Full Judgment Text
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PETITIONER:
MONSANTO COMPANY BY THEIR PATENT AGENT, DE PENNING AND DEPEN
Vs.
RESPONDENT:
CORAMANDAL INDAG PRODUCTS (P) LTD.
DATE OF JUDGMENT14/01/1986
BENCH:
REDDY, O. CHINNAPPA (J)
BENCH:
REDDY, O. CHINNAPPA (J)
VENKATARAMIAH, E.S. (J)
CITATION:
1986 AIR 712 1986 SCR (1) 120
1986 SCC (1) 642 1986 SCALE (1)74
ACT:
Patents Act, 1970 - Sections 64(1)(e) and (f) - Patent
- When liable to be revoked - Invention being publicly known
- Requirement of - When satisfied - Emulsification - Whether
invention - Herbicide Formulations containing active
ingredient ’Butachlor’ - Whether can be enfolded in
specification relating to a Patent Product.
HEADNOTE:
The plaintiff-appellant instituted a suit against the
respondent on the ground that its inventions entitled
"Phytotoxic Compositions" and "Grass Selective Herbicide
Compositions" duly patented containing the active ingredient
"Butachlor" was infringed by the defendant-respondent
marketing "Delchor-50" a formulation of "Butachlor" which
was alleged to be covered by the plaintiff’s Patent No.
125381. In the written statement, the defendant-respondent
claimed that the patents were liable to be revoked under
s.64(1)(a), (b), (d), (e), (f), (g), (h), (i), (j), (k),
(l), and (m) of the Patents Act, 1970. The suit was decreed
by the trial Court, but was dismissed by the appellate
court.
Dismissing the appeal,
^
HELD : 1(i) Under s. 61(1)(d), a patent may be revoked
on the ground that the subject of any claim of the complete
specification is not an invention within the meaning of the
Act. Under sec. 64(e), a patent may be revoked if the
invention so far as claimed in any claim of the complete
specification is not new, having regard to what was publicly
known or publicly used in India before the date of the
claim, etc. Under sec. 64(1)(f), a patent may be revoked if
the invention so far as claimed in any claim of the complete
specification is obvious or does not involve any inventive
step having regard to what was publicly known or publicly
used in India or what was published in India before the
priority date of the claim. [128 G-H; 129 A]
121
1(ii) To satisfy the requirement of being publicly
known as used in clauses (e) and (f) of sec. 64(1), it is
not necessary, that it should be widely used to the
knowledge of the consumer public. It is sufficient if it is
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known to the persons who are engaged in the pursuit of the
knowledge of the patented product or process either as men
of science or men of commerce or consumers. [129 D-E]
2. Butachlor which was the common name for CP 53619 was
discovered, even prior to 1968 as a Herbicide possessing the
property of non-toxic effect on rice. The formula for the
Herbicide was published in the report of the International
Rice Research Institute for the year 1968 and its common
name Butachlor was also mentioned in the report of the
International Rice Research Institute for the year 1969. No
one patented the invention Butachlor and it was the property
of the population of the world. Before Butachlor or for that
matter any Herbicide could be used for killing weeds, it had
to be converted into an emulsion by dissolving it in a
suitable solvent and by mixing the solution with an
emulsifying agent. Emulsification is a well-known process
and is no one’s discovery. Neither Butachlor nor the process
of Emulsification was capable of being claimed by the
plaintiffs as their exclusive property. [128 C-E]
In the instant case, the solvent and the emulsifier
were admittedly not secrets and they were ordinary market
products. From the beginning to the end, there was no secret
and there was no invention by the plaintiffs. The
ingredients, the active ingredients the solvent and the
emulsifier, were known; the process was known, the product
was known and the use was known. The plaintiffs were merely
camouflaging a substance whose discovery was known
throughout the world and trying to enfold it in their
specification relating to Patent Number 125381. The patent
is, therefore, liable to be revoked. [129 F-G; 130 A]
JUDGMENT:
CIVIL APPELLATE JURISDICTION: Civil Appeal No. 1490 of
1984.
From the Judgment and Order dated 16.2.1984 of the
Madras High Court in O.S.A. No. 217 of 1982.
S. Chellaswamy, N.H. Hingorani, Mrs. Kapila Hingorani,
Mrs. Rekha Pandey and D. Sadasivan for the Appellants.
F.S. Nariman, M.K. Rao, P.N. Ramalingam and A.T.M.
Sampath for the Respondent.
122
The Judgment of the Court was delivered by
CHINNAPPA REDDY, J. The long and grasping hand of a
Multi National Company, the Monsanto Company of St. Lous,
Missouri, United States of America, has reached out to
prevent alleged infringement of two of their patents
(Numbers 104120 and 125381) by the defendant, an Indian
Private Limited Company. Though the suit, as initially laid,
was with reference to two patents, the suit was ultimately
confined to one patent only (Number 125381), the period for
which the other patent (104120) was valid having expired
during the pendency of the suit. The suit was decreed by the
trial court, but was dismissed by the appellate court. The
appeal which is now before us has been filed pursuant to a
certificate granted by the appellate bench of the High Court
on the ground that substantial questions of law of great
public importance were involved. The questions, however,
were not specified in the certificate. As we see it, we are
unable to find any substantial questions of law of great
importance. We are afraid both the lower courts misdirected
themselves and missed the real substance of the dispute and
found themselves chasing the mirage of legal questions which
did not strictly arise.
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We may first refer to a few preliminary facts. Weeds,
as is well-known, are a menace to food crops, particularly
crops like rice which belong to the grass-variety. Research
has been going on for years to discover a weed killer which
has no toxic effect on rice, that is to say, a Herbicide
which will destroy the weeds but allow rice to survive
without any deleterious effect. For long the research was
futile. But in 1966-67 came a break through. A Scientist Dr.
John Olin discovered CP53619 with the formula ’2-Chlore-
2’,6’-Diethyl-N-(Butoxy-Methyl)- Acetanilide’ which
satisfied the requirement of a weed killer which had no
toxic effect on rice. The annual report of the International
Rice Research Institute for 1968 state, "Weed control in
rice was an important part of the Agronomy program. The
first agronomic evidence of the efficacy of granular -
trichloroethyl styrene for the selective control of annual
grasses in transplanted rice was obtained at the Institute.
Another new accession, CP53619, gave excellent weed control
in transplanted flooded and non-flooded, upland rice." It
was further stated "CP53619 at 2 and 4 k.g./ha a.i. appeard
at least twice among the 20 best treatments" and "the most
outstanding new pre-emergence herbicide was 2-chloro-2’, 6’-
diethyl-N- (butoxymethyl)-acetanilide (CP 53619)." The
123
annual report of the International Rice Research Institute
for 1969 shows that the herbicide CP 53619 came to acquire
the name of Butachlor.
It is now necessary to refer in some detail to the
averments in the plaint, as the decision of the case, in the
view that we are taking, turns very much on what the
plaintiffs themselves had to say about their case. The first
plaintiff is the Monsanto Company and the second plaintiff
is a subsidiary of the first plaintiff registered as a
Company in India. It was stated in the plaint that the first
plaintiff was the patentee of inventions entitled
"PHYTOTOXIC COMPOSITIONS" and "GRASS SELECTIVE HERBICIDE
COMPOSITIONS", duly patented under patent number 104120
dated March 1, 1966 and 125381 dated February 20, 1970. The
claims and the particulars relating to the inventions were
stated to be contained in the specifications of the two
patents annexed to the plaint as annexure I and II. After
stating so much the plaintiffs said, and this is very
important, "THE ACTIVE INGREDIENT MENTIONED IN THE CLAIM IS
CALLED "BUTACHLOR". It suggested, without expressly saying
it that the Plaintiffs’ patents covered Butachlor also which
in fact it did not, as we shall presently see. It was next
stated that the first plaintiff had permitted the second
plaintiff to work the patents from 1971 onwards under an
agreement dated September 3, 1980. The second plaintiff had
been manufacturing and marketing formulations according to
the Patents Numbers 104120 and 125381 and ’a specimen tin
containing formulations produced by the second plaintiff
according to the said two patents and sold in the market by
the second plaintiff’ was produced along with the plaint as
M.O.I. It came to the notice of the plaintiffs, it was
averred, that the defendant was attempting to market a
formulation of Butachlor covered by the said patents. They,
therefore, wrote to the defendant drawing their attention to
the existence of the patents in their favour. Some
correspondence ensued. In the second week of May, 1981, the
second plaintiff found that the defendant was marketing
formulation of Butachlor covered by the patents of the first
plaintiff. Sample tins of "Butachlor- 50" manufactured by
the defendant were purchased by the plaintiffs and were
produced along with the plaint as M.O.s 3 and 4. The legend
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on the tins was as follows :
"Delchor-50 Composition
(Butachlor 50%E.C.) Butachlor 50% W/W
Herbicide Solvents and Emulsifiers
50% W/W"
124
According to the plaintiffs, the legend on the tins
containing the substance manufactured by the defendants
showed that what was sold by the defendants was nothing but
a reproduction of the first plaintiff’s patented
formulations. The formulations of the defendant were sent to
Shri Ram Institute for analysis and they were said to
contain the chemical "Butachlor Chemical formula for which
is 2 Chloro 2’ 6’ -Diethyl - N - (Butoxymethyl)
Acatanilide." On these averments, the plaintiffs alleged
that the defendant had infringed their Patents Numbers
104120 and 125381 by selling formulations covered by them.
The plaintiffs used for an injunction to restrain the
defendant from infringing their Patents Numbers 104120 and
125371 by the manufacture or sale of the infringing
formulations as contained in this marked as M.O.Nos. 2 and
3. The Plaintiffs also asked for an account etc. Annexed to
the plaint were the two specifications relating to Patent
Numbers 104120 and 125381. In the specification relating to
"Phytotoxic Composition" (Specification No. 104120), it was
claimed :
"We Claim :
1. A phytotoxic composition comprising as an
active ingredient a compound of the formula shown
in Figure 1 of the accompanying drawings, wherein
R1 and R2 are alkyl of alkoxy having from 1 to 10
carbon atoms, R3 is halogen, alkyl or alkoxy
having from 1 to 10 carbon atoms, n is an integer
from 0 to 3, A is oxygen or sulfur, X is chlorine,
bromine or iodine, and Z,Z1 and Z2 are hydrogen,
alkyl, alkoxy,alkenyl or alkynyl having from 1 to
18 carbon atoms, aryl having from 6 to 24 carbon
atoms, heterocyclyl having a miximum of 24 carbon
atoms and from 1 to 3 hetero atoms, or two of Z
groups are combined to form a bivalent alkylene
radical having from 1 to 6 carbon atoms in
admixture with an adjuvant such as herein
described, the active ingredient in the said
composition being present in an amount of at least
0.1 per cent by weight.
2. A phytotoxic composition as claimed in Claim 1,
wherein the active ingredient is 2’ -tertbuty 1-2-
chloro-N- (2-prophynyloxy-methyl)-6’methyl-
acetanilide.
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3. A phytotexic composition as claimed in Claim 1,
wherein the active ingredient is 2’ -tertbutyl-2-
chlore-N-(2-prophynyloxy-methyl)-6’ -methyl-
acetani-lide.
4. A phytotexic composition as claimed in Claim 1,
wherein the active ingredient is 2’-tertbutyl-2-
chlore-N(allyloxymethyl)-6’ methylacet-anilide.
5. A phytotoxic composition as claimed in Claim 1,
wherein the active ingredient is 2-tertbutyl-2-
brome- N-methexy-methyl-6’-methylacetanilide.
6. A phytotoxic composition as claimed in Claim 1,
wherein the active ingredient is 2’-tertbutyl-2-
broome-N-(2-prophynylexymethyl)-6- methylacetani-
lide.
7. A phytotoxic composition as claimed in Claim 1,
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wherein the active ingredient is 2-chloro-2’, 6-
disthyl-N-(methoxymethyl) acetanilide.
8. A phytotoxic composition as claimed in Claim 1
wherein the active ingredient is 2’-tertbutyl-2-
bromo-N-(allyloxymethyl)-6’-methylacetanilide.
9. A phytotoxic composition as claimed in Claim 1,
wherein the active ingredient is 2’-tertbutyl-2-
choloro-N- (2-methoxyethoxymethyl) -6’-
methylacetan-ilide.
10. A phytotoxic composition as claimed in Claim
1, wherein the active ingredient is 2’-tertbutyl-
2-bromo-N- (2-methoxyethoxymethyl) -6- methylace
tanilide.
11. A phytotoxic composition as claimed in Claim
1, wherein the active ingredient is 2-bromoe-2’-
terbutyl-N-(2,3 - dihydroxypropoxyomethyl)-6-
methylacetanilide.
12. A phytotoxic composition as claimed in Claim
1, wherein the active ingredient is 2-chloro-2’,
6-dimethyl-N-(isoproposymethyl)-acetanilide.
13. A phytotoxic composition substantially as
herein before described."
126
In the specification relating to Grass selective Herbicide
Compositions (Specification No. 125381), it was claimed:
"We claim:
1. A herbicidal composition in the form of an
emulsion, suspension or dispersion, comprising as
active ingredient a compound selected from the
group.
a) 2’,6’ -diethyl-N-butoxymethyl-alpha-
chloroaceta-nilide, and
b) 2’, 6’-diethyl-N-(2-butoxyethyl)-alpha-chloro-
acetanilide, or a mixture of (a) and (b) in
admixture with one or more diluents or carriers
and surface active agents in which an emulsion is
obtained by dissolving the active ingredient in an
organic solvent and thereafter dispereing the
solution in another liquid medium in the presence
of an emulsifying agent such as herein described.
2. A composition as claimed in claim 1, which
further comprises one or more compounds selected
from the following -
conventional pesticides, fertilizers, and
extenders such as herein described.
3. A composition as claimed in claim 2, wherein
mineral extenders such as natural clays, phyro-
phyllites and vermiculite having a perticle size
of 2000 to 149 microns, preferably of 1410 to 250
microns, are used.
4. A herbicidal composition in the form of an
emulsion, suspension or dispersion substantially
as hereinbefore described."
We do not propose to set out in detail the contents of
the written statement. It is sufficient to state that the
Defendant claimed as he was entitled to do under s. 107 of
the Patents Act 1970, that the patents were liable to be
revoked under s. 64(1)
(a),(b),(d),(e),(f),(g),(h),(i),(j),(k),(l) and (m) of the
Patents Act. The defendant also made counter claim seeking
revocation of the patents.
127
A close scrutiny of the plaint and a reference to the
evidence of the witnesses for the plaintiff atonce exposes
the hollowness of the suit. We must begin with the statement
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in the plaint that "THE ACTIVE INGREDIENT MENTIONED IN THE
CLAIM IS CALLED ’BUTACHLOR’" which suggests that Butachlor
was covered by the Plaintiffs’ patents and the circumstance
now admitted that no one, neither the plaintiff nor any one
else, has a patent for Butachlor. The admission was
expressly made by PW-2, the power of attorney holder of the
first plaintiff and Director of the second plaintiff
company. The learned counsel for the plaintiffs also
admitted the same before us. PW-1, Dr. Dixon, Chemist of the
first plaintiff company, after explaining the use of an
emulsifying agent, in answer to a direct question, whether
his company claimed any patent or special knowledge for the
use of any particular solvent or particular emulsifying
agent, in the formulation in their patent, had to admit that
they had no such patent or special knowledge. He further
admitted that the use of solvent and emulsifying agent on
the active ingredient was one of the well-known methods used
in the pesticide industry to prepare a marketable product.
He also expressed his inability to say what diluents or
emulsifying agents the defendant used in their process. PW-2
admitted that Butachlor was a common name and that the Weed
Science Society of America had allotted the common name. He
stated that "Machete" was the brand name under which their
company manufactured Butachlor. He also stated that there
could be a number of concerns all over the world
manufacturing Butachlor, but he was not aware of them. He
admitted that they did not claim a patent for Butachlor. He
stated that though his company did not claim a patent for
Butachlor, they claimed a patent for the process of making a
Butachlor emulsifiable concentrate to be used as a Herbicide
composition for rice. Pursued further in cross-examination,
he was forced to admit that they used kerosene as a solvent
for Butachlor and an emulsifier manufactured by a local
Indian company as an emulsifying agent. He then proceeded to
state that he claimed secrecy with regard to the manufacture
of their formulation. When he asked further whether the
secrecy claimed was with regard to the solvent or with
regard to the stabilizer, he answered in the negative. He
finally admitted that his secret was confined to the active
ingredient Butachlor about which as we know there is no
secret. PW-3, Robert Galson Depenning the patent agent of
the first plaintiff under a power of attorney from the first
plaintiff, stated that it was he that had verified the
plaint and that it
128
was on his instructions that the plaint was drafted. He
stated that according to him, by selling his formulations
the defendant had infringed Patents Numbers 104120 and
125381, though he was unable to explain which part of his
claim in Patent Number 104120 was infringed as he was not a
Chemist. He stated that he said so and was able to say so in
consultation with the Managing Director of the second
plaintiff company. He stated that it was explained to him by
PW-2 that both the Patents Numbers 104120 and 125381 were
infringed. He also admitted that it was he that had signed
the specification of 104120 and while he was not sure
whether he had signed the specification Number 125381, he
saw that it had been signed by Depenning and Depenning.
We, therefore, see that Butachlor which was the common
name for CP 53619 was discovered, even prior to 1968 as a
Herbicide possessing the property of nontoxic effect on
rice. The formula for the Herbicide was published in the
report of the International Rice Research Institute for the
year 1968 and its common name Butachlor was also mentioned
in the report of the International Rice Research Institute
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for the year 1969. No one patented the invention Butachlor
and it was the property of the population of the world.
Before Butachlor or for that matter any Herbicide could be
used for killing weeds, it had to be converted into an
emulsion by dissolving it in a suitable solvent and by
mixing the solution with an emulsifying agent.
Emulsification is a well-known process and is no one’s
discovery. In the face of the now undisputable fact that
there is no patent for or any secrecy attached to Butachlor,
the solvent or the emulsifying agent and the further fact
that the process of emulsification is no new discovery, the
present suit based on the secrecy claimed in respect of the
active agent Butachlor and the claim for the process of
emulsification must necessarily fail. Under sec. 61(1)(d), a
patent may be revoked on the ground that the subject of any
claim of the complete specification is not an invention
within the meaning of the Act. Under sec. 64(e), a patent
may be revoked if the invention so far as claimed in any
claim of the complete specification is not new, having
regard to what was publicly known or publicly used in India
before the date of the claim, etc. Under sec. 64(1)(f), a
patent may be revoked if the invention so far as claimed in
any claim of the complete specification is obvious or does
not involve any inventive step having regard to what was
publicly known or publicly used in India or what was
published in India before the priority
129
date of the claim (the words "or elsewhere" are omitted by
us as the patents in the present case were granted under the
Indian Patents and Designs Act, 1911, i.e., before the
Patents Act 1970). "Invention has been defined by secc. 2(j)
as follows:
" Invention" means any new and useful -
(i) art, process, method or manner of manufacture;
(ii) machine, apparatus or other article;
(iii) substance produced by manufacture, and
includes any new and useful improvement of any of
them, and an alleged invention."
It is clear from the facts narrated by us that the
Herbicide CP 53619 (Butachlor) was publicly known before
Patent Number 125381 was granted. Its formula and use had
already been made known to the public by the report of the
International Rice Research Institute for the year 1968. No
one claimed any patent or any other exclusive right in
Butachlor. To satisfy the requirement of being publicly
known as used in clauses (e) and (f) of sec. 64(1), it is
not necessary that it should be widely used to the knowledge
of the consumer public. It is sufficient if it is known to
the persons who are engaged in the pursuit of knowledge of
the patented product or process either as men of sciene or
men of commerce or consumers. The section of the public who,
as men of science or men of commerce, were interested in
knowing about Herbicides which would destroy weeds but not
rice, must have been aware of the discovery of Butachlor.
There was no secret about the active agent Butachlor as
claimed by the plaintiffs since there was no patent for
Butachlor, as admitted by the plaintiffs. Emulsification was
the well-known and common process by which any Herbicide
could be used. Neither Butachlor nor the process of
Emulsification was capable of being claimed by the plaintiff
as their exclusive property. The solvent and the emulsifier
were not secrets and they were admittedly not secrets and
they were ordinary market products. From the beginning to
the end, there was no secret and there was no invention by
the palintiffs. The ingredients, the active ingredient, the
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solvent and the emulsifier, were known; the process was
known, the product was known and the use was known. The
plaintiffs were merely camouflaging a substance whose
130
discovery was known through out the world and trying to
enfold it in their specification relating to Patent Number
125381. The patent is, therefore, liable to be revoked. We
do not think that it is necessary for us to go into the
various questions of law so carefully and meticulously
argued by Mr. Chellaswamy. The questions were no doubt
interesting and arose for the first time. But we desire to
keep our interest purely academic and within bounds. So we
do not pronounce upon those questions. The appeal is
dismissed with costs.
M.L.A. Appeal dismissed.
131