In University Health Network v. Adiuvo Diagnostics Pvt. Ltd.[1], Madras High Court has held that it shall have territorial jurisdiction to entertain the writ ‘irrespective of the location of the appropriate patent office’[2], which was Delhi. At the time of filing of a patent application, “appropriate office” for that application is ordinarily frozen, i.e. decided based on the place of residence or domicile or business of the applicant(s); or where the invention originated; or based on the address of service of the applicant in India, in case of a foreign applicant.[3] Section 2(1)(r) and 74 of the Patents Act 1970 (“the Act”), Rule 4 of Patent Rules 2003 (“Patent Rules”), and Clause 3.02 of Patents Manual indicate the immense significance of ‘appropriate office’ in the process of prosecution and grant of patent application in India. For instance, all proceedings are conducted from the appropriate office, all communications related to the proceedings are addressed to the concerned appropriate office, among others.
Adiuvo Diagnostics Private Limited (hereinafter referred to as the Writ petitioner or petitioner), a Chennai based company, creates platform technologies in the field of Opto-Electronics. It has patented its technology (Patent IN323440). University Health Network (hereinafter respondent) filed a patent application before the Delhi patent office (9067/DELNP/2010) against which a ‘pre-grant opposition’ was filed by the writ petitioner, claiming ‘lack of novelty, lack of inventive step, non-patentable subject matter and insufficient disclosure’.[4] Though the application was filed by the Respondent at the Delhi Patent Office, and it was the “appropriate office” as per Rule 4 of the Patent Rules, the application was allotted for examination to Ms. Mahalakshmi Balasubramaniam, Controller of Patents, Chennai. The Controller, therefore, conducted the enquiry from Chennai, including conducting, physical hearings in Chennai on various dates.
By an order dated July 19, 2023, the pre-grant opposition was dismissed and consequentially, patent was granted in favour of the respondent, vide Patent No. 439474. Aggrieved, Adiuvo Diagnostics Private Limited filed a Writ Petition for a Certiorarified Mandamus, challenging the orders dismissing the opposition as well as grant of Patent.
On August 30, 2023, the learned Single Judge considered the case of the writ petitioner and prima facie found non-consideration of materials placed and granted an ad-interim order. The Judge restrained the respondent from prosecuting the petitioner for infringement of Patent No. 439474 if the petitioner uses devices and methods for fluorescence-based imaging based upon its own patent.
On September 05, 2023, the respondent filed W.M.P.(IPD). No. 7 of 2023 for vacating the interim order. The matter was contested on merits, and certain preliminary objections, of which the most critical was an objection on the place of suing. The respondent contended that by virtue of Rule 4(2) of Patent Rules[5], Delhi would be the ‘appropriate office’ due to several reasons, for instance, the impugned order of grant of patent as well as rejection of pre-grant opposition was made by the Delhi patent office, first examination report and reply to the same, post-grant publication was made in Delhi, and all records are maintained in Delhi office, moreover, all communications, inter alia,emanated from and are addressed to the Delhi Patent Office.[6] The contention of the respondent was that as per Rule 28(6) and 4(2) of the Patent Rules, Delhi office should be the ‘appropriate office’, and the writ petition should have been filed before the Delhi High Court.
The petitioner argued that Madras High Court would have territorial jurisdiction as part of cause of action arose in Chennai since first subjective stage in patent examination was undertaken only at Chennai Patent Office, among other factors. The petitioner relied upon Vishnu Security Services v. Regional Provident Fund Commissioner[7], where the Court held that “if original authority is in one state and seat of the appellate authority is in another, writ will be maintainable in both Courts and primacy is to be given to the petitioner’s right to choose”.
The Court held that specific provisions of the Act and the Rules would be applicable for specific purposes mentioned in the rules, including filing of an appeal, if any. These rules would not undo the cause of action that arose in Chennai for the purpose of filing of the writ petition. In Kusum Ingots case[8], the Supreme Court held that the “place from where an appellate order or a revisional order is passed may give rise to a part of cause of action, although the original order was at a place outside the said territory”.[9] Moreover, it is upon the petitioner to choose the forum. In the present case, various critical events, leading to the patent-examination, hearing of the opposition, pronouncement of orders, rejection of oppositions, inter alia, happened in Chennai.
The Court agreed with the petitioner’s arguments to hold that irrespective of the ‘appropriate office’, the High Court would have territorial jurisdiction for maintaining a writ if part of cause of action arose within its jurisdiction. Firstly, the cause of action arose in Chennai because if the appellant is granted the patent, then the petitioner’s business, considering the patents he holds, would be affected. Secondly, the petitioner is a patent-holder, with a patent in Chennai, which is a major reason for the writ petitioner in Chennai to oppose the grant of impugned patent via the writ petition. Lastly, on considering the geographical area in which the rights of the parties play out, Chennai stands in a better footing than Delhi.
Needless to say, this judgment has shed light on the determination of jurisdiction for a writ petition against the manner of determining jurisdiction for appeals under Section 117A of the Act. The former determination is made as per Article 226 of the Constitution, the latter depends upon Rule 4 of the Patent Rules to find ‘appropriate office’. A detailed discussion on jurisdictional determination under Section 117A is available here.[10]
This case also underscores the evolving legal perspective on jurisdictional matters in India, especially within the domain of jurisprudential determination in relation to patents. Along with this, the Court also made an interesting observation, that with technological advancements leading to ‘instant communication and virtual hearings’, the underlying basis of forum conveniens needs to be re-calibrated.
For further information, please contact:
Swati Sharma, Partner, Cyril Amarchand Mangaldas
swati.sharma@cyrilshroff.com
[1] Writ Appeal No. 3076 of 2023 (Madras HC).
[2] Para 20, ibid.
[3] Rule 4, Patent Rules, 2003; Para 89, Dr. Reddys Laboratories Ltd. v. Controller of Patents, MANU/DE/4389/2022.
[4] Para 3, Writ Appeal No. 3076 of 2023 (Madras HC).
[5] Rule 4, Patent Rules 2003 provides –
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.
[6] Upasana Sanjeev, “When cause of action partly arose in Chennai, HC has territorial jurisdiction irrespective of the location of the ‘convenient patent office’: Madras High Court”, LiveLaw (5th January 2024).
[7] 2012 SCC OnLine Del 1024
[8] MANU/SC/0430/2004
[9] Ibid, para 25.
[10] Swati Sharma & Gitika Suri, “’Appropriate Office’, not location of ‘hearing officer’, dictates patent appeal jurisdiction”, December 7, 2023, available at: https://corporate.cyrilamarchandblogs.com/2023/12/appropriate-office-not-location-of-hearing-officer-dictates-patent-appeal-jurisdiction/
