Jurisdiction of Indian Courts over Non-registered Foreign Parties

In the last post, I discussed the issue of jurisdiction of Indian Courts on parties which do not have a registered place of business in India. There are enough and more Indian precedents on this point of law.

The first of which is the decision of the Karnataka High Court in Airbus Industries vs. Laura Howell Linton (ILR 1994 KAR 1370). This judgment is pretty informative for it traces the history of the term “forum shopping” and the evolution of principles of appropriateness of jurisdiction.

Among the various questions on jurisdiction that were dealt with in the judgment, the one that is of immediate relevance to this post is the issue of jurisdiction of Indian Courts over non-registered foreign parties. In finding a satisfactory answer to this issue, the K'taka Court cited another landmark judgment of the Bombay High Court in Chunnilal Kasturi Chand v. Dundappa Damappa (AIR 1951 Bombay 190)

An attempt was made in both these decisions to reconcile canons of International law with the demands of private law. Quoting another decision of the Patna High Court, the K’taka High Court in Airbus stated thus:

“...that according to the principles of International Law, a Court has no jurisdiction to entertain a suit against a foreigner who did not permanently or temporarily reside within its jurisdiction and who had not submitted to that jurisdiction. However, this is not the case where local Legislature confers jurisdiction upon a Court situated in a particular territory, to entertain suits against foreigners in situations where a cause of action arises wholly or partly within its jurisdiction, as in this instance. In such a case, the Rule of Private International law is subject to and over-ridden by the Rule of local Municipal Law.”

As deliberated in the last post, Clause (c) of Section 20 of the Code of Civil Procedure is the will of the Indian legislature which vests Indian Courts with the power to entertain suits against foreigners who do not reside in India, so long as a part or the whole of the cause of action has arisen in India.

Another brilliant judgment on this point is the one again delivered by the Patna High Court in Suresh Narain Sinha v. Akhauri Balbhadra (AIR 1957 Pat 256). The fundamental proposition which this judgment endorses is captured in Para 5 of this judgment, which reads as follows:

“In a personal action, to which none of these causes of jurisdiction apply, a decree pronounced in absentem by a foreign Court, to the jurisdiction of which the defendant has not in any way submitted himself, is by international law an absolute nullity. He is under no obligation of any kind to obey it; and it must be regarded as a mere nullity by the Courts of every nation except (when authorized by special local legislation) in the country of the forum by which it was pronounced.”

So, a plaintiff, who has an Indian patent, can take action in India for an infringement of his patent by an infringer who pull strings from outside India without a registered place of business in India.

(Image: High Court of Karnataka)

Can an Indian Court act against a Foreign Party in a Patent Infringement Suit?

I Wish All the Readers Merry Christmas!

In a recent suit for infringement of an Indian patent before the High Court of Delhi, the captioned issue featured prominently. The situation broadly is as follows:

1. The plaintiff has an Indian patent

2. The defendant is a foreign entity, with no registered place of business in India

3. Representatives of the defendant make concrete offers for sale of goods which infringe the plaintiff’s patent

4. Such representations are made within the territorial jurisdiction of the Delhi high Court

Question: Does the High Court of Delhi have the jurisdiction to entertain the plaintiff’s suit for infringement of his patent, when the defendant has no registered place of business in India?

For most general practitioners, the answer would be obvious. The High Court does have jurisdiction over the matter, notwithstanding the fact that the defendant has no registered place of business in India. This is because Section 104 of the Patents Act, 1970 directs us back to Section 20 of the CPC to ascertain the appropriate Court which would have jurisdiction over the suit.

Let’s take a look at Section 104, which reads thus:

104. Jurisdiction

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 to 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.

To determine the district Court having the jurisdiction to try the suit, one has to look into the provisions of the Code of Civil Procedure, specifically Section 20 of the Code. Section 20 of the Code reads as follows:

20. Other suits to be instituted where defendants reside or cause of action arises.

Subject to the limitations aforesaid, every suit shall be instituted in Court within the local limits of whose jurisdiction-

(a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or

(b) any of the defendants, where there are more than one, at the time of the commencement of the suit actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or

(c) the cause of action, wholly or in part, arises.

Why does the title of Section 20 read “Other suits to be instituted where defendants reside or cause of action arises”? This is because Sections 16-19 of the Code govern the jurisdiction of specific suits such as suit for immovable property and for compensation for wrongs to person or movables. “Other suits” in Section 20 refers to suits which do not fall within the ambit of Section 16-19.

Consequently, suits for causes of action which arise under any law in force, and which do not fall within the teeth of Section 16-19, are governed by Section 20 of the Code. This includes a suit for infringement of a patent (How?... why can’t a patent be treated as movable property? After all, section 50(5) of the Patents Act, 1970 states that the rules of law applicable to ownership and devolution of movable property generally shall apply in relation patents..)

Anyways, for the purpose of this post, I shall assume that a suit for infringement of a patent is covered as “other suits” under Section 20 of the Code.

A reading of Section 20 underscores the fact that the institution of a suit does not turn on nationality of the defendant. All that one needs to ask oneself is:

A. Does the defendant reside within the jurisdiction of the Court where the suit is sought to be instituted?

B. If not, does he have a place of business (by default, the place of business must be the sole or principal place of business. Refer to explanation provided in the Code to Section 20)

C. If he neither resides nor has a principal place of business within the jurisdiction of the Court, has the cause of action arisen within the jurisdiction of the Court?

Nowhere in any of these requirements under Section 20 does one find a hurdle to institution of a suit merely because the defendant does not have a registered place of business in India. Clause (c) of Section 20 clearly states that so long as the cause of action has arisen in whole or in part within the jurisdiction of a particular Court, the Court is the “competent court” as required by Section 15 of the Code (“Every suit shall be instituted in the Court of the lowest grade competent to try it”)

With regard to the specific factual matrix of the case being discussed here, the cause of action has arisen because “an offer for sale” of the patented product was made without the consent of the patentee.  (Section 48 of the Patents Act vests the patentee with the exclusive right to prevent third parties from offering for sale his patented product)

If the offer for sale was indeed made within the territorial jurisdiction of the High Court of Delhi, the infringement of the patent has occurred within the Court's jurisdiction. Therefore, the absence of a registered place of business of the defendant ought not to prevent the Court from entertaining the suit, because it is perfectly within its seisin.

P.S: For those who didn’t know, so long as the value of the suit is pegged at INR 200,000, the High Court of Delhi has original jurisdiction over the suit, which is the case with most suits for infringement of patent. Unless of course the patentee decides to value the suit below INR 200,000, in which case he would have to wait for the defendant to file a counterclaim of revocation of the patent, for the suit to be transferred along with the counterclaim from the district Court to the High Court (Courtesy proviso to Section 104 of the Patents Act) 

Internet Jurisdiction: UK Chancery Court Takes a Restrictive View- II

In the last post, I discussed this judgment of the UK Chancery Court; in particular, the issue of authorization was dealt with. In this post, the remaining highlights of the judgment have been discussed.

Role of the Parent Company in the Infringing act/Joint Liability

The Court recalled authorities/precedents to explain that joint tortfeasance/liability of the parent and the subsidiary companies would follow only if there was active participation on the part of both companies. Mere knowledge of one company of the other’s actions would not suffice to establish joint liability, even if the former had complete control over the assets and management of the latter.

Somehow this principle seems to erode the concept of vicarious liability because it doesn’t ring of conviction when a holding company conveniently claims innocence with respect to a particular questionable activity. I must admit I am not sure of the position under Indian law on this point.

In the instant case, the Court held that both the Swiss and German Defendants were jointly liable because the General terms and Conditions available on the websites of the Swiss Defendant showed that it was responsible for delivering products/services to customers in return for a consideration.

This, the Court felt, established the joint liability of both the defendant entities.

Good Arguable case of Copyright Infringement

The central issue to be decided on this point was if the Defendants’ actions would qualify as communication of the copyrighted content to members of the public i.e. “making available the work to the public” either by electronic transmission or wire/wireless means.

The Court wondered if it could draw parallels between the emission theory associated with satellite broadcasting, and online transmission. The emission theory, as applied to broadcasting, states that the place where the act of broadcast occurs is “where the signals are introduced under the control of the person making the broadcast into an uninterrupted chain of communication”.

In other words, the place where one puts information in a communication conduit is the place of broadcasting, as opposed to the place where the broadcast is received by the end consumer.  The Court seemed to endorse the view that the emission theory applied to satellite broadcasting and online transmission because it did not appear from the UK provision that the principle was applicable only to satellite broadcasting.

Further, the Court was of the view that even if it was within the power of the defendants to restrict access to the content in certain jurisdictions, the absence of any such restriction need not by itself imply that they intended to communicate the information in that jurisdiction. (How is it that this logic did not apply to the issue of authorization?)

The Court also observed that since online transmission of the infringing content could be curtailed within the UK, the application of the emission theory did not render the copyright useless.

In short, the Court held that the infringing act occurred only where the act of online transmission had been committed, which for the Court, was the place where the server was situated.

In light of the above, the following conclusions were reached by the Court:

1. The Court did not have jurisdiction against the foreign defendants since the server of the defendants was located outside the UK, and hence there was no primary infringement by communication by the foreign defendants

2. Since the UK-based entities had not been impleaded, claims had to be amended accordingly for the court to take cognizance of the infringing activities of the UK-based entities.

Observations

The judgment doesn’t appear consistent or coherent because the Court takes the view that:

A. The foreign defendants had authorised reproduction of the infringing content, and yet the Court does not elaborate as to where and how was such authorisation established.

B. Then it proceeds to accept that there was joint liability of the foreign defendants with the UK-based customers for reproduction, extraction and re-utilization.

C. However, since the server of the foreign defendants was outside the UK, there was no communication to the public by the foreign defendants.

Since joint liability of the foreign defendants with UK-based customers for reproduction is another way of stating “authorization of reproduction”, I think the issue hasn't been addressed satisfactorily because the underlying premise of  authorization hasn’t been sufficiently dwelt upon by the Court.

As for the issue of “communication”, communication or transmission, as understood in common parlance, are acts which are not and cannot be termed successful if the information so communicated or transmitted is not received by the recipient. Stated otherwise, there is no complete communication without reception. Accordingly, in this case, since communication to UK-based customers was complete, the foreign defendants ought to have been held as communicating the copyrighted content.

That said, does communication without a specific concerted attempt to cater to customers in the UK, amount to communication to the UK public? If the answer is in the negative, then communication is only by the UK-based entities, and not by the foreign defendants.

What I mean is that since there is no proof to show that the foreign defendants intended to communicate the infringing content to users in the UK, it is the UK-based entities which have themselves ensured the communication of the content to users in the UK by linking to the German website. Therefore, the liability for infringement by communication falls on the UK-based entities, and not on the foreign defendants.

All in all, one is of the opinion that the judgment does not strike a consistent note on the line of logic it adopts to arrive at a decision on both issues of authorization and communication.

Comments/alternative views on the judgment are welcome.

Internet Jurisdiction: UK Chancery Court Takes a Restrictive View- I

A close friend and a confidante of mine passed on this judgment delivered by the UK High Court of Justice (Chancery Division). This judgment will be discussed in this post and the next.

The judgment, regardless of its ability to justify the Court’s stance on the core issue of jurisdiction, is a must-read for litigators, more so for IP litigators. I say this because, seldom do we come across pleadings in India where sufficient attention has been paid to the issue of jurisdiction.

This may be because, although there are quite a few Indian judgments on jurisdiction, Courts in India tend to take only a broad stab on the issue without actually taking Plaintiffs to task. In that sense, I think this judgment gives valuable tips on how must the cause of action be pleaded in sufficient detail to establish jurisdiction of a Court.

I’ll deal with the facts of the case only to the extent to which they are needed for this post. 

The Plaintiffs in the case were UK-based entities, and both Defendants were entities foreign to the UK, one German and the other Swiss, the Swiss entity being the parent company of the German entity.

The Plaintiffs owned an online database “Football Live”, which provided statistics on football matches held by other co-Plaintiffs. The German defendant too ran a competing service called “Sports Live Data”; the Plaintiffs’ grievance was that certain entities, which were UK-based, provided links to the site of the German Defendant.

The German Defendant’s site in turn had pop-up windows that contained match statistics, which the Plaintiffs alleged infringed their copyright and database right.

What is to be noted here is that the UK entities, which provided links to the site of the German Defendant, were not impleaded in the suit.   

The primary questions before the Court were:

1. Had the Plaintiffs sufficiently pleaded the act of authorization of the infringement by the Defendants?

2. Was the Swiss parent company a necessary or even a proper party by virtue of it being the parent company of the first defendant/German entity?

3. Had the Plaintiffs made out a case establishing jurisdiction of the English Court, considering that both defendants were non-English entities? This required the Plaintiffs to establish there was indeed a “good arguable case” that the Defendants had “made available” the copyrighted content of the Plaintiffs.

“Authorization”

It was the Plaintiffs’ case that although the Defendants themselves did not reproduce the copyrighted content, they had “authorised” such reproduction. That said, if authorization had not been pleaded in the statement of claims, there could have been no cause of action disclosed against the Defendants.

At the outset, the Court considered it trite to state that the act of authorization need not have occurred in the UK, so long as the act so authorised has been committed in the UK and is an infringing one.To decide if authorization had been pleaded, the Court referred to Para 37 of the Plaintiffs’ statement of claims, which read thus:

“From a date presently unknown to the Claimants but prior to the issue of the Claim Form in these proceedings, the Defendants have used the whole or a substantial part of Football Live, without the consent of the Claimants or any of them. Pending disclosure and/or evidence, the Claimants rely on the following facts and matters:

(i) The reproduction of data from Football Live on pop-up windows hosted on the Defendants' Website which are linked to from the Bet365 Website and the Stan James Website, during the 2008/2009 and 2009/2010 seasons. These pop-up windows appear when the "Live Score" option on the Bet365 Website and the Stan James Website is clicked on.[Screen prints of the windows from the two websites are then attached and referred to]. These screen prints show examples of the data displayed (at the end of each game) in relation to all of the games played in each of the Leagues, on the relevant dates. The data which is displayed for each game is left on the Defendants' Website until the end of the day on which the game is played.

(ii) By way of further illustration, attached as Annex 4 is a table showing the extent of types of live data displayed…

(iii) By reason of the matter is aforesaid, it is to be inferred that the defendants reproduce and/or authorise the reproduction of the following events for every game in every League…(a) goals; (b) goalscorers (shown by the player's name, and a football icon); (c) own goals (shown by the player's name followed by "(og)" and a football icon); (d) penalties (shown by the player's name followed by "(pen)"; (e) yellow cards (shown by the player's name, and a yellow card icon); (f) red cards (shown by the player's name and a red card icon); and (g) substitution (shown by the names of the players coming on and off, and an icon comprising two circular arrows). …

(iv) By reason of the matters aforesaid, it is to be inferred that the Defendants reproduce and store all of the aforesaid data in an underlying electronic database.”

(v) The Defendants' Website states that the Defendant has been operating an "in-house Live Score service" since February 2005. In the premises, it is to be inferred that the Defendants had carried out the aforesaid (or similar) activities since at least 2005.

The Court took the view that although the Plaintiffs could have connected the allegation of authorization with the act of reproduction better in their pleadings, it would border on inane technicality to conclude that authorization hadn’t been pleaded at all.

As to what amounted to authorisation, the Court quoted the definition provided in Twentieth Century Fox Film Corp v Newzbin Ltd [2010] FSR 21, which is as follows:

""authorise" means the grant or purported grant of the right to do the act complained of. It does not extend to mere enablement, assistance or even encouragement. The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances. In a case which involves an allegation of authorisation by supply, these circumstances may include the nature of the relationship between the alleged authoriser and the primary infringer, whether the equipment or other material supplied constitutes the means used to infringe, whether it is inevitable it will be used to infringe, the degree of control which the supplier retains and whether he has taken any steps to prevent infringement. These are matters to be taken into account and may or may not be determinative depending upon all the other circumstances."

To restate the above, an act is deemed as an authorizing one, provided it goes beyond mere supply of equipment which can be put to infringing use. The above definition goes a step further and states, rightly so, that even enablement, assistance or encouragement do not amount to authorization.

It’s hard to disagree with this proposition, but one wonders what difference would it make if enablement or assistance or encouragement were to be pleaded instead of authorization? In terms of establishing existence of liability, I am not sure it makes a difference. However, it may certainly affect practical apportionment of liability in terms of damages.

On the specific facts of the case, the Court took the view that the German defendant was in complete control of the content being reproduced in its pop-up windows. This, the Court opined, justified its conclusion that a case of "authorization" had indeed been made out.

I am not clear as far as this finding is concerned because "authorization" is to be construed as referring to authorization of the infringing act i.e. reproduction within the territory of UK Courts. Merely because the German Defendant had complete control over the contents being reproduced on its own website, how did it follow that reproduction within UK by UK-based entities had been "authorised" by the German defendant? 

I would think that authorization would have been made out only if the German defendant had authorized the linking of its contents by the UK entities. Since the website of the German Defendant is universally accessible, the Plaintiffs ought to have shown that there was specific express or implied authorization by the defendant to UK entities to link back to the reproduced content. In the absence of any proof of any such authorization, UK Courts ought not to have seized the matter. 

If I have mis-read the judgment on this issue, I welcome corrections.

The other essential findings of this judgment will be discussed in the next post. 

Thoughts: “Innovation’s Holy Grail” by Prof.C.K.Prahalad and Dr.R.A.Mashelkar

Innovation’s been a bee in my bonnet for sometime now, and elsewhere I have written on the topic. I was fortunate enough to receive some wonderful literature from Dr.R.A.Mashelkar himself, who took time out to share his thoughts on the topic.

I thank Dr.Mashelkar profusely for this benevolent gesture of his! 

In this post, I intend to discuss a few key issues raised in an article entitled “Innovation’s Holy Grail”, authored by the late management Guru C.K.Prahalad and Dr.Mashelkar, published in the Harvard Business Review in the July- August 2010 edition.

The broad theme of the article is a paradigm shift in drivers of innovation. From premium pricing and abundance, it says affordability and sustainability” have now become the new drivers of innovation. Does this mean affordability and sustainability have earlier never featured as objectives in an entrepreneur’s scheme of things? I don’t think that is the import of the statement.

To understand the import better, I think it’s important to deal with a few concrete examples. When one thinks of American Cars, the first thought that comes to our minds is “BIG”. "Fuel Guzzlers” is another term that is often associated with the mean machines that roll out of American auto-stables. The abstract construct that is common to “BIG” and “Fuel Guzzlers” is absence of frugality.

“Use and Throw” is what most products from developed markets of the West are known for. “Use and Reuse” rarely found favour earlier. The reason probably lay in demography and geography (I could be way off the mark here). For a country which is more than 3 times the size of India and has a population which is roughly one third of India’s, the United States has enough and more resources to cater to all its needs and wants.

Consequently, the need for conservation of resources may have never been felt with the acuteness with which, say, Japan has always felt. It is but natural that these factors have had a very real influence on the patterns of consumption in the US (every time the US economy has experienced a slump, the mantra to revive has been “Spend and Consume”). Since necessity is verily the mother of invention, it is also natural that availability of resources should in turn influence the dialectics and course of innovation as well.

To add to that, if the spending power of the consumer too is high, frugality or affordability isn’t something an entrepreneur is going to rack his brains about. Bring in “branding” and “a premium for the brand”, and you have a decent explanation for the high cost of innovation in developed markets, which ultimately the consumer has to pay for.

Between “Abundance” and “premium pricing”, the latter is more abstract because one of the cardinal constituents of “premium pricing” is “perception”/”perceived value” or may be even “hype”. Why do I say so? Am I committing the sin of gross over-simplification of the issue here for want of research? No, I think I am merely putting my “native intelligence” to use.  

Let’s take “Nike” t-shirts to test the validity of the proposition; Tirupur, also famously known as “The Textile City of India”, manufactures garments for global brands like Nike, Adidas and Gap. If these manufacturers were to sell their produce at a decent profit for themselves, even then I don’t think the selling price of the shirt would come anywhere close to say a Nike T-shirt (the base minimum price of a Fade Away Nike t-shirt is USD 9, which roughly translates to INR 400).

Typically, and I don’t have empirical proof to support this, I think premium pricing adds atleast 20% to the price of the product, and this 20% is what sways a consumer’s choice, atleast in India. I can’t speak for consumers outside India, but most Indian consumers believe in “value for money”, which for them means “hard value” i.e. what is the tangible benefit that I as a consumer get by purchasing something which has the Nike Swoosh on it, as opposed to an unbranded T-Shirt from a local manufacturer who supplies to Nike?

If the answer is “the pride of wearing a Nike T-shirt, which comes with the assurance of quality and distinction”, I think it doesn’t cut much ice when the consumer knows that the shirt’s been made in India. This is not to say the Indian consumer doesn’t value the “Made in India” tag, it’s just that he doesn’t get what this deification of a brand is all about. For him a watch which works well is as good as any other, even if the other is a Mathey-Tissot or a Ulysse Nardin, the bells and whistles rarely matter to the average Indian consumer.

This disdain for, rather disinterest of the Indian consumer in brands is exactly what has flummoxed the big corporations from developed markets, because the harder they resort to puffery, the wider is the gulf between them and the Indian consumer.

This has a concrete legal angle to it as well- counterfeiting. There could be a zillion motivations for counterfeiting, but the one reason that is critically relevant in Indian conditions, is the exhorbitant price of the product which stems from perceived value. Talking heads on counterfeiting often mistake this as the Indian consumer’s willingness to compromise/trade-off on quality, which simply isn’t the case.

The Indian consumer is probably the toughest to sell your goods to; in the words of Dr.Rajesh Shukla, Director of the recently launched NCAER-Centre for Macro Consumer Research (NCAER-CMCR), the Indian consumer is a “hydra-headed monster”. Unless every why and why not is answered, you can’t sell even a pair of socks to him.

So when a company expects him to shell out 20% more, solely to recoup its lavish marketing expenditure and make some additional profit in the name of brand, I think it pushes the Indian consumer that much closer to counterfeiters. In that sense, the Indian consumer is a no-nonsense guy who wants the company to stop beating around the bush and get straight to the point- which is utility.

Corporations from developed markets have slowly but surely realized this, which is why they are forced to reinvent the wheel when they enter India i.e. they have to re-invent their own products to suit the low-cost business psyche of the Indian consumer. Is this a good trend for the society as a whole?

I am inclined to say yes because expenditure on branding which cannot be justified, if saved is income (I am sure a few practitioners of trademark law and branding experts may want to thrust a dagger in me for saying this). After all, at the end of the day, diversion of financial and material resources from branding to actual tangible innovation is beneficial for all of us. Money that can be spent on making products eco-friendly (“green”) need not be squandered on ad films and glossy hoardings.

But then, how long will this trend of re-invention to suit low-cost business models last? Is it here to stay? I ask this because there is a growing section among us which has a fetish for brands, although this is an uber-urbanized group, which is limited to a few pockets in metros.

I hope the rate of growth of this select group is significantly slower than the rate at which corporations are forced to come up with low-cost products for our markets. Until “frugal innovation” starts influencing corporations even in their domestic markets, I wish and pray that this select group which feeds on brand-frenzy remains what it is today- select... 

A PCT Application for a Patent of Addition?

A few days back, a friend of mine, who is a very keen student of the law of Patents, asked me an interesting question which hadn’t occurred to me earlier. Her question was-

“Is it possible to file a PCT application for a patent of addition?”

My answer was a yes, but I thought I might as well back the answer with proper research. So here it goes.

Let’s begin with the “Definitions” under Article 2 of the Patent Co-operation Treaty (PCT). The relevant definitions to be looked into are those of “application” and “patent” under sub-article (i) and (ii) of Article 2. For ease of reference, following are the definitions:

(i) “application” means an application for the protection of an invention; references to an “application” shall be construed as references to applications for patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition;

(ii) references to a “patent” shall be construed as references to patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition;

I think the above definitions make it crystal clear that a patent of addition too can be the subject-matter of a PCT application. But then, what about priority dates? A patent of addition, in my opinion, cannot be filed beyond the standard 12-month window provided under the law, if it seeks the benefit of priority of the basic parent application.

This applies to 2 situations- the first where the basic application is an application filed in a national patent office and the PCT application takes benefit of the basic application; the second is where the basic application is itself a PCT application. After all, a PCT application can take priority from an earlier filed PCT application.

The question now to be answered is what happens if a person wishes to file a PCT application beyond the 12 month period of the earlier filed PCT application? The answer could be that such an application may be filed because non-publication of the parent PCT application does not deprive it of its novelty.

That said, since it cannot and hence does not take benefit of the parent PCT application, it may be treated as an independent PCT application, and not as a patent of addition. If so, it may fall short on the criterion of non-obviousness, because it will now be judged against the invention disclosed in the parent PCT application as well.

However, this does not prevent filing of applications for patents of addition from the national phase applications because there is no time-limit under national regimes (atleast in India) for filing of a patent of addition. 

Corrections are welcome!

Administrative Tribunals: Their Contempt Jurisdiction

Certain aspects of administrative law have been dealt with on the blog in the past, however, I have not delved in depth into other aspects of this branch of law. I hope to take a non-linear approach (inspired by Christopher Nolan) in my attempts to make sense of the subject.

In this post, I intend to find out if Administrative Tribunals are empowered to take action against contemnors. Why is this an issue? Is the law of contempt different for administrative tribunals? The Supreme Court has had an opportunity to address this point in T.Sudhakar Prasad v. Govt. Of AP & Ors (2000).

The issue before the Apex Court in this judgment was as follows (let’s take a syllogistic approach):

A. Default Position: Only High Courts, as Superior Courts and Courts of Record, are empowered to take action in cases of contempt, even when the contempt is of Courts subordinate to it.

B. If A is true and if, according to the judgment in the celebrated decision of L.Chandrakumar v. Union of India (1997), an administrative tribunal is subordinate to a High Court and is hence amenable to the High Court’s jurisdiction under Article 226 of the Constitution...

C. then putting A and B together, would it be right to conclude that an administrative tribunal cannot take action against the contemnor, only the High Court may do so on its behalf?

If the answer to the above question were to be in the affirmative, then Section 17 of the Administrative Tribunal Act, 1985, which empowers tribunals to punish contempt, would be rendered otiose.

To resolve this issue, the Court dwelt on the contempt powers of the Supreme Court and the High Courts.

It observed that these Courts derived their powers from Articles 129 and 215 of the Constitution respectively and such powers could never be taken away from them. Even the provisions of the Contempt of Courts Act were only supplemental in nature, and not derogatory.

The Supreme Court then proceeded to interpret the relevant portions of Chandrakumar. It observed that in Chandrakumar, the SC had interpreted Articles 323A and 323B of the Constitution as ultra vires insofar as they impinged on the basic structure of the Constitution, of which the power of judicial review of the High Courts and Supreme Court was integral.

In other words, those powers of administrative tribunals which were specifically conferred under Article 323A and consequently the Administrative Tribunals Act, which did not run contrary to the Constitution’s basic structure, would remain unaffected by the dicta in Chandrakumar.

Therefore, the power to punish contempt under Section 17 of the Administrative Tribunals Act, which flowed by Article 323A(b), remained unaffected by the decision in Chandrakumar. 

The Court arrived at this this conclusion through another path as well- according to the Court, the other reason that Section 17 was explicitly included in the Administrative Tribunals Act was that, by default the power of contempt was available only to Courts of record. Since an exception was being made with respect to administrative tribunals, such exception had to be express and in no uncertain terms to ensure that this was seen as a clear and unambiguous exception to the default rule.

As to the question, whether there would lie an appeal before the High court from an order of the tribunal in an action for contempt, the Apex Court rightly held that Section 19 of the Contempt of Courts Act would come into play. This means there would be no appeal (or even a writ under Article 226) before the Court from an order of the Tribunal in a contempt action, because the tribunal is substituted for the High Court for the purposes of the Contempt of Courts Act as per Section 17 of the Administrative Tribunal Act.

Therefore, as envisaged in Section 19 of the Contempt of Courts Act, the only remedy would be a special leave petition under Article 136 of the Constitution.

The Court categorically stated that this interpretation too did not run counter to Chandrakumar.