Madras High Court: In an appeal filed under Clause 15 of the Letters Patent, challenging the rejection of a patent application, the Division Bench comprising S.M. Subramaniam* and C. Kumarappan, JJ., held that an intra-court appeal is not maintainable against a judgment passed in a Civil Miscellaneous Appeal under Section 117-A of the Patents Act, 1970 (‘Patents Act’), since appeals in commercial disputes are governed exclusively by Section 13 of the Commercial Courts Act, 2015 (‘Commercial Courts Act’). Observing that the Commercial Courts Act expressly overrides the Letters Patent, the Court upheld the Registry’s objection and rejected the appeal.
Background:
The dispute arose from the rejection of a patent application by the Deputy Controller of Patents under Section 15 of the Patents Act. An appeal was filed under Section 117-A of the Patents Act before a Single Judge of the Court, who dismissed the appeal. Thereafter, an Original Side Appeal was instituted under Clause 15 of the Letters Patent. The Registry raised an objection regarding maintainability, stating that it must be clarified how an Original Side Appeal (‘OSA’) is maintainable under Clause 15 against a judgment passed in a Civil Miscellaneous Appeal.
Counsel for the appellant contended that the order of a Single Judge in the Civil Miscellaneous Appeal is to be construed as an order in-original, and therefore an intra-court appeal would lie under Clause 15 of the Letters Patent. It was further argued that the Single Judge had decided the correctness of the order passed by the Deputy Controller of Patents under the Patents Act, and hence an intra-court appeal would lie akin to that of an order passed in a writ petition. Counsel relied on Section 13 of the Commercial Courts Act, submitting that disputes relating to patents are defined as “commercial disputes” and therefore the appeal was filed as an OSA (Commercial Appellate Division).
Analysis and Decision:
The Court emphasised that in the absence of any provision for intra-court appeal, no appeal would lie. The Court noted that Section 117-A of the Patents Act contemplates appeal against the order passed by the authority under the Patents Act, and that such appeal had already been entertained and adjudicated by the Single Judge. The Court highlighted that Section 13 of the Commercial Courts Act is a special enactment and would prevail over the Letters Patent.
The Court observed that Chapter IV of the Commercial Courts Act provides for appeals, and Section 13(1) of the Commercial Courts Act enumerates that an aggrieved person may prefer an appeal to the Commercial Appellate Division of the High Court against the judgment or order passed by the Commercial Division of the High Court. However, the proviso denotes that the appeal shall lie only from such orders specifically provided under Order XLIII of the Civil Procedure Code, 1908 or Section 37 of the Arbitration and Conciliation Act, 1996. The Court further noted that Section 13(2) of the Patents Act makes it clear that notwithstanding anything contained in any other law or Letters Patent of a High Court, no appeal shall lie otherwise than in accordance with the provisions of the Act.
The Court observed that any expansion of the scope of the Commercial Courts Act would defeat its objectives, and there is no ambiguity regarding appeals from decrees of Commercial Courts and Commercial Divisions under Section 13 of the Commercial Courts Act. The Court reiterated that there is no scope to invoke Clause 15 of the Letters Patent for the purpose of entertaining the present OSA.
Therefore, the Court concluded that the objection note raised by the Registry regarding maintainability was in consonance with the provisions of law and therefore stands affirmed. Consequently, the OSA was rejected.
[ITALFARMACO SPA v. Controller of Patents & Designs, OSA (CAD) SR. No. 72443 of 2025, decided on 12-12-2025]
*Judgment authored by: Justice S.M. Subramaniam
Advocates who appeared in this case:
For the Appellant: Arun C. Mohan
For the Respondent: S. Diwakar, CGSPC
Buy Arbitration and Conciliation Act, 1996 HERE
