Vishal Prafulsingh Solanke & Anr. v. Controller of Patent and Designs & ors.

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High Court of Judicature at Bombay | Commercial Appellate Division | 9 March 2026 Case Number: Commercial Appeal (L) No. 13430 of 2025 in Commercial Miscellaneous Petition No. 110 of 2025 Bench: Hon’ble Ms. Justice Bharati Dangre and Hon’ble Ms. Justice Manjusha Deshpande, JJ. Citation: 2026:BHC-OS:7027-DB

BACKGROUND

The appellants, Vishal Prafulsingh Solanke and another, filed Patent Application No. 879/MUM/2015 on 17th March 2015 before the Assistant Controller of Patent and Designs for an invention titled “THREAD TYPE TAMPER EVIDENT SECURITY SEAL.” The application resulted in a pre-grant opposition filed by Respondent No. 3. After following the necessary procedure for grant of patentand after a hearing was conducted, the Assistant Controller of Patent and Designs was of the view that if certain amendments were made to the complete specification as well as the claims, the patent could be granted. The appellants’ agent filed an amended specification in line with the directions so issued. The parties were thereafter permitted to file written submissions.

However, by order dated 14th June 2023, the Assistant Controller of Patent and Designs passed an order holding that the opposition succeeds under Sections 25(1)(b) and 25(1)(e) of the Patents Act, 1970 and refused the patent to the appellants. This order was challenged by the appellants by filing Commercial Miscellaneous Petition (L) No. 25369 of 2023 before the learned Single Judge of the Bombay High Court, invoking Section 117A of the Patents Act, 1970 and praying for quashing of the order of the Assistant Controller.

The learned Single Judge, considering the rival contentions and finding merit in the submission advanced on behalf of the respondents   that it is only in the event of Section 25(1)(b) not being satisfied that the finding under Section 25(1)(e) deserves consideration   and finding no merit in the appellant’s submission that there were differences and advantages between the subject patent application and the cited documents, dismissed the Commercial Miscellaneous Petition, thereby upholding the order of the Assistant Controller of Patent and Designs.

The appellants, aggrieved by the dismissal of the petition by the learned Single Judge, filed the present Commercial Appeal under Section 13 of the Commercial Courts Act, 2015. The appeal raised various grounds on the merits but, when the matter came before the Division Bench, the Court identified a threshold jurisdictional question: whether the present Commercial Appeal filed under Section 13(1-A) of the Commercial Courts Act, 2015 was maintainable at all, in view of the bar under Section 100-A of the Code of Civil Procedure, 1908. Accordingly, the Court restricted its ruling to the question of maintainability and expressly refrained from examining the matter on merits.

On 18th August 2025, when the appeal was listed before the Division Bench, the Court noted prima facie that Section 13 of the Commercial Courts Act, 2015 does not appear to provide for an appeal against an order passed under Section 117A of the Patents Act, 1970 before the Court in exercise of appellate jurisdiction. The Court appointed Mr. Venkatesh Dhond, Senior Advocate, as Amicus Curiae to assist the Court. On 25th August 2025, the Court reiterated its prima facie view that the appeal, being a creature of statute, requires an express statutory provision and that Section 13 of the Commercial Courts Act, 2015 prima facie does not permit an appeal against an order passed in an appeal under Section 117A of the Patents Act, 1970. After hearing learned counsel for all parties and the Amicus Curiae, the Division Bench pronounced the present judgment.

ISSUES FOR DETERMINATION

Three distinct questions were identified by the Court for determination, all going to the maintainability of the Commercial Appeal.

  1. Whether the present appeal filed under Section 13(1-A) of the Commercial Courts Act, 2015 was maintainable or whether the proviso to that section restricted appeals only to orders enumerated under Order XLIII of the Code of Civil Procedure, 1908 and orders under Section 37 of the Arbitration and Conciliation Act, 1996  and whether, on the facts, the decision of the learned Single Judge constituted an “order” within the meaning of that proviso or a “judgment” falling outside its restriction.
  2. Whether, when the Patents Act, 1970 provides only for the first forum of appeal to the High Court under Section 117A but does not expressly create a bar on a further appeal, the remedy of appeal under Section 13 of the Commercial Courts Act, 2015 could be availed of as a second avenue.
  3. Whether the bar under Section 100-A of the Code of Civil Procedure, 1908 applied to restrict the scope of the appeal under Section 13 of the Commercial Courts Act, 2015and in particular whether the Controller of Patents, being a quasi-judicial authority conferred with certain powers of a civil court under Section 77 of the Patents Act, 1970, had the “trappings of a Court” sufficient to attract the embargo under Section 100-A.

KEY HOLDINGS OF THE COURT

  1. On the character of the proceedings before the learned Single Judge, the Court held that the learned Single Judge, in entertaining the petition under Section 117A of the Patents Act, 1970, did not act as a court of first instance but decided an appeal from the order of the Assistant Controller of Patents as a Commercial Division of the High Court. Section 117A expressly provides for an appeal to the High Court against decisions of the Controller under the enumerated sectionsand when such a dispute falls within the purview of a “commercial dispute” and is entertained by the Commercial Division of the High Court, the proceedings are not to be characterised as proceedings of first instance. The Court rejected the appellants’ contention that the Single Judge had exercised original jurisdiction. Section 7 of the Commercial Courts Act, 2015, is not restrictive of proceedings to only suits and applicationsand Section 12, which provides for determination of specified value, expressly refers to “Suit, Appeal or Application”, thereby contemplating that the Commercial Division has jurisdiction over proceedings in the nature of appeals under special statutes.
  2. On whether the decision of the learned Single Judge constituted a “judgment” or an “order” for the purposes of Section 13(1-A), the Court held that the decision of the learned Single Judge amounts to a “judgment” within the meaning of Section 2(9) of the Code of Civil Procedure, 1908, as it is a statement given by the Judge on the grounds of a decree or orderand it constitutes the final determination of the rights of the parties. The proviso to Section 13(1-A), as interpreted by the Supreme Court in MITC Rolling Private Limited & Anr. v. Renuka Realtors & Ors., 2025 SCC OnLine SC 2375, restricts only interlocutory “orders” to those specifically enumerated under Order XLIII of the Code and Section 37 of the Arbitration and Conciliation Act, 1996and does not restrict the main provision of Section 13(1-A) in relation to “judgments.” Accordingly, the Court held that an appeal would lie from the decision of the learned Single Judge to the Commercial Appellate Division   but subject to the bar projected under Section 100-A of the Code of Civil Procedure, 1908.
  3. Onthe applicability of Section 100-A of the Code of Civil Procedure, 1908, the Court held that the provisions of the Code of Civil Procedure apply to proceedings under the Commercial Courts Act, 2015 in matters other than the trial of a commercial suit. Section 16 of the Commercial Courts Act, 2015 and its schedule amend the Code only in relation to the trial of commercial suitsand do not exclude the applicability of other provisions of the Code   including Section 100-A   to appellate or other proceedings. Since there is no express exclusion of Section 100-A in the Commercial Courts Actand since Section 21 of the Act gives overriding effect only to provisions inconsistent with the Act, Section 100-A of the Code continues to operate as an applicable provision. Section 100-A prohibits a further appeal from the judgment and decree of a Single Judge who has decided an appeal arising from an original or appellate decree or orderand this bar overrides anything contained in the Letters Patent or any other law for the time being in force.
  4. On the crucial question whether the Controller of Patents has the “trappings of a Court” so as to attract the bar of Section 100-A, the Court held that the Controller of Patents does possess the trappings of a Court. The Court distinguished the decision of the Delhi High Court in Promoshirt SM SA v. Armassuisse, 2023 SCC OnLine Del 5531, which had held that the Registrar of Trade Marks does not qualify the “trappings of a Court” test. The Court found that the powers conferred on the Registrar under the Trade Marks Act, 1999 are not parallel to the powers exercised by the Controller of Patents under the Patents Act, 1970. The role of the Controller of Patents is of much greater significance in the scheme of the Patents Act: the Controller is clothed with the powers of a civil court while trying a suit under the Code of Civil Procedure by virtue of Section 77 of the Patents Act; proceedings before the Controller permit evidence to be given on affidavit and also oral evidence and cross-examination under Sections 79 and 80; and the Controller has extensive powers including those relating to examination, anticipation, potential infringementand substitution of applicants under various sections of the Act. An order of costs by the Controller is executable as a decree of civil court under Section 77(2). The Court relied on Indian Network for People living with HIV/AIDS v. Union of India, 2009 (1) CTC 32 (Madras High Court), which had held that the Controller of Patents has the trappings of a civil court and proceedings before such an authority are quasi-judicial proceedings.
  5. On the application of Section 100-A in the context of quasi-judicial authorities generally, the Court adopted the consistent position laid down by the Supreme Court in Municipal Corporation of Brihanmumbai & Anr. v. State Bank of India, (1999) 1 SCC 123, Kamal Kumar Dutta & Anr. v. Ruby General Hospital Ltd. & Anr., (2006) 7 SCC 613and Mohd. Saud & Anr. v. Shaik Mahfooz & Ors., (2010) 13 SCC 517, to the effect that Section 100-A bars a further intra-court appeal from the decision of a Single Judge who has decided an appeal from the order of a quasi-judicial authority having the trappings of a civil court, even where that authority is not technically a civil court in the strict sense. The Court also applied the principle from the Full Bench decision of the Bombay High Court in Mohd. Riyazur Rehman Siddhiqui v. Deputy Director of Health Services, (2008) 6 Mh.L.J. 941and in Gangawani and Co., Nagpur v. Saraswati Banewar & Ors., (2001) 3 Mh.L.J. 6, that Section 100-A bars an intra-court appeal from the decision of a Single Judge on a statutory appeal against the order of a body that either is not a court or does have the trappings of a civil court.
  6. Finally the Court concluded that in view of the bar of Section 100-A of the Code of Civil Procedure, the present Commercial Appeal filed under Section 13 of the Commercial Courts Act, 2015 was not maintainable. The appeal was accordingly dismissed, with easy costs.

STATUTORY PROVISIONS INVOLVED

Section 117A of the Patents Act, 1970 provides for appeals to the High Court from decisions, orders or directions of the Controller or the Central Government under the sections specifically enumerated in sub-section (2), including Section 15 (refusal of patent application). Every appeal must be filed within three months from the date of the decision. This provision was the gateway through which the appellants approached the learned Single Judge to challenge the refusal of their patent application. The Court held that the Single Judge, in entertaining the petition under this section, exercised appellate jurisdiction as a Commercial Division of the High Courtand not original jurisdiction.

Section 13(1-A) of the Commercial Courts Act, 2015 provides that any person aggrieved by the judgment or order of a Commercial Division of a High Court may appeal to the Commercial Appellate Division of that High Court within sixty days. The proviso to this sub-section restricts appeals from “orders” to those specifically enumerated under Order XLIII of the Code of Civil Procedure and Section 37 of the Arbitration and Conciliation Act, 1996. Sub-section (2) provides that no appeal shall lie from any order or decree of a Commercial Division or Commercial Court otherwise than in accordance with the provisions of this Act, notwithstanding anything contained in any other law or the Letters Patent of a High Court. The Court held that the decision of the Single Judge, being a “judgment” and not merely an “order,” is not restricted by the proviso   but the appeal is barred by Section 100-A of the Code of Civil Procedure.

Section 100-A of the Code of Civil Procedure, 1908 provides that notwithstanding anything contained in any Letters Patent for any High Court or in any instrument having the force of law or in any other law for the time being in force, where any appeal from an original or appellate decree or order is heard and decided by a Single Judge of a High Court, no further appeal shall lie from the judgment and decree of such Single Judge. The Court held this provision to be fully applicable to the present Commercial Appeal, since the learned Single Judge had decided an appeal from the order of the Controller of Patents   an authority having the trappings of a civil court   and Section 100-A therefore operates as a complete bar to any further intra-court appeal.

Section 77 of the Patents Act, 1970 confers on the Controller the powers of a civil court while trying a suit under the Code of Civil Procedure, 1908, including powers relating to summoning and enforcing attendance of witnesses, requiring discovery and production of documents, receiving evidence on affidavit, issuing commissionsand awarding costs. Sub-section (2) provides that any order for costs awarded by the Controller under this power shall be executable as a decree of a civil court. The Court found these provisions significant in determining that the Controller has the trappings of a civil court, distinguishing the Controller’s role under the Patents Act from that of the Registrar under the Trade Marks Act, 1999.

Section 16 of the Commercial Courts Act, 2015 specifies amendments to the Code of Civil Procedure, 1908 in its application to commercial disputes and clarifies in sub-section (2) that the Commercial Division shall follow the provisions of the Code as amended by the Act in the trial of a suit in respect of a commercial dispute. The Court held that the amendments effected by this provision are limited to the trial of commercial suits and do not exclude the applicability of other provisions of the Code, including Section 100-A, to appellate or other proceedings.

Section 21 of the Commercial Courts Act, 2015 gives the Act an overriding effect over anything inconsistent contained in any other law for the time being in force. The Court held that since Section 100-A of the Code of Civil Procedure is not inconsistent with the Commercial Courts Act   the Act not expressly excluding its application   Section 21 does not exclude the operation of Section 100-A.

REASONING OF THE COURT

The Court’s reasoning proceeded in three sequential stages, each building upon the preceding one.

  1. The first stage concerned the character of the proceedings entertained by the learned Single Judge. The Court began by firmly rejecting the appellants’ characterisation of those proceedings as original proceedings. Section 117A of the Patents Act provides an avenue of appeal to the High Court against decisions of the Controller. When such an appeal, involving a commercial dispute, is entertained by the Commercial Division of the High Court, it is received in the form in which it comes   that is, as an appeal and not as a first instance proceeding. The Court found support for this understanding in Section 12 of the Commercial Courts Act, which expressly refers to “Suit, Appeal or Application” in determining specified value, indicating that the Commercial Division’s jurisdiction is not confined to first instance suits and applications alone.
  2. The second stage concerned the character of the decision of the learned Single Judge as a “judgment” rather than an “order” for the purposes of Section 13(1-A). The Court, following the Supreme Court’s interpretation of Section 13(1-A) in MITC Rolling Private Limited, held that the proviso to Section 13(1-A) operates only to restrict interlocutory “orders” to those enumerated under Order XLIII of the Code and Section 37 of the Arbitration and Conciliation Actand does not qualify the main provision’s reference to “judgments.” Since the learned Single Judge’s decision finally disposed of the appeal and conclusively determined the rights of the parties, it constitutes a “judgment” within the meaning of Section 2(9) of the Code and falls outside the restricting reach of the proviso. On this basis alone, the appeal under Section 13(1-A) would have been maintainable   had it not been for the bar under Section 100-A.
  3. The third and decisive stage was the Court’s analysis of Section 100-A. The Court found that the Code of Civil Procedure continues to apply to all proceedings under the Commercial Courts Act other than the trial of commercial suits, since Section 16 limits its modifications of the Code only to such trials. Section 100-A therefore remains fully operative. The key question was whether the appellants’ submission that Section 100-A does not apply because the Controller of Patents is not a “civil court” within the meaning of Section 2(14) of the Code was correct. The Court rejected this submission. It traced the evolution of the test through a series of Supreme Court decisions and concluded that Section 100-A bars further appeals not only where the first appeal was from a “decree or order” of a civil court in the strict technical sense, but also where the authority whose order is the subject of the first appeal has the “trappings of a civil court.” The Court then examined the position of the Controller of Patents in the scheme of the Patents Act in considerable detail and, in express disagreement with the Delhi High Court’s view in Promoshirt regarding the Registrar of Trade Marks, held that the Controller of Patents possesses far more extensive quasi-judicial powers, has the trappings of a civil courtand that his decisions carry sufficient judicial character to attract the Section 100-A bar. The purpose of Section 100-A   as articulated by the Supreme Court in Mohd. Saud   is to reduce the number of appeals and prevent the anomaly where a final judgment of the first court may be appealed only once but an interlocutory order may be appealed twice, once to the Single Judge and again to the Division Bench. Giving effect to this legislative purpose, the Court held that the bar under Section 100-A operatesand the Commercial Appeal is not maintainable.

DOCTRINAL SIGNIFICANCE

This judgment makes a significant contribution to the procedural law governing patent appeals in India, addressing for the first time before the Bombay High Court the question of whether a second intra-court appeal lies against a judgment of a Single Judge who has decided a first appeal under Section 117A of the Patents Act before the Commercial Division of the High Court.

The most important contribution of the judgment is its clear holding that no second intra-court appeal lies in such cases by virtue of the bar under Section 100-A of the Code of Civil Procedure, 1908. This resolves an uncertainty that had arisen following the abolition of the Intellectual Property Appellate Board by the Tribunals Reforms Act, 2021, which transferred appellate jurisdiction from the IPAB to the High Courts under Section 117A. The judgment thus definitively determines the appellate architecture for patent matters: the first appeal from the Controller’s decision lies before the Single Judge of the High Court as a Commercial Division under Section 117A of the Patents Actand that judgment of the Single Judge is final   no further intra-court appeal to the Commercial Appellate Division under Section 13 of the Commercial Courts Act, 2015 is available.

The judgment also makes an important doctrinal contribution by holding, in express disagreement with the Delhi High Court’s reasoning in Promoshirt SM SA regarding the Registrar of Trade Marks, that the Controller of Patents under the Patents Act, 1970 possesses the trappings of a civil court. The Court found the extensive quasi-judicial powers of the Controller   including powers of examination, evidence, cross-examinationand the enforceability of cost orders as decrees   to be materially more significant than those of the Registrar of Trade Marksand concluded that the distinction justifies a different result under Section 100-A. This creates a potential doctrinal divergence between the Bombay High Court and the Delhi High Court on the scope of Section 100-A as applied to intellectual property authorities, which may need eventual resolution by the Supreme Court.

The judgment further clarifies the scope of Section 13(1-A) of the Commercial Courts Act, 2015 in the patent context: the proviso restricts only interlocutory “orders” and does not curtail the main provision in respect of final “judgments.” A judgment of the Single Judge in a Section 117A appeal would ordinarily fall within the main provision of Section 13(1-A)   but is barred by Section 100-A. This sequential analytical framework   first examining whether the appeal lies under Section 13(1-A) and then examining whether Section 100-A bars it   is an important methodological contribution.

The judgment also confirms that the Commercial Courts Act, 2015 does not displace the Code of Civil Procedure in its entirety: its modifications under Section 16 are limited to the trial of commercial suitsand all other provisions of the Code, including Section 100-A, continue to apply to appellate and other proceedings before Commercial Divisions and Commercial Appellate Divisions.

The judgment must be read as a ruling confined entirely to the question of maintainability. The Court expressly refrained from examining the merits of the challenge to the order of the Assistant Controller of Patent and Designsand all questions on merits   including the correctness of the findings under Sections 25(1)(b) and 25(1)(e)   remain entirely open.

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