For expeditious disposal of patent applications, in 2016, the Indian Patent Office introduced the automatic allocation of patent applications to different examiners/controllers through electronic modules. Resultantly, an application filed at one location could be examined by an Examiner posted at a second location and disposed of by a Controller posted at a third location without any inconvenience to the applicant. Because of this system, a legal issue arises as to where to file an appeal if the patent application is refused by a Controller located in an office different from where the application was initially filed. In that circumstance, the issue of how the seat of the High Court will be decided came up before a single judge of Delhi Court in the matter Filo Edtech Inc Vs. Union of India & Anr. (C.A.(COMM.IPD-PAT) 30/2023).
Brief Facts of the Case
The Appellant in the above case filed an application for the grant of a patent for an invention titled “CONNECTING A TUTOR WITH A STUDENT” at the Mumbai Patent Office on February 04, 2022. The application was auto allocated to an assistant controller of a patent located in Delhi for examination. The Controller issued a first examination report (FER) on the letterhead of the Mumbai Patent Office. Subsequently, a hearing notice was also issued by the same Controller on letterhead of the Delhi Patent Office and later on, a decision was passed by the same Controller refusing the grant of a patent. However, the refusal order did not include any office address from which it was issued. Aggrieved by the order of the Controller, the Appellant preferred an appeal before the Delhi High Court, which the Respondent opposed for lack of jurisdiction. The Respondent relied on the decision held in the case of Dr. Reddys Laboratories v. Controller of Patents (295 (2022) DLT 591).
Issue before the Court
The issue before the Court was whether the seat of the High Court for hearing an appeal against the decision of the Controller would be the High Court under whose territorial jurisdiction the Controller has delivered the order, or it would be the High Court under whose territorial jurisdiction the appropriate office lies.
Applicable Rule/Law and Submission of the Parties
Section 2(1)(i) of the Patents Act, 1970 (hereinafter “the Act”) gives the relation of the High Court with respect to a State or Union Territory. Section 117A(2) of the Act states that an appeal shall lie to the High Court from any Controller’s decision, order or direction. Rule 4 of the Patents Rules, 2003 (as amended) defines what is an appropriate office. The Appellant contended that a Controller disposed his application of Delhi office and, therefore, cause of action arises in Delhi if Section 117(A)(2) is conjointly read with 2(1)(i) of the Act and thus the seat of the High Court should be Delhi High Court. The Respondent opposed this line of argument and submitted that the seat of the High Court must be based on the appropriate office where the application was initially filed as decided in detail by a coordinate bench of Delhi High Court in the Dr. Reddy’s Laboratories case.
Decision of the Court
The Hon’ble Court, after hearing both parties, held that it is well settled that decisions even of Coordinate Benches are to be regarded as binding in nature, provided the Bench does not fully subscribe to the view of the Coordinate Benches. The Coordinate Bench in Dr. Reddy Laboratories has taken the view that the seat of the High Court will be based on the territorial jurisdiction of the appropriate office. The question before the Hon’ble Court was whether the decision held in Dr. Reddy’s Laboratories requires reconsideration by a larger bench. The facts in the Coordinate Bench in holding that the situs of the High Court, which would hear the appeal under Section 117A(2), would also be determined by the location of the “appropriate office” were similar to the present appeal.
The Hon’ble Court held that Rule 4(1)(i) of the Act specifically states that the appropriate office of the Patent Office shall, “for all proceedings under the Act”, be the Patent Office where the application seeking grant of patent is initially filed. Sub-rule (2) of Rule 4 further stipulates that the appropriate office once decided on in respect to any proceedings under the Act, shall ordinarily not be changed. The Hon’ble Court emphasised the phrase “for all proceedings under the Act,” which would mean all proceedings from the stage of filing of the application before the Patent Office under Section 7 till the filing of the appeal before the High Court under Section 117A.
All these proceedings are proceedings under the Patents Act. In respect of all such proceedings, therefore, the Hon’ble Court held that the appropriate office would statutorily be the Mumbai Patent Office for the purposes of the case at hand. Thus, the Hon’ble Court agreed with the view of the Coordinate Bench in Dr. Reddy’s Laboratories.
Now, the clouds of uncertainty for deciding the seat of the High Court in the patent appeal matter have been cleared. It is the appropriate office as defined in Rules 4(1)(i) and 4(2) of the Patents Rules has to be given importance while deciding the seat for filing an appeal under Section 117A of the Act and not the location of the Controller who has issued the refusal order. However, there is still scope for future interpretation of Rule 4(2) of the Patents Rules, which uses the expression “shall not ordinarily be changed”. The use of “ordinarily” in Rule 4(2) raises the question of in what circumstance the appropriate office, once decided, can be changed.