Full Judgment Text
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PETITIONER:
BISWANATH PRASAD RADHEY SHYAM
Vs.
RESPONDENT:
HINDUSTAN METAL INDUSTRIES
DATE OF JUDGMENT13/12/1978
BENCH:
ACT:
Indian Patent and Designs Act, 1911-Patent law, object,
fundamental principle-Utility of invention, whether
necessary-Patentable improvement, requirements-Novelty and
inventive step test of-Grant of patent, whether guarantees
validity-Specification, how to be construed.
HEADNOTE:
The appellant and the respondent, are both firms
carrying on the business of manufacturing utensils at
Mirzapur. In 1951 one of the partners of the respondent firm
claimed to have invented a device and method for
manufacturing utensils, introducing improvement,
convenience, speed, safety and better finish, in the old
prevalent method which was fraught with risk to the workers,
inasmuch as the utensils used to fly off from the headstock,
during the manufacturing process. The respondent filed the
necessary specifications and claims, in the patent office,
and got the alleged invention patented under the Indian
Patent and Designs Act, 1911, with effect from December, 13,
1951, as assignee of the patent, and acquired the sole and
exclusive right of using this method and means for
manufacturing utensils. In September 1952, the respondent
learning that the appellant firm was using the patented
method, served a notice upon it, asking for desistance from
the infringement of its patent, but the appellant continued
to use the patented method. The respondent then filed a suit
for permanent injunction restraining the appellant adopting,
imitating, employing or in any manner infringing the device
of its patent. The appellant resisted the suit, filed a
counter-claim and a separate petition under s. 26 of the
Act, for revocation of the patent, contending that neither
was the respondent’s alleged invention a manner of new
manufacture or improvement, nor did it involve any inventive
step or novelty, having regard to what was known or used
prior to the patent. The respondent’s suit and the
appellant’s counter-claim were transferred to the High Court
under s. 29 (proviso). Both the suits were consolidated and
tried together by a single Judge who dismissed the suit for
injunction and allowed the petition for revocation of the
patent, issued to the respondent. In appeal, a Division
Bench of the High Court reversed the earlier judgment, and
set aside the decree.
Allowing the appeals, the Court.
^
HELD : 1. The object of patent law is to encourage
scientific research, new technology and industrial progress.
The price of the grant of the monopoly is the disclosure of
the invention at the Patent Office, which, after the expiry
of the fixed period of the monopoly, passes into the public
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domain. [763 C-D].
2. The fundamental principle of Patent law is that a
patent is granted only for an invention which must have
novelty and utility. It is essential for the validity of a
patent that it must be the inventor’s own discovery as
opposed to mere verification of what was, already known
before the date of the patent. [763 D-E].
758
3. The Act of 1911, does not specify the requirement of
being, useful, in the definition of ‘invention’, but courts
have always taken the view that a patentable invention,
apart from being a new manufacture, must also be useful. The
foundation for this judicial interpretation, is to be found
in the fact that s. 26(1)(f) of the Act recognises lack of
utility as one of the grounds on which a patent can be
revoked [763 E-F].
4. In order to be patentable, an improvement on
something known before or a combination of different matters
already known, should be something more than a mere workshop
‘improvement, and must independently satisfy the test of
invention or an inventive step. It must produce a new
result, or a new article or a better or cheaper article than
before. The new subject matter must involve "invention" over
what is old. Mere collocation of more than one, integers or
things, not involving the exercise of any inventive faculty
does not qualify for the grant of a patent. [763 H, 764 A-
B].
Rickman v. Thierry, [1896] 14 Pat. Ca. 105; Blackey v.
Latham, [1888] 6 Pat. Ca. 184; and Encyclopadeia Britannica,
Vol. 17 page 453; applied.
5. To decide whether an alleged invention involves
novelty and an inventive step, certain broad criteria can be
indicated. Firstly if the "manner of manufacture" patented,
was publicly known, used or practised in the country before
or at the date of the patent, it will negative novelty or
‘subject matter’. Prior public knowledge of the alleged
invention can be by word of mouth or by publication through
books or other media. Secondly, the alleged discovery must
not be the obvious or natural suggestion of what was
previously known. [765 A-B, E].
Humplherson v. Syer, 4RPC 407; and Rado v. John Tye &
Sons Ltd., 1967 RPC 297; applied.
Halsbury 3rd Edn. Vol. 29, p. 42 and Farbwerke Hoechst
JUDGMENT:
referred to.
6. The grant and sealing of the patent, or the decision
rendered by the Controller in the case of opposition, does
not guarantee the validity of the patent, which can be
challenged before the High Court on various grounds in
revocation or infringement proceedings. This is now
expressly provided in s. 13 (4) of the Patents Act, 1970.
[767 G-H, 768 A].
7. The proper way to construe a specification is, to
first read the description of the invention, and then see
the claims. For, a patentee cannot claim more than he
desires to patent. [772 E].
Arnold v. Bradbury, [1871] 6 Ch. A. 706; applied.
Parkinson v. Simon, [1894] 11 RPC 483; referred to.
8. The invention got patented by M/s. Hindustan Metal
Industries, was neither a manner of new manufacture, nor a
distinctive improvement on the old contrivance involving any
novelty or inventive step having regard to what was already
known and practised in the country for a long time before
1951. It is merely an application of an old invention, with
a slight change in the mode of application, which is no more
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than a ‘workshop improvement’. [770 D-E, 774 F].
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Harwood v. Great Northern, Ry. Co., [1864-65] XI HLC
654 applied.
&
CIVIL APPELLATE JURISDICTION : Civil Appeal Nos. 1630-
1631 of 1969.
Appeal from the Judgment and Decree dated 18-1-1966 of
the Allahabad High Court in Special Appeals Nos. 128/57 and
191/57.
K. B. Asthana and M. V. Goswami for the Appellant.
S. K. Mehta and P. N. Puri for the Respondent.
The Judgment of the Court was delivered by
SARKARIA, J.-These two appeals on certificate arise out
of a common judgment and decree, dated January 18, 1966, of
a Division Bench of the High Court of Allahabad. The facts
material to these appeals may be set out as under :
M/s. Hindustan Metal Industries, respondent herein,
(hereinafter called the plaintiff) is a registered
partnership firm carrying on the business of manufacturing
brass and German silver utensils at Mirzapur. M/s. Biswanath
Prasad Radhey Shyam, appellant herein, (hereinafter called
the defendant) is a concern carrying on the business of
manufacturing dishes and utensils in Mirzapur.
On August 8, 1953, the plaintiff instituted a suit for
injunction and damages, preceded by a notice, served on the
defendant on September 9, 1952, in the Court of the District
Judge, Allahabad, within whose jurisdiction Mirzapur is
situated, with these allegations:
The old method of manufacturing utensils, particularly
shallow dishes, was to turn scrap and polish them on some
sort of headstock without a tailstock, the utensils either
being fixed to the headstock by thermoplastic cement or held
in the jaws of a chuck fixed to the headstock. This system
was, however, fraught with risk to the workers inasmuch as
the utensils used to fly off from the headstock.
Consequently with a view to introduce improvement,
convenience speed, safety and better finish, Purshottam
Dass, one of the partners of the plaintiff-firm, invented a
device and method for the manufacture of utensils, in 1951.
The plaintiff after filing the necessary specifications and
claims in the Patent Office, got the alleged invention
patented under the Indian Patent and Designs Act, 1911
(hereinafter called the Act), at No. 46368-51 on May 6, 1953
with effect from December 13, 1951 as assignee of the said
patent. By virtue of this patent, the plaintiff acquired the
sole and exclusive right of using this method and means for
the manufacture of utensils. In September 1952, the
plaintiff learnt that the defendant was using and employing
the device and method
760
of manufacturing of dishes under the former’s patent. The
plaintiff served a notice upon the defendant asking him to
desist from infringing the plaintiff’s patent, but the
defendant continued to infringe the patent.
On the preceding facts, the plaintiff prayed for a
permanent injunction restraining the defendant from
adopting, imitating, employing or in any manner infringing
the device of the plaintiff’s patent. The plaintiff further
prayed for a mandatory injunction requiring the defendant to
destroy the articles used for the infringement of his
patent. The plaintiff further claimed a decree for Rs.
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3,000/- as damages.
The defendant resisted the suit on various grounds, out
of those which are material for the decision of these
appeals are : that the defendant’s firm is an old concern
carrying on the manufacture of metal wares since long; that
the method covered by the plaintiff’s patent, namely, that
of a lathe (headstock, adapter and tailstock) has been known
and openly and commonly in use in the commercial world all
over the country for several decades before the plaintiff’s
patent; that the alleged invention of the plaintiff was not
on the date of the patent, a manner of new manufacture or
improvement, nor did it involve any inventive step or
ingenuity having regard to what was known or used prior to
the date of the patent; and that the patent has no utility
and therefore it was liable to be revoked.
The defendant also filed a counter-claim, praying for
revocation of the patent on the same grounds which he had
set out in the written statement.
On October 13, 1953, the defendant along with three
other business concerns, filed a petition under Section 26
of the Act for revocation of the patent that had been
granted to M/s. Hindustan Metal Industries, Mirzapur on the
same grounds which were raised in his counter-claim in the
suit for injunction and damages.
The plaintiff’s suit along with the counter-claim of
the defendant, was transferred to the High Court under
Section 29 (Proviso) of the Act. Both the suits were
consolidated and tried together by a learned Single Judge
(V. G. Dak, J). Issues were framed and evidence were led by
the parties. The findings, material for our purpose, of the
learned trial Judge, are :
(i) The patent does not involve any inventive step
having regard to what was known or used prior to the patent.
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(ii) The work of turning or scraping utensils of
various designs has been going on at Mirzapur and other
places for many years before 1951. The changes introduced by
the patentee in Ex. CC are of a minor nature. The alleged
invention was not on the date of the patent, a manner of new
manufacture or improvement. It did not involve any novelty.
(iii) The defendant had publicly manufactured goods
before the date of the patent substantially according to the
method claimed by the patentee as its invention.
(iv) The alleged invention has got utility.
(v) The patent obtained by the plaintiff was liable to
be revoked and the plaintiff was not entitled to any
damages.
In the result, the learned Judge dismissed the
plaintiff’s suit (No. 3 of 1955), but allowed the petition
for revocation (in suit No. 2 of 1954) with costs; and
revoked the Patent (No. 46368-51) that had been issued to
the plaintiff.
Aggrieved, the plaintiff preferred two Special Appeals
to a Division Bench of the High Court. The appellate Bench
held as under:
"(1) That, formerly, plates and dishes were
attached to an adapter on the headstock by
means of an adhesive like lac or shellac and,
in turning the plates or dishes, they used to
fly off, causing injuries to the workmen.
(2) That on account of the risk involved in the
process, the work of manufacturing plates and
dishes was suspended for about 5 or 6 years
at Mirzapur.
(3) That, in 1951, the plaintiff invented the
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method of mounting which has been patented.
(4) That, immediately after this, the work of
manufacturing plates and dishes restarted at
Mirzapur and was carried on with success.
(5) That lathes have been well known for a long
time and they consist essentially of a
headstock and a tailstock which are used for
holding the article to be worked upon.
(6) That the known uses, to which a tailstock has
been put, were centering the article, holding
along work by a pointed tailstock by pivoting
it and holding an article in metal spinning
by the pressure of a pad attached the
tailstock.
762
(7) That the method of holding an article by the
pressure of a point of a pointed tailstock
was neither used nor known."
On these findings, the Appellate Bench concluded : "In
our opinion, the method of mounting patented by the
appellant did involve an inventive step and was a manner of
new manufacture and improvement". In the result, it allowed
the appeals, set aside the judgment and decree of the
learned trial Judge and decreed the plaintiff’s suit with
costs.
Hence, these appeals.
Mr. Asthana, learned counsel for the appellant, has
canvassed these points:
(i) The method and means claimed by the respondent in
Patent No. 46368-51 did not involve any inventive step or
novelty.
(ii) The Appellate Bench of the High Court was in error
in holding that the supporting of an article in a lathe by
the pressure of the point of a pointed tailstock constituted
the novelty of the invention, inasmuch as it overlooked the
fact that the scope of the patented invention in the
"claims" in the complete specification does not contain an
assertion of novelty of the pointed tailstock, but rather it
specifically says that the pressure spindle may be pointed
or blunt".
(iii) The Division Bench of the High Court having held
that a tailstock was used for holding the article to be
worked upon and that if a pointed tailstock was used always
for a very long time prior to the patent for holding an
article in metal spinning by pressure, contradicted itself
in concluding that holding an article by the pressure of a
pointed tailstock was neither used nor known. The High Court
thus made out a new case for the paintiff, which had not
been alleged either in the specifications in the subject of
the patent or in the pleading.
(iv) The alleged inventor, Purshottam Dass, though he
attended the Court on some dates of hearing, did not dare to
appear in the witness-box, nor was he called as a witness in
the case by the plaintiff to explain in what way, if at all,
the method and means patented by the plaintiff was a novelty
or involved an inventive step. The failure to examine
Purshottam Dass who was a partner of the plaintiff-firm,
would give rise to an inference adverse to the plaintiff.
As against this, Mr. Mehta, appearing for the
respondent, submits that whether the process got patented by
the respondent involves a method of new manufacture or
improvement, is one purely of fact,
763
and should not, as a matter of practice, be disturbed by
this Court. Even in cases of doubt-proceeds the argument-the
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Court should uphold the parent. It is submitted that a
patent is granted by the Controller after due inquiry and
publication and, unless the contrary is proved, should be
presumed to have been duly granted. In the instant case, it
is urged, that presumption is stronger because the trial
Judge as well as the Appellate Bench of the High Court have
concurrently held that the process patented had utility.
Before dealing with these contentions let us have a
general idea of the object, the relevant provisions and the
scheme of the Act.
The object of Patent Law is to encourage scientific
research, new technology and industrial progress. Grant of
exclusive privilege to own, use or sell the method or the
product patented for a limited period, stimulates new
inventions of commercial utility. The price of the grant of
the monopoly is the disclosure of the invention at the
Patent Office, which after the expiry of the fixed period of
the monopoly, passes into the public domain.
The fundamental principle of Patent Law is that a
patent is granted only for an invention which must be new
and useful. That is to say, it must have novelty and
utility. It is essential for the validity of a patent that
it must be the inventor’s own discovery as opposed to mere
verification of what was, already known before the date of
the patent.
"’Invention’ means any manner of new manufacture and
includes an improvement and an allied invention". [Section
2(8) of 1911 Act]. It is to be noted that unlike the Patents
Act 1970, the Act of 1911 does not specify the requirement
of being useful in the definition of ’invention’. But Courts
have always taken the view that a patentable invention,
apart from being a new manufacture, must also be useful. The
foundation for this judicial interpretation is to be found
in the fact that Section 26(1) (f) of the 1911 Act
recognises lack of utility as one of the grounds on which a
patent can be revoked.
’Manufacture’ according to the definition of the term
in Section 2(11) of the Act, includes not only "any art,
process or manner of providing, preparing or making an
article" but also "any article prepared or produced by the
manufacture".
It is important to bear in mind that in order to be
patentable an improvement on something known before or a
combination of different matters already known, should be
something more than a mere workshop improvement; and must
independently satisfy the test of invention
764
or an ’inventive step’. To be patentable the improvement or
the combination must produce a new result, or a new article
or a better or cheaper article than before. The combination
of old known integers may be so combined that by their
working inter relation they produce a new process or
improved result. Mere collocation of more than one integers
or things, not involving the exercise of any inventive
faculty, does not qualify for the grant of a patent. ’It is
not enough’, said Lord Davey in Rickmann v. Thierry (1896)
14 Pat. Ca. 105 ’that the purpose is new or that there is
novelty in the application, so that the article produced is
in that sense new, but there must be novelty in the mode of
application. By that, I understand that in adopting the old
contrivance to the new purpose, there must be difficulties
to be overcome, requiring what is called invention, or there
must be some ingenuity in the mode of making the adoption’.
As Cotton L. J. put in Blackey v. Latham (1888) 6 Pat. Ca.
184, to be new in the patent sense, the novelty must show
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invention". In other words, in order to be patentable, the
new subject matter must involve ’invention’ over what is
old. Determination of this question, which in reality is a
crucial test, has been one of the most difficult aspects of
Patent Law, and has led to considerable conflict of judicial
opinion.
This aspect of the law relating to patentable
inventions, as prevailing in Britain, has been neatly summed
up in Encyclopaedia Britannica, Vol. 17, page 453. Since in
India, also, the law on the subject is substantially the
same, it will be profitable to extract the same hereunder:
"A patent can be granted only for ’manner of new
manufacture’ and although an invention may be ’new’ and
relate to a ’manner of manufacture’ it is not necessarily a
’manner of new manufacture’-it may be only a normal
development of an existing manufacture. It is a necessary
qualification of a craftsman that he should have the
knowledge and ability to vary his methods to meet the task
before him-a tailor must cut his cloth to suit the fashion
of the day-and any monopoly that would interfere with the
craftsman’s use of his skill and knowledge would be
intolerable.
"A patentable invention, therefore, must involve
something which is outside the probable capacity of a
craftsman-which is expressed by saying it must have ’subject
matter’ or involve an ’inventive step’. Novelty and subject
matter are obviously closely allied.... Although these
issues must be pleaded separately, both are invariably
raised by a defendant, and in fact ’subject matter’ is the
crucial test, for which they may well be novelty not
involving an ’inventive step’, it is hard to conceive how
there can be an ’inventive step’ without novelty."
765
Whether an alleged invention involves novelty and an
’inventive step’, is a mixed question of law and fact,
depending largely on the circumstances of the case. Although
no absolute test uniformly applicable in all circumstances
can be devised, certain broad criteria can be indicated.
Whether the "manner of manufacture" patented, was publicly
known, used and practised in the country before or at the
date of the patent ? If the answer to this question is
’yes’, it will negative novelty or ’subject matter’. Prior
public knowledge of the alleged invention which would
disqualify the grant of a patent can be by word of mouth or
by publication through books or other media. "If the public
once becomes possessed of an invention", says Hindmarch on
Patents (quoted with approval by Fry L. J. in Humpherson v.
Syer, "by any means whatsoever, no subsequent patent for it
can be granted either to the true or first inventor himself
or any other person; for the public cannot be deprived of
the right to use the invention........ the public already
possessing everything that he could give."
The expression "does not involve any inventive step"
used in Section 26(1) (a) of the Act and its equivalent word
"obvious", have acquired special significance in the
terminology of Patent Law. The ’obviousness’ has to be
strictly and objectively judged. For this determination
several forms of the question have been suggested. The one
suggested by Salmond L. J. in Rado v. John Tye & Son Ltd. is
apposite. It is: "Whether the alleged discovery lies so much
out of the Track of what was known before as not naturally
to suggest itself to a person thinking on the subject, it
must not be the obvious or natural suggestion of what was
previously known."
Another test of whether a document is a publication
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which would negative existence of novelty or an "inventive
step" is suggested, as under:
"Had the document been placed in the hands of a
competent craftsman (or engineer as distinguished from a
mere artisan), endowed with the common general knowledge at
the ’priority date’, who was faced with the problem solved
by the patentee but without knowledge of the patented
invention, would he have said, "this gives me what I want?"
(Encyclopaedia Britannica; ibid). To put it in another form:
"Was it for practical purposes obvious to a skilled worker,
in the field concerned, in the state of knowledge existing
at the date of the patent to be found in the literature then
available to him, that he
766
would or should make the invention the subject of the claim
concerned ?" Halsbury, 3rd Edn, Vol. 29, p. 42 referred to
by Vimadalal J. of Bombay High Court in Farbwrke Hoechst &
B. Corporation v. Untchan Laboratories.
With the aforesaid prefatory survey, we now turn to the
1911 Act. The Act provides various checks to prevent an
invalid patent being granted which does not involve any
inventive step or a manner of new manufacture or
improvement. The procedure for obtaining an exclusive
privilege under this Act (before the Amending Act 39 of
1970), may be described as below:
The true and first inventor or his legal representative
or assignee submits an application in the prescribed form
and manner to the Patent Office. The application must
contain a declaration to the effect that the application is
in possession of an invention, for which he desires to
obtain a patent. Such an application must be accompanied,
inter alia, by either a provisional or complete
specification. A provisional specification must prescribe
the nature of the invention. A complete specification must
particularly describe and ascertain the nature of the
invention and the manner in which the same is to be
performed. A specification whether provisional or complete,
must commence with the title, and in case of a complete
specification must and with a distinct statement of the
invention claimed. (Sec. 4)
The Controller then considers that application and may
require the applicant to supply suitable drawings and such
drawings shall be deemed to form part of the complete
specification. If a complete specification is not left with
the application, the applicant may leave it at any
subsequent time within 9 months from the date of the
application. The application is then examined by the
Controller of Patents for the patentability of the
invention. The Controller then makes a thorough search among
his records for novelty. The Controller is bound to refer to
an Examiner an application, in respect of which a complete
specification has been filed. The Examiner then, after
careful and elaborate examination, submits his report to the
Controller, inter alia, as to whether or not--
(a) the nature of the invention or the manner in which
it is to be performed is particularly described and
ascertained in the complete specification;
(b) the application, specification and drawings have
been prepared in the prescribed manner;
767
(c) the title of the specification sufficiently
indicates the subject-matter of the invention;
(d) the statement of claim sufficiently defines the
invention;
(dd) the invention particularly described in the
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complete specification is substantially the same as that
which is described in the provisional specification;
(e) the invention as described and claimed is prima
facie a manner of new manufacture or improvement;
(f) the specification relates to more than one
invention;
(g) ................................
(h) .................................
If, on perusing the report, the Controller is not
satisfied with regard to any of the matters enumerated in
Clauses (a) to (h) of Section 5(1), he may refuse to accept
the application or require that the application,
specification or drawings be amended before he proceeds with
the application. If the Controller is satisfied with regard
to these matters and accepts the application, he shall give
notice thereof to the applicant and shall advertise the
acceptance; and the application and specification with the
drawings, if any, shall be open to public inspection. (Sec.
6)
Within four months from the date of the advertisement
of the acceptance of an application, any person may give
notice at the Patent Office of opposition to the grant of
the patent on any of the grounds mentioned in Clauses (a) to
(e) of sub-section (1) of Section 9, and on no other ground.
After hearing the applicant and the opponent, if
desirous of being heard, the Controller renders his
decision, which is appealable to the Central Government. If
there is no opposition, or if the determination is in favour
of the grant of the patent, the patent shall be granted and
sealed subject to such conditions as the Central Government
thinks it expedient.
It is noteworthy that the grant and sealing of the
patent, or the decision rendered by the Controller in the
case of opposition, does not guarantee the validity of the
patent, which can be challenged before the High Court on
various grounds in revocation or infringement proceedings.
It is pertinent to note that this position, viz. the
validity of a patent is not guaranteed by the grant, is now
expressly
768
provided in Section 13(4) of the Patents Act, 1970. In the
light of this principle, Mr. Mehta’s argument that there is
a presumption in favour of the validity of the patent,
cannot be accepted.
The term limited in every patent, for the duration
thereof, save as otherwise expressly provided by this Act,
is 16 years from its date.(Sec. 14) The term can be extended
if a petition is made to the Central Government in
accordance with Section 15.
Section 29(1) of the Act entitles a patentee to
institute a suit against any person who, during the
continuance of the plaintiff’s patent, infringes it. Sub-
section (2) of the Section provides that every ground on
which a patent may be revoked under Section 26 shall be
available by way of defence to a suit for infringement. The
material part of Section 26 reads as under:
"(1) Revocation of a patent in whole or in part
may be obtained on petition to or on a counter-claim in
a suit for infringement before a High Court on all or
any of the following grounds, namely:-
(a) that the invention has been the subject
of a valid prior grant of a patent in
India;
(b) that the true and first inventor or his
legal representative or assign was not
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of the applicant or one of the
applicants for the patent;
(c) that the patent was obtained in fraud of
the rights of the person applying for
the revocation or of any person under or
through whom he claims;
(d) that the invention was not, at the date
of the patent, a manner of new
manufacture or improvement;
(e) that the invention does not involve any
inventive step, having regard to what
was known or used prior to the date of
the patent;
(f) that the invention is of no utility;
(g) that the complete specification does not
sufficiently and fairly describe and
ascertain the nature of the invention
and the manner in which the invention is
to be performed;
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(h) that the complete specification does not
sufficiently and clearly ascertain the
scope of the invention claimed;
(i) that the patent was obtained on a false
suggestion or representation;
(j) to (n).........................."
The ground is now clear for dealing with the problem in
hand.
Although the defendant had both in his defence and in
the counterclaim for revocation of the patent pleaded six
grounds mentioned in Clauses (d), (e), (f), (g), (i) and (b)
of Section 26(1), yet, in this appeal before us the
controversy has narrowed down into two issues: (i) Whether
the patent was not at the date of the patent, a manner of
new manufacture or improvement; (ii) whether the invention
does not involve any inventive step, having regard to what
was known or used prior to the date of the patent ? At the
trial,, M/s. Biswanath Prasad Radhay Shyam had examined 9
witnesses to show that the method of manufacture described
in the patent has been publicly known and in use at Mirzapur
and elsewhere long before 1951. On the other hand, the
patentee firm, M/s. Hindustan Metal Industries, examined 4
witnesses to prove that the work of scraping and polishing
of utensils formerly done at Mirzapur, was on crude machines
and that the machine (Ex. CC) developed by the patentee is a
distinct improvement over the machines of the old type.
The learned trial Judge, after a careful appraisal of
the evidence produced by the parties, found that the
following facts have been established:
"(i) The manufacture of utensils is an old
industry at Mirzapur and at other places in
U.P. and in other parts of India;
(ii) lathe is a well-known mechanism used for
spinning and a number of other processes;
(iii)adapters were in use for holding turnably,
articles (7) of suitable sizes, for holding
plates and dishes, also, were in use before
1951;
(iv) the tailstock was probably used in this
industry before 1951;
(v) no bracket or angle, as used in the
defendant’s machine (Ex. CC) appears to have
been used in this industry before 1951;
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(vi) work on plates and dishes was suspended at
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Mirzapur for a few years before 1951."
The trial Judge then found that mere addition of a
bracket did not amount to a novelty. He further observed
that Circumstance VI was of a natural character because it
could not be definitely held that the work had been
suspended due to a defect in the contrivance which was then
in use. It might well be due to labour trouble as the
witnesses examined by the appellant had deposed. From
Circumstances I, II, III and IV, inspection of the machines
(Ex. CC and Ex. XVI), produced by the appellant and the
other material on record, the trial Court found both issue,
set out above, against the patentee-firm.
We have ourselves examined the evidence on record with
the aid of the learned Counsel for the parties, and have
ourselves compared the machines (Ex. CC and Ex. XVI) which
were produced before us. We do not want to rehash the
evidence. Suffice it to say, we do not find that any piece
of evidence has been misread, overlooked or omitted from
consideration. The view taken by the trial Court was quite
reasonable and entitled to due weight. In our opinion, it
did not suffer from any infirmity or serious flaw which
would have warranted interference by the Appellate Bench.
Be that as it may, from the discussion that follows,
the conclusion is inescapable that the invention got
patented by M/s. Hindustan Metal Industries, respondent
herein, was neither a manner of new manufacture, nor a
distinctive improvement on the old contrivance involving any
novelty or inventive step having regard to what was already
known and practised in the country for a long time before
1951.
Let us now have a look at the invention described in
the ’specifications’ and the ’claims’ in the patent in
question. In the provisional specification, the title or
subject of the patent is described as follows:
"Method of end means for mounting metallic
utensils or the like on lathe for turning them before
polishing."
The title of the patent mentioned in the complete
specification is as under:
"Means for holding utensils for turning purposes". Then
follows a description of the old method of manufacture, and
it is stated:
"This invention relates to means for mounting
metallic utensils for the purpose of turning the same
before polishing and deals particularly, though not
exclusively, with utensils of
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the type which cannot be conveniently and directly
gripped by the jaws of the chucks and where the utensil
tends to slip off the chuck and a certain amount of
risk is involved in applying the tool in the turning
operation."
Thereafter, the new method of manufacture is described with
reference to three figures or sketches. The crucial part of
this specification runs as below:
"According to a preferred feature of this
invention the pressure end of the pressure spindle is
rotatably mounted and for this purpose it comprises an
independent piece engaged by a hollowed end in a
spindle, said hollowed end being preferably fitted with
ball bearings to enable the said independent piece to
revolve with friction when it is in contractual
relationship with the utensil. This independent piece
may have a forward pointed end or said forward end may
be a blunt end, the pointed end or the blunt end as the
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case may be, being firmly held against the utensil. The
blunt end may, e.g. be of 1 cm. in diameter."
(Emphasis added)
Then, at the foot of the complete specification, 9 Claims
are set out, which read as under:
"1. Means for mounting and holding metal utensils
more particularly of the shallow type for the purpose
of turning before polishing comprising a shaft or
spindle carrying at its one end and adapter having a
face corresponding to the shape of the article or
utensil to be held, the utensil being maintained in
held position by an independent pressure on the utensil
when seated on the adapter.
2. Means for the purpose herein set-forth end as
claimed in Claim I in which the pressure spindle is
adapted to pass through a guide block and has a
regulating handle at the outer end the inner end of the
spindle pressing against the utensil, means being
provided to set and lock the pressure spindle in any
desired position.
3. Means as claimed in Claims 1 and 2 in which the
pressure end of the pressure spindle is rotatably
mounted and for this purpose it comprises an
independent piece engaged by a
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hollowed end in a spindle, said hollowed and end being
preferably fitted with ball bearings to enable the said
independent piece to revolve with friction when it is
in contractual relationship with the utensil.
4. Means as claimed in previous claims in which
the pressing or inner end of the pressure spindle is
pointed or blunt.
5. Means as claimed in Claim 1 in which the
pressure spindle passes through a bracket or the like
end said bracket may comprise the arm of an angle
shaped bracket whose other arm may be fixed to a stand
or the like.
6. Means as claimed in Claims 1, 2 & 3 in which
the pressing end of the spindle may be a fixed end or a
revolving end.
7. Means as claimed in Claim 1 in which the
adapter is shaped to seat the utensil.
8. Means as claimed in Claim 1 in which the
adapter is made of wood or any other material.
9. Means for holding the utensil for the purpose
herein set-forth and substantially as described and
illustrated and utensils so turned."
As pointed out in Arnold v. Bradbury the proper way to
construe a specification is not to read the claims first and
then see what the full description of the invention is, but
first to read the description of the invention, in order
that the mind may be prepared for what it is, that the
invention is to be claimed, for the patentee cannot claim
more than he desires to patent. In Parkinson v. Simon Lord
Esher M. R. enunciated that as far as possible the claims
must be so construed as to give an effective meaning to each
of them, but the specification and the claims must be looked
at and construed together.
The learned trial Judge precisely followed this method
of construction. He first construed and considered the
description of the invention in the provisional and complete
specification, and then dealt with each of the claims,
individually. Thereafter, he considered the claims and
specification as a whole, in the light of the evidence on
record.
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With regard to Claim No. 1, the learned Judge
commented:
"The pressure spindle in a lathe is a well known
contrivance. Pressure spindle or a tailstock was in use
in this in-
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dustry much before 1951. So neither the means for
mounting and holding metallic utensil nor the
independent pressure spindle can be said to be an
invention".
In Claims 3, 4, 6 and 7, also, he found no novelty or
inventive step having regard to the fact that these were
well-known and were in use long before 1951. Regarding Claim
No. 5, he found that the use of the bracket was new; but the
end bracket can hardly be said to be an invention.
The learned trial Judge then noted that Purshottam, who
was stated to be the inventor, and, as such, was the best
person to describe the invention, did not appear in the
witness-box, though, as admitted by Sotam Singh (D.W. 3),
Purshottam had attended on some dates of hearing. Sotam Sing
tried to explain Purshottam’s disappearance from the Court
without appearing in the witness-box, by saying that he had
gone away due to illness. The learned Judge found this
explantion unsatisfactory and rejected it-and in our opinion
rightly-with the remark that recording of evidence lasted
for several days and it was not difficult to secure
Purshottam’s attendance. Apart from being the best informed
person about the matter in issue, Purshottam was not a
stranger. He was a partner of the patentee firm and a
brother of Sotam Singh (D.W. 3). He was the best informed
person who might have answered the charge of lack of novelty
levelled by the opponent side, by explaining what was the
novelty of the alleged invention and how and after, what
research, if any, he made this alleged ’discovery’. Being a
partner of the respondent-firm and personally knowing all
the circumstances of the case, it was his duty as well as of
the respondent-firm, to examine him as a witness so that the
story of the particular invention being a new manufacture or
improvement involving novelty, could, in all its aspects, be
subjected to cross-examination. By keeping Purshottam away
from the witness-box, the respondent-firm, therefore, took
the heavy risk of the trial Court accepting the charge of
lack of novelty made by the appellant herein.
The trial Judge further noted that the witnesses
examined by the patentee-firm had given a garbled, account
as to the patented invention. The witnesses were speaking
with discordant voices as to the alleged inventive step
involved in the patent. Mata Parashad (D.W. 2) stated the
invention lies in fixing the Charhi on the pointer on the
same iron base. In variance with it, Sotam Singh (D.W. 3)
said that his patent covers three factors-the side
supporting iron plate, the pointer with the nut, and the
adapter. In this connection, we may add that Lakshmi
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Dass (D.W. 1) another witness examined by the patentee-firm,
had admitted that machines like Ex. XVI (which was the
machine produced by Bhagwati Prasad and was alleged by the
patentee to be an imitation of the patented one), were in
use even before 1951-52.
After a critical appraisal of the evidence produced by
the parties, the learned trial Judge found that
manufacturers in the industry have been using adapters of
various sizes and shapes to suit the article handled; that
tailstock or pointer was also in use; that it was a common
practice to fix the headstock and tailstock permanently to a
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single frame work. In regard to the use of the bracket or
angle in Ex. CC, the learned Judge held that although it was
new, it was not a new idea, and concluded: "There is hardly
any difference between fixing the headstock and tailstock to
a common base (as the case in the machine Ex. XVI produced
by Bhagwati Prasad) or fixing the tailstock in a bracket
which is connected with the framework on which the headstock
is fixed. Whether we consider Ex. CC as a whole or look at
the invention in its separate parts, we do not find any
novelty in the alleged invention."
In our opinion, the findings of the learned trial Judge
to the effect that the patent is not a manner of new
manufacture or improvement, nor does it involve any
inventive step having regard to what was known or used prior
to the date of patent, should not have been lightly
disturbed by the Appellate Bench. These were, as already
observed, largely findings of fact, based on appreciation of
the evidence of witnesses and the trial Court had the
initial advantage of observing their demeanour in the
witness-box. Moreover, the approach adopted by the trial
Court was quite in conformity with the basic principles on
the subject, noticed in an earlier part of this judgment.
The patented machine is merely an application of an old
invention, known for decades before 1951, for the
traditional purpose of scraping and turning utensils, with a
slight change in the mode of application, which is no more
than a ’workshop improvement’, a normal development of an
existing manner of manufacture not involving something novel
which would be outside the probable capacity of a craftsman.
The alleged discovery does not lie outside the Track of what
was known before. It would have been obvious to any skilled
worker in the field, in the state of knowledge existing at
the date of patent, of what was publicly known or practised
before about this process, that the claim in question viz.,
mere addition of a lever and bracket did not make the
invention the subject of the claim concerned. There has been
no substantial exercise of the inventive power or innovative
faculty. There is no evidence that the patented machine is
the
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result of any research, independent thought, ingenuity and
skill. Indeed, Sotam Singh frankly admitted that he did not
know whether Purshottam had made any research or any
experiments to produce this combination. Nor does this
combination of old integers involve any novelty. Thus judged
objectively, by the tests suggested by authorities, the
patent in question lacked novelty and invention.
We will close the discussion of trial Court’s Judgment
by referring to a decision of the House of Lords in Harwood
v. Great Northern Dy. Co. as, in principle, that case is
analogous to the one before us. In that case, a person took
out a patent, which he thus described: "My invention
consists in forming a recess or groove in one or both sides
of each fish (plate), so as to reduce the quantity of metal
at that part, and to be adapted to receive the square heads
of the bolts, which are thus prevented from turning round
when the nuts are screwed on." His claim was "for
constructing fishes for connecting the rails of railways,
with a groove adapted for receiving the ends of the bolts
employed for securing such fishes; and the application of
such fishes for connecting the ends of railways in manner
hereinbefore described. The constructing of fish joints for
connecting the rails of railways with grooved fishes fitted
to the sides of the rails, and secured to them by bolts or
nuts, or rivets, and having projecting wings firmly secured
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to and resting upon the sleepers or bearers, so as to
support the rails by their sides and upper flanges." It was
proved that before the date of his patent, fish-joints had
been used to connect and strengthen the rails of railways.
In some cases, the fishes were flat pieces of iron, with
round holes for bolts, the heads of the bolts being held in
their places by separate means. In others the extreme ends
of the holes were made square and the bolt-heads square, to
put into them, and, in some, square recesses were made in
the flat pieces of iron for the same purpose; but till the
time of the patent, fishes for connecting the railways had
never been made with a groove in their lateral surfaces so
as to receive the square heads of the bolts, and render the
fish lighter for equal strength, or stronger for an equal
weight of metal."
On these facts, it was held that what was claimed as an
invention was not a good ground to sustain a patent.
Blackburn L. J., succinctly summed up the rule of the
decision, thus:
"In order to bring the subject-matter of a patent
within this exception, there must be invention so
applied as to produce a practical result. And we quite
agree with the Court of Exche-
776
quer Chamber that a mere application of an old
contrivance in the old way to an analogous subject,
without any novelty or invention in the mode of
applying such old contrivance to the new purpose, is
not a valid subject-matter of a patent."
The above enunciation squarely applies to the facts of
the present case. We will now consider the judgment of the
Appellate Bench, which, it may be recalled, has found that
the novelty and invention of the patent lay in "the method
of holding an article by the pressure of a point of a
pointed tailstock (which) was neither used or known."
This finding, if we may say so with respect, is
inconsistent with the Appellate Bench’s own findings Nos.
(5) and (6), the consolidated substance of which is to the
affect, that lathe consisting of a headstock and a tailstock
and its uses for centering the article, holding along work
by a pointed tailstock by pivoting it and holding an article
in metal spinning by the pressure of a pad attached to the
tailstock, have been well known for a long time. Finding No.
(7) of the Appellate Bench goes beyond the scope of the
specifications and claims made by the patentee, himself, in
the subject of the patent. From a perusal of the
specification and the ’claims’, extracted earlier, it is
evident that there is no assertion therein, of novelty for
the pointed tailstock; rather it is stated that "the
pressure spindle may be pointed or blunt." Furthermore, this
finding of the Appellate Bench stands in contradiction to
what Sotam Singh (D.W. 3) patentee himself has admitted in
the witness-box. In cross-examination, Sotam Singh (D.W. 3)
said: "I am not using any other pointer than that of Ex. CC.
I never used pointer of any other type. I have not used any
rotating pointer either at Banaras or at Mirzapur .. If any
body uses a wooden adapter in a chuck and does scraping work
on a Katore in such a wooden chuck without a pointer, there
would be no infringement of my patent.... I conducted no
experiments before obtaining the patent. I do not know what
kind of experiments Purshottam carried out. I have got no
apparatus for scraping utensils except like Ex. CC." Sotam
Singh further admitted that machines like Ex. XVI (the one
which was produced by the appellant and is said to infringe
the patent of the respondent-firm) are sold in the market
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and one can purchase a pointer like Ex. XI in a lathe.
In the face of the admissions of the representative of
the patentee, it was not possible for the Court to work out
Finding No. (7) on its own, without allowing itself to get
into the unenviable position of appearing more Royalist than
the King. We have ourselves examined and compared the
machines (Ex. CC and Ex. XVI). We find that the tailstock in
each of these machines has blunt end of slightly above 1
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cm. in diameter. It may be re-emphasised that according to
Sotam Singh, himself, his patented machine has no other end
of tailstock excepting of the (bunt) type in Ex. CC.
For all the reasons aforesaid, we have no hesitation in
holding that the learned Judges of the Appellate Bench were
in error in reversing the findings of the trial Court on
Issues 1 and 1-A. The learned trial Judge was right in
holding that the patented machine was neither a manner of
new manufacture or novel improvement, nor did it involve any
inventive step, having regard to what was publicly known or
used at the date of the patent. The grant of the patent in
question was therefore, invalid and was liable to be revoked
on the grounds mentioned in Clauses (d) and (e) of Section
26(1) of the Act.
Before parting with this judgment, we will like to
dispose of another argument of Mr. Mehta. The argument is
that since the Courts below have concurrently held that the
invention had utility, the patent should be sustained. We
are unable to accept this contention. As pointed out
already, the crucial test of the validity of a patent is
whether it in voices novelty and an ’inventive step’ ? That
test goes against the patentee.
In the result, the appeals are allowed, the judgment of
the Appellate Bench is set aside and that of the trial Court
restored. In the peculiar circumstances of the case, the
parties are left to bear their own costs throughout.
M.R. Appeals allowed,
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