Justice Hari Shanker of the Delhi High Court held that the jurisdiction for appeals under Section 117A of the Patents Act has to be determined by the location of the ‘appropriate office’ as provided by Rule 4[1] of the Patent Rules.
An application dated 4 February 2022, was filed by Filo Edtech Inc. before the Mumbai Patent Office, was allotted to an Assistant Controller of Patents posted in Delhi Patent Office. The allotment was done in accordance with the orders of the patent office dated March and June 2016, issued to expedite patent prosecution and disposal. The examination report and notice of hearing were issued by the Delhi Patent Office, following which the matter was finally heard and an order passed by the Delhi Patent Office rejecting the application.
Filo Edtech Inc. appealed against the said order before the Delhi High Court, which was objected by the respondent on grounds of its maintainability. The Respondent argued that the appeal in the present case would lie before the High Court of Bombay and in this respect relied upon the judgment of the Coordinate bench in Dr. Reddys Laboratories Limited & Anr. Vs. The Controller of Patents & Ors. (Dr. Reddys Laboratories). The Respondent on behalf of the Controller General of Patents and Design argued that the ‘appropriate office’(which in the present case is the Mumbai Patent Office) exercises dominion over the application filed by Filo Edtech and the same should continue, from start to finish in accordance with the wording of Rule 4 of the Patent Rules.
Justice Hari Shanker agreed with the respondent and also the decision of the Co-ordinate Bench in Dr. Reddys Laboratories, that the situs of the High Court, which would hear the appeal under Section 117A(2), would also be determined by the location of the ‘appropriate office’.
Justice Hari Shanker noted that there is no clear provision in the Patents Act that identifies the High Court, which can exercise jurisdiction under Section 117A(2). As Section 159(1) of the Patents Act expressly empowers the Central Government to make rules for carrying out the purposes of the Patents Act by notification in the official gazette, Justice Shanker held that it would not be incorrect to refer to the Rules to ascertain which High court can exercise appellate jurisdiction under Section 117 A of the Patent Act. Rule 4(1)(i) states that the appropriate office of Patent Office shall, “for all proceedings under the Act”, be the Patent Office where the application seeking grant of patent is initially filed. Sub-rule (2) of Rule 4 further provides that the appropriate office, once decided in respect of any proceedings under the Act, shall ordinarily not be changed.
Justice Shanker, therefore, held that the Mumbai Patent Office, before which the appellant filed an application for grant of the patent, is the “appropriate office” and the High Court, which has jurisdiction over the “appropriate office”, would be the appropriate High Court to hear and entertain the appeal under Section 117A.
The appeal was, therefore dismissed for want of territorial jurisdiction, but the appellant still had the liberty to institute an appeal before the Bombay High Court.
For further information, please contact:
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[1] Rule 4 Appropriate office
(1) The appropriate office of the patent office shall-
(i) for all the proceedings under the Act, be the head office of the patent office or the branch office, as the case may be, within whose territorial limits–
(a) the applicant or first mentioned applicant in case of joint applicants for a patent, normally resides or has his domicile or has a place of business or the place from where the invention actually originated; or
(b) the applicant for a patent or party in a proceeding if he has no place of business or domicile in India, the address for service in India given by such applicant or party is situated; and
(2) The appropriate office once decided in respect of any proceedings under the Act shall not ordinarily be changed.
(3) Notwithstanding anything contained in sub-rule (2), the Controller may transfer an application for patent so filed, to head office or, as the case may be, branch office of the Patent Office.
(4) Notwithstanding anything contained in sub-rule (1), further application referred to in section 16 of the Act, shall be filed at the appropriate office of the first mentioned application only.
(5) All further applications referred to section 16 of the Act filed in an office other than the appropriate office of the first mentioned application, before the commencement of the Patents (Amendment) Rules, 2013, shall.be transferred to the appropriate office of the first mentioned application.
