Introduction This case pertains to a revocation petitionfiled under Section 64 of the Patents Act, 1970, by Dr. Reddy’s Laboratories Limited and MSN Laboratories Pvt. Ltd. against the patent granted to Boehringer Ingelheim International GmbH as well as Patent Appeal. The case primarily examines jurisdictional aspects following the abolition of the Intellectual Property Appellate Board (IPAB) and the reallocation of patent disputes to High Courts.
Factual Background Boehringer Ingelheim applied for a patent for certain Benzenol derivatives and medicinal preparations containing these derivatives via the PCT route on August 23, 2006. The Indian patent application (No. 4844/DELNP/2006) was filed in the Patent Office, Delhi, and was subsequently granted as Patent No. IN 268846 on September 18, 2015.
On October 16, 2021, Dr. Reddy’s Laboratories Limited and MSN Laboratories Pvt. Ltd. filed a revocation petition before the Delhi High Court seeking revocation of the patent on grounds of invalidity under Section 64 of the Patents Act, 1970.
Three days later, Boehringer Ingelheim filed infringement suits against Dr. Reddy’s Laboratories in the High Court of Himachal Pradesh on October 19, 2021, obtaining an interim injunction against them. A similar infringement suit was filed against MSN Laboratories on October 25, 2021, and an interim injunction was granted.
Procedural Background The revocation petition was filed before the Delhi High Court. However, Boehringer raised a preliminary objection challenging the maintainability of the petition, arguing that since the infringement suit was already pending in the Himachal Pradesh High Court, the petitioners should file a counterclaim for revocation there instead of initiating a separate revocation proceeding in Delhi. Boehringer also sought a stay on the revocation proceedings under Section 10 of the Code of Civil Procedure (CPC), pending the disposal of the infringement suits.
Meanwhile, Elta Systems Ltd. filed a patent appeal under Section 117A of the Patents Act, challenging the refusal of its patent application by the Controller of Patents. The patent application was filed as an Indian national phase application under the PCT route at the Mumbai Patent Office. Due to internal administrative processes, the application was transferred for examination to the Delhi Patent Office, where the rejection order was issued. Elta Systems, considering that the rejection order was passed by the Delhi Patent Office, filed its appeal before the Delhi High Court.
Boehringer, in response, contended that since the original application was filed at the Mumbai Patent Office, the appeal should have been filed before the Bombay High Court, as per the territorial jurisdiction governing patent appeals under Section 117A. The issue before the Court was whether the appeal should be heard in Delhi based on the office that issued the rejection or in Mumbai based on the appropriate office at the time of filing.
Issues Involved:
Whether the revocation petition was maintainable before the Delhi High Court despite ongoing infringement suits in Himachal Pradesh?
Whether a revocation petition under Section 64 of the Patents Act could be filed independently, or whether it should only be filed as a counterclaim in the infringement suit?
Whether a patent appeal under Section 117A should be filed in the High Court with jurisdiction over the Patent Office that examined and rejected the application or the Patent Office where the application was initially filed?
Submissions of the Parties
Petitioners (Dr. Reddy’s Laboratories & MSN Laboratories) argued that Section 64 of the Patents Act provides an independent right to seek revocation, irrespective of whether an infringement suit is pending. They claimed that since the patent was granted by the Delhi Patent Office, the appropriate High Court for the revocation petition was Delhi. They asserted that the revocation petition was filed before the infringement suits, thus justifying its maintainability in Delhi.
Respondents (Boehringer Ingelheim) contended that the revocation petition should be filed as a counterclaim in the Himachal Pradesh High Court where the infringement suits were pending, to avoid multiplicity of proceedings. They cited jurisdictional concerns, arguing that once an infringement suit was filed, any revocation claim should be addressed within the same suit. They sought a stay of the revocation proceedings under Section 10 CPC.
In the patent appeal, Elta Systems argued that since the rejection order was issued by the Delhi Patent Office, the appeal should be maintainable before the Delhi High Court. The Controller of Patents, however, submitted that as per Rule 4 of the Patent Rules, the appropriate office for the application was Mumbai, and thus, the Bombay High Court should have jurisdiction over the appeal.
Discussion on Patent Revocation and Patent Appeal Proceedings:
The Court carefully examined the fundamental differences between patent revocation proceedings under Section 64 of the Patents Act and patent appeals under Section 117A. It acknowledged that while both proceedings pertain to the validity of a patent, their scope, legal basis, and jurisdictional implications differ significantly.
A patent appeal under Section 117A is a continuation of the examination process, where an applicant seeks a judicial review of the Controller of Patents' decision regarding the grant or refusal of a patent. The Court determined that an appeal primarily concerns the static effect of a patent decision, as it is restricted to reviewing the correctness of an administrative order. Given that patent appeals are limited to examining the legal and factual correctness of decisions made by the Patent Office, the Court held that they should be heard by the High Court exercising jurisdiction over the appropriate Patent Office at the time of filing, rather than where the final rejection order was issued.
The Court negated the dynamic effect principle in the case of patent appeals, stating that these proceedings do not create widespread commercial implications but rather focus on the applicant’s specific grievance against the decision of the Patent Office.
In contrast, patent revocation under Section 64 is an independent legal action that any interested party can initiate to challenge the validity of a granted patent. The Court emphasized that revocation proceedings have a dynamic effect, as they do not merely review past administrative decisions but actively challenge the enforceability and legal standing of the patent across the country. The impact of a patent extends beyond the Patent Office and affects businesses, competitors, and researchers nationwide. Thus, revocation cannot be confined to the territorial jurisdiction of the Patent Office but should be determined based on where the commercial and legal consequences of the patent are significantly felt.
The Court drew upon the dynamic effect principle established in Girdhari Lal Gupta v. K. Gian Chand Jain & Co., 1977 SCC OnLine Del 146, which highlighted that intellectual property rights influence markets, industries, and research activities far beyond the place of registration. Applying this principle, the Court reasoned that while appeals must be geographically confined, revocation petitions should be entertained in jurisdictions where their effects are materially experienced.
Final Decision The Delhi High Court held that the revocation petition was maintainable and dismissed Boehringer’s application seeking a stay. In the patent appeal, the Court ruled that the appropriate High Court was the Bombay High Court, as the original filing took place in Mumbai, and transferred the case accordingly.
Law Settled in the Case:
A revocation petition under Section 64 of the Patents Act can be filed independently and is not necessarily required to be a counterclaim in an infringement suit.
The dynamic effect principle applies differently to revocation petitions and patent appeals. Dynamic effect principle are applicable to patent revocation ensuring that jurisdiction is determined based on the actual legal and commercial impact.
Patent appeals should be filed in the High Court governing the original Patent Office where the application was filed, rather than where the examination or rejection order was issued.
