Rms Fire And Safety Services Pvt ... vs Ispl Automation Pvt Ltd And Ors
2022 Latest Caselaw 2890 Del

                                                                                       2022/DHC/004805




                          $~20
                          *        IN THE HIGH COURT OF DELHI AT NEW DELHI
                                                                 Date of decision: 11th November, 2022
                          +           C.A. (COMM.IPD-PAT) 484/2022 & I.A.18125/2022
                                   RMS FIRE AND SAFETY SERVICES PVT. LTD. ..... Appellant
                                                 Through: Mr. Vikas Upadhyay and Ms. Ashwin
                                                          Kr.         Nair,       Advocates.
                                                          (M:9811225486) with Mr. B.S.
                                                          Tongar, (Director).
                                                 versus

                                   ISPL AUTOMATION PVT LTD AND ORS.      ..... Respondents

Through: Mr. Harish V. Shankar, CGSC, Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat, Mr. Alexander Mathai Paikaday, Advocates.

(M:9810788606) CORAM:

JUSTICE PRATHIBA M. SINGH Prathiba M. Singh, J.(Oral)

1. This hearing has been done through hybrid mode.

2. This is an appeal under section 117A of the Patents Act, 1970 (hereinafter 'Act') arising out of the impugned order dated 22nd August, 2022 passed by the Asst. Controller of Patents in Mumbai Patent Office in application no. 2442/MUM/2015 and patent no. 320556. Vide the impugned order, the patent of the Appellant has been revoked.

3. The Appellant herein had applied for grant of a patent in relation to Motor Bike Fire Engine titled 'Two-Wheel Fire Fighting Motorcycle With High Pressure Water Mist'. The said patent was granted on 16th September, 2019. On 2nd July, 2020, a post grant opposition was filed in respect of the

Signature Not Verified Digitally Signed

Signing Date:14.11.2022 12:21:59 2022/DHC/004805

said patent by Respondent No. 1 herein- ISPL Automation Pvt. Ltd. An Opposition Board was constituted in terms of Rules 56 of the Patent Rules, 2003 read with Section 25 of the Act. The Opposition Board its recommendation in favour of the Appellant. However, the Asst. Controller of Patents vide impugned order allowed the opposition under Section 25(2)(e) and 25(2)(f) of the Act, resulting in the revocation of the Appellant's patent.

4. Ld. counsel for the Appellant submits that since the office of the Controller General (CGPDTM) is located in Delhi, this Court would have jurisdiction to deal with the present appeal. However, he also fairly concedes that after perusing the decision of this Court in Dr. Reddys Laboratories Limited v. The Controller of Patents [C.O.(COMM.IPD-PAT) 3/2021, dated 10th November, 2022]. he wishes to withdraw the present appeal and approach the appropriate High Court i.e. the High Court of Bombay.

5. Heard. The patent application in the present case was filed in the Mumbai Patent Office. The Mumbai Patent Office was for all practical purposes the appropriate office and the situs of the patent in question. Even though one branch office of the CGPDTM may be located in Delhi, in terms of the judgment Dr. Reddys Laboratories (supra), this court would not have jurisdiction to entertain the present appeal. The relevant portion of the said judgment reads as under:

"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

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Signing Date:14.11.2022 12:21:59 2022/DHC/004805

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 '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.

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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;

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.

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Signing Date:14.11.2022 12:21:59 2022/DHC/004805

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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 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."

6. Since ld. Counsel for the Appellant wishes to withdraw the present appeal and approach the appropriate High Court having jurisdiction, the appeal is dismissed as withdrawn with liberty to the Appellant to approach the Bombay High Court challenging the impugned order dated 22nd August, 2022.

7. The present appeal is dismissed as withdrawn with liberty as sought. All pending applications are also disposed of.

PRATHIBA M. SINGH JUDGE NOVEMBER 11, 2022 MR/SK

Signature Not Verified Digitally Signed

Signing Date:14.11.2022 12:21:59