Appeals against order of the Patent Office would lie before High Court having jurisdiction over ‘appropriate office’: Delhi High Court

The Delhi High Court has held that after the abolition of Intellectual Property Appellate Board (IPAB), appeals challenging the order of the Patent Office would lie before the concerned High Court having territorial jurisdiction over the ‘appropriate office’ from where the patent application originates and which is the situs of the said application..Single-judge Justice Prathiba M Singh observed that 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.Justice Singh said 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, the judge said.“All communications in relation to any proceedings under the Act or the Rules have to be addressed to the appropriate office… This obviously means that it is only in exceptional circumstances that change of appropriate office is possible under Rules,” the court said..The judge noted that in recent time, for administrative exigencies, the office of Controller General of Patents, Designs and Trade Marks (CGPTDM) allocates examination of applications between Patent Offices.However, the court added that a mere arrangement made for administrative convenience would not change the appropriate office of the patent application.“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 the patent application.”.The bench was dealing with three suits seeking revocation of the patents granted under Section 64 of the Patents Act, 1970.A question arose before the court that as the matters pending before the IPAB have been transferred to High Court after the introduction of the Tribunal Reforms Act, which High Court can entertain the revocation appeals and petitions and how the jurisdiction of the courts is to be determined..After considering the arguments, Justice Singh concluded that 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 an appropriate office is located..Advocates J Sai Deepak, Avinash Kr Sharma, Pranaynath Jha, MaheshKumar, Simran Soni & Anubha Pandey, Rajeshwari H and Deepanshu Nagar appeared for the petitioners. UOI was represented through CGSC Harish Vaidyanathan Shankar along with advocates Srish Kumar Mishra, Alexander Mathai Paikaday and Sagar Mehlawat. Senior Advocate Sandeep Sethi along with advocates Sanjay Kumar, Arpita Sawhney, Priyansh Sharma, Meenal Khurana, Tabhay Tandonand, Arun Kumar, Bharath MS, Ayush Sharma appeared for the respondents.Advocates Adarsh Ramanujan and Aditya Gupta assisted the court. .[Read Order]