On January 3, the Madras High Court passed an important decision clarifying the position on the jurisdiction of a court in hearing writ petitions against the Indian Patent Office’s order. Assessing this decision in light of the Delhi High Court’s judgement in Dr. Reddy’s Laboratories Limited & Anr v. The Controller of Patents, we are pleased to bring to you this post by Vishno Sudheendra. Vishno is a second year law student at the NLSIU, Bangalore and wrote this post while interning with us.
Universal Health Network v. Adiuvo Diagnostics Private Limited: Clarity on Writ Jurisdiction against Orders from the IPO
By Vishno Sudheendra
The Division Bench of the Madras High Court, in the case of Universal Health Network v. Adiuvo Diagnostics Private Limited, (“Universal case”) clarified the issue of jurisdiction to hear writ petitions challenging the orders accepting/ rejecting pre-grant oppositions. This case assumes significance because it pays no heed to the “appropriate office” to determine whether it has the jurisdiction to hear the writ petition, rather it relies on a principle similar to that of “dynamic effect”. The principle of dynamic effect was discussed in Dr. Reddy’s Laboratories Limited & Anr v. The Controller of Patents, (see here) in the context of revocation applications, where the court emphasized the nationwide effect of a grant (discussed in detail below). In this blog, I will briefly summarise the judgment and further analyse and discuss the implications of the same.
The Judgment
The case involves a dispute between Universal Health (“UH”), the appellant/4th respondent, and Adiuvo Diagnostics Private Limited (“AD”), the 1st respondent/writ petitioner. UH filed a patent application in Delhi, which AD opposed with a pre-grant opposition also filed in Delhi. Both the examination of the patent application and the objection were assigned to the Office of the Patent Controller in Chennai, where the objection was dismissed, and the patent was granted to UH. AD then filed a writ petition in the Madras High Court challenging the dismissal of the objection, citing a violation of natural justice as expert evidence was not considered. A key issue here was whether the Madras High Court had jurisdiction over the matter. The court ruled that regardless of the location of the appropriate patent office, it would have territorial jurisdiction if part of the cause of action arose within its jurisdiction. Since AD conducted its business in Chennai pursuant to the granted patent and the grant of patent to UH would affect its business, Chennai had jurisdiction. The court rejected UH’s objection based on the place of suing, emphasizing that Chennai was the primary geographical area where the rights of the parties played out.
Analysis
The determination of appropriate office is a key consideration in matters determining the jurisdiction of High Courts, especially in terms of opposition because Rule 55 of the Patent Rules 2003, clearly stipulates that opposition can only be filed in the appropriate office. In the given case as per the definition of ‘appropriate office’ in Rule 4 of the Patent Rules 2003, the Delhi Patent office was the appropriate office and thus bestowing appellate jurisdiction under Section 117A, of the Patent Act 1970, to the Delhi High Court. However, in the present case the court considered that the writ petitioner, whose business is based in Chennai, would be affected if the said patent is granted and thus held that there was valid cause of action to file the writ petition before the Madras High Court.
The Court’s reasoning includes the dynamic effect of the grant of a patent while determining the writ jurisdiction concerning patents. This reasoning mirrors the reasoning in Reddy’s case where the Court while interpreting “person interested” affirmed that it would include a person who has a direct, present and tangible interest with a patent, and the grant of the patent, adversely affects his above rights. The same is interpreted not in a static way but in a dynamic method which considers the rights of the affected parties as grounds for a cause of action. Therefore, we can see a similar trend in the Universal case where the court considered the adverse impact on the business of AD, located in Chennai, as grounds for having valid writ jurisdiction.
The inclusion of consideration of the dynamic effect of a patent within the scope of cause of action in the given case, concerning writ petitions, must be distinguished from appeals. The latter is determined via Section 117A, of the Patent Act 1970, and Rule 4 of the Patent Rules 2003. The Reddy’s case, as noted by Namratha here, allowed the use of dynamic effect of grant of patent as a consideration for determining jurisdiction for revocation, however, it clarified that jurisdiction for appeals against decisions of Patent offices would lie with the High Court in whose territorial jurisdiction the appropriate Patent office lies. I believe a similar restriction should be kept in mind in the given case. The precedential value of the Universal case, should be restricted to writ petitions and should not be interpreted to apply to appeals under Section 117A because such appeals have a robust framework through Patent Rules 2003, for the determination of jurisdiction. Applying such a consideration in determining the jurisdiction of appeals would impede the framework provided under Patent Rules 2003, which bestow jurisdiction to the High Court in whose territorial jurisdiction the appropriate Patent office lies under Rule 4. Further, expanding such a consideration to all appeals may lead to multiple proceedings by people simultaneously appealing in various High Courts. And, it may also lead to forum shopping by allowing certain appellants, whose business might be affected in multiple states, to choose their favorable Courts. Therefore, the precedential value of Universal case concerning the consideration of the dynamic effect of grant of patent, should be restricted to writ petitions and should not be applied to all appeals under Section 117A.
Implications
The Universal case sheds clarity on the writ jurisdiction concerning patents. The Court rightly considered the effect of the grant of the patent on the business of the writ petitioner to determine the writ jurisdiction while paying no heed to appropriate office because the grant of patent provides exclusive monopoly rights which, when given with unfit examination, may have drastic consequences on other businesses, especially small and medium enterprises, and may further lead to excess litigation.
The case also provides clarity on the convenient forum for those seeking to file writ petitions in matters concerning oppositions. The Madras High Court held that a valid jurisdiction exists in the given case because the place of business of the opponent who would be affected by the grant of patent is in Chennai. Therefore, this would provide a convenient forum for all opponents to file writ petitions in High Courts whose jurisdiction extends to their place of business.
The Universal case, through providing a convenient forum, may also, however, increase the possibility of forum shopping, where different opponents may choose favourable High Courts to file their writ petitions. It may also lead to a multiplicity of proceedings by different writ petitioners filing petitions in various High Courts.
Further, this case might be misused as a precedent to expand the scope of cause of action in all suits, however, as cautioned earlier the precedential value must be restricted to writ petitions. If it is expanded beyond the same, it would render section 117A and the framework of appropriate offices moot.
Conclusion
The Universal case marks a significant development in the jurisdictional landscape concerning patent appeals and writ petitions. The ruling of the Madras High Court interprets the scope of cause of action for writ jurisdiction in patent-related matters, by considering the dynamic effect of the grant of a patent on the business interests of the petitioner. This is a departure from the traditional emphasis on the location of the appropriate patent office, however, this concerns the issue of writ jurisdiction and not appellate jurisdiction.
The implications of the Universal case extend beyond mere procedural considerations. By recognizing the ramifications of patent grants on businesses and stakeholders. However, this newfound flexibility must be tempered with caution to prevent a multiplicity of proceedings.
While the decision provides a more accessible forum for aggrieved parties to seek redressal through writ petitions, it also raises concerns regarding potential forum shopping and the proliferation of multiple proceedings across different High Courts. Therefore, it’s imperative to distinguish this expansion of cause of action within the realm of writ jurisdiction from other appellate procedures governed by specific statutory provisions.
Ultimately, while the Universal case clarifies the criteria for determining writ jurisdiction in patent disputes and provides a welcome expansion of cause of action for writ petitions concerning patents via the principle of the dynamic effect of patents.