DR. REDDYS LABORATORIES LIMITED & ANR. vs. THE CONTROLLER OF PATENTS & ORS.

2022/DHC/004746
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Reserved on: 17 August, 2022
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Date of decision: 10 November, 2022
+
C.O.(COMM.IPD-PAT) 3/2021 & I.As. 13644/2021, 3420/2022

DR. REDDYS LABORATORIES LIMITED & ANR …Petitioners
Through: Mr. J. Sai Deepak, Mr. Avinash Kr.
Sharma, Advocates.(M:7289036972)
versus
THE CONTROLLER OF PATENTS & ORS., ……Respondents
Through: Mr. Harish Vaidyanathan
Shankar,CGSC, Mr. Srish Kumar
Mishra, Mr.Alexander Mathai
Paikaday and Mr.Sagar Mehlawat,
Advocates for UOI.
Mr. Sandeep Sethi, Sr. Advocate with
Mr. Sanjay Kumar, Ms.
ArpitaSawhney, Mr. Priyansh
Sharma, Ms.Meenal Khurana, Mr.
Tabhay Tandonand Mr. Arun Kumar,
Advocates forR-2. (M:9810404749)

WITH
+ C.O. (COMM.IPD-PAT) 1/2022 & I.A.3570/2022
THYSSENKRUPP ROTHE ERDE GERMANY GMBH .. Petitioner
Through: Mr. Pranaynath Jha, Mr.
MaheshKumar, Ms. Simran Soni &
Mr.Anubha Pandey, Advocate.
(M:9958944848)
versus
THE CONTROLLER OF PATENTS & ANR. …….Respondents
Through: Mr. Harish Vaidyanathan
Shankar,CGSC, Mr. Srish Kumar
Mishra, Mr.Alexander Mathai
Paikaday and Mr.Sagar Mehlawat,
Advocates for UOI.(M:9810758606)
Mr. Bharath M.S., Mr. AyushSharma,
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:10.11.2022
18:22:46
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Advocates for R-2.(M:9899096069)
AND
+ C.A.(COMM.IPD-PAT) 169/2022& I.As. 8920/2022, 8921/2022
ELTA SYSTEMS LTD. ….Appellant
Through: Ms. Rajeshwari H. and Mr.Deepanshu
Nagar, Advocate.(M:8826968200)
versus
THE CONTROLLER OF PATENTS ….Respondent
Through: Mr. Harish Vaidyanathan
Shankar,CGSC, Mr. Srish Kumar
Mishra, Mr.Alexander Mathai
Paikaday and Mr.Sagar Mehlawat,
Advocates for UOI.

Mr. Adarsh Ramanujan& Mr. Aditya
Gupta, Advocates assisting the Court.

CORAM:
JUSTICE PRATHIBA M. SINGH
JUDGMENT
1. This hearing has been done through hybrid mode.
2. Issues of maintainability have been raised in these three proceedings
under the Patents Act, 1970 (hereinafter ‗1970 Act‘) . There are two
categories of cases:
i. C.O.(COMM.IPD-PAT) No.3/2021 and C.O.(COMM.IPD-
PAT) No.1/2022 are revocation petitions seeking revocation of
granted patents under Section 64 of the 1970 Act;
ii. C.A.(COMM.IPD-PAT) 169/2022 is an appeal under Section
117A of the 1970 Act.
3. The enactment of the Tribunal Reforms Act 2021 (hereinafter
‗TRA‘) resulted in the abolishing of the Intellectual Property Appellate Board
(hereinafter ‗IPAB‘) . All matters which were pending before the IPAB stood
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transferred to the High Courts. Post the TRA,jurisdiction in respect of
appeals and revocation petitions under the 1970 Act has now been
transferred back to High Courts.However, the question has arisenas to
whether all High Courts can entertain revocation petitions and appeals. How
is jurisdiction in respect of such matters to be determined?
4. Owing to the importance and the impact of the issues raised, apart
from ld. Counsel for the parties, various other counsels practising in the field
of Intellectual Property law have also made submissions for the assistance of
the Court.
Factsinbriefin C.O.(COMM.IPD-PAT) 3/2021 titled Dr. Reddy’s
Laboratories Limited& Anr. v. The Controller of Patents& Anr.
5. The present revocation petition under section 64 of the 1970 Act has
been filed by Petitioner No.1- Dr. Reddy‟s Laboratories Limited, and
Petitioner No.2- MSN Laboratories Pvt. Ltd. seeking revocation of patent
no. IN 268846 granted in favour of Respondent No.2- Boehringer Ingelheim
International GmbH (hereinafter ‗Boehringer‘) .
6. Boehringer applied for a patent for certain Benzenol derivatives and
medicinal preparations containing the said derivatives. The patent
application bearing no. 4844/DELNP/2006 was filed through the PCT route
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on 23 August, 2006 in the Patent Office, Delhi. The said patent application
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was granted registration as IN 268846 on 18 September, 2015 by the Patent
Office, Delhi. The present revocation petition was filed by the Petitioners on
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16 October, 2021. The prayers in the revocation petition read as under:
―122. In view of the facts and circumstances
narrated herein above, it is, most respectfully
prayed that this Hon‘ble Court may be pleased to:
a) Revoke Indian Patent No. 268846 and direct
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Respondent No.1 to remove IN 268846 from the
Register of Patents;
b) Issue a decree of Permanent Injunction
restraining the Respondent No.2, its employees,
Directors, agents, and any all persons acting or
claiming to act on the behalf of Respondent No.2
from issuing any threatening communications,
whether oral or written or through public notices
or otherwise based on IN 268846 and alleging
infringement thereof in order to hamper the
legitimate business activity of Petitioners or their
agents, distributors, retailers, employees,
directors, and any persons acting on their behalf;

7. Three days after the filing of the present revocation petition, a suit for
infringement was filed by Boehringer in the High Court of Himachal
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Pradesh against Petitioner No.1 on 19 October, 2021. The said High Court
granted an interim injunction against the present Petitioner No.1. Another
suit for infringement was filed by Boehringer against Petitioner No.2 and an
interim injunction was passed against the present Petitioner No.2 in the said
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suit on 25 October, 2021.
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8. In the meantime, notice was issued in the present petition on 22
October, 2021. I.A.3420/2022 under Section 10 CPC has been filed by
Boehringer seeking stay of the present revocation proceeding till the suits
for infringement pending adjudication before High Court of Himachal
Pradesh reach conclusion. In addition, a preliminary objection as to the
maintainability of the present petition before this Court has also been raised.




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2022/DHC/004746
FactsinbriefinC.O.(COMM.IPD-PAT) 1/2022 titled Thyssenkrupp Rothe
Erde Germany GmbH v. The Controller of Patents& Anr.
9. The Petitioner – Thyssenkrupp Rothe Erde Germany GmbH
(hereinafter ‗Thyssenkrupp‘) has filed the present revocation petition under
Section 64 of the 1970 Act seeking revocation of patent no. IN 254458
granted in favour of Respondent No.2, IMO Holding GmbH (hereinafter
‗IMO‘) . The Petitioner is a company based in Germany whose Power of
Attorney holder resides in Delhi. IMO is also a German company.
10. The patent application was filed in Chennai and the address for
service is also of Chennai. The ‗appropriate office‘qua the said application
is also at Chennai. The Petitioner had originally filed a revocation petition
before the IPAB, Chennai bearing No.22/2021/PT/CHN in ORA/742 in
March, 2021.
11. The present revocation petition under section 64 of the 1970 Act has
primarily been filed by the Petitioner in January, 2022 upon the enactment
of the TRA as it was unsure of the fate of its revocation petition which was
originally filed before the IPAB. IMO has filed I.A. 3570/2022 under Order
7 Rule 11 CPC seeking rejection of the revocation petition filed by
Thyssenkrupp on the ground of lack of jurisdiction and concealment of
revocation filed before the IPAB. The question in the case before the Court
is as to whether the present revocation petition under Section 64 is
maintainable before this Court.




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FactsinbriefinC.A.(COMM.IPD-PAT) 169/2022 titled Elta Systems Ltd. v.
The Controller of Patents
12. The present appeal has been filed by the Appellant- Elta Systems Ltd.
(hereinafter ‗Elta‘) under section 117A of the 1970 Act against the order of
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the ld. Asst. Controller of Patents dated 30 July, 2021 by which Elta‟s
application number 2286/MUMNP/2014 for grant of patent was refused.
The Appellant, Elta filed a PCT application bearing no. PCT/IL2013/050360
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titled ‗Estimating a Source Location of a Projectile‘ on 25 April, 2013.
Application bearing no. 2286/MUMNP/2014 was filed as the Indian national
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phase application on 12 November, 2014 at the Patent Office, Mumbai.
13. 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. The First Examination Report (hereinafter
‗FER‘) was issued by the ld. Asst. Controller of Patents at the Delhi Patent
th rd
Office on 25 February, 2019. The Appellant filed reply dated 23 August,
2019 to the FER which was addressed to the Patent Office, Mumbai.
14. Hearing was held through Video Conferencing by the ld. Assistant
Controller whose seat was at Delhi and finally, after the hearing, the
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application was rejected vide the impugned order dated 30 July, 2021
passed by the Patent Office, Delhi.
15. The present appeal has been filed before this Court, challenging the
said order passed by the Delhi Patent Office. The issue to be decided by this
Court is whether the appeal would be maintainable before the Delhi High
Court or at the High Court of Bombay.


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Submissions:
16. In view of the importance of the issue that arises in these matters, this
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Court had on 4 March, 2022 permitted counsels to make submissions and
assist the Court. Ld. counsels for the parties, as also various other ld.
counsels, have made submissions and filed written notes of arguments.
I. Submissions of Ms. Rajeshwari, ld. Counsel
17. Ms. Rajeshwari, ld. counsel, has relied upon Section 2(1)(i) of the
1970 Actdefining ‗High Court‘ and Section 2(1)(t) of the Act
defining ‗person interested‘ . Her submission is that the High Court which
can entertain a Section 64 petition would be a Court which has territorial
jurisdiction and can be any High Court. The definition of `person interested‘
is inclusive and open ended. Such person may have a current interest or a
future interest in the patent. As per Aloys Wobben v. Yogesh Mehra(2014)
15 SCC 360 it has to be a person who has a direct, present and tangible
interest in the patent.
18. The ld. Counsel further relies upon the judgment of the Full Bench in
Girdhari Lal Gupta v. M/s K. Gian Chand Jain & Co. 1977 SCC OnLine
Del 146 which dealt with Section 51A of the Designs Act, 1911 to argue
that the similar situation has arisen under Section 64 of the 1970 Act. The
said judgment distinguished between the static effect and dynamic effect of
registration. She also relies upon Jayswal Neco Ltd. v. Union of India
nd
[WP(C) 2103/2007, judgment dated 2 July, 2007 ] to argue that in the
context of a seat of the Government and cause of action, the Court has set
out various permutations and combinations as per which High Courts will
have jurisdiction considering the law settled by the Supreme Court right
from Kusum Ingots & Alloys Ltd. v. Union of India 2004 (6) SCC 254 and
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the judgments following the same.
19. Insofar as the question as to which High Court an appeal would lie
from the order of the Patent Office, Ms. Rajeshwari, ld. Counsel, has made
twofold submissions. First, since the Indian Patent Office has adopted the
practice of random allocation of patent applications for examination, the
High Court exercising jurisdiction over the Patent Office where the
examination of the patent application has taken place would have
jurisdiction to entertain an appeal against the said order, as a part of cause of
action has arisen within the territorial jurisdiction of that High Court. Ld.
Counsel places reliance upon the judgment of the Supreme Court in
Nasiruddin and Ors. v. State Transport Appellate Tribunal and Ors. AIR
1976 SC 331 wherein it was held that if the cause of action arises, wholly or
in part, within the territorial jurisdiction of a Court, it would be open to the
litigant who is dominus litis to have his forum conveniens . She further relies
upon the judgment of Supreme Court in Kusum Ingots (supra) and Canon
Steels (P) Ltd. v. Commissioner of Customs (2007) 14 SCC 464 wherein it
was observed that when an order is passed by an authority in a particular
jurisdiction, a part of cause of action arises at that place.
20. Second, it is the submission of the ld. Counsel that Rule 4 of the
Patent Rules, 2003 (hereinafter ‗Rules‘) has no application or bearing in
determining the High Court having territorial jurisdiction to hear appeal
against the orders of the Patent Office. The Court‟s attention is drawn to the
wording of Rule 4 which defines ‗appropriate office‘ for ―all proceedings
under the Act‖. As per the ld. Counsel the said phrase denotes
proceedingscommencing from the filing of the patent application till the
grant or rejection by the Patent Office. It is her argument that after the grant
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or rejection order is passed, the Appropriate Office becomes functus officio .
Thus, the appropriate office in respect of the Patent Application cannot
determine the High Court to which an appeal against the order of the
Controller would lie.
II. Submissions of Mr. Bharath, ld. Counsel
21. In I.A. 3570/2022 seeking rejection of revocation petition
being C.O.(COMM.IPD-PAT) 1/2022, Mr. Bharath, ld. Counsel submits that
the Petitioner is guilty of concealment of material facts. The patent in the
present case was filed originally in the Chennai Patent office and was
granted there. The Petitioner first approached the IPAB, Chennai by way of
a revocation petition. However, thereafter it chose to file the present petition
before this Court. Thus, the Petitioner was well aware that the correct forum
in the present case is the Madras High Court as the petition which was
pending before the IPAB, Chennai has now been transferred to the Madras
High Court and is yet to be numbered. He submits that the Petitioner has not
disclosed these facts. The patent having been granted by the Chennai Patent
Office, this Court would not have jurisdiction to entertain the present
revocation petition.
22. In addition, he submits on the legal issue that there could be three
scenarios which may exist when revocation or cancellation of an
Intellectual Property Right is sought. In the first scenario, if a suit for
infringement in respect of the said very Intellectual Property is pending, then
the High Court where the said suit is pending would be the appropriate
Court where the jurisdiction ought to exist. In the second scenario, where an
interested party is to seek revocation, rectification or cancellation, and there
is no suit for infringement of the said Intellectual Property which is pending
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before any Court. In such a case, it should approach the court within whose
jurisdiction the commercial interest of the party is affected, i.e., there is a
cause of action which arises in the said jurisdiction. Thus, it need not only
be the place where the registration has been granted for the said Intellectual
Property. In the third scenario, where there is no cause of action and also no
suit of infringement is pending, in such a case cancellation, revocation,
rectification may be filed before the High Court in whose jurisdiction the
concerned IP Office has granted registration.
23. It is further submitted by Mr. Bharath, ld. Counsel, that the Full
Bench decision in Girdhari Lal Gupta (supra) clearly records that the static
effect and the dynamic effect ought to be considered while deciding the
question of jurisdiction.He further submits that Section 33(3) of the TRA
has made it clear that the pending matters are to be sent to the concerned
High Court which has jurisdiction. In C.O.(COMM.IPD-PAT) 1/2022 , the
same would be the Madras High Court as the revocation petition has already
been filed by the Petitioner before the IPAB Chennai and the records have
now been transferred to the Madras High Court and thus, the present
revocation petition before this Court ought not to be entertained.
24. On the aspect of appeals to the High Court against the decision of
Patent Office, Mr. Bharath, ld. Counsel submits that an appeal is a
continuation of the original proceeding. Thus, appeals from the order of the
Patent Office ought to lie only before the High Court which exercises
jurisdiction over the concerned Patent Office.
III. Submissions of Mr. Pranay Nath Jha, ld. Counsel
25. Mr. Pranay Nath Jha, ld. Counsel submits that in the urgent
application filed for listing of C.O.(COMM.IPD-PAT) 1/2022 , it has been
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clearly disclosed that revocation petitions were earlier filed before the
erstwhile IPAB. However, after the enactment of the Tribunal Reforms
Ordinance, 2021 the Petitioner is entitled to invoke the jurisdiction of Delhi
High Court by the virtue of Rule 4 of Rules. Specific reference is made to
Rule 4 where ―for all proceedings under the Act‖ is referred to and Rule
4(1)(i)(b) where a ―party in a proceeding‖ is referred to. He submits that the
Petitioner in this case is a foreign company which has given an address for
service in Delhi through its counsels. Accordingly, in view of operation of
Rule 4(1)(i)(b) of the Rules, the Delhi High Court would have jurisdiction to
entertain the revocation petitions in question. Mr. Jha, ld. Counsel, further
submits that the commercial interest aspect would not have any relevance in
revocation petition which may otherwise have a relevance in a case of
infringement.
26. On the specific facts of the case, he further submits insofar as the
filing before the IPAB is concerned, the petition was merely „ presented‘
before the IPAB and the matter is yet to be registered. His petition before the
IPAB, Chennai was not even listed. Merely, assigning of diary number is
not institution and his case was not pending before the IPAB, Chennai.
Thus, there was no „ institution‘ in the strict sense as set out in the judgment
of Selvaraj v. Koodankulam Nuclear Power Plant 2021 (4) CTC 539 . On
the other hand, Mr. Bharat points out that the IPAB had numbered the
petition 22/2021/PT/CHN in ORA/742 as is evident from „page – 111 of
Respondent‟s document‟. Thus, the matter was numbered before the IPAB
and was duly registered.


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IV. Submissions of Mr. J. Sai Deepak, ld. Counsel
27. Mr. J. Sai Deepak, ld. counsel, categorically asserts that Rule 4 of the
Rules has no application in the context of revocation petitions filed under
Section 64. Rule 4 relates to appropriate office of the “Patent Office”. Thus,
it relates only to proceedings related to Patent Office. Once the Head Office
or the Branch Office of the Patent Office is in seisin of the proceedings, the
same cannot be changed in view of Rule 4(2) of the Rules. But this
provision would not have any applicability in respect of Section 64 of the
1970 Act. It may have applicability in the context of Section 117A of the
1970 Act for entertaining appeals against the orders passed by the Patent
Office. Under the said provision only the High Court in whose jurisdiction
the Patent Office which has passed the order is located would have territorial
jurisdiction to entertain the appeal.
28. A patent right granted is one in rem and has a countrywide
application. The choice of filing the petition is purely vested in the
Revocation Applicant who files the revocation petition under section 64. So
long as the Applicant can justify the reason for filing a petition in a
particular High Court, the freedom of the Applicant cannot be curtailed in
any manner. Reliance is placed upon the judgment of the Division Bench of
this Court in Ajay Industrial Corporation v. Shiro Kanao of Ibaraki City
AIR 1983 DEL 496 which dealt with Section 64 of the 1970 Act, as it then
stood, prior to the IPAB coming into existence.The submission of Mr.
Deepak, ld. counsel, is that the remedy under Section 64 is independent of a
suit or any other remedy under the 1970 Act. The same is not connected to
the jurisdiction of a Court where the suit is filed. The right to seek
revocation cannot be curtailed by linking the same with the filing of a suit
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for infringement. In conclusion, he submits that since there is no limitation
on the exercise of jurisdiction by the High Court either in Section 2(1)(i) or
in Section 64 of the 1970 Act, the freedom to file the revocation ought to be
given in all places where the cause of action has arisen or the patent is
registered or the commercial interest is affected so long as the nexus is
shown.
29. As far as facts in C.O.(COMM.IPD-PAT) 3/2021 are concerned, the
th st
revocation petition was filed on 16 October, 2021 and was listed on 21
October, 2021 without any objection being raised. However, between these
two dates, patent infringement suits were filed by Respondent No.2 in
Shimla in Himachal Pradesh. In such a situation, it cannot be held that
invoking of the jurisdiction of this Court is in any manner abusive and
following the Division Bench judgment in Ajay Industrial Corporation
(supra). The application under section 10 CPC is,thus,liable to be dismissed.
V. Submissions of Mr. Sandeep Sethi, ld. Sr. Counsel
30. Mr. Sandeep Sethi, ld. Senior Counsel has, at the outset, submitted
that the issue of jurisdiction is a vexed issue only when the revocation
petition is independently filed before any High Court. He submits that if the
revocation of a patent is sought in a suit of infringement, the same would be
filed either as counter claim or as a separate revocation petition to be tried
and adjudicated along with the suit. In such a situation, no difficulty as to
jurisdiction would arise. However, if the revocation petition is being
independently filed, then the issue of jurisdiction would have to be decided.
31. Ld. Sr. Counsel refers to various provisions of the 1970 Act to argue
that the High Court has been given jurisdiction under various provisions to
deal with different kinds of disputes that may be filed. Reference is made to
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Sections 2(1)(i), 64, 71, 100, 103, 113, and 117A of the 1970 Act. He
submits that there can be two scenarios when the revocation petition is
independently filed. First, when suit for infringement is pending, and second
when no suit for infringement is pending. When a suit for infringement is
filed, it is his submission that the Plaintiff in a suit for infringement can
invoke the jurisdiction of any High Court or District Court having
jurisdiction. The principles that would be applicable in those suits are settled
in law and once the suit for infringement is filed, the person interested ought
to challenge the patent only by way of a counter-claim.
32. On the other hand, if no suit for infringement is pending, revocation
petition can be filed wherever the „cause of action‟ arises. The provisions of
the 1970 Act do not stipulate the situs for filing of revocation petitions. He,
further, submits that the cause of action for a person interested seeking
revocation is the grant of patent. The term „cause of action‟ would have to
be interpreted as contained in Section 20 CPC. The Court adjudicating the
revocation petition has to be a „competent Court‟ and any High Court cannot
be allowed to entertain revocation petitions. Accordingly, if the patent is to
be challenged, applying the principles of Section 20 CPC, the revocation
ought to be filed in the High Court which exercises jurisdiction over the
Patent Office which granted the patent or the location of the patentee i.e.,
where the patentee resides or carries on business.
33. The ld. Sr. Counsel submits that the place of residence or place of
carrying on business of the Applicant seeking revocation would not by itself
constitute „cause of action‟, inasmuch as none of the grounds of revocation
mentioned in Section 64 of the Act have any relationship to the business or
the residence of the revocation Applicant. The acts complained of in a
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revocation would be the acts of the patentee or the defaults of the patentee
and, thus, they would be governed by the situs where the patent was filed or
where the patentee is residing or carrying on his business. He seeks to
emphasize this submission by arguing that the patentees could even be
individuals, small organizations and such patentees ought not to be harassed
by filing revocation petitions in far off locations. If the cause of action is
deemed to include the place where the revocation Applicant / Petitioner is
located or is carrying on business, there is a serious chance of abuse of the
same qua the patentee.
34. It is his submission that the issue of territorial jurisdiction cannot
become an instrument of harassment in the hands of the Revocation
Petitioner and a holistic view would have to be taken. Ld. Sr. Counsel
submits that though judgments in Girdhari Lal Gupta (supra) and Ajay
Industrial Corporation (supra) hold that wherever the impact of the
registration of the design/ patentis felt, such High Court would have
jurisdiction. However, he submits that same is now contrary to subsequent
judgments. This Court ought to go by the definition of „cause of action‟ as
recently held by the Supreme Court in various decisions. The Supreme
Court‟s decisions, relied upon by Mr. Sethi, ld. Counsel, on the question of
„cause of action‟, are as under:
(1) Rajasthan High Court Advocates’ Association v. Union of India
and Ors., (2001) 2 SCC 294
(2) Union of India and Ors. V. Adani Exports Ltd. and Anr.,
(2002) 1 SCC 567

35. Mr. Sethi, ld. Sr. Counsel, submits that in these judgments the
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Supreme Court has held that cause of action would arise at the place which
has nexus with the lis involved. The lis in the revocation petition is the
incorrect grant of the patent and thus, this should be governed by the
patentee‟s residence, place of business or the Patent Office where the patent
itself was filed. Ld. Senior Counsel further relies upon the judgment of the
Supreme Court in Indian Performing Rights Society Limited v. Sanjay
Dalia and Anr., (2015) 10 SCC 161 wherein it has been held that the
convenience of the parties should not be stretched to such an extent that the
issue of jurisdiction becomes vexatious.

VI. Rejoinder Submission of Mr. J. Sai Deepak, ld. Counsel
36. Mr. Sai Deepak, ld. Counsel in his rejoinder submissions submits that
the judgments in Ajay Industrial (supra) and Girdhari Lal Gupta(supra)
would continue to be applicable as they were rendered at a time when the
jurisdiction for revocation of patents was vested in High Courts prior to
2003. The 1970 Act itself does not give any guidance as to the High Court
which would have territorial jurisdiction to entertain revocation petitions.
Thus, recourse would have to be taken to the provisions of the CPC i.e.,
Section 20. It his submission that both these decisions were rendered at a
time when High Courts had jurisdiction and thus, the interpretation of
Section 20 in the manner in which it would apply to revocation petitions
would continue to be good law.
37. He submits that the judgment in IPRS (supra) would have no
applicability as the same dealt with special jurisdiction clause under Section
62 of the Copyright Act, 1957 and Section 134 of the Trade Marks Act,
1999. These two provisions are in addition to Section 20 CPC and the
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interpretation which may have been given in IPRS (supra) would not be
applicable when the Court is considering the width of Section 20 CPC. Mr.
Sai Deepak, ld. Counsel, reiterates that in a revocation petition, it is not the
order of grant which is under challenge. What is under challenge is, in fact,
the effect of the grant which is felt by the person seeking revocation of the
patent. Since the effect of the grant can be felt at every place, including
where the applicant seeking revocation resides or carries on business, such
High Courts would have jurisdiction to entertain the revocation petition.
38. The ld. Counsel submits that the same principle that applies in case of
an infringement action being filed by the patentee would also apply, in
reverse, for filing of revocation petition. If a patentee can sue a party on quia
timet basis or actual infringement basis where the said party is either
residing, carrying on business or is likely to launch product in question, by
the same standard, the revocation could also lie to the same very Court
where an infringement action would be maintainable. He submits on the
basis of Section 48 of the 1970 Act that since the said provision vests with
the patentee, the right to exclude third parties not authorized by it, from
manufacturing, selling or offering for sale any product covered by the
patented invention, every place where this right can be exercised by the
patentee would be a place where revocation petition can also be filed.
Reliance is placed on a judgment of the ld. Single Judge of the Himachal
High Court in MSN Laboratories Private Limited v. The Controller of
nd
Patents [OMPs No.162 & 230 of 2022, decided on 2 June, 2022].
39. He finally concludes by submitting that in Rajasthan Advocate
Association (supra) the Supreme Court has clearly held, in paragraph 17 of
the said judgment, that the question as to whether any Court has territorial
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jurisdiction would be an issue to be decided in every individual case and
there cannot be a broad rule. Insofar as the case of Adani Exports(supra) is
concerned, he distinguishes the same on facts by submitting that in the facts
of the said case, the passbook which was under challenge was issued in
Madras. Thus, the Supreme Court held that the Gujarat High Court did not
have territorial jurisdiction.
VII. Submission of Mr. Harish V. Shankar, ld. CGSC
40. Mr. Shankar, ld. CGSC, relies upon Rule 4 Rules to argue that the
conditions prescribed in Rule 4(1)(i)(a) and (b) of the Rules would show that
the appropriate office would be the Patent Office where any of the following
permutations may arise:
i) Normal residence of an Applicant;
ii) Domicile of the Applicant;
iii) Place of business of the Applicant;
iv) Place where the invention originated from;
v) The location of the address for service given by a foreign
Applicant.
41. He submits that in view of Rule 4(2) of the Rules, the Appropriate
Office by itself cannot be changed ordinarily. It is his submission that Rule 4
prescribes appropriate office for ‗all the proceedings under the Act‘ . An
appeal under the Section 117A is a proceeding envisaged under the Act.
Moreover, it is the accepted legal position that appeals are continuation of
the original proceeding. Therefore, appeals arising out of the orders passed
by the Patent Office ought to be restricted to the High Court having
territorial jurisdiction over the appropriate office.
VIII. Submissions of Mr. Adarsh Ramanujan, ld. Counsel assisting the
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Court
42. Mr. Adarsh Ramanujan, ld. Counsel, has appeared to assist the Court.
His first submission is that the issue of jurisdiction would have to be dealt
with separately in respect of trademarks and patents. He refers to the
following provisions:
i) Section 2(7) of the Indian Patent and Designs Act, 1911 defined
the term „High Court‟ which enumerated the various High
Courts having jurisdiction over various territories;
ii) Section 2(h) of the Trade and Merchandise Marks Act, 1958
defined „High Court‟ for the purpose of the said Act. When the
said section is read along with Section 3 of the said Act, it is
clear that insofar as trademarks are concerned, the jurisdiction
of the High Court would be determined on the basis of the
location of the office of the Registrar of trademarks within
whose territorial limit the principal place of business of the
proprietor is situated. This provision, according to Mr.
Ramanujan, ld. counsel, was based upon the Report of Justice
Ayyangar on Trademark Law Revision of 1955 which
recommended that the jurisdiction of the High Court should be
governed on the basis of the location of the Trade Mark Office
where the application for the registration of the Trade Mark is
filed.
43. Emphasis is laid on the fact that similar recommendations were made
by the Justice Ayyangar Committee on the Revision of the Patents Law in
respect of patents. However, the final statute of 1970 did not accept the
recommendation of Justice Ayyangar and defined „High Court‟ in a manner
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similar to what was defined under Section 2(7) of the Indian Patent and
Designs Act,1911 (hereinafter ‗P&DA 1911‘) .
44. It is on the basis of this legislative history, it is submitted by Mr.
Ramanujan, ld. counsel, that the definition of ‗High Court‘ under the 1970
Act cannot, therefore, be restricted to the High Court which exercises
jurisdiction over the four patent offices.Reliance is also placed on Neiveli
Ceramics v. Hindustan Sanitaryware, ILR (1973) II Delhi, Girdhari Lal
Gupta (supra) and Ajay Industrial Corporation (supra). In Neiveli (supra) ,
the Division Bench while considering section 26 of P&DA 1911 has clearly
held that in the context of the said Act, that there is no reason to confine the
jurisdiction by applying the tests of Section 20 CPC. It is pointed out that
under Section 34 of the P&DA 1911, a reference could be made by one High
Court to another. However, the said provision does not exist on the present
statute.
45. Mr. Ramanujan, ld. counsel concludes that there are various
permutations and combinations that could arise in the case of infringement
suits and revocations. The crux of his submission is that all High Courts
would have jurisdiction in terms of the definition of „High Court‟ under the
1970 Act. However, it is his submission that by sheer deference, one High
Court or District Court could stay its own proceedings awaiting the
judgment of the other High Court. If, finally, when matters are pending
before the two different High Courts, the only recourse would be to invoke
Section 25 CPC for seeking transfer of the case from one High Court to
another so that the matters can be heard together.
IX. Written Synopsis filed by Mr. Aditya Gupta, ld. Counsel assisting the
Court
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th
46. Mr. Aditya Gupta, ld. Counsel, in his written synopsis dated 14
March, 2022 relies upon Girdhari Lal (supra) to suggest a framework to
determine jurisdiction. Mr. Gupta, ld. Counsel has pointed out that Section
33(3) of the TRA does not cater to a situation where proceedings could have
been potentially filed before multiple courts and thus does not give any
clarity on the issue. The ld. Counsel highlights the test of ‗real nexus
between the subject matter and the Court‘ as also the test of ‗dynamic effect‘
evolved in the said case by the Full Bench in the context of design
registrations. He argues that applying the tests in Girdhari Lal Gupta
(supra) , a revocation petition under section 64 of the Patent Act, 1970, or a
petition for rectification of a trade mark under Section 47 or 57 of the Trade
Marks Act, 1999 can be filed before „any High Court‟ provided that the
applicant is able to show that it has suffered legal injury from the
registration within the territorial jurisdiction of the High Court.
47. The Ld. Counsel also argues that the dictum of Girdhari Lal (supra)
cannot be applied to appeal proceedings. To support his submission, he
places reliance upon the judgment of Supreme Court in Godrej Sara Lee
Limited v. Reckitt Benckiser Australia Pty. (2010) 2 SCC 535 and the
judgment of the Delhi High Court in M/s Scooters India Ltd. v. M/s Jaya
Hind Industries AIR 1988 Delhi 82 . Thus, it is the submission of the ld.
Counsel that in appellate proceedingsthe cause of action arises at the place
where the office of the original authority is located.The High Court within
whose territorial jurisdiction the cause of action arises will have territorial
jurisdiction.

Discussion:
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48. Heard.In the case of patents, revocation petitions are original
proceedings and Appeals arise from orders passed by the Patent Office.
Issues of maintainability of these cases have been raised before this Court.In
order to decide issues of maintainability, it would be necessary to trace the
historical position under the various patent statutes in India.
Historical Position
I. The Indian Patents and Designs Act, 1911
49. Under the Indian Patents and Designs Act, 1911, (P&DA 1911‘)
Section 23F dealt with appeals from any order of the Controller and Section
26 dealt with petitions for revocation of patents. Under Section 23F of the
P&DA 1911, all appeals would lie to the High Court of Calcutta from any
order of the Controller. Here, it is pertinent to mention that at that time, the
head office of Controller of Patents was located in Calcutta.Section 23G of
the said Act laid down the procedure for hearing of appeals. Appeals were
heard by a Bench of not less than two judges as per Section 23G(1).
Sections 23F and 23G are set out herein below:
“Section 23F. Appeals. (1) An appeal shall lie to
the High Court at Calcutta from any order of the
Controller made under section 23 or section 23A
or under clause (a) or clause (b) of sub-section (1)
of section 23B or under section 23CC.
(2) Every such appeal shall be made within
three months of the date of the order passed by the
Controller and shall be in writing.
(3) In calculating the said period of three
months, the time, if any, occupied in granting a
copy of the order appealed against shall be
excluded.


Section 23G. Procedure for hearing of appeals.
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(1) When an appeal has been preferred to the High
Court at Calcutta under section 23F, it shall be
heard by a Bench of not less than two Judges.
(2) The Bench hearing the appeal may, if it
thinks fit, and shall on the request of the parties to
the appeal, call in the aid of an assessor specially
qualified for the purpose, and hear the appeal
wholly or partially with his assistance.
(3) The remuneration, if any, to be paid to an
assessor under this section shall in every case be
determined by the High Court and be paid by it as
part of the expenses of the execution of this Act. ”

50. Under Section 26 of the P&DA 1911, revocation of a patent, in whole
or in part, could be obtained from a High Court by way of a petition or by
way of counter claim in a suit for infringement. In addition, under Section
28 of the P&DA, 1911, a High Court could direct the trial of any
issue,arising in a petition before it under section 26, either before itself or
before another High Court or before a District Court. If the trial of an issue
was directed to be before a District Court, the evidence recorded would then
be placed before the High Court for disposal. The said provisions – Sections
26 and 28 are set out below:
― Section 26. Petition for revocation of patent. (1)
Revocation of a patent in whole or in part may be
obtained on petition to or on a counter-claim in a
suit for infringement before a High Court on all or
any of the following grounds, namely:‖
XXX XXX XXX
― 28. Framing issue for trial before other courts.
(1) A High Court may, if it thinks fit, direct an
issue for the trial, before itself or any other High
Court, or any District Court, ofany question
arising upon a petition to itself under section 26,
and the issue shall be triedaccordingly.
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(2) If the issue is directed to another High Court,
the finding shall be certified by that Courtto the
High Court directing the issue.
(3) If the issue is directed to a District Court, the
finding of that Court shall not be subject toappeal,
but the evidence taken upon the trial shall be
recorded and a copy thereof, certified by theJudge
of the Court, shall be transmitted, together with
any remarks which he may think fit to
makethereon, to the High Court directing the
issue, and the High Court may thereupon act upon
thefinding of the District Court, or dispose of the
petition upon the evidence recorded, or direct a
newtrial, as the justice of the case may require.‖

51. The term „High Court‟ was defined originally under Section 2(7) of
the Patents and Designs Act, 1911 in the following manner:
―High Court‖ has the meaning assigned to that
expression by the Code of Criminal Procedure,
1898. in reference to proceedings against
European British subjects:
52. Later the said definition was substituted with the following definition:
―(7) ―High Court‖ means-
(a) in relation to a State, the High Court for
that State;
(b) in relation to the Union territory of Delhi or
Himachal Pradesh, the High Court of Punjab;
(c) in relation to the Union territory of Manipur
or Tripura, the High Court of Assam;
(d) in relation to the Union territory of
Andaman and Nicobar Islands, the High Court
at Calcutta; and
(e) in relation to the Union territory f the
Laccadive, Minicoy and Amindivi Islands, the
High Court of Kerala‖

II. Unamended Patent Act, 1970
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53. The Patents Act, 1970 repealed the P&DA 1911, insofar as it related
to patents. Provisions relating to designs remained unaffected. Under the
unamended 1970 Act, petitions for revocation of granted patents could be
filed by any „person interested‟ or the Central Government before the High
Court as per Section 64. A petition for rectification of register could also be
filed under Section 71 of the said Act before the High Court. Appeals under
Section 116(2) would lie to the High Court from a decision, order or
direction of the Controller.The definition of „High Court‟ under Section
2(1)(i) was similar to what was prevalent in P&DA 1911. The said section
reads as under:
(i) ―High Court‖ means, -
(i) in relation to the Union territory of Delhi
and the Union territory of Himachal
Pradesh, the High Court of Delhi;
(ii) in relation to the Union territory of Manipur
and the Union territory of Tripura, the High
Court of Assam;
(iii) in relation to the Union territory of the
Andaman and Nicobar Islands, the High
Court at Calcutta;
(iv) in relation to the Union territory of the
Laccadive, Minicoy and Amindivi Islands,
the High Court of Kerala;
MODIFICATION
In its application to the U.T. of Lakshadweep, in S.
2(i)(iv) for the words ―Laccadive, Minicoy and Amindivi
Islands‖ substitute the word ―Lakshadweep‖. – Sec S.O.
432(E) of 1974 – Gaz. of Ind., 21-10-1974, Pt. II, S. 3(i),
Ext. p. 1989.
(v) in relation to the Union territory of Goa,
Daman and Diu and the Union territory of
Dadra and Nagar Haveli, the High Court at
Bombay;
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(vi) in relation to the Union territory of
Pondicherry, the High Court at Madras;
(vii) in relation to the Union territory of
Chandigarh, the High Court of Punjab and
Haryana; and
(viii) in relation to any other State, the High
Court for that State;

III. Amendments in the Patents Act, 1970 post TRIPS Agreement
54. The enactment of the Trade Marks Act, 1999 and the amendments
brought in the Patents Act, 1970 - post the TRIPS Agreement resulted in the
creation of the Intellectual Property Appellate Board ( ‗IPAB‘ ). The IPAB
th
was established with effect from 15 September, 2003 under the Trade
Marks Act, 1999. A series of amendments made to the 1970 Act gave
jurisdiction to the IPAB to deal with patent matters. In brief, the IPAB was
to deal with original petitions and appeals under the 1970 Act. The IPAB
was headquartered at Chennai, however, hearings were conducted in three
other cities also i.e., Delhi, Mumbai, Calcutta in respect of patent matters
depending upon the appropriate office of the patent application as originally
filed.
55. However, since the IPAB was one single body, issues of jurisdiction
i.e., as to in which location the hearings were to be conducted by the
Benches of the IPAB, were treated in a much more flexible manner. On
most occasions, parties or counsel would give consent for hearing wherever
the Bench was available. Thus, the strict issue of jurisdiction usually never
arose before the IPAB.
IV. Tribunal Reforms Act, 2021 (`TRA‘)
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56. The enactment of the TRA which came into effect from 4 April,
2021, resulted in the abolition of various tribunals under different statutes.
One such tribunal which was abolished by the TRA was the IPAB which
was dealing with disputes under the Trade Marks Act, 1999, Copyright Act,
1957 and Patents Act, 1970 and other Intellectual Property statutes. Under
Section 33(3) of the TRA, the abolition of the IPAB was immediate and all
pending cases before the IPAB were transferred to the High Courts before
which they would have been filed had the TRA been in force on the date of
filing of such appeal or application or initiation of the proceeding. The High
Court to which transfer of cases were affected, has been broadly based on
the category of the patent application i.e., MUM/CHN/DEL/KOL– Mumbai,
Chennai, Delhi or Kolkata. The manner in which the various States in India
have been delineated between the four Patent Offices is as under:
Patent Office Territorial Jurisdiction
Mumbai The States of Gujarat, Maharashtra,
Madhya Pradesh, Goa, Chhattisgarh,
the Union Territories of Daman &
Diu and Dadra & Nagar Haveli
Delhi The States of Haryana, Himachal
Pradesh, Punjab, Rajasthan, Uttar
Pradesh, Uttarakhand, National
Capital Territory of Delhi and the
Union Territories of Chandigarh,
Jammu and Kashmir, and Ladakh.
Chennai The States of Andhra Pradesh,
Karnataka, Kerala, Tamil Nadu,
Telangana and the Union Territories
of Pondicherry and Lakshadweep.
Kolkata Rest of India (States of Bihar,
Jharkhand, Orissa, West Bengal,
Sikkim, Assam, Meghalaya, Manipur,
Tripura, Nagaland, Arunachal
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Pradesh and Union Territory of
Andaman and Nicobar Islands)

57. Before the IPAB, parties mentioned `JURISDICTION‟ on the basis of
the Patent Office where the patent application was originally filed. Thus, the
transfer of pending IPAB matters has been broadly governed by the
‗appropriate office‘ of the patent application/patent concerned. Thus, if the
appropriate office of a particular patent application was Mumbai, the
jurisdiction in Form 1 was mentioned as Mumbai. Before the IPAB, the
hearings in such matters would usually be held in Mumbai and all such
cases stood transferred, after the enactment of TRA, to the High Court of
Bombay. Similar is the ensuing position in Calcutta/Kolkata, Delhi and
Madras/Chennai.
58. The three cases presently under consideration are freshly instituted
cases before the Delhi High Court after the enactment of the TRA and they
are not cases transferred from the IPAB. In all the three cases, the
Respondents have raised issues of maintainability and jurisdiction. It is in
the context of the various provisions of the 1970 Act and the changes
brought about therein owing to enactment of the TRA that the said
issueshave to be determined.

ANALYSIS:
59. Under the 1970 Act, High Courts are conferred with various powers,
inter alia, under the following provisions:
i. Amendment of patent specifications under Section 58, in any
proceeding seeking revocation of a patent;
ii. Adjudication of revocation of patents under Section 64;
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iii. Rectification of register on the application of any person aggrieved
under Section 71;
iv. Fixation of terms for Central Government use of the patent under
Section 100(3);
v. Fixation of terms under Section 101 for Government use where
third party rights are involved;
vi. Fixation of compensation and terms for acquisition of invention
and patent by the Central Government under Section 102(3);

vii. Adjudication of disputes and fixation of terms for use, or the
amount of compensation for the acquisition of patent on reference
under Section 103(1);
viii. Reference to an official referee, commissioner or an arbitrator of
any dispute between the patentee and the government under
Section 103 of the whole proceedings or any question or issue of
fact arising therein under Section 103(5);
ix. Adjudication of suits for infringement under Section 104;
x. Adjudication of counter claims for revocation in suits for
infringement under Section 104;
xi. Issuing of certificate of validity of a patent under Section 113(1);
xii. Adjudication of appeals from a decision, order or direction of the
Controller or the Central Government under Section 117A(2).
60. A perusal of the above provisions shows that High Courts exercise
both- original and appellate jurisdiction under the 1970 Act. The definition
of „High Court‟ as originally contained in the unamended Patent Act, 1970
was substituted vide the Patent (Amendment) Act, 2005 and a new
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definition was put in place.Section 2(1)(i) of the 1970 Act, which now
defines the term ‗High Court‘ in relation to a State or Union territory, reads
as under:
―High Court‖, in relation to a State or Union
territory, means the High Court having territorial
jurisdiction in that State or Union territory, as the
case may be‖ .
61. The question that arises is as to what constitutes „territorial
jurisdiction‟ for the purposes of the provisions of the 1970 Act in respect of
powers exercised by the High Court. Would the territorial jurisdiction of a
High Court for the purpose of `appeals‟ and `other proceedings‟ be
differently construed?
62. Insofar as suits for infringement of patents are concerned, the issue of
jurisdiction is clearly governed by Section 104 read with the provisions of
the Code of Civil Procedure. For the present purposes, this Court is not
dealing with suits for infringement of patents. The two types proceedings in
respect of which contours of territorial jurisdiction of High Court is
presently being considered are –
i. Revocation petitions under Section 64 of the 1970 Act filed as
original proceedings before the High Court;
ii. Appeals under section 117A of the 1970 Act against orders passed by
the Patent Office.
Revocation Petitions Under Section 64 of the Patents Act, 1970 Post the
Enactment of the Tribunal Reforms Act, 2021
63. As already noted above, revocation petitions under Section 64 of the
1970 Act can be filed as original proceedings by any „person interested‟ or
by the Central Government or as counter claims in a suit for infringement of
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a patent. 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.
64. Prior to the enactment of the TRA, revocation petitions were
maintainable both before the IPAB, as original proceedings, as also before
the High Court in a counter claim in a suit for infringement of a patent.
Various decisions have been rendered by High Courts and by the Supreme
Court dealing with the scheme of revocation of patents under the Act when
the IPAB was functioning. In Aloys Wobben v. Yogesh Mehra (2014) 15
SCC 360 the Supreme Court held that a person seeking revocation has to
choose the forum and maintain the revocation before one forum and not
before multiple forums.
65. However, with the enactment of the TRA, 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. Thus, High Courts can
deal with suits for infringement coupled with counter claims for
revocationof patent.
66. The question before this Court is as to in which High Court would
revocations petitions, which are filed purely as original proceedings, be
maintainable. Under Section 64, revocation petitions are filed by persons
interested. Section 2(1)(t) of the Act defines „person interested‟ as under:
―(t) ―person interested‖ includes a person
engaged in, or in promoting, research in the same
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field as that to which the invention relates‖

67. 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;
 persons engaged in research in the field of the invention;
 persons who may be funding such research, etc .
68. The definition of `person interested‟ is an inclusive one and has been
broadly interpreted by Courts. The Supreme Court in Aloys Wobben (supra)
interpreted „person interested‟ in the following manner:
―20. A corrective mechanism is also available to
"any person interested", to assail the grant of a
patent Under Section 64(1) of the Patents Act. This
is in addition, to a similar remedy provided to "any
person interested", Under Section 25(2) of the
Patents Act. In the above scenario, it is necessary
to first appreciate the true purport of the words
"any person interested". The term "person
interested" has been defined in Section 2(1)(t) of
the Patents Act. Unless the context otherwise
requires, in terms of Section 2(1)(t)
aforementioned, a "person interested" would be
one who is..."engaged in, or in promoting,
research in the same field as that to which the
invention relates". Simply stated, a "person
interested" would include a person who has a
direct, present and tangible interest with a patent,
and the grant of the patent, adversely affects his
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above rights. A "person interested" would
include any individual who desires to make
independent use of either the invention itself
(which has been patented), or desires to exploit
the process (which has been patented) in his
individual production activity. Therefore, the
term "any person interested" is not static. The
same person, may not be a "person interested"
when the grant of the concerned patent was
published, and yet on account of his activities at a
later point in time, he may assume such a
character or disposition. It is, therefore, that
Section 64 of the Patents Act additionally vests in
"any person interested", the liberty to assail the
grant of a patent, by seeking its revocation. The
grounds of such challenge, have already been
enumerated above.‖

69. It is, therefore, clear that a large number of persons could be „persons
interested‟ in respect of a patented invention. 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. Persons who are interested in seeking the revocation of the patent
could, therefore, be located in any part of the country where the factum of
grant and its effect would determine their conduct. For example, a person
may be prevented from continuation of a particular research for commercial
purpose, a person may be prevented from manufacturing or selling a
particular product or an entity may be prevented from expanding its
manufacturing activities due to grant of a patent. Thus, the effect of the
patent could be felt wherever the conduct of the person interested is likely to
be affected.
70. The patent applicant may have filed the patent application in the
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Patent Office of a particular jurisdiction and the prosecution thereof may be
at the „appropriate office‟ as per Rule 4 of the Rules. However, the effect of
the grant is not restricted to that jurisdiction. In recent times, it is also
possible that patent applications are marked for examination to an official in
a different Patent Office than the appropriate office. In either situation, the
grant is not confined to the appropriate office or the examining office, as the
effect is nationwide.
71. 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. Cause of action, as per settled law, is a bundle of
facts, which gives rise to a particular proceeding.The Supreme Court in
Kusum Ingots (supra) has defined the term „cause of action‟ as under:
―6. Cause of action implies a right to sue. The material
facts which are imperative for the suitor to allege and
prove constitutes the cause of action. Cause of action is
not defined in any statute. It has, however, been
judicially interpreted inter alia to mean that every fact
which would be necessary for the plaintiff to prove, if
traversed, in order to support his right to the judgment
of the Court. Negatively put, it would mean that
everything which, if not proved, gives the defendant an
immediate right to judgment, would be part of cause of
action. Its importance is beyond any doubt. For every
action, there has to be a cause of action, if not, the plaint
or the writ petition, as the case may be, shall be rejected
summarily.‖

72. In Nawal Kishor Sharma v. Union of India AIR 2014 SC 3607 , the
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Supreme Court relied upon the dictum of Kusum Ingots (supra) and held as
under:
―11. On a plain reading of the amended provisions
in Clause (2), it is clear that now High Court can
issue a writ when the person or the authority
against whom the writ is issued is located outside
its territorial jurisdiction, if the cause of action
wholly or partially arises within the court's
territorial jurisdiction. Cause of action for the
purpose of Article 226(2) of the Constitution, for
all intent and purpose must be assigned the same
meaning as envisaged Under Section 20(c) of the
Code of Civil Procedure. The expression cause of
action has not been defined either in the Code of
Civil Procedure or the Constitution. Cause of
action is bundle of facts which is necessary for
the Plaintiff to prove in the suit before he can
succeed.
xxx xxx xxx
19. Regard being had to the discussion made
hereinabove, there cannot be any doubt that the
question whether or not cause of action wholly or
in part for filing a writ petition has arisen within
the territorial limit of any High Court has to be
decided in the light of the nature and character of
the proceedings under Article 226 of the
Constitution. In order to maintain a writ petition,
the Petitioner has to establish that a legal right
claimed by him has been infringed by the
Respondents within the territorial limit of the
Court's jurisdiction.‖

73. 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:
(i) Place where the patent application is filed;
(ii) Place where the patent is granted;
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(iii) Place where the manufacturing facility of a person interested is
located;
(iv) Place where cease and desist notice may be served or replied
from;
(v) Place where patentee resides or carries on business i.e.,
manufactures or sells the patented invention;
(vi) Place where the approval for manufacture or sale of product has
been granted, but the same is prevented due to the existence of
the patent;
(vii) Place where the import of the product may be interdicted due to
the existence of the patent;
(viii) Place from where the export of product is being stopped due to
existence of the patent;
(ix) Place where research on a commercial scale in respect of the
patented subject matter is curtailed;
(x) Place where the suit for infringement has been filed;
74. Though the above list is merely illustrative and non-exhaustive, on the
basis of the above situations, it can be clearly gleaned that 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. 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.This
is also clear from a reading of the decision of the Full Bench of this Court in
Girdhari Lal Gupta v. K. Gian Chand Jain & Co. AIR 1978 Delhi 146 ,
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where the Court was dealing with Section 51A of the now repealed Designs
Act, 1911 (hereinafter ‗DA 1911‘) . Section 51A of the said Act reads as
under:
“51A. Cancellation of registration- (1) Any person interested
may present a petition for the cancellation of the registration
of a design -
(a) at any time after the registration of the design, to the
High Court on any of the following grounds, namely:-
(i) that the design has been previously registered in
India; or
(ii) that it has been published in India prior to the
date of registration; or
(iii) that the design is not a new or original
design;or
(b) within one year from the date of the registration, to the
Controller on either of the grounds specified in sub-
clauses (i) and (ii) of clause (a).
(2) An appeal shall lie from any order of the Controller under
this section to the High Court, and the Controller may at any
time refer any such petition to the High Court, and the High
Court shall decide any petition so referred.‖
75. The designs in Girdhari Lal Gupta (Supra) were granted registration
by the Patent Office located at Calcutta. However, petitions for cancellation
of designs were filed in the Delhi High Court. The ld. Single Judge held that
the petitions for cancellations of designs could be filed in any High Court in
India as the Act had not vested exclusive jurisdiction in the High Court of
Calcutta. Appeals were preferred against the order of the ld. Single Judge
which were heard by the ld. Full Bench.
76. The Full Bench went on to consider the differences between the two
elements i.e., the registration of the design and the effects of the registration
of the design. It brought out the distinction between the static effect and the
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dynamic effect of the registration of a design. The static effect would be the
grant of the design registration and its continuation. However, the dynamic
effect would be wherever the exclusionary effect of the registration are felt
leading to monopolist situation and the injury caused to others due to the
same. Relevant paragraphs of the said judgment are set out below:
―10. What is jurisdiction? It is the power of a
court over a territory and a subject-matter. Power
over a territory in itself is not sufficient. The
territory is significant only as being the place at
which the subject matter is situated. If the
subject-matter is outside the territory, the court
would not have jurisdiction over it for the simple
reason that the subject matter would fall within
the territorial jurisdiction of some other court.
The test of the territorial jurisdiction of a court is,
therefore, ―whether the case relates to the general
category of subject matter assigned by law to the
Tribunal (or the court)‖ (Rubinstein- Jurisdiction
and illegality page 218). Dr. Rubinstein supports
his proposition by referring to the observation of
Dixon J. in R. v. Hickman Exp. Fox & Clinton
(1946) 70 C.L.R. 598 at 615(4), holding that a
privative clause will not be excluded provided the
tribunal's decision is a bona fide attempt to
exercise its power, that it relates to the subject
matter of the legislator and that it is reasonably
capable of reference to the powergiven to that
body'. Thus, the prima facie relationship between
the case and the subject-matter prescribed by law
is relevant criterion for jurisdiction (ibid 218-219).
Nexus between subject matter & jurisdiction
11. Where more than one authorities or courts are
invited to exercise jurisdiction, it is relevant to
inquire as to which of them has the real connection
with subject-matter over which the jurisdiction is
to be exercised. This inquiry will result in giving
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jurisdiction to the court having the nexus with the
subject matter and correspondingly in showing
that the other courts which do not have a similar
connection with the subject matter would not have
jurisdiction over it. For instance, section 2(a)(i) of
the Industrial Disputes Act defines ―appropriate
Government‖ to mean the Central Government in
relation to industrial disputes concerning certain
specified industries. Section 2(a)(ii) of the said
Act enacts the residuary definition as follows: "In
relation to any other industrial dispute, the State
Government" Just as the definition of a ―High
Court‖ in S. 2 (7) gives the list of all the High
Courts in India, similarly the expression ―State
Government‖ would bring in each and every State
Government in India. Just as the question before
us is which of the High Courts has the jurisdiction
to entertain an application under Section 51-A, the
question arose before the Supreme Court in the
case referred to below as to which the State
Governments had the jurisdiction to make a
reference of an industrial dispute under section
10(1)(d) of the industrial Disputes Act. The line of
reasoning followed by the court in Workmen of
Shri Rangavilas Motors (P.) Ltd. v. Shri
Rangavilas Motors (P.) Ltd. & others. (1967) 2
S.C.R. 528 at 534 (5), is instructive for us. Their
Lordships observed as follows:
"The order of transfer, it is true, was made in
krishnagiri at the head office, but the order
was to operate on a workman working in
Bangalore. In our view the High Court was
right in holding that the proper question to
raise is: where did the dispute arise?
Ordinarily, if there is a separate
establishment and the workman is working in
that establishment, the dispute would arise at
that place. As the High Court observed,
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there should clearly be some nexus between
dispute and the territory of the State and not
necessarily between the territory of the State
and the industry concerning which the
dispute arose."
What is the subject-matter of an application
under section 51-A? It was argued at length by
Mrs. Shyamla Pappu that the subject-matter of
such an application was the registration of a
design by an entry made in the Register of Designs
which is maintained in the Patent Office under
section 46 of the Act. She argued that the subject-
matter consisted, Therefore, only of the act of
registration and continuance of registration both
of which were situated at the place at which the
Register of Designs happens to be kept. According
to the learned counsel, the definition in section 2
(7) of the Act of ―High Court‖ can also be
explained on the same theory of subject matter.
The legislature did not mention in the Act the place
at which the Patent (Designs) Office and the
Register of Designs would be maintained. The
legislature, therefore, had to provide a list of the
High Courts in India in defining a ―High Court‖,
so that the territorial jurisdiction would accrue to
that High Court in the local limits of which the
registration would happen to be made and would
happen to be continued. Her argument, therefore,
was that it is a mere accident that the office of the
Register of Designs happens to be at Calcutta and,
therefore, the High Court at Calcutta would have
the jurisdiction over the subject matter of these
applications made under section 51-A. It was
open, however, for the Government to shift the
Designs Office to any other place in India with the
result that the subject matter of an application
under section 51-A would then arise at the place
where the Designs Office is shifted and such a
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place may be within the local limits of a High
Court other than Calcutta High Court.
12. The strength of this argument depends on the
correctness of its assumption that the subject-
matter consists only of the registration and the
continuance of the registration of a design. This
takes into account only the static effect of the
registration. But the registration gives the
registered proprietor of the design a monopoly of
the copyright in the design and this extends to all
the territories of India to which the Act applies.
The impact of the registration, Therefore, travels
beyond the place of registration. This is the
dynamic aspect of the effect of registration.
13. An analysis of section 51-A yields two distinct
elements. The first element is the registration of
the design and the effects of the registration -
static and dynamic. The second is the capacity to
make the application being vested only in a person
interested. It is only when both these elements co-
exist that an application under section 51-A can be
made for the cancellation of the registration on all
or any of the grounds specified therein. Let us now
further consider each of these two elements of
section 51-A.
EFFECTS Of REGISTRATION .
14. If the cause of action for an application for
cancellation is only the static effect of the
registration then it is confined to the place where
the registration is made and is continued. Since
the Register is kept presently at Calcutta, the High
Court of Calcutta would have jurisdiction over the
place at which the cause of action arises due to the
static effect of the registration. What about the
dynamic effects of the registration which prevents
any person other than the registered proprietor of
the design from using the said design in any of the
territories to which the Act applies? This
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prevention may be of two kinds. Firstly, a person
may intend to use the registered design but is
prevented from carrying out his intention into
practice because he would be thereby infringing
the copyright created by the registered design and
would, therefore, be contravening the law. The
cause of action in favor of such a person consists
only of the existence of the registration. Since
such a cause of action arises only at the place of
the registration, it is only that High Court which
has jurisdiction over the place of registration
which can entertain an application under Section
51-A for the cancellation of the design from such
a person.
XXX XXX XXX
22. For the above reasons, we find that the
petition for cancellation of the design under
section 51-A would lie to that High Court within
the territory of which subject matter has the
necessary nexus. The subject matter consists of a
series of connected events beginning with the
registration of the design in the register of
designs by the order of the Controller and ending
with the impact of the said design on the rights of
the competitors at such places at which the
trading of the competitors is injured or affected
by the enjoyment of the copyright by the
registered proprietor of the design basing his
right on the registration of the design. An
application may, therefore, be filed either in the
High Court having jurisdiction over the place at
which the design is registered or in the High
Court having jurisdiction over the place at which
enjoyment of the copyright by the registered
proprietor causes injury to the commercial
interests of the applicant. Briefly, the application
would be made in the High Court, the local
jurisdiction of which has a nexus with the subject
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matter or the cause of action of the application. It
follows, therefore, that the application cannot be
made in any other High Court merely because the
applicant chooses to do so. The applicant would
have to show jurisdiction in the High Court to
which the application is made and such
jurisdiction can be shown only by establishing
connection between the cause of action and/or
subject matter of the application and the territory
within the local jurisdiction of the High
Court. While such an application can always be
made to the High Court within the local limits of
which the registration of the design is made, the
jurisdiction is not confined to that High Court, but
would extend to any other High Court within the
local limits of which a part of the cause of action
and/or subject matter of the application may arise.
This view differs from the view of the learned
single Judge and the other decisions of this court
relied in the order under appeal. We also differ
from the view expressed by K. T. Desai J. of the
High Court of Bombay in the Kohinoor Mills Co.'s
Case
23. We have not considered the question whether
the High Court acting under section 51-A being a
court of civil jurisdiction, the procedure laid down
in the code of Civil Procedure would be applicable
to the proceedings before it. For, we do not
consider it necessary to express any view in this
particular case as to whether the determination of
jurisdictional facts which have to exist before the
High Court can take up jurisdiction would be an
enquiry into what procedure would be applicable
to an application under section 51-A after the High
Court entertains it. The jurisdictional conditions
have to be satisfied before the High Court can
entertain such an application. Consequently, we
have not considered whether the jurisdiction of the
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High Court would depend on the presence of the
defendant or non-applicant within the local
jurisdiction, that is to say, the residence of or
carrying on of business by the defendant within the
local jurisdiction of the High Court on the analogy
of section 20 of the Code of Civil Procedure . We
have therefore, attempted to determine the
question of jurisdiction of the High Court
independently of the applicability of the
provisions of the Code of Civil Procedure. ‖

77. The ratio of Girdhari Lal Gupta (supra) can, therefore, to be
summarized as under:
i. The static effect of the designregistration has to be considered i.e.,
the High Court under whose territorial jurisdiction the Patent
Office granting the registration is located would have jurisdiction
to entertainthe cancellation petition;
ii. 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;
iii. The jurisdictional facts would have to exist for a High Court to
exercise jurisdiction.
78. As already pointed out, the judgment in Girdhari Lal Gupta (supra)
was rendered in the context of the DA 1911. The same has also been
followed by the ld. Division Bench of this Court in Ajay Industrial
Corporation v. Shiro Kanao of Ibaraki City AIR 1983 Delhi 496 where the
Court was dealing with two petitions filed under section 64 of the Act
seeking revocation of patents. The background facts are that a suit for
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infringement was filed before the District Court in Ahmedabad prior to the
filing of the applications for revocation before the Delhi High Court. An
objection as to territorial jurisdiction was raised by the patentee which was
rejected by the High Court after analysing the judgment of the Full Bench in
Girdhari Lal Gupta (supra) . 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 i.e.,
where there is an injury to the commercial interest of the person
interested.The relevant observations of the Court are as under:
―4. …Turning to (i), the only guidance that the
statute provides regarding the High Court in
which the application should be moved is
contained in the definition in Section 2(i) which
reads:
"High Court" means-
(i) in relation to the Union Territory of Delhi
the High Court of Delhi;
(viii) in relation to any other State, the High
Court for that State.
This definition is not helpful for it says nothing
more than that the suit should be instituted in the
High Court of the State in relation to which the
matter arises; it does not define the nature, or
method for determination, of the relationship
between a State and the matter in question. What,
then, can be the basis on which one can decide
which High Court should be approached in a
particular matter ? What is to be the basis of the
correlation? Sri Anoop Singh suggests it can only
be either the place of registration of the patent or
the place in which a suit for infringement has been
filed, if any, and none else. This does not appear to
be correct. It will not be possible to correlate the
jurisdiction with the State in which the place of
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registration of the patent is situate for all
registration of patents in India is done only at
Calcutta and three or four other cities in India and
the elaborate provision in Section 2(i) will be
totally superfluous if the intention was to confine
jurisdiction to the four or five High Courts having
jurisdiction over these cities. The statute would
then have easily defined the High Court as the one
having jurisdiction over the place of registration of
the patent sought to be revoked. It is also obviously
not possible to restrict jurisdiction to the High
Court within the territorial jurisdiction of which a
suit for infringement is filed. For, while no doubt
such a High Court will be the forum for deciding
the issue when the revocation of a patent is sought
by way of a counter-claim (vide Section 104,
Proviso), that provision is not exhaustive. The
revocation of a patent need not be sought only by
way of a counterclaim. Section 64 confers an in-
dependant right on any person interested in a
patent or the Central Government to seek such
revocation. Such an application can be made
even when no suit for infringement is pending
against the applicant. It can also be made where
such a suit is pending. There is no statutory
requirement that in a case where a suit for
infringement is pending, revocation of the patent
can be sought for only by way of a counter-claim
and not by way of a separate and independent
application. Thus, the statutory provisions show
that the remedy of seeking the revocation of a
patent from a High Court is not correlated to the
pendency of an action for infringement but is
made available to any person who finds that his
commercial interests are likely to be jeopardised
or injured by the claims of the owner of a
patent. If this apprehension has already become a
reality by reason of a suit for infringement filed
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against him he is given a right to seek revocation
by way of counterclaim in that suit. But it is also
open to him to seek the remedy by an independent
application, whether or not a suit against him has
already been instituted. It would not, therefore, be
correct, in principle, to confine jurisdiction to the
High Court having ordinary original or appellate
jurisdiction over a place where a suit for
infringement may have been filed. It does not solve
the problem in a case where no suit for
infringement has been filed. The plea of Sri Anoop
Singh that an application under Section 64 should
be filed only in the High Court at the place of
registration with the exception that, in case there
is a pending suit for infringement, the application
may be filed also in the High Court having
jurisdiction over the place where the suit is filed
cannot, there-fore be accepted. The statute would
have more clearly spelt out the position if such
were its intendment.‖
XXX XXX XXX
―6. It is, therefore, seen that the earlier view of
this Court was that an application of this type
could be filed in any High Court in India. The
decision of the Full Bench, by a majority, took a
restricted view but even the Full Bench does not
restrict jurisdiction in the manner contended for
by Sri Anoop Singh . On the ratio of the Full
Bench, the application could be filed in the
Calcutta High Court or any other High Court
within whose jurisdiction the commercial
interests of the applicant are affected by the
enjoyment of the copyright by the registered
proprietor. This would include not only the High
Court having jurisdiction over a place in which a
suit for infringement is filed but also that having
jurisdiction over a place where the Assessee
carries on business and finds that his rights to
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carry on the business freely is sought to be
restricted on account of the claim of someone else
to a patent or design in respect of the goods dealt
in by him. It is true that this interpretation may
expose the registered proprietor of a patent to
applications filed in different High Courts by
persons carrying on business within their
respective jurisdiction. But, (a) that was also the
position under the earlier decisions; (b) that is
because the registration of the patent though done
in one place affects persons carrying on business
in different jurisdictions; and (c) the only solution
that can avoid such multiple action against the
proprietor of the patent (viz. to restrict jurisdiction
only to the High Court with jurisdiction over the
place of registration of the patent) is clearly not
countenanced by the statute.
7. It is perhaps possible to advocate an
intermediate view, narrower than the one
enunciated by the Full Bench and slightly broader
than the one suggested by Sri Anoop Singh. This
would be on the basis of the provisions of the
Code of Civil Procedure . The suggestion can be
that such applications can be filed either at a
place where the patent-holder resides or carries
on business or a place where the cause of action
(in a more restricted sense) arises viz., the place
where the patent is registered or the place or
places where the applicant has been sought to be
made liable for infringement of patent. It can
perhaps be said that where no such action against
the applicant is pending, it would not be correct to
say that he has a cause of action against the
registered proprietor other than the one arising as
a result of the registration of the patent. However,
this may also be not quite a correct approach. For
instance, to take the instant case itself, the
applicant is facing an action for infringement only
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in Ahmedabad. But it is selling the same goods in
Delhi as well and may face a similar action in
respect thereof at any moment either in the form of
a separate suit or even by way of an amendment to
the existing suit. It may, therefore, be unrealistic to
say that he has no cause of action arising in Delhi
but has one only at Ahmedabad. Thus, the
suggestion of such a modified interpretation is also
not free from difficulties. Whether we go by the
Full Bench (as we do and should) or by the
earlier decisions of this Court, the Delhi High
Court has jurisdiction to entertain the Appellant's
applications. The objections of Sri Anoop Singh as
to lack of jurisdiction are, therefore, overruled.‖
79. In Ajay Industrial (supra) the Court explicitly rejected the argument
that once a suit for infringement of patent is filed, the person interested can
challenge the patent only by way of counter-claim and not by way of a
separate and independent application. The Court was of the view that
Section 64 confers an independent right to any person interested in a patent
or the Central Government to seek such revocation. As per Ajay Industrial
(supra) wherever the „commercial interest‟ of the applicant is affected, a
revocation could be filed in the concerned High Court.
80. The HighCourt of Himachal Pradesh in MSN Laboratories Pvt. Ltd.
nd
v. The Controller of Patents[OMPs No.162 & 230 of 2022, decided on 2
June, 2022] has also taken a similar view.In the said case the patent was
granted by the Patent Office, Delhi. However, the Defendant, who was
carrying on business in the territory of the Himachal Pradesh, filed a
revocation petition in the High Court of Himachal Pradesh. While holding
that the Court had territorial jurisdiction to entertain the revocation petition,
the Court observed as under:
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―21. Now, this Court will address the issue of
return of the revocation petition in terms of the
provisions of Order VII, Rule 10 of the Code of
Civil Procedure. It is not much in dispute that on
the strength of the patent, revocation of which has
been sought by the plaintiff, business is being
carried out by the defendant in the territorial
jurisdiction of the State of Himachal Pradesh. The
Court is not oblivious to the fact that the patent in
issue has been granted by the Controller of Patents
at New Delhi, but then there is no bar that a
petition for revocation of patent cannot be filed in
any other Court except the Court having territorial
jurisdiction over the Controller of Patents. The
patent so granted by the Controller of Patents is
used by the patent holder throughout the territory
of India and in this view of the matter, holding
that such a patent can be challenged only before
the Courts within the jurisdiction of which the
Controller of Patents is situated, will on the one
hand burden the said Courts with the revocation
petition which may be filed by parties assailing
the patent and on the other hand shall exclude
other Courts from exercising their jurisdiction of
going into the validity of patents, on the strength
of which business is being carried out within
their territorial jurisdiction.
22. Therefore, this Court holds that the plaintiff
has the right to invoke the territorial jurisdiction of
this Court and the plaint is not liable to be
returned under the provisions of Order VII, Rule
10 of the Code of Civil Procedure.‖

81. Section 48 of the 1970 Act vests exclusive rights in the patentee for
making, using, offering for sale, selling or importing the patented product or
any product made using the patented process. The impact of such a patent
can be felt wherever a person interested carries on its business, including for
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manufacturing or selling or even packing or distributing the product in
respect of which patent has been granted. Thus, the commercial interest of
the person interested could be affected in various other jurisdictions apart
from the jurisdiction where the patent was granted. Such a person may be
aggrieved by the incorrect grant of the patent and may even challenge the
validity of the patent.
82. 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.Thus, 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.
Appeals Under Section 117A of the Patents Act, 1970
83. Under the 1970 Act, appeals are filed and maintained under Section
117A. The said provision reads as under:
― 117A. Appeals to High Court. (1) Save as
otherwise expressly provided in sub-section (2), no
appeal shall lie from any decision, order or
direction made or issued under this Act by the
Central Government, or from any act or order of
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the Controller for the purpose of giving effect to
any such decision, order or direction.
(2) An appeal shall lie to the High Court from any
decision, order or direction of the Controller or
Central Government under section 15, section 16,
section 17, section 18, section 19, section 20, sub-
section (4) of section 25, section 28, section 51,
section 54, section 57, section 60, section 61,
section 63, section 66, sub-section (3) of section
69, section 78, sub-sections (1) to (5) of section 84,
section 85, section 88, section 91, section 92 and
section 94.
(3) Every appeal under this section shall be in the
prescribed form and shall be verified in such
manner as may be prescribed and shall be
accompanied by a copy of the decision, order or
direction appealed against and by such fees as
may be prescribed.
(4) Every appeal shall be made within three
months from the date of the decision, order or
direction, as the case may be, of the Controller or
the Central Government or within such further
time as the [High Court] may, in accordance with
the rules made by it allow. ‖

84. It is the settled position in law that an appeal is a continuation of the
1
original proceedings. Under Section 117A of the Act, appeals are
maintainable from any decision, order or direction made or issued under the
Act either by the Central Government or from the orders of the Controller. 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

1
M/S Ramnath Exports Pvt. Ltd. v. Vinita Mehta & Anr., (2022) 7 SCC 678;
Malluru Mallappa v. Kuruvathappa and Others, (2020) 4 SCC 313; Hindustan Petroleum
Corp. v. Dilbahar Singh (2014) 9 SCC 78; M/s Diamcad NV v. Assistant Controller of
Patents and Designs OA/4/2009/PT/CH
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law as laid down in the decision rendered by the Supreme Court in Kusum
Ingots and Alloys Ltd. v Union of India (supra) and subsequent decisionsin
Mosaraf Hossain Khan v. Bhageeratha Engg. Ltd. (2006) 3 SCC
658 and Nawal Kishore Sharma v. Union of India AIR 2014 SC 3607.
85. In the present case, however, the appeal being dealt with is not in
respect of an order or direction by the Central Government but from a
decision of the Patent Office rejecting the patent application of the
Appellant. Where would such an appeal lie? The question is further
complicated by the recently adopted practice by the CGPDTM where a
patent application filed in one Patent Office can be randomly allocated for
examination to a different Patent Office. Would such a practice entitle the
Patent Applicant to invoke the jurisdiction of a High Court where the said
randomly allotted Patent Office is located?
86. A patent application under Section 7 of the Act is filed in the Patent
Office as defined under Section 2(1)(r) read with Section 74 which read as
under:
― 2. Definitions and interpretation- (1) In this Act,
unless the context otherwise requires,-

(r) ―patent office‖ means the patent office
referred to in section 74;
xxx xxx xxx
74. Patent office and its branches - (1) For the
purposes of this Act, there shall be an office which
shall be known as the patent office.
(2) The Central Government may, by notification
in the Official Gazette, specify the name of the
Patent Office.
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(3) The head office of the patent office shall be at
such place as the Central Government may specify,
and for the purpose of facilitating the registration
of patents there may be established, at such other
places as the Central Government may think fit,
branch offices of the patent office.
(4)There shall be a seal of the patent office.‖


87. The Indian Patent Office functions from four locations i.e., Kolkata,
Delhi, Chennai, Mumbai. Section 7 provides that a patent is to be filed in the
`Patent Office‟. The term `Patent office‟ is defined in Section 2(1)(r) with
reference to Section 74 as per which the Central Government is to notify the
Patent offices including the Head Office and branch offices. As per clause
03.02 of the Manual of Patent Office Practice and Procedure [version 3.0,
th
published on 26 November, 2019](hereinafter ‗Manual‘), which codifies
the practice and procedures being followed by the Indian Patent Office, the
territorial jurisdiction of each of the Patent Offices and the office where the
patent applicationsare to be filed is elaborated as under:
― Jurisdiction
Unlike many other Countries, Indian Patent Office
functions from four locations viz. Kolkata, Delhi,
Chennai and Mumbai for carrying out all
procedures relating to patents.
An application for patent shall be filed with the
Patent Office having appropriate jurisdiction. A
territorial jurisdiction of patent office in respect of
a patent application is decided based on any of the
following:
i. Place of residence, domicile or business of
the applicant (first mentioned applicant in
case of joint applicants) or,
ii. Place from where an invention actually
originated or,
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iii. Address for service in India given by the
applicant, when the Applicant has no place
of business or domicile in India (Foreign
applicants).
iv. Also, the further application referred to in
section 16 of the Act shall be filed at the
appropriate office of the first mentioned
application only.
Territorial jurisdictions are as under:

Patent Office Territorial Jurisdiction
Mumbai The States of Gujarat, Maharashtra,
Madhya Pradesh, Goa, Chhattisgarh,
the Union Territories of Daman &
Diu and Dadra & Nagar Haveli
Delhi The States of Haryana, Himachal
Pradesh, Punjab, Rajasthan, Uttar
Pradesh, Uttarakhand, National
Capital Territory of Delhi and the
Union Territories of Chandigarh,
Jammu and Kashmir, and Ladakh.
Chennai The States of Andhra Pradesh,
Karnataka, Kerala, Tamil Nadu,
Telangana and the Union Territories
of Pondicherry and Lakshadweep.
Kolkata Rest of India (States of Bihar,
Jharkhand, Orissa, West Bengal,
Sikkim, Assam, Meghalaya, Manipur,
Tripura, Nagaland, Arunachal
Pradesh and Union Territory of
Andaman and Nicobar Islands)

An appropriate office where a patent application is
filed shall not be ordinarily changed.
However, the Controller may allocate an
application for patent to any of the four Patent
Offices, if required.
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All applicants and patent agents are required to
give an address for service including postal
address in India, an email address and a mobile
number registered in India.
Such address for service shall be considered for all
proceedings under the Patents Act and Rules. ”

88. Rule 4(1) of the Patent Rules, 2003 defines „appropriate office‟ as
under:
― 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
(ii) [Omitted by Patents (Amendment) Rules, 2006]
(3) The appropriate office once decided in respect of any
proceedings under the Act shall not ordinarily be
changed.‖

89. Thus, at the time of filing of a patent application, the appropriate
office in respect of the said patent application, ordinarily, is frozen i.e.,
 it is decided on the basis of either the place where the applicant or one
of the applicants normally resides or has domicile or has a place of
business or the place where the invention originated or;
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2022/DHC/004746
 it is decided on the basis of the address for service of the applicant in
India in case of a foreign applicant.
90. The term „appropriate office‟ as defined in Rule 4 is used on several
occasions in the Rules. Some of such Rules are extracted below:

― Rule 28
Procedure in case of anticipation by prior
publication
(6) The hearing may also be held through video-
conferencing or audio-visual communication
devices: Provided that such hearing shall be
deemed to have taken place at the appropriate
office.

Rule 55
Opposition to the patent
(1) Representation for opposition under sub-section
(1) of section 25 shall be filed in Form 7(A) at the
appropriate office with a copy to the applicant, and
shall include a statement and evidence, if any, in
support of the representation and a request for
hearing, if so desired.

Rule 55A
Filing of notice of opposition
The notice of opposition to be given under sub-
section (2) of section 25 shall be made in Form 7
and sent to the Controller in duplicate at the
appropriate office.


Rule 58
Filing of reply statement and evidence
(1) If the patentee desires to contest the opposition,
he shall leave at the appropriate office a reply
statement setting out fully the grounds upon which
the opposition is contested and evidence, if any, in
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2022/DHC/004746
support of his case within a period of two months
from the date of receipt of the copy of the written
statement and opponent's evidence, if any by him
under rule 57 and deliver to the opponent a copy
thereof.


Rule 59
Filing of reply evidence by opponent
The opponent may, within one month from the date
of delivery to him of a copy or the patentee's reply
statement and evidence under rule 58, leave at the
appropriate office evidence in reply strictly
confined to matters in the patentee's evidence and
shall deliver to the patentee a copy of such
evidence.

Rule 74A
Inspection of documents related to grant of patent
After the date of publication of a grant of a patent,
the application together with the complete
specification and provisional specification, if any,
the drawing if any, abstract and other documents
related thereto may be inspected at the appropriate
office by making a written request to the Controller
and on payment of fee and may obtain copies on
payment of fee specified in the First Schedule.

Rule 82
Preparation of amended specifications, etc.
Where the Controller allows the application for a
patent or the complete specification or any other
document to be amended, the applicant shall, if the
Controller so requires and within the time to be
specified by him, leave at the appropriate office an
amended application or the specification or the
other document, as the case may be, in accordance
with the provisions of these rules.

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Rule 88
Register of patents under section 67
(1) Upon the grant of a patent, the Controller
shall enter in the register of patents at each
appropriate office, the name, address and
nationality of the grantee as the patentee thereof,
the title of the invention (including the categories to
which the invention relates), the date of the patent
and the date of grant thereof together with the
address for service of the patentee.

Rule 121A
Address of Communications
All communications in relation to any proceeding
under the Act or these rules shall be addressed to
the Controller at the appropriate office .‖

91. A perusal of Sections 2(1)(r) & 74 of the Act, Rule 4, Clause 03.02 of
the Manual, and all the above Rules shows that the term „appropriate office‟
is of immense significance in the process of prosecution and grant of patent
application in India.All proceedings related to the patent application are
conducted in the appropriate office itself, right from the filing of the patent
application, filling of opposition to the patent application, reply statement
and evidence, inspection of documents, all take place before the appropriate
office.As per Rule 88, the Register of patents specified in Section 67 of the
Act is also maintained at each appropriate office. All communications in
relation to any proceedings under the Act or the Rules have to be addressed
to the appropriate office. Even divisional applications to the first application
under Section 16 are to be filed at 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
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2022/DHC/004746
„deemed‟ to have been held at the appropriate office. Rule 4(2) specifically
provides that the appropriate office shall not ordinarily be changed once the
same is decided or frozen. This obviously means that it is only in
exceptional circumstances that change of appropriate office is possible under
Rules.
92. In recent times, for administrative exigencies, the office of CGPDTM
allocates examination of applications between Patent Offices. Going by the
principle enshrined in Rule 28 which is location-neutral, administrative
exigencies would not change the appropriate office of the patent application.
Even if the hearing is done by a Controller not based at the appropriate
office through video conferencing, in view of Rule 28, such a hearing is
„deemed‟ to have taken place at the appropriate office. Thus, for all
purposes, the appropriate office is the Patent Office where all the procedures
and proceedings related to the patent application have to take place and are
deemed to have taken place. The appropriate office is,thus, the situs of
thepatent application.
93. 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:
i. The appeal is a continuation of the original proceeding;
ii. The entire record of the patent application is readily available at
the appropriate office;
iii. As per the scheme of the Rules, the concerned applicant would be
domiciled, carrying on business or normally residing within the
said territorial jurisdiction;
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2022/DHC/004746
iv. The invention may have originally originated from the said
territory;
v. The address of service in India in case of a foreign applicant would
be in the territory where the appropriate office is located.
94. 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.
95. In Scooters India Ltd. v.Jaya Hind Industries Ltd. AIR 1988 Delhi
82 , a ld. Single Judge of this Court dealt with an appeal under Section 116
of the Act, as it then existed, against an order rejecting opposition to the
grant of the patent. The patent application was filed in the Patent Office,
Bombay and the order dismissing the opposition was passed by the said
Patent Office.Appeal against the said decision was filed before the Delhi
High Court. The ld. Single Judge, after considering the provisions of the
Patents Act, 1970 as also Section 51A of the DA 1911 distinguished the
judgment of Full Bench in Girdhari Lal Gupta (supra) and held as under:
―9 . In support of his arguments Mr. Bhushan
referred to a Full Bench decision of this court in
Girdhari Lal Gupta v. K. Gian Chand Jain and
Co. MANU/DE/0040/1978 : AIR 1978 Delhi 146.
This decision was rendered on S. 51A of the
Designs Act. Under sub-s. (1) of this section any
person interested may present a petition for the
cancellation of the registration of a design to the
High Court. Under sub-s. (2) of this section appeal
lies from any order of the Controller to the High
Court, and the Controller under sub-s. (3) of
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Section 2 of the Designs Act, 1911 means the
Controller General of Patents, Designs and Trade
Marks appointed under subsection (1) of Section 4
of the Trade and Merchandise Marks Act, 1958.
The definition of the High Court under the
Designs Act, 1911 is the same as that in the
Patents Act, 1970 . The Full Bench while
interpreting sub-section (1) of Section 51-A of the
Designs Act, by a majority of two to one held that
a petition for cancellation of the design under
Section 51-A would lie to that High Court within
the territory of which subject matter has the
necessary nexus. It held that a petition may,
therefore, be filed either in the High Court having
jurisdiction over the place at which the design is
registered or in the High Court having jurisdiction
over the place at which the enjoyment of the
copyright by the registered proprietor causes
injury to the commercial interests of the
petitioner. On these reasonings it was submitted
that the present appeal in this court against the
impugned order was competent as the
commercial interest of the appellant was affected
in the territory of Delhi where the appellant was
also having its offices. It may be noted that H.L.
Anand, J. who has given dissenting judgment was
of the opinion that such a petition under S. 51-A
could lie in any of the High Courts as we find in
Section 2 (7) of the Designs Act. I do not think this
Full Bench decision of this court is of any help to
me in deciding the question now posed before
me.This judgment dealt with the initial institution
of the proceedings. It could have been of help if
the court had decided as to which High Court
appeal lay against the order of the Controller
under sub-s. (2) of Section 51-A. It was the
argument of Mr. Bhushan that on the analogy of
this judgment he could file a suit in Delhi for
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2022/DHC/004746
revocation of the patent granted to the first
respondent under Section 64 of the Act and
impugned order of the second respondent would be
the subject matter of the suit and if the court
revokes the patent, that order would have to be set
aside. I am afraid this is not the point I am called
upon to decide in the present case. Then, Mr.
Bhushan submitted that under sub-s. (4) of Section
73 of the Act the Controller is empowered to
withdraw any matter pending before an officer
appointed under sub-s. (2) of that section and deal
with such matter either himself or transfer the
same to any other officer appointed under sub-s.
(2). He said that in case the proceedings pending
in the Patents Office at Bombay are transferred
to Delhi, then could it be said that the Bombay
High Court still had the jurisdiction or it was the
Delhi High Court which would have the
jurisdiction. Again, I am not called upon to
decide this point, though it was submitted by Mr.
N.K. Anand that the proceedings as such are not
transferred but any other officer would continue
to hold proceeding at Bombay….
XXX XXX XXX
12. Under the Act patent offices could be
established at various places. An application for a
patent is to be made in the form prescribed and
filed in the appropriate patent office. It is not
disputed that in the present case the application
for the patent was filed in the patent office at
Bombay, which was the appropriate office. This
application for patent by the first respondent
could not have been filed at any other place. It
would follow, therefore, that the appeal against
the impugned order of the second respondent
rejecting opposition of the appellant under
Section 25 of the Act would have to be filed in the
Bombay High Court. As the word 'appeal' is to be
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2022/DHC/004746
construed in its natural and ordinary meaning,
the appeal cannot be brought to this court. The
argument that though Rule 4 of the Patents Rule,
1972 prescribes a particular patent office to
which an application for patent could be filed,
but that would not mean that the appeal against
the order could be filed only in a particular High
Court where the patent office is situate, has to be
rejected. If it were to be that appeal could be filed
in any High Court, there was no point in defining
the High Court under Section 2 (1) (i) of the Act.
Once the application is filed as prescribed under
Section 7, the jurisdiction of the High Court to
which an appeal would lie is fixed. It would be
that High Court of the State or Union Territory
where the patent office, where the application is
filed, is situate in terms of Section 2 (1)(i) of the
Act. Provision of the Act referred to above clearly
show that appeal cannot be filed against an order
of the Controller passed under sub-section (2) of
Section 116 of the Act to any High Court of the
choice of the appellant.‖

96. Thus, the view taken by the ld. Single Judge was that the appeal
would not be maintainable before the Delhi High Court as, once the patent
application is filed under Section 7, the jurisdiction of the High Court to
which an appeal would lie is fixed. The Court explicitly rejected the
argument that the Rules prescribe a particular Patent Office to which an
application for patent could be filed, however the appeal against such order
would not be limited to the High Court within the territorial jurisdiction of
which the appropriate office is situated. This judgment was approved by the
Supreme Court in Godrej Sara Lee Limited v. Reckitt Benckiser Australia
AIR 2010 SC 1331 wherein orders cancelling two registered designs were
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2022/DHC/004746
passed by the Controller of Designs, Kolkata.Under Section 19(1) of the
Designs Act, 2000 the question was whether the appeal was maintainable
against the said orders before the Delhi High Court. The Supreme Court
considered the decision in Girdhari Lal Gupta(supra) as also Scooters
India (supra) and held that the appeals would not be maintainable before the
Delhi High Court. The observations of the Supreme Court are as under:
― 21. In contrast to the provisions of Section
51A(1)(a) of the 1911 Act, Section 19(1) of the
2000 Act, which also deals with cancellation of
registration, provides for a petition for
cancellation of registration of a design to be filed
before the Controller and not to the High Court.
On a comparison of the two provisions of the two
enactments, it will be obvious that under the 2000
Act the intention of the Legislature was that an
application for cancellation of a design would lie
to the Controller exclusively without the High
Court having a parallel jurisdiction to entertain
such matters. It is also very clear that all the
appeals from any order of the Controller under
Section 19 of the 2000 Act shall lie to the High
Court. The basic difference, therefore, as was
pointed out to the High Court and noticed by it, is
that while under Section 19 of the 2000 Act an
application for cancellation would have to be
made to the Controller of Designs, under Section
51A of the 1911 Act an application could be
preferred either to the High Court or within one
year from the date of registration to the Controller
on the grounds specified under Subclauses (i) and
(ii) of Clause (a) of Section 51A(1). Under Section
19 of the 2000 Act the power of cancellation of the
registration lies wholly with the Controller. On the
other hand, an application for cancellation of a
design could be made directly to the High Court
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under Section 51A of the 1911 Act. Under the 2000
Act, the High Court would be entitled to assume
jurisdiction only at the appellate stage, whereas
under Section 51A of the 1911 Act the High Court
could itself directly cancel the registration.
Whereas in Girdharilal Gupta's case (supra), the
question of jurisdiction of the High Court was in
relation to an application made to the High Court
directly, in the instant case, we are concerned with
an order of the Controller against which an appeal
is required to be filed before the High Court . While
in Girdharilal Gupta's case the Court was
considering the expression "High Court" in the
context of a fall-out in respect of the ground of
registration and the cause of action arising on
account of such fall-out, in the present case, there
is no question of any consequential impact since
the application for cancellation of registration was
on the basis of fake documents created in order to
perpetrate a fraud.
22. The reliance placed by the High Court on the
judgment in Girdharilal Gupta's case (supra)
appears to be misplaced, inasmuch as, while
under the 1911 Act the High Court acts as an
Original forum, under the 2000 Act the High
Court acts as an Appellate forum, which are two
separate jurisdictions operating in two different
fields.In the instant case, the doctrine of cause of
action, as understood under Section 20 C.P.C.,
has been imported on the basis of the provisions
of Section 51A of the Designs Act, 1911, whereas
the case of the appellant would fall under Section
19 of the Designs Act, 2000, where the High
Court functions as the Appellate forum. The
cause of action for the instant proceedings is most
certainly the cancellation of the registered design
of the appellant which happened in the State of
West Bengal which gave the Calcutta High Court
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the jurisdiction to deal with the matter. The Delhi
High Court, in our view, erred in holding that the
cause of action had arisen within its local
jurisdiction, whereas the jurisdiction of the High
Court was on account of the cancellation of
registration of the design and not on account of
the impact thereof in any particular State. This is
what distinguishes the decision in Girdharilal
Gupta's case from the facts of this case.
23. Apart from the fact that the parties to the suit
were in Kolkata, it is clear that the cause of action
for the suit arose in Kolkata by virtue of the order
passed by the Controller in relation to the
appellant's design. As the facts indicate, the cause
of action for the suit arose in Kolkata, which, in
any event, had jurisdiction to entertain the suit.
Having erroneously applied the decision in
Girdharilal Gupta's case (supra) to the facts of the
case, the High Court was led into error in holding
that the consequence of the cancellation gave
jurisdiction to the Delhi High Court to entertain
the suit, without considering in its proper
perspective the provisions of Section 51A of the
1911 Act in contrast to the provisions of Section 19
of the 2000 Act.
24. The various decisions cited by Mr. Dave to
support his submissions that the question as to
which High Court would have jurisdiction to
entertain an appeal under Section 19, had to be
determined on the basis of the statutory provisions
and not on the basis of dominus litus or the situs of
the Appellate Tribunal or the cause of action. We
are inclined to accept Mr. Dave's submission that
the Delhi High Court had erred in making a
comparison between the provisions of Section 51A
of the 1911 Act and Section 19(2) of the 2000 Act,
which operate on different planes.‖
97. The Supreme Court took the view that there is a marked difference
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between the nature of original proceedings and appellate proceedings which
are two separate jurisdictions operating in two different fields. 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.
98. This Court is also not convinced that a mere arrangement made for
administrative convenience by the CGPTDM would give rise to facts that
would vest territorial jurisdiction in this Court. 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. The Madras High Court in
Bharat Bhogilal Patel v. Union of India MANU/TN/1915/2014 had an
opportunity to deal with a case where the question as to whether practices
adopted for administrative convenience would vest jurisdiction intheHigh
Court.
99. In Bharat Bhogilal (supra) theCourt was dealing with an appeal
challenging a revocation order passed by IPAB Chennai. The background
facts of the matter are that patent applications were filed in the Mumbai
Patent Office and Mumbai was the appropriate office. Revocations petitions
were filed, prior to the constitution of the IPAB, in the Gujarat High Court.
The said revocations were transferred to the IPAB Circuit Bench at Mumbai
upon its constitution. However, in view of the fact that the Circuit Bench at
Mumbai was not having adequate time, the hearing took place before the
IPAB, Chennai as per consent of the parties where the Bench held regular
proceedings. The patents were revoked by the IPAB. Writ Petitions were
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filed before the Madras High Court assailing the order passed by the IPAB
wherein the ld. Division Bench observed as under:
― 8. Conclusion
On an analysis of the aforesaid judgments, the
principles which emerge can be summarized as
under :-
i) In view of the 42nd Constitutional
Amendment and the wordings of Clause (2) of
Article 226 of the Constitution of India, even a
part of cause of action would confer
jurisdiction on the Court.
ii) The choice would be normally of the litigant
approaching the Court as to where he would
initiate the litigation if there were two High
Courts which would have jurisdiction.
iii) Merely because the original order is passed
within the jurisdiction of another Court, it
would not exclude the jurisdiction of the Court
which is the situs of the appellate authority.
iv) The principles of forum conveniens, though
applicable to international law as a principle
of Comity of Nations, would apply to the
discretionary remedy under Article 226 of the
Constitution of India.
9. Now, turning to the facts of the present case,
undisputedly, the first respondent's business is
located at Mumbai. This gave rise to the first
respondent filing applications under the Patents
Act in the Office of the Registrar of Patents at
Mumbai, and the patents of the first respondent
were registered at Mumbai. It is in fact the
petitioner which was aggrieved by the registration
of the patents in favour of the first respondent and
sought revocation of the patents by initiating
proceedings before the Gujarat High Court. In
those proceedings, the first respondent took an
objection about the jurisdiction of that Court. The
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first respondent also initiated criminal
proceedings before the X Metropolitan
Magistrate's Court at Mumbai. He had also filed a
writ petition in the Bombay High Court, which he
subsequently withdrew on account of other
reasons.
10. In view of the constitution of the IPAB in the
year 2007, the Gujarat High Court itself
transferred the issue of revocation of patents to the
IPAB Circuit Bench at Mumbai, where the
proceedings commenced. In these circumstances
any further cause would undoubtedly have given
rise to proceedings only in the Bombay High
Court.
11. Yet another development which needs to be
taken note of is that while the Principal Seat of
IPAB was at Chennai, it held Circuit Bench
sittings at different locations. It appears that the
number of cases were too many at Mumbai,
whereas the frequency of sittings was
comparatively less. The result was that
proceedings would take longer time to reach a
culmination.
12. The petitioner was desirous of an early
adjudication on the issue of the applications filed
for revocation of patents. The parties thus joined
together to have the matter heard at Chennai,
which was the Principal Seat of the IPAB, on
account of time being at the disposal of the IPAB.
It is in this context that the hearing was held by
the IPAB at Chennai and the final order was
passed at Chennai and not at Mumbai. In our
view, this was an arrangement only for
convenience of hearing.
13. We fail to appreciate as to why such an
arrangement for convenience of hearing should
shift the venue of the litigation itself to Chennai
and not at Mumbai, where all proceedings
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practically arose . We are unimpressed by the
argument of the learned counsel for the first
respondent that if at all there was any
inconvenience, it was at the stage of hearing of the
appeal, since records would have to be called for
from the Office of the Patents. We are thus unable
to accept the plea of the learned counsel for the
first respondent that once the order has been
passed at Chennai in the aforesaid circumstances
by the IPAB, at best, it was an option for the first
respondent to either approach the Madras High
Court or the Bombay High Court, and having thus
approached the Madras High Court, it is not for
the petitioner to object to the same.
14. Merely because both the parties having
agreed to get the matter heard early, made
arrangements through their counsel to attend the
hearings at Chennai being the Principal Seat of
the IPAB, would not make a difference and we
are of the view that it is a fit case where the
principle of forum conveniens should be invoked
and the parties be put to adjudication before the
High Court of Bombay, rather than this Court.
15. We draw strength from the observations made
in Canon Steels case (supra) that if a small part of
cause of action arises within the territorial
jurisdiction, the same by itself may not be
considered to be a determinative factor compelling
the High Court to decide the matter on merits, and
the High Court may refuse to exercise its
discretionary jurisdiction by invoking the doctrine
of forum conveniens.
16. The present factual matrix is not even where it
is the situs of the appellate authority in question.
The Bench of the appellate authority was actually
located at Mumbai and thus, only for convenience
of hearing for certain days were sittings held at
Chennai. This is a distinct factor, even though the
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Full Bench of the Delhi High Court in M/s.
Sterling Agro's case (supra) had in fact observed
that an order of the appellate authority constitutes
a part of the cause of action, yet the same may not
be a singular factor, and the High Court may
refuse to exercise jurisdiction by invoking the
doctrine of forum conveniens. The mere fact that
hearing was held at Chennai rather than at
Mumbai on account of a given inadequacy of
sittings at Mumbai by the IPAB Circuit Bench at
Mumbai, thus would not imply that this Court
should necessarily exercise the jurisdiction.
17. The observations thus made in Dr. Nandu
Dwarakasingh's case (supra) become material in
the facts of the present case. We are thus inclined
to allow the application filed by the petitioner
(original fourth respondent in the writ petitions)
and non-suit the first respondent (original writ
petitioner), applying the principles of forum
conveniens, with leave to the first respondent to
file the proceedings before the competent court at
Mumbai. If one may say, the situation is akin to a
scenario where though the seat of arbitration may
be in one place, for convenience, some hearings
are held at another location.
18. The application, viz. M.P. No. 3 of 2012 is
accordingly allowed. In view of the orders passed
in the miscellaneous petition, the writ petitions are
dismissed, with liberty to the writ petitioner to
initiate legal proceedings at Mumbai, if so
advised. However, there shall be no order as to
costs. Consequently, all the connected
miscellaneous petitions stand closed.‖

100. The ld. Division Bench, thus, held that the patent applications having
originated from Mumbai, the High Court of Bombay had territorial
jurisdiction. The Court refused to exercise jurisdiction eventhough the
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impugned order was passed by IPAB, Chennai on account of the fact that
the hearing before the IPAB Chennai was merely an arrangement made for
convenience by the parties.
101. In Indian Performing Rights Society v. Sanjay Dalia (2015) 10 SCC
161 relied upon by Mr. Sethi, the Supreme Court was dealing with
interpretation of section 62 of the Copyright Act, 1957, and Section 134(2)
of the Trade Marks Act, 1999 with regard to the place where a suit can be
instituted by the Plaintiff. The said decision would not be applicable in the
context of the issues being considered by this Court.
102. The judgment of the Supreme Court in Nasiruddin and Ors. v. State
Transport Appellate Tribunal (supra) sought to be relied upon by Ms.
Rajeshwari, ld. counsel is also not applicable to the legal position under
consideration. The Supreme Court in Kusum Ingots & Alloys (supra) has
observed that the said decision is an authority for the proposition that the
place from where an appellate order or a revisional order is passed may give
rise to a part of cause of action. However,in the case at hand the impugned
order is not an order of the appellate court or the revisional court but an
order passed under an arrangement made for administrative convenience.
103. In view of the above legal position, an order passed by the Delhi
Patent Office as a part of arrangement put in place by the Office of
CGPDTM, though within the territorial limits of this Court, would not vest
territorial jurisdiction in the High Court under section 117A of the 1970 Act.
In this background, it is clear that 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
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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.

Conclusion on facts in C.O.(COMM.IPD-PAT) 3/2021 titled Dr. Reddy’s
Laboratories Limited& Anr. v. The Controller of Patents& Anr.
104. Suits for infringement have been filed by Boehringer against both the
Petitioners herein in the High Court of Himachal Pradesh and interim
injunctions have been granted. However, 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. C.O.
(COMM.IPD-PAT) 3/2021 is held to be maintainable before this Court. The
application under Section 10 CPC would, however, be decided on its own
merits.
th
105. List for further proceedings on 9 January, 2023.
Conclusion on facts in C.O.(COMM.IPD-PAT) 1/2022 titled Tyssenkrupp
Rothe Erde Germany GMBH v. The Controller of Patents
106. On the basis of the findings given above, if any of the elements of
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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 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.
107. It is clarified that the matter has not been considered on merits by this
Court. Thyssenkrupp is free to raise all the grounds for revocation of the
patent before the High Court of Madras where its revocation petition is
currently stated to be pending.
108. Accordingly, I.A. 3570/2022 filed under Order 7 Rule 11CPC is
allowed.
109. C.O. (COMM.IPD-PAT) 1/2022 is dismissed along with all pending
applications with liberty to pursue the cancellation petition before the High
Court of Madras.

Conclusion on facts in C.A. (COMM.IPD-PAT) 169/2022 titled Elta
Sytems Ltd. v. The Controller of Patents
110. In view of the findings given above, 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. Even though due to administrative exigencies, the
examination was done by the Asst. Controller at the Delhi Patent Office who
has passed the impugned order, the appeal would not be maintainable before
this Court.
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111. C.A. (COMM.IPD-PAT) 169/2022 is, accordingly, dismissed along
with all pending applications with liberty to Elta Systems Ltd. to approach
the High Court of Bombay. 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.
112. There shall be no orders as to costs in all these cases.


PRATHIBA M. SINGH
JUDGE
NOVEMBER 10, 2022
Dk/Sk

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