Delhi High Court Dr. Reddys Laboratories Limited & Anr. vs The Controller Of Patents & Ors. on 10 November, 2022

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1. Maintainability of Original Revocation Petitions under Section 64 of the Patents Act, 1970

• Core Issue: Which High Courts have territorial jurisdiction to entertain original revocation petitions filed under Section 64 of the Patents Act, 1970 post the enactment of the Tribunal Reforms Act, 2021?

• Holding: Revocation petitions under Section 64 are maintainable before any High Court within whose territorial jurisdiction a part of the cause of action arises. Jurisdiction is determined by considering both the static effect (where the patent was granted or the Patent Office is located) and the dynamic effect (where the commercial interests of the "person interested" are affected or injured by the existence of the patent).

• Key Paragraphs: Paragraphs 63, 64, 69, 73, 77, 81, and 82.

• Ratio:

  "The expression ‘High Court having territorial jurisdiction in that State or Union Territory’ in case of revocation petitions would have to be decided on the basis of both the static effect and the dynamic effect of the grant of the patent. The place where the commercial interest of the applicant is affected would also be a relevant consideration to determine jurisdiction." (Paragraph 82)

2. Territorial Jurisdiction for Appeals under Section 117A against Orders of the Patent Office

• Core Issue: Which High Court has jurisdiction to entertain an appeal under Section 117A of the Patents Act, 1970 against a decision or order passed by the Patent Office?

• Holding: Appeals under Section 117A lie exclusively before the High Court exercising territorial jurisdiction over the "appropriate office" from which the patent application originates and where the proceedings are deemed to have taken place under the Patent Rules, 2003.

• Key Paragraphs: Paragraphs 91, 92, 93, 101, and 103.

• Ratio:

  "...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. 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." (Paragraph 103)

3. Impact of Administrative Allocation of Patent Applications on Appellate Jurisdiction

• Core Issue: Does a random internal allocation of a patent application to a different Patent Office for administrative convenience or virtual hearings conducted by an officer outside the appropriate office shift appellate jurisdiction to that location?

• Holding: No. Administrative exigencies, random examination assignments, or virtual hearings conducted from a different location do not alter the appropriate office of the patent application or vest territorial jurisdiction in a different High Court.

• Key Paragraphs: Paragraphs 92, 98, 99, 100, and 110.

• Ratio:

  "...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." (Paragraph 98)