TMI Blog1978 (12) TMI 186X X X X Extracts X X X X X X X X Extracts X X X X ..... e 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... having regard to what was known or used prior to the patent. (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 headsto ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... icted 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, and should not, as a matter of practice, be disturbed by this Court. Even in cases of doubt-proceeds the argument-the Court should uphold the parent. It is submitted that a patent is granted by the Controller after due inquiry and publication and, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... table 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 invention . In other words, in order to be patentable, the new subject matter must involve 'invention' over what is old. Determination of this question ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ention , 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 which would negative existence of novelty or an inventive step is suggested, as under: Had the document been ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ts 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; (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 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) ................................. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nce 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 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; (h) that the complete specification does not sufficiently and c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... abour 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... m 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 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... idence 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 inven ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f 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 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 n ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ty 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 asse ..... X X X X Extracts X X X X X X X X Extracts X X X X
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