matter has not been considered on merits by this Court.” (para 107)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 16 October 2026.