In a recent ruling in the case Filo Edtech Inc. (“Appellant”) v. Union of India & Anr. (“Respondents”), the Delhi High Court addressed the issue of determining the situs of the High Court in a patent appeal. The patent application, in this case, was assigned to the Delhi Patent Office for a hearing, however, the filing was done at, and the appropriate office was designated as, the Bombay Patent Office. Further, the First Examination Report (FER) was issued on the official letterhead of the Bombay Patent Office. Correspondingly, the response to the FER was also directed to the Bombay Patent Office. Thereafter, a Controller of Patents issued a refusal order, leading to an appeal before the Delhi High Court. Notably, the Controller’s order under scrutiny did not specify the office’s location.
The key issue was whether the situs of the High Court for hearing the appeal should be based on the territorial jurisdiction of the Controller who issued the order or the territorial jurisdiction of the appropriate office where the application was initially filed. The Appellant argued that the situs should be Delhi since the patent was rejected by a Controller in Delhi, while the Respondent relied on the precedent set in the case of Dr.Reddys Laboratories v. Controller of Patents [2022/DHC/004746], to assert that the jurisdiction would lie with the appropriate office.
The court considered the statutory definitions of the term “High Court”, and analysed precedent case law to hold that held that the appropriate office is crucial in determining the situs for filing an appeal. The court emphasized that the appropriate office, once decided, should ordinarily not be changed. The court further clarified that it was aligned with the precedent set in the Dr. Reddys case confirming that the situs of the High Court in a patent appeal ought to be determined by the location of the appropriate office where the application was initially filed.
Judgement Docs can be accessed here, https://shorturl.at/bmrHW
Filo Edtech Inc. V. Union of India & Anr., C.A.(COMM.IPD-PAT) 30/2023, Delhi High Court, Judgement dt. November 21, 2023