JUDGMENT

1. This hearing has been done through hybrid mode.

2. Issues of maintainability have been raised in these three proceedings under the Patents Act, 1970(hereinafter ‗1970 Act‘). There are two categories of cases:

i. C.O.(COMM.IPD-PAT) No.3/2021 and C.O.(COMM.IPD-

PAT) No.1/2022 are revocation petitions seeking revocation of granted patents under Section 64 of the 1970 Act;

ii. C.A.(COMM.IPD-PAT) 169/2022 is an appeal under Section

117A of the 1970 Act.

3. The enactment of the Tribunal Reforms Act 2021 (hereinafter ‗TRA‘)resulted in the abolishing of the Intellectual Property Appellate Board (hereinafter ‗IPAB‘). All matters which were pending before the IPAB stood transferred to the High Courts. Post the TRA,jurisdiction in respect of appeals and revocation petitions under the 1970 Act has now been transferred back to High Courts.However, the question has arisenas to whether all High Courts can entertain revocation petitions and appeals. How is jurisdiction in respect of such matters to be determined?

4. Owing to the importance and the impact of the issues raised, apart from ld. Counsel for the parties, various other counsels practising in the field of Intellectual Property law have also made submissions for the assistance of the Court.

Factsinbriefin C.O.(COMM.IPD-PAT) 3/2021 titled Dr. Reddy’s Laboratories Limited& Anr. v. The Controller of Patents& Anr.

5. The present revocation petition under section 64 of the 1970 Act has been filed by Petitioner No.1- Dr. Reddy‟s Laboratories Limited, and Petitioner No.2- MSN Laboratories Pvt. Ltd. seeking revocation of patent no. IN 268846 granted in favour of Respondent No.2- Boehringer Ingelheim International GmbH (hereinafter ‗Boehringer‘).

6. Boehringer applied for a patent for certain Benzenol derivatives and medicinal preparations containing the said derivatives. The patent application bearing no. 4844/DELNP/2006 was filed through the PCT route on 23rd August, 2006 in the Patent Office, Delhi. The said patent application was granted registration as IN 268846 on 18th September, 2015 by the Patent Office, Delhi. The present revocation petition was filed by the Petitioners on

16th October, 2021. The prayers in the revocation petition read as under:

―122. In view of the facts and circumstances narrated herein above, it is, most respectfully prayed that this Hon‘ble Court may be pleased to:

a) Revoke Indian Patent No. 268846 and direct Respondent No.1 to remove IN 268846 from the Register of Patents;

b) Issue a decree of Permanent Injunction restraining the Respondent No.2, its employees, Directors, agents, and any all persons acting or claiming to act on the behalf of Respondent No.2 from issuing any threatening communications, whether oral or written or through public notices or otherwise based on IN 268846 and alleging infringement thereof in order to hamper the legitimate business activity of Petitioners or their agents, distributors, retailers, employees, directors, and any persons acting on their behalf;

7. Three days after the filing of the present revocation petition, a suit for infringement was filed by Boehringer in the High Court of Himachal Pradesh against Petitioner No.1 on 19th October, 2021. The said High Court granted an interim injunction against the present Petitioner No.1. Another suit for infringement was filed by Boehringer against Petitioner No.2 and an interim injunction was passed against the present Petitioner No.2 in the said suit on 25th October, 2021.

8. In the meantime, notice was issued in the present petition on 22nd October, 2021. I.A.3420/2022 under Section 10 CPC has been filed by Boehringer seeking stay of the present revocation proceeding till the suits for infringement pending adjudication before High Court of Himachal Pradesh reach conclusion. In addition, a preliminary objection as to the maintainability of the present petition before this Court has also been raised.

FactsinbriefinC.O.(COMM.IPD-PAT) 1/2022 titled Thyssenkrupp Rothe Erde Germany GmbH v. T