Section 104 of the Patents Act, 1970 – Jurisdictional Architecture and Litigation Strategy in Indian Patent Law

Section 104 of the Patents Act, 1970 – Jurisdictional Architecture and Litigation Strategy in Indian Patent Law

Introduction

Section 104 of the Patents Act, 1970 (“the Act”) is the cornerstone provision that distributes original civil jurisdiction over patent disputes in India. It stipulates that suits for declarations under Section 105, reliefs under Section 106, and actions for infringement must be instituted in a District Court having jurisdiction; simultaneously, its proviso mandates a transfer to the High Court whenever a defendant lodges a counter-claim seeking revocation of the impugned patent. In practice, Section 104 acts as a procedural conduit linking infringement litigation (Part XI) with revocation proceedings (Section 64), thereby preventing forum shopping and ensuring judicial economy.

Statutory Framework and Purpose

2.1 Text of Section 104

“No suit for a declaration under Section 105 or for any relief under Section 106 or for infringement of a patent shall be instituted in any court inferior to a District Court having jurisdiction to try the suit: Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit together with the counter-claim shall be transferred to the High Court for decision.”[1]

2.2 Legislative Logic

  • First limb – Original forum: vests initial competence in District Courts (or High Courts exercising original civil jurisdiction such as Delhi, Bombay, Calcutta and Madras).
  • Proviso – Mandatory transfer: recognises that patent revocation (Section 64) can be adjudicated only by the High Court or the erstwhile Intellectual Property Appellate Board (IPAB). Thus, once invalidity is in issue via counter-claim, the High Court becomes the exclusive forum.
  • Policy objective: harmonises infringement and revocation to avoid parallel proceedings, to marshal technical expertise, and to mitigate inconsistent outcomes.

Jurisprudential Evolution

3.1 Early Construction: Fabcon v. Industrial Engineering Corp. (Allahabad HC, 1987)

The Allahabad High Court held that a mere prayer in the written statement seeking declaration of invalidity is not a counter-claim unless specifically pleaded; therefore Section 104’s proviso was inapplicable.[2] The decision underscored the necessity of an express counter-claim to trigger transfer.

3.2 Transfer Mechanics and Interlocutory Powers

In Low Heat Driers (P) Ltd. v. Biju George (Kerala HC, 2001) the Court held that once a valid counter-claim is filed the District Court loses jurisdiction even to entertain interlocutory applications, emphasising the “automatic” nature of the statutory transfer.[3] Consistent positions were adopted in Acme Tele Power v. Lamda Eastern (Uttarakhand HC, 2008) and SPC Lifesciences v. Ameya Laboratories (Telangana & A.P. HC, 2017).

3.3 Supreme Court Clarification: Aloys Wobben v. Yogesh Mehra (2014)

Although centred on concurrent revocation proceedings under Section 64, the Supreme Court’s ratio that a litigant cannot simultaneously pursue an IPAB revocation petition and a High Court counter-claim resonates with Section 104. The Court read the procedural architecture of the Act holistically, stressing exclusivity of forum and application of res judicata principles.[4]

3.4 Interface with Burden of Proof and Defences

In Hyderabad Chemical Supplies v. United Phosphorus (AP HC, 2006) the Court surveyed Sections 104 – 107, clarifying that the burden-shifting under Section 104A (process patents) functions within the jurisdictional scheme of Section 104. Similarly, F. Hoffmann-La Roche v. Cipla (Delhi HC, 2008) highlighted that defences under Section 107 dovetail with Section 104’s forum stipulation, reiterating that validity challenges via counter-claim belong exclusively to the High Court.[5]

Section 104 and the Commercial Courts Act, 2015

The 2015 Act superimposes a specialised commercial judiciary but expressly preserves Section 104 transfers. Section 7 (first proviso) requires that suits transferred under Section 104 be heard by the Commercial Division where the High Court has ordinary original jurisdiction.[6] The Supreme Court in Kandla Export v. OCI Corporation (2018) and the Madras High Court in Chennai Ananda Bhavan (2019) affirmed that patent disputes of the specified value automatically fall within the Commercial Division once in the High Court.[7]

Procedural and Strategic Implications

5.1 Drafting Counter-Claims

Practitioners must draft counter-claims with precision; an ambiguous plea risks dismissal (Fabcon), while a properly articulated revocation plea forces transfer, potentially altering procedural timelines and costs.

5.2 Interlocutory Relief

Once Section 104’s proviso is triggered the District Court cannot pass interim injunctions (Low Heat Driers); however, urgency motions may be renewed before the High Court post-transfer. Litigants should anticipate brief hiatuses and prepare expedited applications.

5.3 Tactical Choice Between IPAB (now High Court) and Counter-Claim

Following Aloys Wobben, a defendant must choose: either file a revocation petition (now before the High Court’s Intellectual Property Division after the Tribunals Reforms Act 2021) or plead a counter-claim; concurrent pursuit is barred. The decision may hinge on forum convenience, available technical infrastructure, and potential consolidation with infringement claims.

5.4 Impact on Appeal Routes

An original decree of the High Court (post-transfer) is appealable to the Commercial Appellate Division (intra-court) rather than the Supreme Court, subject to Section 13 of the 2015 Act and the High Court Acts (cf. K.V. Balan v. Sivagiri Trust, Kerala HC 2005). Strategic forecasting of appellate layers therefore becomes integral.

Comparative Insight: Section 104 vis-à-vis Trade Marks and Designs Statutes

Unlike Section 134 of the Trade Marks Act, 1999 (which allows plaintiffs to sue where they reside or carry on business) and Section 22(4) of the Designs Act, 2000 (which mirrors Section 104’s transfer mechanism), Section 104 adopts a more restrained forum policy, privileging technical competence over plaintiff convenience. This reflects Parliament’s greater concern regarding the specialised nature of patent validity assessments.

Conclusion

Section 104 orchestrates the procedural choreography of Indian patent litigation. By allocating initial jurisdiction to District Courts yet mandating swift transfer upon a revocation counter-claim, it balances access to justice with the necessity for technically adept adjudication. Subsequent jurisprudence—culminating in Aloys Wobben and reinforced by commercial court reforms—confirms that Section 104 is not a mere routing clause but a substantive safeguard against duplicative proceedings and fragmented determinations. Practitioners must navigate this jurisdictional matrix deftly, recognising that strategic pleading and timely invocations of Section 104 can decisively influence litigation trajectory and outcomes.

Footnotes

  1. Patents Act, 1970, s 104.
  2. Fabcon v. Industrial Engineering Corporation, Allahabad HC, cited in Hyderabad Chemical Supplies Ltd. v. United Phosphorus Ltd. (AP HC 2006).
  3. Low Heat Driers (P) Ltd. v. Biju George, 2001 PTC 775 (Ker).
  4. Aloys Wobben & Anr. v. Yogesh Mehra & Ors., (2014) 15 SCC 360.
  5. F. Hoffmann-La Roche Ltd. v. Cipla Ltd., Delhi HC, 2008.
  6. Commercial Courts Act, 2015, s 7 (first proviso).
  7. Kandla Export Corporation v. OCI Corporation, (2018) 14 SCC 715; Chennai Ananda Bhavan v. Adyar Ananda Bhavan, 2019 SCC OnLine Mad 6576.