Delhi High Court Defines Scope of Jurisdiction in Revocations Filed as Original Proceedings and Appeals Clarified

In a significant development, the territorial jurisdiction for patent revocation proceedings and appeals in India has been clarified by the Hon'ble Delhi High Court. This follows the enactment of the Tribunal Reforms Act (TRA), 2021, which led to the abolition of the Intellectual Property Appellate Board (IPAB).

The TRA, 2021 has brought about significant changes to the patent appeal process in India. After its enactment, appeals under Section 117A can only be filed in the four High Courts of Madras, Mumbai, Delhi, and Calcutta, within whose respective jurisdiction the appropriate office of the Patent Office is located. These courts, including the Delhi High Court, Bombay High Court, and Madras High Court, are empowered to hear patent-related appeals following the reforms, which restructured tribunal jurisdictions including patent case appeals.

The 'appropriate office' is the situs of the patent application, and it is here where revocation petitions and appeals can now only be instituted, following the enactment of the TRA. The cause of action for filing a revocation petition can arise at various locations, such as the place where the patent application is filed, the patent is granted, the manufacturing facility of an interested party is located, a cease and desist notice is served or replied from, the patentee resides or carries on business, manufactures or sells the patented invention, approval for manufacture or sale of a product has been granted but is prevented due to the existence of the patent, or the import of the product may be interdicted due to the existence of the patent.

In a recent order dated 10 November 2022, the Hon'ble Delhi High Court clarified the territorial jurisdiction of a High Court for revocation petitions and appeals. The order collectively heard and decided issues of maintainability raised in three proceedings: Dr. Reddy's Laboratories Limited & Anr. v. The Controller of Patents & Anr., Thyssenkrupp Rothe Erde Germany Gmbh (Thyssenkrupp) v. The Controller of Patents & Anr., and Elta Systems Ltd. v. The Controller of Patents.

Any challenge to orders or directions by the Patent Office would ordinarily lie before the High Court in whose jurisdiction such 'appropriate office' is located. It is worth noting that the territorial jurisdiction of a High Court in revocation matters as original proceedings is not based solely on the 'appropriate office' or 'examining office'. The 'cause of action' in revocation matters can be invoked by an 'interested party' in any part of the country where the patent's grant and effect affect the party's interest.

In summary, the TRA, 2021 has brought about significant changes to the patent appeal process in India, with appeals now being heard by the four High Courts within whose jurisdiction the appropriate office of the Patent Office is located. The territorial jurisdiction for revocation proceedings and appeals has also been clarified, with the cause of action being able to arise at various locations and the jurisdiction not being solely based on the appropriate office or examining office.

Delhi High Court Defines Scope of Jurisdiction in Revocations Filed as Original Proceedings and Appeals Clarified