Section 104 of Patent Act 1970 delineates the jurisdictional boundaries for legal proceedings related to patent disputes. Section 104 ensures that suits involving patent infringement, declarations of non-infringement or relief against groundless threats are handled by courts equipped to manage complex intellectual property matters. Understanding section 104 of Patent Act is essential, as it influences where and how patent-related lawsuits are initiated and progressed. This article explores the nuances of section 104 of Patent Act drawing on its provisions, related sections, implications, and relevant case laws.
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Overview of Section 104 of the Patent Act
Section 104 of Patent Law in India is given in Chapter XVIII of the Patents Act, 1970 and titled as "Suits Concerning Infringement of Patents" which primarily addresses the jurisdiction for instituting certain patent-related suits. The section states that "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, along with the counter-claim, shall be transferred to the High Court for decision."
In simple terms, it means that patent infringement lawsuits cannot be filed in lower courts like civil judge courts or magistrate courts. They must start at the district court level or higher. This requirement stems from the need for specialized judicial handling of patent cases, which often involve technical evidence, scientific analysis and substantial economic stakes.
The proviso adds a layer of escalation which says that if the defendant counters with a claim to revoke the patent (under Section 64), the entire matter shifts to the High Court, ensuring uniformity and expertise in adjudication. To break it down further:
Minimum Court Level: The suit must be in a "district court" as defined under the Code of Civil Procedure, 1908 (CPC). This includes principal civil courts of original jurisdiction and, importantly, High Courts exercising ordinary original civil jurisdiction (such as the Delhi, Bombay, Calcutta, and Madras High Courts).
Types of Suits Covered: It applies to infringement suits, declarations under Section 105 (non-infringement), and relief under Section 106 (groundless threats).
Territorial and Pecuniary Jurisdiction: Governed by Section 20 of the CPC, jurisdiction depends on where the defendant resides, where the cause of action arises, or where the infringement occurs. Pecuniary limits also apply in High Courts with original jurisdiction.
Transfer Mechanism: The automatic transfer to the High Court upon a revocation counter-claim prevents fragmented proceedings and leverages the High Court's appellate and original powers.
This structure under section 104 of Patent Act promotes efficiency and fairness in patent litigation.
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Related Provisions in the Patents Act, 1970
Section 104 of Patent Act does not operate in isolation, it references and interacts with adjacent sections, forming a cohesive framework for patent suits.
Section 105: Declaration of Non-Infringement
Section 105 allows any person to seek a court declaration that their use of a process or article does not infringe a patent, even without prior threats from the patentee. To invoke it, the plaintiff must have requested a written acknowledgment from the patentee (with full particulars) and been refused. The court cannot question the patent's validity in such proceedings, and costs are typically borne by the plaintiff unless otherwise ordered. Suits under this section fall squarely under the jurisdictional umbrella of section 104 of Patent Act.
Section 106: Relief Against Groundless Threats
As per Section 106, an aggrieved party can sue for unjustified threats of infringement proceedings, seeking a declaration of unjustifiability, an injunction and damages. The defendant must prove the threatened acts constitute infringement. A mere notification of patent existence is not a threat. Again, jurisdiction is governed by section 104 of Patent Act.
Section 104A: Burden of Proof in Infringement Suits
Introduced by amendment in 2002, this shifts the burden to the defendant in process patent infringement cases where the product is identical, provided the patentee proves certain conditions. While distinct, it complements section 104 by influencing how suits are litigated in competent courts.
These interconnections highlight how section 104 of Patent Act ensures procedural consistency across related disputes.
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Jurisdiction Rules and Practical Application
Section 104 of Patent Act shapes the strategic choices of litigants. Patent holders often prefer filing in High Courts with original jurisdiction in order to leverage faster proceedings and expert benches. For instance, the Delhi High Court handles a significant volume of patent cases due to its pecuniary threshold and national reach.
Determination of the Appropriate Court
The table given below shows the layered jurisdictional considerations. If a suit is filed incorrectly, it risks dismissal or transfer, delaying resolution. Implications include cost savings for parties by avoiding lower courts ill-equipped for patent technicalities and ensuring appeals lie directly to higher forums.
Aspect | Description | Relevant Law |
Minimum Court | District Court or equivalent (including High Courts with original jurisdiction) | Section 104, Patents Act + Section 2(4), CPC |
Territorial Jurisdiction | Where defendant resides/carries business, or cause of action arises | Section 20, CPC |
Pecuniary Jurisdiction | Based on suit valuation (e.g., damages claimed) | High Court rules (e.g., Delhi HC: above INR 2 crore for IP suits) |
Transfer on Counter-Claim | Mandatory to High Court if revocation claimed | Proviso to Section 104 |
Commercial Courts | Applicable for high-value suits under Commercial Courts Act, 2015 | Integrates with Section 104 for efficiency |
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Summary
Section 104 of Patent Act ensures that disputes are resolved in competent courts while accommodating escalations through counter-claims. By mandating district-level or higher jurisdiction, it upholds the integrity of patent enforcement, benefiting innovators and the legal community alike. As patent litigation evolves with technological advancements, a clear grasp of Section 104 remains indispensable for effective advocacy and justice.
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Section 104 of Patent Act: FAQs
Q1. What is GI tag with example?
A GI tag is a label for products tied to a specific place, ensuring their unique quality, like Darjeeling Tea from West Bengal.
Q2. Who gives GI tags in India?
The Geographical Indications Registry in Chennai, under the Controller General of Patents, Designs, and Trademarks, grants GI tags.
Q3. What is an example of a geographic indication?
Banarasi Sarees from Uttar Pradesh, known for their intricate silk designs, is a geographic indication.
Q4. Where is the geographic indications of goods located?
The Geographical Indications Registry, which manages GI tags, is located in Chennai, Tamil Nadu.
Q5. How many states have GI tags?
All 28 states and 8 Union Territories in India have GI-tagged products, totaling 36 regions.
