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 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 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 under Section 64 of the Patents Act, 1970.
• Boehringer Ingelheim filed infringement suits against Dr. Reddy’s Laboratories in the Himachal Pradesh High Court on October 19, 2021, and against MSN Laboratories on October 25, 2021. Interim injunctions were granted in both cases.

Procedural Background:

• Boehringer objected to the revocation petition's maintainability, arguing that it should be filed as a counterclaim in the Himachal Pradesh High Court.
• Boehringer sought a stay on the revocation proceedings under Section 10 of the CPC.
• 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.
• Boehringer argued that the appeal should have been filed before the Bombay High Court, as per territorial jurisdiction.

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 only 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 the application or where the application was initially filed?

Submissions of the Parties:

Petitioners (Dr. Reddy’s Laboratories & MSN Laboratories):

• Argued that Section 64 provides an independent right to seek revocation.
• Claimed that the Delhi Patent Office granted the patent, making Delhi High Court the appropriate forum.
• Emphasized that the revocation petition was filed before the infringement suits.

Respondents (Boehringer Ingelheim):

• Argued that the revocation petition should be filed as a counterclaim in the Himachal Pradesh High Court.
• Contended that a separate revocation proceeding would lead to multiplicity of cases.
• Sought a stay of revocation proceedings under Section 10 CPC.

In the Patent Appeal:

• Elta Systems argued that the appeal should be maintainable in the Delhi High Court.
• The Controller of Patents contended that jurisdiction should be in the Bombay High Court as per Rule 4 of the Patent Rules.

Discussion on Patent Revocation and Patent Appeal Proceedings:

• The Court distinguished between patent revocation under Section 64 and patent appeals under Section 117A.
• Patent appeals are a continuation of the examination process, focusing on reviewing the Controller’s decision.
• Patent revocation has a dynamic effect, impacting commercial and legal aspects beyond administrative decisions.
• The Court applied the dynamic effect principle from Girdhari Lal Gupta v. K. Gian Chand Jain & Co. (1977 SCC OnLine Del 146).

Final Decision:

• The Delhi High Court held that the revocation petition was maintainable and dismissed Boehringer’s application for a stay.
• The Court ruled that the patent appeal should be transferred to the Bombay High Court, as the original filing took place in Mumbai.

Law Settled in the Case:

• A revocation petition under Section 64 of the Patents Act can be filed independently and is not necessarily a counterclaim in an infringement suit.
• The dynamic effect principle applies to revocation petitions, ensuring jurisdiction is based on actual legal and commercial impact.
• Patent appeals should be filed in the High Court governing the original Patent Office where the application was filed.

Case Title: Dr. Reddy’s Laboratories Ltd. & Anr. Vs. The Controller of Patents & Ors.
Date of Order: 10 November 2022
Case No.: C.O.(COMM.IPD-PAT) 3/2021
Neutral Citation: 2022/DHC/004746
Court: Delhi High Court
Judge: Justice Prathiba M. Singh

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539