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Jurisdictional aspects of patent infringement suits


A patent is an exclusive right granted to an invention that satisfies the prerequisites such as novelty, inventive step and industrial application which makes it susceptible for patentability[1]. There are treaties such as the Patent Cooperation Treaty and Trips Agreement that establish patent jurisprudence which are ratified and recognized by countries such as India. There are many notable judicially created equitable doctrines such as Doctrine of Equivalents[2] , Pith and Marrow which are considered by both, the Intellectual Property Appellate Board and the Indian Courts while adjudicating issues regarding patent infringement.

Importance of Jurisdiction;

Indian courts are much concerned about whether they have got the jurisdiction to adjudicate the suits when they lay before them. The Courts if found not having appropriate jurisdiction would dismiss the suit.  It is exemplary to note that the court can only dismiss the suit rather than “determining” the absence of its jurisdiction to hear the suit.  There is a difference between dismissal of the suit and the determination of no jurisdiction.  In the second case when it is said to be the determination it is not appropriate for the court to determine that it has no jurisdiction even though the consequent resultant is the dismissal of the suit.  So the Indian courts are very generous about how they are subjected to their jurisdiction which are vested on them by law.  This article throws light on the jurisdictional aspects of patent infringement suits. 

Jurisdiction as provided by the Patents Act 1970. 

As per Section 104 of the Patents Act 1970, under the chapter of ‘Suits concerning infringement of patent’, it is provided no jurisdiction to courts inferior to the district court shall have the authority to address the cases of patent infringement.  The counterclaim for the revocation of patent if taken, the suit along with the counterclaim is guided to be transferred to the High Court[3].  The invalidating of a patent thereby revoking it can be an approachable defense in many cases of patent infringement suits and that are commonly taken.  As per the above inference the Jurisdiction of High Court starts on the counter claim by the defendant along with which the suit is transferred to the High Court while when the District Court loses its jurisdiction.  When the suit is filed on the  original side of the High Court by the plaintiff whose patent is infringed,  the respondent can challenge the jurisdiction of the High Court, even if he is going to challenge the validity of the patent by revocation.  It is to be argued that the petitioner must not sue in assumption of the case will be taken to High Court with counter claim of revocation as a defense.  Moreover the determination of jurisdiction of the court has to be made by looking into averments made in the plaint and not by considering the defense[4].

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 Jurisdiction under Civil Procedure Code, 1908.

The Civil Procedure Code provides jurisdiction to those suits whose pecuniary and territorial jurisdiction are as specified in the Court under Section 6 of the Civil Procedure Code. The pecuniary jurisdiction of courts are determined by the amount or value of the subject matter for providing ordinary jurisdiction.  The territorial jurisdiction of Courts other than the High Court for its ordinary original civil jurisdiction is directed by Section 20 of Civil Procedure Code by the way of which the suit shall be made instituted within the local limits of whose jurisdiction the defendant’s residence or carriage of business occurs or where the cause of action wholly or partly arises.  The patent right being an intangible right and an intellectual property the pecuniary jurisdiction is not concerned as it is for those concerning immovable properties. Even for territorial jurisdiction as per Section 120 ,the provisions of Section 16, 17 and 20 are not applicable to the High Court in its exercise of ordinary original civil jurisdiction.  When the suits are filed in the District Court the territorial jurisdiction are conferred by the above said provisions.

The jurisdiction under the Commercial Courts, Commercial Divisions and Commercial Appellate Divisions of High Courts Act 2015.

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This legislation includes the disputes arising out of intellectual property rights as Commercial Disputes under Section 2(1)(c)(XVII),  of the said Act which found new Courts  of patent infringement suits can be adjudicated by Commercial Courts, Commercial Divisions and Commercial Appellate Division of High Courts. It has been well employed in the Act that all suits and applications relating to Commercial disputes including patent infringement suits of Specified Value filed or pending in the original side of High Court shall be heard or disposed of by the Commercial Division of that High Court. Section 7 of the Act has also mentioned that commercial disputes “stipulated by an Act to lie in a court not inferior to District Court”, which means if those Commercial Disputes whose Parent Act provides jurisdiction to Principal Civil Courts  as District Court can also be taken filed by virtue of this Act.

It has further been specified that the transfer of cases from the District court by the virtue of Section 104 of Patents Act through revocation defense, can also be excised from ordinary original civil jurisdiction of High Courts. Apart from the High courts the Commercial Courts under Section 6 shall also try suits of patent infringement.  Now a common question arising out of Section 7 is whether it has been given the Commercial Disputes of a “specified value” and if it can be heard and disposed of by this Act.  Now, the specified value as defined by Section 2(1)(i), is the value of the subject matter as determined by Section 12 and that shall not be less than 1 crore.  This value is amended as less than 3 Lakh Rupees by the Amendment of the said Act in 2018[5].  The patent infringement suits are concerned under Section 12(1)(d),  of the specified value can be determined for intangible rights by the market value of the said right estimated by the plaintiff.  So the Section allows the plaintiff to estimate the market value of his intangible right if found infringed.  But it is a common practice in the chartered courts such as the High Court of Madras that do not necessitate the specified value for the admission of the case in issues concerning jurisdictional aspects.  For example if the petitioner is not going to ask for compensation and only for the  injunction on the sale of the patented product by infringing the patent rights.  Even in such circumstances when the suit is not concerned of specified value it shall be instituted by this act by invoking its jurisdiction.

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The enforcement of Intellectual Property in India is emerging as a national legal trend.  For one to protect his intangible right the enforcement must accompany the prevention of infringement of it through suits and arbitrations.  To such prevention the basic necessity is that the jurisdiction of Courts must be well scholored.  Therefore jurisdiction is not merely a part of litigation but the primary necessity of the admissibility of the said case in the Court.

[1] Section 2(j), Indian Patents Act, 1970.

[2] Beecham group limited v. Bristol Laboratories ltd. And another, 1967(16)r.p.c 406.

[3] Id, Section 104.,

[4] G. V. Films Ltd., v. Unit Trust of India, 1998 (2) CTC 518; Abdulla Bia Ali v. Galappa. AIR 1925 SC 377; See also; Dhanalakshmi.v Eknathan. 1997 (2) CT 550. 

[5] Amendment to Commercial Courts, Commercial Divisions and Commercial Appellate Division of High Courts

Cite this article (The Bluebook 20th ed.)-

Mukesh M., Jurisdictional aspects of patent infringement suits, Ex Gratia Law Journal, (November 2, 2020),

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Mukesh M.
Student - GLCPKM, Tamilnadu Dr. Ambedkar Law University