Jurisdictional Aspects of Patent Infringement Suits: Understanding Where to File

When a patent is infringed, the first question a patent holder must ask is not just what happened, but where to go for justice. Jurisdiction – the legal authority of a court to hear a case – is not a mere procedural formality in patent infringement suits. Under Indian patent law, jurisdiction is strictly defined, and filing in the wrong court can result in your suit being dismissed entirely. Understanding where to file is as critical as knowing what to file.

The statutory basis: what the Patents Act says 🔗

The Patents Act, 1970 governs patent infringement suits in India. Section 104 of the Act is the key provision dealing with jurisdiction. It explicitly states that no suit for infringement of a patent shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

This is a hard floor. Unlike many civil disputes where a Munsiff Court or a subordinate civil court may have jurisdiction based on the monetary value of the claim, patent infringement suits cannot be initiated at that level at all. The legislature made a deliberate choice here – patent disputes involve complex technical and legal questions that require courts equipped with the competence to handle them.

Why district courts as the minimum threshold? 🔗

The requirement of a District Court as the minimum forum reflects the nature of patent litigation itself. Patent infringement cases often involve technical expert testimony, complex claim construction, analysis of prior art, and significant commercial stakes. Subordinate courts below the district level are generally not equipped – in terms of jurisdiction, infrastructure, or legal precedent – to handle such matters effectively.

This threshold also aligns with India’s broader approach to intellectual property adjudication. The National IPR Policy, 2016 emphasised the need for a robust and specialised IP adjudication framework, recognising that effective enforcement is impossible without courts having the right authority and competence.

Determining which district court has jurisdiction 🔗

Just because a District Court is the minimum forum does not mean any District Court in the country can hear the case. The ordinary rules of civil procedure still apply to determine which District Court has jurisdiction. Under the Code of Civil Procedure, 1908, a suit can be filed where:

• The defendant resides, carries on business, or personally works for gain; or
• The cause of action – wholly or in part – arises.

In the context of patent infringement, the cause of action typically arises where the infringing act takes place. This could be where the infringing product is manufactured, sold, imported, or used. Courts have interpreted this broadly to include the place of sale, which often gives plaintiffs some flexibility in choosing their forum – a principle sometimes referred to as forum shopping, though courts are increasingly scrutinising such practices.

The counter-claim for revocation and transfer to the High Court 🔗

Here is where jurisdiction in patent law becomes particularly interesting. Section 104 of the Patents Act also addresses a situation that arises frequently in patent litigation: the defendant does not just deny infringement – they challenge the very validity of the patent itself by filing a counter-claim for revocation.

When such a counter-claim is filed in a suit before a District Court, the entire proceedings – both the infringement suit and the counter-claim – must be transferred to the High Court. The District Court loses jurisdiction over the matter at that point.

Why does a revocation counter-claim trigger transfer? 🔗

The reason for this transfer lies in the subject matter jurisdiction of courts over patent revocation. Under Section 64 of the Patents Act, a patent may be revoked on a petition filed before the High Court (or the Intellectual Property Appellate Board, now dissolved, with its jurisdiction transferred back to High Courts under the Tribunals Reforms Act, 2021). Revocation is a serious proceeding – it nullifies the patent entirely, affecting not just the parties in the suit but potentially all third parties and the public.

It would be incongruous to allow a District Court to adjudicate on the validity of a patent through the backdoor of a counter-claim, when revocation by petition must be brought before the High Court. The transfer ensures consistency, prevents conflicting decisions, and places the validity question before a court with the appropriate authority.

Practical implications of the transfer 🔗

For a patent holder, the defendant’s counter-claim for revocation is a tactical maneuver as much as a legal one. It shifts the battleground from a District Court – where the patentee may have had a favourable forum – to a High Court, which involves higher costs, more complex procedure, and longer timelines. Conversely, for defendants challenging a weak or overbroad patent, the counter-claim route is an efficient way to consolidate both the infringement defence and the validity challenge in a single proceeding before a more authoritative forum.

The interconnection between infringement and revocation proceedings is therefore not just procedural – it reflects the substantive reality that the strength of a patent and its infringement cannot always be cleanly separated.

The role of the Intellectual Property Division of High Courts 🔗

Following the abolition of the Intellectual Property Appellate Board (IPAB) by the Tribunals Reforms Act, 2021, High Courts in India now exercise original jurisdiction over several IP matters that were previously before the IPAB. Many High Courts have constituted dedicated Intellectual Property Divisions (IPDs) to handle these cases. The Delhi High Court, for instance, has been at the forefront of developing India’s patent jurisprudence through its IP Division, handling landmark cases involving pharmaceutical patents, standard-essential patents, and software-related inventions.

This institutional development means that when a District Court transfers a patent suit to the High Court following a revocation counter-claim, the matter is increasingly likely to be heard by judges with specialised exposure to IP law – which improves the quality of adjudication for both parties.

Jurisdiction and patent suits involving the government 🔗

A separate but related jurisdictional consideration arises when the Central Government is involved in a patent dispute. Under Section 103 of the Patents Act, where the Government uses a patented invention and a dispute arises, the matter proceeds differently. Additionally, suits against government undertakings may attract different procedural requirements regarding notice and institution of suits, which practitioners must account for when planning litigation strategy.

Key takeaways for patent holders and defendants 🔗

Whether you are a patent holder seeking to enforce your rights or a defendant facing infringement allegations, understanding the jurisdictional framework is not optional – it is foundational. Filing in the wrong court wastes time, money, and potentially prejudices your case. Here are the core points to keep in mind:

• Minimum forum: No suit for patent infringement can be filed in a court below the District Court level – this is a statutory requirement under Section 104 of the Patents Act, 1970.
• Territorial jurisdiction: The appropriate District Court is determined by ordinary CPC principles – residence of defendant or place where cause of action arose.
• Counter-claim for revocation: If the defendant files a counter-claim for revocation of the patent in a District Court suit, the case must be transferred to the High Court.
• Post-IPAB landscape: With the IPAB abolished, High Courts now have enhanced jurisdiction over patent matters, and their IP Divisions are the primary forums for complex patent litigation.

A note on forum selection strategy 🔗

Experienced IP lawyers pay careful attention to forum selection when initiating patent suits. The Delhi High Court, given its Original Side jurisdiction and its rich body of patent case law, is frequently chosen as the forum of choice for high-stakes patent litigation in India – provided the jurisdictional requirements are satisfied. The Bombay and Madras High Courts similarly have developed significant patent jurisprudence. The choice of forum can influence not just the speed of proceedings but also the interpretive approach applied to claim construction and infringement analysis.

For any party involved in patent enforcement or defence in India, engaging with these jurisdictional rules early – ideally before the dispute escalates – is essential to building an effective legal strategy.

What do you think? Given that a defendant can trigger a transfer to the High Court simply by filing a counter-claim for revocation, does this create an undue strategic advantage for defendants in patent suits? And with the IPAB now abolished and High Courts taking on greater IP jurisdiction, do you think India needs dedicated patent courts – similar to the Unified Patent Court in Europe – to handle the growing volume and complexity of patent disputes?

References

1. https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf
2. https://dpiit.gov.in/sites/default/files/National_IPR_Policy_CE_0.pdf
3. https://legislative.dept.gov.in/sites/default/files/A1908-05.pdf
4. https://highcourtchd.gov.in/
5. https://legislative.dept.gov.in/sites/default/files/A2021-33.pdf
6. https://delhihighcourt.nic.in/
7. https://delhihighcourt.nic.in/home/rules-and-acts