Delhi District Court
Narendra Srivastava vs Ashok Chaturvedi on 27 October, 2014
IN THE COURT OF SHRI LALIT KUMAR: ADDITIONAL
DISTRICT JUDGE 01 SOUTH EAST DISTRICT,
SAKET COURTS, NEW DELHI
C.S. No. 341/13
Narendra Srivastava Versus Ashok Chaturvedi
O R D E R
1. By this order, I shall dispose of an application under Order 1 Rule 10 CPC made on behalf of the defendant no.1 to delete defendant no.1 from the array of parties.
2. It is stated in the application that the applicant / defendant no.1 is only the applicant of the patent application in question and no specific allegation of groundless threat has been made against the defendant no.1. The applicant had already transferred all his rights in the said patent application to defendant no.2 vide assignment agreement before the institution of the present case. The defendant no.3 is the authorized representative of the defendant no.2 with respect to the patent CS 341/13 Narendra Srivastava Vs. Ashok Caturvedi 1 of 9 application. The applicant does not reside within the jurisdiction of this court and the applicant's address has been wrongly stated to create jurisdiction.
3. It is further submitted that the plaintiff has made only one specific allegation of alleged groundless threat in the whole plaint. The said allegation is of the registration of an FIR against the plaintiff. In the said FIR, the complainant is the defendant no.3 and the applicant / defendant no.1 has no role to play in the registration of the said FIR. In any event, no relief has been prayed for against the defendant no.1. The plaintiff has not made any other allegation of groundless threat in the whole plaint. The defendant no.1 deserves to be struck out from the plaint as there is no allegation against the defendant no.1` and no relief has been prayed for against the defendant no.1. The joining of the defendant no.1 as a party in the captioned case is a clear misjoinder of party as no relief has been prayed for against the defendant no.1 and it is prayed that after the defendant no.1 assigned all his rights in favour of the defendant no.2, there is no CS 341/13 Narendra Srivastava Vs. Ashok Caturvedi 2 of 9 reason for the defendant no.1 to threaten to institute infringement proceedings against the plaintiff. The defendant no.3 is the authorised representative of defendant no.2 with respect to the patent application in question.
4. The application is contested by the plaintiff by way of a written reply wherein it is stated that the application is the abuse of process of the court and it is the delaying tactics adopted by the defendant no.1 to derail the proceedings and thereby harass the plaintiff. It is submitted that the grounds taken in the said application are alleged to be vague and an effort to misguide this court. The claim that was made by defendant no.2 and 3 is derived from the patent application filed by defendant no.1 who is further director of the defendant no.2 company. It is submitted that the patent cannot be transferred unless and until it gets registered and as per the application filed by the defendant no.1, before the trade mark registry, the address of the defendant no.1 is showing as "Mr. Ashok Chaturvedi, 305, 3rd Floor, Bhanot Corner, Pamposh Enclave, CS 341/13 Narendra Srivastava Vs. Ashok Caturvedi 3 of 9 GK1, New Delhi 110048" which falls within the jurisdiction of this court and the defendant no.1 is necessary party to try this suit as entire case revolved around the patent application filed by defendant no.1.
In support of his arguments, Ld. Counsel for the defendant has relied upon case law Halsey Vs. Brotherhood (1879 H. 111)Chancery Division (Vol. XIX).
5. I have heard Ld. Counsel for the parties and gone through the material on record carefully.
6. It is pertinent to mention that the proceedings in the present suit has been initiated by the plaintiff under Section 106 of the Patent Act, 1970 for the groundless threat caused to plaintiff as alleged against the defendants. The defendant no.1 had applied for a patent under title "High Speed Continuous Motion Apparatus for pouch / sachet forming" on 07.12.2011 under application no. 3535/DEL/2011 and said application is pending for registration and even the process of examination of the claim has not yet been completed. The aforesaid application CS 341/13 Narendra Srivastava Vs. Ashok Caturvedi 4 of 9 was published under Section 11A of Patent Act, 1970 on 29.06.2012 as the first step and consequent to above various oppositions were filed as pre grant opposition. However, on the basis of above application, the defendants are claiming to be Patentee and causing groundless threat to the plaintiff.
7. It is seen that admittedly the patent application filed by the defendants is yet to be considered and the defendants are representing themselves to be the patent holders. The Patent Act, 1970 and the criminal law operates in different fields and it is a established law that the civil and criminal remedy or disputes are separate and go side by side, subject to the provisions of the law. Where there is concomitant of criminal element, the criminal action is possible otherwise no criminal action can be initiated. It is further seen that there is specific averment against the defendant no.1 and the prayer clause seeks the relief against defendant no.1 as well. The entire case is based upon the patent application in the name of defendant no.1.
8. The arguments raised before this court by the CS 341/13 Narendra Srivastava Vs. Ashok Caturvedi 5 of 9 defendant no.1 is that he has now nothing to do with the present litigation as plaintiff has not claimed any relief against defendant no.1. Moreover, defendant no.1 had already assigned his rights with regard to the patent to defendant no.2 even before the institution of the present suit.
9. It is argued by learned Counsel for plaintiff on the first part of the arguments of defendant no.1 that plaintiff has sought relief against all the defendants. I have gone through the prayer clause and seen that plaintiff has requested for restrainment against all the defendants irrespective of their numbers in the suit. It is seen that the claim that was made by defendant no.2 and 3 is derived from the patent application filed by defendant no.1 who is further director of the defendant no.2 Company. It is further seen that the patent cannot be transferred unless and until it gets registered. Further as per the application filed by the defendant no.1 before the trade mark registry, the address of the defendant no.1 is showing as "Mr. Ashok Chaturvedi, 305, 3rd Floor, Bhanot Corner, Pamposh Enclave, CS 341/13 Narendra Srivastava Vs. Ashok Caturvedi 6 of 9 GK1, New Delhi 110048", hence defendant no.1 is necessary party to try this suit.
10. On the second aspect of arguments of defendant no.1 learned counsel for plaintiff submitted that assignment of patent rights before its grant is barred under Act as conjoint reading of Sections 68 and 69 of the Patent Act shows that an applicant of patent for entering into an agreement to assign an invention for a patent during the pendency of his application or assignment of the rights to apply for patent does not amount to assignment of any patent which might have obtained by virtue of his invention. It is further seen that the defendant no.1 is an applicant for patent bearing No. 3535/DEL/2011applied on 07.12.2011 with the controller of patents. There cannot be any assignment, meaning thereby registration of patent is the condition precedent to get the patent transfered to someone else. Admittedly the right under application to patent can be transferred but the transfer of patent cannot take place unless it is registered. It is further seen that in the present matter the application to patent CS 341/13 Narendra Srivastava Vs. Ashok Caturvedi 7 of 9 is yet to be registered and hence question for assignment of the same does not arise at all. Further in case Gillette Safety Razor Co. Ltd. Vs. A.W. Gamage Ltd. (1908)25 RPC 492 at 499 an agreement to assign an invention by an applicant for a patent during the pendency of his application, or an assignment of the right to apply for patent does not amount to assignment of any patent which he might obtain by virtue of his invention as discussion in case.
So far as judgment Halsey Vs. Brotherhood (1879 H. 111)Chancery Division (Vol. XIX) relied upon by Ld. Counsel for the defendants is concern, it is distinguished from the facts and circumstances of the present case as in that case the patent has been granted whereas in the case in hand the application for grant of patent is pending and no help to the defendants.
11. In view of above discussion, since the defendant no.2 and 3 derived their claim from the patent application filed by defendant no.1 who is director of the defendant no.2 company. Further as per the application filed by the defendant no.1 before CS 341/13 Narendra Srivastava Vs. Ashok Caturvedi 8 of 9 the trade mark registry, the address of the defendant no.1 is showing as "Mr. Ashok Chaturvedi, 305, 3rd Floor, Bhanot Corner, Pamposh Enclave, GK1, New Delhi 110048", hence defendant no.1 is necessary party to try this suit which is within the jurisdiction of this court. Therefore, I do not find any merit in the application under Order 1 Rule 10 CPC moved on behalf of defendant no.1, same is accordingly dismissed being devoid of merit.
Announced in the open (LALIT KUMAR) court on 27.10.2014. Additional District Judge 01(SE), Saket Courts, New Delhi.
(This order contains 9 pages and each page bears my signatures) CS 341/13 Narendra Srivastava Vs. Ashok Caturvedi 9 of 9