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Secretary, Department of Atomic Energy, Government of India Vs. the Controller General of Patents, Designs and Trademarks and ors. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights;Civil
CourtKolkata High Court
Decided On
Case NumberW.P. No. 477 (W) of 2009
Judge
Reported inLC2009(2)323
ActsPatents Act, 1970 - Sections 25(4), 52(1), 52(2), 57, 57(2), 59 and 73(3); ;Securitisation and Reconstruction of Financial Assets and Enforcement of Security Interest Act (SARFAESI), 2002; ;Constitution (Forty-second Amendment) Act, 1976; ;Central Excise Act - Section 35G; ;Code of Civil Procedure (CPC) - Section 20; ;Constitution of India - Articles 126, 226, 226(1), 226(2) and 227; ;Patent Rules, 2003 - Rules 4, 5, 6(2) and 6(3)
AppellantSecretary, Department of Atomic Energy, Government of India
RespondentThe Controller General of Patents, Designs and Trademarks and ors.
Appellant AdvocatePratap Chatterjee, ;Ranjan Bachawat and ;Subhankar Chakraborty, Advs.
Respondent AdvocateSumit Talukdar, ;Paritosh Sinha, ;Amitava Mitra and ;Rudraman Bandopadhyay, Advs. for Respondent No. 5, ;I.P. Mukherjee and ;Prithu Dudhoria, Advs. for Respondent Nos. 1 and 2 and ;Manoj Malhotra, Adv
Cases Referred(England Biolabs Inc v. Commissioner of Patents
Excerpt:
intellectual property rights - patents - infringement of - maintainability of writ petition - jurisdiction of high court - writ petition filed by petitioner, holder of a patent for a process of treating exhaust gas emission produced during the combustion of coal, alleging illegal procedure adopted by the controller of patents to insist on hearing an objection of the fifth respondent to the patent without first taking up the petitioner's application for amendment of the patent - objector, the principal contesting respondent contented that the present court would not have the authority to entertain the writ petition on the strength of either limb of amended article 226 of the constitution of india - whether present court has jurisdiction under article 226 to entertain the present petition -.....sanjib banerjee, j.1. the petitioner holds a patent for a process of treating exhaust gas emission produced during the combustion of coal in a coal combustion plant for reducing suspended particulate matter. the application to protect the invention was made in january of 1999 and the patent was sealed in the petitioner's favour on april 26, 2005 whereupon the grant dated back to the time of the application. the petitioner's essential complaint is the illegal procedure adopted by the controller of patents to insist on hearing an objection of the fifth respondent to the patent without first taking up the petitioner's application for amendment of the patent.2. the petitioner maintains that it is the application for amendment that had to be taken up first and questions the controller's.....
Judgment:

Sanjib Banerjee, J.

1. The petitioner holds a patent for a process of treating exhaust gas emission produced during the combustion of coal in a coal combustion plant for reducing suspended particulate matter. The application to protect the invention was made in January of 1999 and the patent was sealed in the petitioner's favour on April 26, 2005 whereupon the grant dated back to the time of the application. The petitioner's essential complaint is the illegal procedure adopted by the controller of patents to insist on hearing an objection of the fifth respondent to the patent without first taking up the petitioner's application for amendment of the patent.

2. The petitioner maintains that it is the application for amendment that had to be taken up first and questions the controller's rationale to reject the proposed amendment 'for the time being.' The immediate grievance and the foundation for this petition are somewhat different.

3. The writ petition is being disposed of without calling for any affidavits as the facts are neither in great dispute nor is it necessary to encroach into the controller's domain to assess the strength of the objection or the quality of the proposed amendment. The principal contesting respondent has agreed not to use any affidavit but does not admit the allegations in the petition. The respondent authorities are represented but have been parsimonious in expending sound bytes and have left the parties to the patent proceedings to make the arguments. The fifth respondent has questioned the propriety of the petitioner in bringing the matter before this Court. The principal contesting respondent asserts that this Court would not have the authority to entertain the writ petition on the strength of either limb of amended Article 226 of the Constitution of India.

4. The objector says that the situs of the head office of the controller general of patents, designs and trade marks in Calcutta is irrelevant in the present case and the reference to the controller general in the cause title is misleading. The objector says that the only relevant person or authority against whom a writ may issue is the third respondent (erroneously described as the assistant controller of patents and designs, Kolkata) who has his office in Mumbai. According to the fifth respondent, the first and second respondents (the controller general and the deputy controller, Kolkata, respectively) have nothing to do with the subject matter of the petition, far less any nexus with the reliefs claimed. The objector states that Clause (1) of Article 226 would not permit the petition to be heard by this Court and the tenuous thread under Clause (2) thereof that the petitioner has used as its lifeline to invoke this jurisdiction has long been snapped by authoritative judicial pronouncements.

5. The contesting respondent refers to Rule 4 of the Patent Rules, 2003 to say that the appropriate office in respect of the subject patent and all matters relating thereto is the Mumbai branch of the patent office whereat the proceedings are pending. The argument is that since the relevant authority does not function within the territory over which this Court exercises jurisdiction, the irrelevant fact that the controller general of patents has his seat in Calcutta will not make the third respondent amenable to the writ of this Court under Article 226(1) of the Constitution. The objector contends that the mere receipt of the order of November 7, 2008 or of the notice dated January 5, 2009 at the office of the petitioner's patent attorneys in Calcutta will not clothe this Court with the jurisdiction to receive the petition on the strength of a part of the petitioner's alleged cause of action having arisen in this State.

6. Rules 4 and 5 of the Patents Rules, 2003 have been placed in such context. Sub-rules (2) and (3) of Rule 6 may also be seen:

4. Appropriate office. - (1) The appropriate office of the patent office shall:

(i) for all the proceedings under the Act, be the head office of the patent office or the branch office, as the case may be, within whose territorial limits:

(a) the applicant or first mentioned applicant in case of joint applicants for a patent, normally resides or has his domicile or has a place of business or the place from where the invention actually originated; or

(b) the applicant for a patent or party in a proceeding if he has no place of business or domicile in India, the address for service in India given by such applicant or party is situated; and

(2) The appropriate office once decided in respect of any proceedings under the Act shall not ordinarily be changed.

5. Address for service. - Every person, concerned in any proceedings to which the Act or these rules relate and every patentee, shall furnish to the Controller an address for service in India and that address may be treated for all purposes connected with such proceedings or patent as the address of the person concerned in the proceedings or of the patentee. Unless such an address is given, the Controller shall be under no obligation either to proceed or deal with any proceeding, or patent or to send any notice that may be required to be given under the Act or these rules and the Controller may take suo motu decision in the matter.

'6. ...

(2) Any written communication addressed to a patentee at his address as it appears on the register of patents or at his address for service given under Rule 5, or to any applicant or opponent in any proceedings under the Act or these rules, at the address appearing on the application or notice of opposition, or given for service, shall be deemed to be properly addressed.

(3) All notices and all written communications addressed to a patentee, or to any applicant or opponent in any proceedings under the Act or these rules, and all documents forwarded to the patentee or to the said applicant or opponent, shall, except when they are sent by special messenger, be sent by registered post or speed post or courier service or by electronic transmission duly authenticated.' The petitioner urges that if the seat of the patent office is in Calcutta, that it has a branch office in Mumbai and the rules of business require the branch office to deal with a matter would not imply that the principal seat of the patent office was irrelevant. The petitioner emphasises that the considerations under Article 226(1) have remained unchanged despite the introduction of Clause (1A) to the Article which was subsequently renumbered as Clause (2); that Clause (2) permits High Courts other than the High Court that could have issued a writ under original Article 226 to also exercise the authority without detracting from the power of the High Court within whose territorial jurisdiction the person or authority may be located. It is submitted that this Court should entertain the petition in view of the averments at paragraph 56 of the petition:56. The petitioner submits that the address for service of the petitioner recorded in the Register of Patents in respect of said Patent No. 194122 is the address of the petitioner's Attorney, S Majumdar & Co., 5, Harish Mukherjee Road, Kolkata-700025, which is within the territorial jurisdiction of this Hon'ble Court. The petitioner further states that all official communications and correspondences including the letters dated June 1, 2007, June 7, 2007, July 16, 2007, July 26, 2007, September 13, 2007 and the impugned letter dated January 5, 2007 in respect of the said Patent No. 194122 and the opposition and amendment proceedings were addressed to and received at the said address at 5, Harish Mukherjee Road, Kolkata - 700025. Further all correspondences on behalf of the Petitioner have been issued from said address for service at 5, Harish Mukherjee Road, Kolkata - 700025. Further, the Head Office of the Patent Office is situated at Boudhik Sampada Bhawan, CP-2, Sector-V, Salt Lake City, Kolkata - 700094, being the Head Office of the Patent office an office of the Respondent No. 1 who is principal officer of the Patent office while the Respondent No. 3 is an officer who has been acting and discharging functions of the Respondent No. 1 under the superintendence and directions of the Controller under authority from the Respondent No. 1 in terms of Section 73(3) of the Act. Therefore, this Hon'ble Court has jurisdiction to hear this instant writ application. The petitioner craves leave to make further submission in this regard at the time of hearing.

7. The merits of the writ petition fall in a short compass and a workable order may also have been found but for the fifth respondent's challenge to the authority of this Court to receive the petition. The fifth respondent says that it is for a limited purpose that these proceedings have been brought: that the petitioner cannot launch a second challenge to the order dated November 7, 2008 after having preferred an appeal therefrom. It is submitted that the petitioner, in effect, prays for a stay of the order of November 7, 2008 from this Court notwithstanding such a prayer being permissible in the appeal that the petitioner has carried from the order to the appropriate tribunal. The fifth respondent complains that it has already suffered for not insisting on a finding in the earlier round of skirmish before this Court, that this Court did not have the jurisdiction to entertain any petition under Article 226 of the Constitution arising out of the combat that the petitioner and the fifth respondent are engaged in before the patent authorities. A quick-fire solution had been found in packing the parties off to their foremost field of action upon the petitioner carrying its apprehension - that the patent authorities were minded to dispose of the objection before the amendment - by way of the previous writ petition. The order dated April 29, 2008 recorded,

A point has been taken by the learned Advocate for the respondents that there is no cause of action arises within the jurisdiction of this High Court.

However, it has been submitted by Mr. Talukdar, learned Advocate for the respondent No. 5 that advertisement has already been published in the matter and the advertisement of the amendment application has been published on 14th September, 2007.

In view of that since I am not deciding the question of territorial jurisdiction of this High Court in the matter and since the advertisement has already been published, the authorities are directed to take steps to dispose of the application in accordance with provisions of law. The application is thus disposed of.

There will be no order as to costs.

8. The patentee petitioned the patent office to take up the amendment application ahead of the objection to the patent. It contended that the objection could be irrelevant upon the amendment and the objector would not be precluded from launching a fresh offensive. The patent office thought otherwise and ruled that it would take up the objection. The relevant extract of the order dated November 7, 2008 reads as follows:

After careful consideration of arguments of both the parties and also keeping in view Section 57 and Section 59, you are informed as follows: 'In the Form 13 filed by the Patentee on 20.11.2006 and the annexure submitted on 11.06.2007, it is not clear what is the purpose of filing those amendments as stipulated in Section 57(2) of Patents Act. Equity demands that the annexure filed on 11.06.2007 should have been endorsed to the opponents by the Patentee. It is not a confidential matter between Patentee and the Controller as interpreted by the Patentee since the opponent is already in the picture as on filing date of Form 13. However, the purpose of amendments may be revealed when the main hearing is taken up and the Patentee will again have the opportunity to amend the specification under Section 25(4). Hence the proposed amendments are rejected for the time being and the claims stand as granted. The clerical errors in respect of Patent references are allowed to be corrected. ...

9. The petitioner says that it has preferred an appeal from such order before the appellate tribunal in the month of November, 2008 and has informed the patent office accordingly. The petitioner submits that the appellate tribunal has not assembled since, for hearing its appeal and the petitioner has not been informed as to when the tribunal would take up the appeal. It says that there was no tearing hurry for the patent office to effectively deny the petitioner its statutory right of appeal by setting it at naught and proceeding with the objection to the unamended specifications of the patent. There are some indistinct murmurs of bias and prejudice. The petitioner assails the cryptic notice of January 5, 2009 that does not refer to the pending appeal or indicate why the hearing should proceed without the petitioner being afforded a reasonable time to pursue its appeal:

Sub: Opposition to the grant of patent on Application No. 194122, filed by Chemithon Engineers Pvt. Ltd.

Sir,

With reference to the above-cited opposition, I would like to inform you that the hearing has been fixed on 19/01/2009 at 11.00 am.

10. The letter was issued by the office superintendent of the controller of patents and designs from the patent office in Mumbai to one Ramu and Associates with a copy forwarded to the petitioner's patent attorneys at Harish Mukherjee Road which is in Calcutta and not in Mumbai as erroneously printed. Ramu and Associates seem to be the objector's patent attorneys.

11. But the objector asserts that it would be unnecessary to go into such mundane matters and the laboured attempt to sustain a vulnerable patent in the wake of its robust challenge. It insists that this Court cannot proceed with the petition and is steadfast in its resolve to pursue the issue to its conclusion before the merits are assessed. The objector has started with the most recent decision of the Supreme Court rendered on the question of what would constitute 'cause of action' within the meaning of Article 226 of the Constitution and has travelled back in time to the first of the two decisions that culminated in the amendment of the Article. Between judgments of the Supreme Court delivered in this century and going back to judgments rendered in the 1950s and 1960s, the objector has covered the three other decades with decisions of this Court. The objector has pointedly skipped reference to two other Supreme Court judgments that must always be kept in mind by this Court in assessing whether this Court would have jurisdiction to entertain a writ petition.

12. In the most recent matter where the Supreme Court held that the Calcutta High Court had no jurisdiction to receive the concerned writ petition in a judgment reported at : (2008)3SCC456 (Eastern Coalfields Ltd. and Ors. v. Kalyan Banerjee), an employee of the coal company engaged in an office at Jharkhand had challenged the decision to terminate his services. The appointing and disciplinary authority was situated at Mugma in Jharkhand. A Division Bench of this Court found that the registered office of the coal company was in Burdwan and, as such, irrespective of where the cause of action arose this Court had authority to entertain the petition. The Supreme Court allowed the appeal on the ground that the head office had no nexus with the order of punishment passed against the writ petitioner:

13. In view of the decision of the Division Bench of the Calcutta High Court that the entire cause of action arose in Mugma area within the State of Jharkhand, we are of the opinion that only because the head office of the appellant Company was situated in the State of West Bengal, the same by itself will not confer any jurisdiction upon the Calcutta High Court, particularly when the head office had nothing to do with the order of punishment passed against the respondent.

13. The Supreme Court relied on its judgment of a three-Judge Bench in the case of Kusum Ingots & Alloys Ltd. v. Union of India and Anr. reported at : 2004(186)ELT3(SC) to assess which of the facts averred would be material to the petitioner's cause of action for the jurisdiction of a particular High Court to be rooted thereto. In the opinion of the Supreme Court, for the purpose of Article 226(2) of the Constitution the same meaning must be assigned to the expression 'cause of action' as envisaged under Section 20(c) of the Code of Civil Procedure.

14. In the Kusum Ingots case a company having its registered office in Mumbai had obtained a loan from the Bhopal branch of a bank which issued it a notice under the Securitisation and Reconstruction of Financial Assets and Enforcement of Security Interest Act, 2002. A writ petition was launched before the Delhi High Court, challenging the vires of the said Act. The jurisdiction of the Delhi High Court was invoked on the strength of the petition questioning the constitutionality of a parliamentary Act. The Delhi High Court refused to receive the petition and the appeal by special leave failed. The Supreme Court interpreted the expression 'cause of action' and opined that the principle of forum conveniens should weigh with a High Court in exercising its discretion to receive a petition under Article 226 of the Constitution. Paragraphs 6, 27 and 30 of the report may be noticed:

6. Cause of action implies a right to sue. The material facts which are imperative for the suitor to allege and prove constitute the cause of action. Cause of action is not defined in any statute. It has, however, been judicially interpreted inter alia to mean that every fact which would be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment of the Court. Negatively put, it would mean that everything which, if not proved, gives the defendant an immediate right to judgment, would be part of cause of action. Its importance is beyond any doubt. For every action, there has to be a cause of action, if not, the plaint or the writ petition, as the case may be, shall be rejected summarily.

27. When an order, however, is passed by a court or tribunal or an executive authority whether under provisions of a statute or otherwise, a part of cause of action arises at that place. Even in a given case, when the original authority is constituted at one place and the appellate authority is constituted at another, a writ petition would be maintainable at both the places. In other words, as order of the appellate authority constitutes a part of cause of action, a writ petition would be maintainable in the High Court within whose jurisdiction it is situate having regard to the fact that the order of the appellate authority is also required to be set aside and as the order of the original authority merges with that of the appellate authority.

30. We must, however, remind ourselves that even if a small part of cause of action arises within the territorial jurisdiction of the High Court, the same by itself may not be considered to be a determinative factor compelling the High Court to decide the matter on merit. In appropriate cases, the Court may refuse to exercise its discretionary jurisdiction by invoking the doctrine of forum conveniens. [See Bhagat Singh Bugga v. Dewan Jagbir Sawhney, Madanlal Jalan v. Madanlal, Bharat Coking Coal Ltd. v. Jharia Talkies & Cold Storage (P) Ltd., S.S. Jain & Co. v. Union of India and New Horizons Ltd. v. Union of India.]

15. In another recent judgment reported at (2007) 11 SCC 335 (Alchemist Limited and Anr. v. State Bank of Sikkim and Ors.), a company in Haryana had challenged the State Bank of Sikkim's rejection of its offer to buy the bank's shares before the High Court of Punjab and Haryana. The basis for invoking the jurisdiction of the High Court in Chandigarh appears at paragraph 8 of the report, which the Supreme Court ultimately did not consider relevant to the writ petitioners' cause of action:

8. The appellant Company contended that a part of cause of action had arisen within the territorial jurisdiction of the High Court of Punjab and Haryana. The appellant Company, for such submission, relied on the following facts:

(i) the appellant Company has its registered and corporate office at Chandigarh;

(ii) the appellant Company carries on business at Chandigarh;

(iii) the offer of the appellant Company was accepted on 20-20-2-2004 and the acceptance was communicated to it at Chandigarh;

(iv) part-performance of the contract took place at Chandigarh inasmuch as Rs. 4.50 crores had been deposited by the appellant Company in a fixed deposit at Chandigarh as per the request of the first respondent;

(v) the Chairman and Managing Director of the first respondent visited Chandigarh to ascertain the bona fides of the appellant Company;

(vi) negotiations were held between the parties in the third week of March, 2005 at Chandigarh;

(vii) letter of revocation dated 23-2-2006 was received by the appellant Company at Chandigarh. Consequences of the revocation ensued at Chandigarh by which the appellant Company is aggrieved. It was, therefore, submitted that at least a part of cause of action had certainly arisen within the territorial jurisdiction of the High Court of Punjab and Haryana and hence it had jurisdiction to entertain the petition. It was, therefore, submitted that the impugned order passed by the High Court deserves to be set aside by directing the Court to decide the writ petition on merits.

16. After noticing the two principal cases that led to the amendment of Article 226 - judgments that the fifth respondent has cited here - the Supreme Court quoted the object of the amendment at paragraph 16 of the report:

16. It may be stated that by the Constitution (Forty-second Amendment) Act, 1976, Clause (1-A) was renumbered as Clause (2). The underlying object of amendment was expressed in the following words: 'Under the existing Article 226 of the Constitution, the only High Court which has jurisdiction with respect to the Central Government is the Punjab High Court. This involves considerable hardship to litigants from distant places. It is, therefore, proposed to amend Article 226 so that when any relief is sought against any Government, authority or person for any action taken, the High Court within whose jurisdiction the cause of action arises may also have jurisdiction to issue appropriate directions, orders or writs.

The effect of the amendment was that the accrual of cause of action was made an additional ground to confer jurisdiction on a High Court under Article 226 of the Constitution.

17. Relying on the decisions reported at : [1985]3SCR598 (State of Rajasthan v. Swaika Properties) and : (1994)4SCC711 (ONGC v. Utpal Kumar Basu), it was held that mere service of a notice could not give rise to a cause of action unless such notice was an integral part of the cause of action. The Kusum Ingots case, among others, was also noticed.

18. The objector has relied on a judgment reported at : AIR2004SC1998 (National Textile Corpn. Ltd. and Ors. v. Haribox Swalram and Ors.), another matter that was carried from this Court. The writ petitioners in that case had assailed the conduct of a textile undertaking that had been taken over by the Central Government in the midst of the transactions between the relevant mill and the writ petitioners. The jurisdiction of this Court was invoked on the basis of the following averments quoted at paragraph 12 of the report:

12. ...73. Your petitioner carries on business and maintains all accounts at the aforesaid place of business within the jurisdiction. Your petitioner states that by reason of the aforesaid, your petitioners have suffered loss and damage at its said place of business within the jurisdiction. All notices and correspondences referred to hereinabove addressed to your petitioner has been received by your petitioner at your petitioner's place of business within the jurisdiction. In the circumstances, this Hon'ble Court has the jurisdiction to entertain the present application.

19. The Supreme Court's opinion at paragraph 12.1 was rendered in the context of such facts as had been pleaded to found the proceedings before this Court:

12.1. As discussed earlier, the mere fact that the writ petitioner carries on business at Calcutta or that the reply to the correspondence made by it was received at Calcutta is not an integral part of the cause of action and, therefore, the Calcutta High Court had no jurisdiction to entertain the writ petition and the view to the contrary taken by the Division Bench cannot be sustained. In view of the above finding, the writ petition is liable to be dismissed. However, in order to avoid any further harassment to the parties and to put an end to the litigation, we would examine the matter on merits as well.

20. In the case of Om Prakash Srivastava v. Union of India and Anr. reported at : (2006)6SCC207 , the Delhi High Court had declined to entertain a writ petition, observing that it may have had jurisdiction but the issues relating to conditions of prisoners in the State of Uttar Pradesh could be more effectively dealt with by the Allahabad High Court. The Supreme Court set aside the order and remitted the matter 'for fresh hearing on merits.'

21. The authority next cited is the judgment reported at : 2007(213)ELT323(SC) (Ambica Industries v. Commissioner of Central Excise). The appellant in that case carried on business at Lucknow and was assessed by the excise authorities there. A matter came up before the appellate tribunal in Delhi that exercised territorial jurisdiction over Uttar Pradesh, Delhi and Maharashtra. The order of the appellate tribunal was carried in appeal under Section 35G of the Central Excise Act before the Delhi High Court which declined to entertain it. It was held that although in terms of Article 227 of the Constitution and also Article 226 a High Court could exercise its discretionary jurisdiction to issue a writ of certiorari in respect of orders passed by subordinate courts within its territorial jurisdiction, the same test could not be applied when the appellate authority exercised a jurisdiction over a tribunal having authority to receive matters from more than one State; in such a situation the High Court situated in the State where the original order had been made, and not the order of the tribunal, would be the appropriate appellate authority.

22. The fifth respondent refers to the judgment reported at : [1953]4SCR1144 (Election Commission, India v. Saka Venkata Subba Rao) where, in the context of the original Article 226, it was held that the limitation of the exercise of the authority under the provision was built in to the Article. The Constitutional Bench judgment in Lt. Col. Khajoor Singh v. Union of India and Anr. reported at : [1961]2SCR828 is placed to emphasise on the bounds of authority under present Article 226(1). Paragraph 8 of the report where the Saka Venkata Subba Rao decision is considered, is relevant:

8. The Constitution Bench in that case considered that the language of Article 226 of the Constitution was 'reasonably plain' and that the exercise of the power conferred by that Article was subject to a two-fold limitation, namely, (1) that the power is to be exercised 'throughout the territories in relation to which it exercises jurisdiction' and (2) that the person or authority to whom the High Court is empowered to issue the writs must be 'within those territories'. In other words, the writ of the court could not run beyond the territories subject to its jurisdiction and that the person or authority affected by the writ must be amenable to the Court's jurisdiction, either by residence or location within those territories.

23. Three judgments of this Court reported at : AIR1979Cal354 (Abdul Kafi Khan v. Union of India and Ors.), 90 CWN 438 (Everest Coal Co. Pvt. Ltd. v. Coal Controller and Ors.) and 1994 (1) CHN 445 (S.S. Jain & Co. and Anr. v. Union of India and Ors.) are cited to stress on the restraint on its jurisdiction exercised by this Court.

24. In Abdul Kafi Khan disciplinary proceedings against a railway servant were challenged in this Court on the basis of the head office of the relevant railways being located in Calcutta. It was held by a learned Single Judge that since the orders impeached were passed by authorities in Bihar, this Court had no jurisdiction either to entertain the petition or to issue the writs as asked for.

25. In Everest Coal Co. a Division Bench expressed the view that the nature and character of the proceedings would tell upon a High Court's authority to receive the writ petition. The following passage from paragraph 5 of the report captures the essence of the judgment:

5. The question whether or not cause of action, wholly or in part, for filing a writ petition has arisen within the territorial limits of a particular High Court ought to be also decided in the light of nature and character of proceedings under Article 126 of the Constitution. Every High Court has jurisdiction to issue directions or orders or writs for enforcement of Fundamental Rights and for 'any other purpose'. The pertinent question would be whether within the limits of the High Court in which a writ application has been filed, any of the facts which would entitle the petitioner to obtain relief under Article 226 of the Constitution has arisen. In other words, in order to maintain his writ application the petitioner has to establish that within the territorial limits of the court's jurisdiction prima facie a legal right claimed by him has been either infringed or is threatened to be infringed by the respondents. Such infringement may take place by causing him actual injury or threat thereof. Accordingly, when the impugned act of the respondents takes effect within the territorial jurisdiction of a particular High Court, it may entertain the writ petition of the person aggrieved notwithstanding that the respondents have the offices or residences outside its territorial jurisdiction. An order has been made by an authority or person at a place beyond the territorial limits of a particular High Court but the same is given effect to against the petitioner within the said High Court's jurisdiction. In such a cause, at least a part of the cause of action arises, where the impugned order is implemented. Thus, when an order becomes effective only when it is communicated or served, the service of the order or receipt of a notice thereof would form part of cause of action for filing a writ petition by the person aggrieved thereby ...

26. A learned Single Judge of this Court weighed the bundle of facts constituting the cause of action to assess whether some other High Court could be said to be dominantly connected with the cause of action. The only caveat expressed was that no effort should be made to make too fine a distinction in such matters. Paragraphs 19 and 20 of the report provide valuable guidance: '19. The High Court, in appropriate cases, can and should, examine the bundle of facts constituting the cause of action to see if some other High Court can be said to be dominantly connected with the cause of action, rather than itself. In case the High Court comes to such a conclusion, then in my opinion, it would be improper for the writ petitioner to proceed in the High Court having a far less, and a mere slender connection with the cause of action. The writ petitioner in that case should be relegated to seek his remedy before that other High Court, having the dominantly larger connection. Just as a litigant is not permitted to choose his judge, so also shall a litigant not choose his High Court in the matter of presentation of his writ application. He shall approach that High Court only which has by far the largest connection with the facts giving rise to his grievance.

20. There might well be cases where the distinction becomes too fine, and two High Courts might both be said to have roughly similar connection with the cause of action. Making too fine, a distinction in these matters, moreover, would work injustice to the petitioner, and the Courts cannot deny relief to a petitioner upon too strict a decision in these matters. But if the cause of action is such as shows a preponderance of facts connected with the other High Court, and if the respondent authorities also happen to be within the local limits of that other High Court, than the High Court connected with only a small part of the cause of action should unhesitatingly refuse relief to the petitioner and send him elsewhere. It is a salutary principle to follow, as the prospective writ petitioners as well as the prospective respondents will know where approach is to be made, and none will try to by pass one High Court in preference for another. We, the Judges, look upon such preferment with suspicion, and deeply discourage any such tendency in any litigant.

27. Two other Supreme Court pronouncements in the matter of exercise of jurisdiction under Article 226 of the Constitution by this Court must always be kept in mind. In the judgment reported at : [1985]3SCR598 (State of Rajasthan v. Swaika Properties), a company having its registered office in Calcutta owning certain lands in the outskirts of Jaipur challenged a notification issued by the Government of Rajasthan on the strength of the writ petitioner having received a notice at its registered office. The Supreme Court noticed that the writ petitioner had failed in its effort to get the land released from acquisition and took up the matter with the Government of Rajasthan by seeking exemption. Such request was declined and notwithstanding parleys with government officials in Rajasthan it appeared that the writ petitioner was not serious in using any part of the land but the real object was to get the notified land released from acquisition. A subsequent notice by the Government of Rajasthan preparatory to taking steps to wrest possession of the land was considered to be no part of the cause of action of the writ petitioner to entitle it to found a petition in this Court on the strength of the notice. Paragraph 8 of the report summarises the legal position in the context of the facts.

8. The expression 'cause of action' is tersely defined in Mulla's Code of Civil Procedure:

The 'cause of action' means every fact which, if traversed, it would be necessary for the plaintiff to prove in order to support his right to a judgment of the court.

In other words, it is a bundle of facts which taken with the law applicable to them gives the plaintiff a right to relief against the defendant. The mere service of notice under Section 52(2) of the Act on the respondents at their registered office at 18-B, Brabourne Road, Calcutta i.e. within the territorial limits of the State of West Bengal, could not give rise to a cause of action within that territory unless the service of such notice was an integral part of the cause of action. The entire cause of action culminating in the acquisition of the land under Section 52(1) of the Act arose within the State of Rajasthan i.e. within the territorial jurisdiction of the Rajasthan High Court at the Jaipur Bench. The answer to the question whether service of notice is an integral part of the cause of action within the meaning of Article 226(2) of the Constitution must depend upon the nature of the impugned order giving rise to a cause of action. The notification dated February 8, 1984 issued by the State Government under Section 52(1) of the Act became effective the moment it was published in the Official Gazette as thereupon the notified land became vested in the State Government free from all encumbrances. It was not necessary for the respondents to plead the service of notice on them by the Special Officer, Town Planning Department, Jaipur under Section 52(2) for the grant of an appropriate writ, direction or order under Article 226 of the Constitution for quashing the notification issued by the State Government under Section 52(1)) of the Act. If the respondents felt aggrieved by the acquisition of their lands situate at Jaipur and wanted to challenge the validity of the notification issued by the State Government of Rajasthan under Section 52(1) of the Act by a petition under Article 226 of the Constitution, the remedy of the respondents for the grant of such relief had to be sought by filing such a petition before the Rajasthan High Court, Jaipur Bench, where the cause of action wholly or in part arose.

28. In the judgment reported at : (1994)4SCC711 (ONGC v. Utpal Kumar Basu), the writ petitioner company had made an offer following a notice inviting a tender issued by the Oil and Natural Gas Commission. The writ petition was filed in this Court challenging the ONGC decision to award the contract to another who was not impleaded. The Supreme Court assessed the basis of the petitioner invoking the jurisdiction of this Court and the relevant averments are summarised at paragraph 4 of the report:

4. ... The writ petitioners averred in paragraph 43 of the writ petition that a part of the cause of action had arisen within the jurisdiction of the said High Court as pleaded in paragraphs 5, 7, 18, 22 and 26 of the writ petition. They further averred in the said paragraph that they were likely to suffer a loss at its registered office within the jurisdiction of the Calcutta High Court if the contract was not awarded to them. The averments in paragraphs 5, 7, 18, 22 and 26 in a nutshell are as under:

Para 5. NICCO came to know of the tender from the publication in the Times of India 'issued and obtained' by NICCO within the said jurisdiction;

Para 7. NICCO issued/submitted its tender on 19-8-1991 from its registered office within the jurisdiction of the Calcutta High Court which was received by EIL at New Delhi;

Para 18. NICCO submitted its revised price bid by letter dated 3-12- 1992 issued from its registered office within the aforesaid jurisdiction;

Para 22. By communication dated 4-12-1992 issued from its registered office, NICCO made demands for justice to various authorities; and

Para 26. By letters addressed to different agencies including the Steering Committee of ONGC in January/February 1993 from its registered office, NICCO made demands for justice.

These are the averments in the body of the writ petition on the basis whereof NICCO contended that a part of the cause of action had arisen within the jurisdiction of the Calcutta High Court. It may also be mentioned that in the course of submissions before this Court counsel for NICCO referred to a fax message dated 15-1-1993 sent in answer to NICCO's fax message dated 11-1-1993 on the basis of which he contended that a part of the cause of action arose within the jurisdiction of the Calcutta High Court where the message was received. Although in the paragraphs disclosing the cause of action for the institution of the writ petition reference is not made to this fax message, we propose to deal with it to avoid technicalities. The question which, therefore, arises for consideration is whether the aforesaid averments made in the body of the writ petition taken individually or collectively, assuming them to be true, constitute a cause of action for the maintenance of the writ petition in the High Court of Calcutta?

29. It was ultimately held that the facts as pleaded to attract the jurisdiction of this Court were irrelevant and did not constitute a material part of the cause of action for this Court to receive the petition.

30. It is necessary first to ascertain the immediate grievance of the petitioner and the facts relevant to the prayers that the petition carries. The scope of the present proceedings is rather limited. The petitioner steers clear of making a frontal challenge to the order dated November 7, 2008 as that is the subject matter of its appeal before the appropriate tribunal. The underlying theme of the petition is that if the statute has recognised the right of appeal from an order of the kind that was made on November 7, 2008, it would be harsh and arbitrary for the petitioner to be denied such opportunity by the needless haste that the patent authorities have shown. Though the petitioner need not have addressed on the merits of its appeal, it has presented a glimpse of its likely argument by referring to the views taken in similar situations in other jurisdictions. The petitioner has relied on an opinion expressed by the intellectual property office of New Zealand reported at [2001] NZIPOPAT 20 (Valinge Aluminium AB v. Unilin D cor NV). The following passages have been placed:

The applicant argued the Commissioner has the discretion to determine allowability of amendments by way of an interlocutory hearing. This was conceded by the patentee. The applicant says the Commissioner determines his own procedure; he is entitled to avail himself of any information which may be before him; the Commissioner has the power to allow such an interlocutory hearing, and has done so in the past; the present circumstances justify the exercise of that discretion to allow the hearing to settle the matter of the amendments; underlying policy must be to ensure an opposition is not argued on amendments that are not likely to be allowable; the fact that two IPONZ examiners consider that not all amendments are allowable is further justification for a hearing on the allowability of the amendments; the applicant was entitled to await IPONZ examiner response on the allowability of the amendments before making any comment; the form of the claims is important as the claims define the invention and the revocation proceedings revolve around these; IPONZ is generally trying to limit the complexity of opposition and revocation proceedings so the applicant should not have to argue both ways on amended and unamended claims; determination of amendment proposals could decrease cost and could result in settlement without the need for a substantive hearing. The applicant relied on Patents for Inventions by TA Blanco White, 4th Edition and Beecham Group Ltd's (Amoxycillin) Application [1980] RPC 261; Office Practice Note of July 1996, Patent Office Journal No 1287.

I note that the applicant has argued the case for a hearing to decide the allowability of amendments before the substantive hearing. It is conceded by the patentee that this is an acceptable course of action in general and such interlocutory hearings have taken place. The point of the first hearing is that the patentee feels the applicant should not be given this opportunity because of its time delaying behaviour during these revocation proceedings and because it has had a long time to reply on the proposed amendments. In this case I think IPONZ has been generous to the applicant and the applicant seems to have stretched IPONZ practice to the extreme. The applicant has had more than a reasonable time to state its objections to amendment proposals and prepare its evidence for a hearing. However, I feel that, because extensions have been allowed by IPONZ and because IPONZ suspended time for filing evidence while amendment proposals were under discussion between patentee and examiner with no protest from the patentee, I do not think the situation that has arisen is entirely caused by the applicant to the extent that I am obliged to find that the applicant is not entitled to a hearing on the allowability of the proposed amendments. In addition in think both parties are ready to proceed to a speedy conclusion of this revocation action. Therefore I will allow the hearing on the allowability of the amendments.

31. A judgment of the Federal Court of Australia reported at [2001] FCA 787 (England Biolabs Inc v. Commissioner of Patents) has been cited to assert that an application for amendment of the specifications relating to a patent has almost to be allowed for the asking. An extract from paragraph 52 of the report is apposite, though it relies on the relevant statute in Australia and its persuasive value has to be seen in the context of the comparable provisions in the Patents Act, 1970 or the rules framed thereunder:

52. A request for leave can be made for any purpose - see s 104(1). Two purposes are specified in s 104(1)(a) and (b). However, the section makes clear that the enumerated purposes are not exhaustive and that an amendment can be made for any other purpose. There is no reason to conclude that the Commissioner has any discretion to refuse leave to amend or not to allow an amendment by reason of the purpose. Rather, the contrary is likely, since s 104(1) renders an applicant or patentee's purpose irrelevant.

32. These two authorities are otherwise irrelevant in the present context but would at least go to show that an arguable case can be made out by the petitioner in the appeal and that the appeal has not been filed merely to ward off the imminent hearing of the opposition to the patent. It was incumbent on the petitioner to establish an arguable case in the appeal to excite a writ court to exercise its discretion in a matter of the present nature. But the exercise of any discretion on the merits of the matter can only come into play if the objector's protest on this Court's jurisdiction to receive the petition fails.

33. In the light of the more authoritative views on what the expression 'cause of action' implies and what are its material constituents, there is no need to attempt any further illumination on what is, arguably, muddy waters. In a sense, a civil writ petition is merely a procedural matter: in that it is brought before a specified constitutional forum rather than a regular court. Every civil matter which is made the basis of a writ petition can also be urged in a suit unless there is a specific bar by statute, or a bar by necessary implication, to a suit being founded on such cause. The only matter that a civil court, not being a High Court exercising original jurisdiction, cannot take up is a challenge to the constitutionality of any enactment. A possible test to assess whether a part of the cause of action has arisen within the jurisdiction of the High Court receiving the writ petition would be to ascertain whether such High Court in exercise of its original jurisdiction or any court over which the High Court exercises superintendence, would have the authority to receive a suit founded on the same cause of action. The first limb of Article 226 appears to correspond to Clause (1) of Article 227 of the Constitution. Though the situs of the cause of action is irrelevant for the purpose of Article 226(1) of the Constitution and a writ petition can be instituted in a High Court if either the opening condition in Article 226(1) is met or the condition relating to situs of cause of action in Clause (2) is satisfied, if a court subordinate to that High Court is entitled to entertain a suit founded on a cause of action (disregarding, for the moment, any possible statutory bar to the institution of a suit), that High Court will have the authority to receive a writ petition founded on the same cause of action. For, the territorial jurisdiction of a civil court subordinate to a High Court (or the original jurisdiction of a chartered High Court) will be a subset of what is covered by the expression 'exercising jurisdiction in relation to the territories' appearing in Article 226(2) of the Constitution.

34. It is an entirely different matter that even if a High Court has the jurisdiction to entertain a writ petition on the basis of a part of the cause of action therein having arisen within its territory, the High Court may exercise its discretion not to proceed with the petition on its appreciation that the matter may be more conveniently carried to another High Court within whose territory the better part of the cause of action has arisen. Just as in the case of a High Court exercising self-restraint and directing a writ petitioner to avail an alternative remedy which is recognised by law, similarly may a High Court having the authority to receive a writ petition decline to continue with it upon noticing that another High Court would have greater nexus with the cause of action. The authorities do not say that the principle of forum conveniens would apply strictly. Kusum Ingots speaks of such principle being kept in mind and being a relevant consideration in the exercise of discretion to receive a petition by a High Court. The bogey of forum conveniens is ordinarily raised by a defendant in a civil suit citing its inconvenience, whether by way of costs or otherwise, to bring material and witness to effectively defend the suit. Upon such a ground of inconvenience being raised, the court immediately visualises what would happen at the trial and if it is perceived that it would be overwhelmingly inconvenient for the defendant to resist the claim at the trial, the court will ask the plaintiff - the dominus litus - to forbear from prosecuting its claim in that forum. Since a writ petition does not involve any trial in the sense that a civil suit does, the extent of inconvenience that is relevant for the purpose of the consideration would differ in degrees. It is possible to conceive of a writ petition involving protracted adjudication where the High Court may direct the petitioner to another High Court which would be less inconvenient to the respondent authorities. The distinction is between a question of maintainability of a writ petition and a matter of discretion to be exercised to receive the petition. If no part of the cause of action in the writ petition arises within the territory of a High Court and the first limb of Article 226(1) is also not satisfied, the High Court would plainly have no power to receive the petition. If, however, despite the first limb of Article 226(1) not being met, an infinitesimal part of the cause of action in the petition is seen to have arisen within the territory of a High Court such High Court can receive the petition but may be minded to ask the petitioner to launch the proceedings before another High Court on its assessment of the weight of the bundle of relevant facts that has nexus with it against the weight of the bundle of relevant facts that has no connection with it. No discretion can be exercised if the authority to receive an action is absent. Discretion comes into play only when there is first the power to entertain the action.

35. While in Kusum Ingots there is a call to keep in mind the doctrine of forum conveniens, in Om Prakash Srivastava the relevant High Court's refusal to receive the petition on the ground that another High Court could deal with the matter more effectively was found to be, 'certainly not a correct way to deal with the writ petition.'

36. It must be borne in mind in the present matter that the alternative case of forum non conveniens has been run, not by the respondent authority but by the private respondent. Ordinarily the discretion on such count would be exercised on the assessment of the inconvenience likely to be occasioned to the authorities who are the respondents to the action and not necessarily on the private respondent's inconvenience. It is accidental in the present case that the private respondent also has its place of business in Mumbai and would find the Bombay High Court the more convenient forum for the writ petition. But an objector to a patent application or a person seeking revocation of the grant may be situated in a place other than where the respondent authorities in a writ petition would find it more convenient to contest the action. In the exercise of the discretion in such case it would be the respondent authorities' inconvenience that would be the guiding factor and not the private respondent's for the objector in this case could easily have been from, say, the North-East to whom Calcutta would have been a less inconvenient forum than Mumbai.

37. But the assessment of inconvenience would arise only if it is seen that this Court has the authority to receive this petition. The statutory rule in the present case required the patent office to issue a notice to the address supplied by the patentee or on its behalf and, irrespective of the situs of the patentee, the notice was required to be sent to such recorded address. The object of a notice of the kind that is relevant in the present proceedings is to make the noticee aware of the date of hearing. Implicit in the notice impugned herein is the patent authorities' decision to continue with the hearing on the objection to the patent without waiting for a decision on the petitioner's appeal. And this is the petitioner's cause for this action. For the purpose of the present petition and in the context of the prayers made, the notice of January 5, 2009 is central and the receipt of such notice in Calcutta would be part of the cause of action in this petition. In the Swaika case the notice that was made the basis for the writ petition was merely consequential to all that took place with the active participation of the writ petitioner in Rajasthan. In the Utpal Kumar Basu matter the jurisdiction of this Court was invoked on the strength of the petitioner coming to know of the tender in Calcutta and on its making the offer and issuing certain letters from Calcutta. In Alchemist, there was no complete acceptance of the offer for the writ petition to be founded on the illegal or arbitrary cancellation of a concluded contract. In Haribox Swalram, the place of business of the petitioner and the place of issuance of letters were pleaded in invoking the jurisdiction of this Court.

38. The notice here is that of a specialised authority having the legal sanction to deal with a property of the petitioner that has issued a notice touching upon the petitioner's right to such property, which has been made the foundation of the challenge and the basis for instituting the petition in this Court. There is, therefore, a part of the cause of action of the petitioner that has arisen within the territory of this High Court. To make such fact irrelevant and hold that the cause of action accrued where the notice emanated from, would be to negate the effect of the Fifteenth Amendment to the Constitution. In the absence of the respondent authorities here citing inconvenience, the private respondent's challenge on such score is also greatly diminished in value. Further, on a consideration of the extent of the adjudication necessary in the context of the prayers made in the writ petition, it appears that there is nothing more than the notice, and the underlying decision embodied therein, that is required to be assessed. A part of the cause of action of the petitioner has arisen within the territory of this High Court and, given the narrow compass of the adjudication necessary, the facts do not warrant this petitioner being directed to another High Court.

39. On this petition being received, an interim order was made staying all further proceedings before the patent office. Since the petitioner says that its appeal from the order dated November 7, 2008 is pending and the petitioner has not had an opportunity of presenting its case before the appellate tribunal, the hearing of the private respondent's objection to the patent will remain stayed for a period of eight weeks from date or the first opportunity that the petitioner is afforded to make a prayer for an interim order in the appeal, whichever is earlier.

40. If the petitioner cannot persuade the appellate tribunal to allot it a date for hearing its interim prayer within the time stipulated, it will be open to the controller to proceed with the matter in accordance with law.

41. WP No. 477 (W) of 2009 is disposed of. The parties will pay and bear their own costs.

42. Urgent certified photostat copies of this judgment, if applied for, be supplied to the parties upon compliance with all requisite formalities.


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