Court affirms statutory right under Patents Act, 1970 to seek patent revocation independently or by counter claim; rejects review plea challenging transfer order
In a significant ruling delivered on September 9, 2026, the Madras High Court dismissed a review petition challenging its earlier order transferring a patent infringement suit from the District Court to the High Court. The suit involved M/s. Arunachalaa Enterprises as the petitioner and M/s. R. Sukumar, Proprietor of M/s. Sri Sustainable Recycling, as the respondent.
The crux of the dispute centered on the interpretation of Section 64 and Section 104 of the Patents Act, 1970, which govern the jurisdiction and procedural mechanisms relating to patent infringement suits and revocation petitions. The petitioner contended that once an infringement suit is filed, the only avenue to seek revocation of the patent is through a counter claim within that suit, and not by way of an independent revocation petition. The petitioner argued that since no counter claim was filed in the infringement suit pending before the District Court, the transfer of the suit to the High Court was erroneous and deprived the District Court of jurisdiction.
However, the High Court, presided over by Justice K. Kumaresh Babu, after a detailed examination of statutory provisions and judicial precedents, upheld the earlier transfer order. The Court clarified that Section 64 of the Patents Act explicitly confers a statutory right on the defendant to seek revocation either independently through a separate petition or by way of a counter claim in an infringement suit. It emphasized that this right cannot be restricted by forcing the defendant to choose only one mode of revocation.
The Court further explained that while the District Court can entertain suits for patent infringement, it lacks jurisdiction to adjudicate on revocation claims. Therefore, when revocation proceedings are initiated-whether independently or as a counter claim-the suit is liable to be transferred to the jurisdictional High Court, which alone has the authority to decide upon revocation matters. This transfer aims to avoid multiplicity of proceedings and ensure efficient adjudication.
The petitioner's reliance on judgments from the Gujarat and Allahabad High Courts was distinguished on facts, as those cases involved the absence of any pleading or counter claim for revocation in the suit proceedings. In contrast, the present case involved an independent revocation petition already pending before the High Court during the pendency of the infringement suit in the District Court.
The Court also noted that the transfer was supported not only under the proviso to Section 104 but also under Section 13 of the Letters Patent Act, which empowers the High Court in such matters. The Court declined to entertain the maintainability issue raised late by the petitioner, observing that the issue was argued based on the petitioner's own written submissions.
Concluding that there was no material error apparent on the face of the record, the High Court dismissed the review petition and refused to stay further proceedings.
This ruling provides clarity on the procedural rights available to defendants in patent infringement suits and reinforces the jurisdictional boundaries between District Courts and High Courts concerning patent revocation matters, thereby streamlining patent litigation in India.
Bottom Line:
Patents Act, 1970 - A defendant in a patent infringement suit has a statutory right under Section 64 either to file an independent revocation petition or to seek revocation by way of counter claim - Such right cannot be curtailed by compelling the defendant to adopt only the counter claim route - Where revocation proceedings are independently instituted before the High Court, transfer of the infringement suit from District Court to High Court to be tried together is permissible, and review of such transfer order is not warranted in absence of error apparent on face of record.
Statutory provision(s):
Patents Act, 1970 - Sections 64, 104; Letters Patent Act, Section 13
