Petitioner: Biswanath Prasad Radhey Shyam v/s. Respondent: Hindustan Metal Industries
Date Of Judgment : 13/12/1978

Fact:
Biswanath prasad radhey shyam and Hindustan metal industries both were carrying business of manufacturing of utensils in the place of Mirzapur. In the year of 1951 Mr Purshottam Das, who is the partner of the respondent firm invented a device and a method for manufacturing utensils. This helps for speedy, improved, convenient and better finish of work.

In the earlier period there was a method for making utensils and it was the most riskiest way and by this method when utensils are being produced, these utensils used to flyoff from the headstock of the device during the work is being processing. When the new device is invented the respondent filed claim in the patent office and he got patent to his invention under Indian Patent and Designs Act of 1911. The assignee that is the respondent company of the patent got the sole and exclusive right over the method against the whole for producing utensils.

In September 1952, the respondent that is the patent holder found that the appellant firm that is the Hindustan metal industries were using the same patented method for manufacturing utensils. The respondent firm sent a notice showing the infringement of patent by the appellant company.

But the appellant company continued the same process to make utensils. Then the respondent filed suit for permanent injunction against the appellant company restraining them from adopting, imitating and employing the said patented device.

Then appellant company filed a counter claim and petition on the same under section 26 of the Indian Patent and Designs Act of 1911 for revocation of patent and they challenged that the respondent's alleged invention was known and was used from the prior to the granting of patent and the alleged invention does not have any inventive step and does not involve novelty.

Issue Raised:

• Whether the invention does involve an inventive step?
• Whether the invention has utility?
• Whether there is infringement in the patented method?

Laws Applicable:

• Indian Patent and Designs Act, 1911
• The Patents Act, 1970

Arguments For Appellant:

1. Whether the invention does involve an inventive step?
   Counsel for the appellant Mr Asthana challenged that the alleged invention does not involve any inventive step and it does not have novelty that means nothing new is there in the method. Tailstock is being used in the process for making utensils is being used since the earliest period.
   
   For granting of patent two things should be satisfied, only then patent can be granted. One among it is the test of invention and the second one is it should have an inventive step. Invention means in the sense of something new should be there, the inventor needs to invent something which is non obvious.
   
   Section 64 of The Patents Act of 1970 explains about the revocation of patent.
   
   Section 64(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, 149 [be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court] on any of the following grounds that is to say:
   
   (d) that the subject of any claim of the complete specification is not an invention within the meaning of this Act;
   
   (e) that 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 priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in section 13;
   
   (f) that 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 or elsewhere before the priority date of the claim.
   
   According to Section 2(8) of Indian Patents and Designs Act of 1911, "Invention means any manner of new manufacture and includes an improvement and an alleged invention".
   
   According to Section 2(1)(j) of the Patents Act of 1970, "Invention means a new product or process involving an inventive step and capable of industrial application.
   
   According to Section 2(1) (ja) of the Patents Act of 1970, "Inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art".
   
   In the case of Blackey V. Latham, the court held to be new in the patented sense, the novelty must show invention.
   
   Here the invention does not involve any novelty or inventive step and there is no new manufacture. This is merely an application of old invention with slight changes. There is no invention here, it is just a mere discovery of the method used in the former period.
   
   This method is very obvious and known to all from the earliest period. So, it can be clearly identified that there is no invention made by the respondent firm.
    
2. Whether the invention has utility?
   The fundamental principle of Patent Law is that patent is granted only to an invention that is new and has utility. Utility means usefulness. It must have a novelty and utility. 'It is essential for the validity of a patent that it must be inventor's own discovery as opposed to mere verification of what was already known before the date of the patent.'
   
   Indian patent and designs act of 1911 does not specify the requirement of being useful in the definition of invention. In case of decisions of courts, they always take decision on patentable invention by analysing apart from being a new manufacture, it must be useful.
   
   Section 26(1)(f) of Indian Patents and Designs Act of 1911 recognises that lack of utility as one of the grounds to revoke the patent which was already granted.
   
   Therefore, utility is a major factor for patenting an invention. Here there is no usefulness which is new from the past. The alleged invention is just a discovery of what was followed in the past and they did not invent anything which is new and which is useful to public.
    
3. Whether there is infringement in the patented method?
   Here the method which is patented should be revoked because the alleged invention is known to the public from the earliest period and is being used by the public before the claim which is filed in the patent office.
    

Here the appellant cannot be held liable for infringement because the appellant firm is not imitating the alleged invention and they already known it before the date of patent. So, the appellant did not infringe the method as the alleged invention, it is just a mere discovery of the past method with some small changes and improvement in the work model.

Arguments For Respondent:

1. Whether the invention does involve an inventive step?
   In earliest period the method of manufacturing utensils was like; plates and dishes were attached to an adapter on the headstock by means of adhesive like lac and shellac and this turns the plates or dishes to flyoff and causes injury to workmen. So, the work of manufacturing plates and dishes were suspended for five or six years at Mirzapur.
   
   Plaintiff's invention was called mounting method. This method is patented in the year of 1951. Here the lathe which is known for a long-time consist a headstock and tailstock used for holding article to be worked upon. Tailstock holds the article in metal spinning by the pressure of pad attached to it. This method was not used and known to public. So, it is clearly identified that this involves inventive step and manner of new manufacture and improvement. The machine which is manufacture is not same as it the past and it is different from that of the past.
    
2. Whether the invention has utility?
   Indian patent and Designs Act of 1911 does not specify about utility or usefulness. The Patents Act of 1970 specifies utility. Section 26(1)(f) of Indian patents and designs act of 1911 recognises that lack of utility as a ground to revoke the patent which was already granted.
   
   Here in this invention utility is given more importance. This invention makes the method of manufacturing utensils in better manner which is in the speediest way in the improved and convenient manner. Workers will not face any danger while doing the manufacturing process.
   
   In the earliest period workers were in danger due to the flyoff of utensils from the headstock during the manufacturing process but in this manufacturing process, it is the most safest and convenient way to produce utensils and workers will not get any harm by this device. Also, utensils can be produced in efficient way. Time management can be done by this method because by using this method utensils can be produced faster that the old method of producing utensils.
   
   So, it can be clearly identified that there is utility or usefulness in the manufacturing process.
    
3. Whether there is infringement in the patented method?
   There is infringement in the patented method. In the year of 1951 the petitioner has been granted patent to the manufacturing utensils. This process is being patented by the patent office. In the year of 1952 that means after one year of granting patent the defendant firm infringed the method and manufactured utensils. The defendant firm challenges on novelty that is newness and inventive step.
   
   These are the major process or requirement for granting patent and only after satisfying both the patent can be granted. Here, the patent is granted to petitioner by satisfying the whole claim and which clearly shows that the invention is novel and has inventive step otherwise they won't be able to get patent over the method.

Here, there is infringement in patent by using the manufactured utensils which is protected from imitating or adopting. Therefore, permanent injunction should be granted restraining defendant and compensation should be provided to the inventor.

Decision Of Court
In this case both the suit was tried by single judge Justice VG Dak of High Court of Allahabad, court dismissed suit for injunction and allowed petition for revocation of patent.

Court held that;
The object of patent law is to encourage scientific research, new technology and industrial progress. The price of grant of monopoly is the disclosure of invention. After the expiry of fixed period the monopoly passes to public domain.

Patent is granted only for an invention which has novelty and utility.

Patentable invention must be useful. Lack of utility is a ground to revoke patent.

For patentability it should satisfy the test of invention and it should have inventive step.

To decide whether a invention involves novelty and inventive step certain criteria should be accomplished. That is:

Manner of manner (If it is publicly known then it negatives novelty)

Discovery (it should be non-obvious)

This invention does not involve any novelty or inventive step and no new manufacture. This is merely an application of old invention with some slight changes. Which is no more than a 'Workshop Improvement'.

Then plaintiff filed appeal to the Division Bench of High Court and court held that;
In earliest period, plates and dishes were attached to a adapter on the headstock by means of adhesive like lac or shellac and this turns the plates or dishes to flyoff and causes injury to workmen. So, the work of manufacturing plates and dishes was suspended for 5 or 6years at Mirzapur.

In 1951 plaintiff invented this method which has been patented. After this work if manufacturing plates and dishes restarted at Mirzapur and was carried on with success.

Lathe which is known for holding article to be worked upon. Tailstock holds the article in metal spinning by the pressure of pad attached to it. This method was not used and known. Here the Appellate Bench concluded that this involves inventive step and manner of new manufacture and improvement. 'subject matter' is the crucial test and inventive step is the 'another test'.

At the Trial judge found that;

• Manufacture of utensils is an old industry at Mirzapur and at other places in India.
• Lathe is a well-known mechanism used for spinning and other processes.
• Adapters used for holding plates and dishes were used before 1951.
• Mere addition of a bracket did not amount to novelty.

Trial judge followed method of construction and considered the description of invention in the provisional and complete specification and dealt with each claim individually and commented that it is not novelty and well known from decades.

Judge also noted that the inventor did not appear in the witness box. He was the best-informed person who might have answered about lack of novelty. It was his duty to be examined. After collecting evidence and cross examination of witnesses court didn't find any novelty in the alleged invention and patentee himself has admitted in the witness box (Sotam Singh DW3).

Approach adopted by trial court was quite conformity with basic principles on the subject. Patented machine is merely an application of old invention, known from the earliest. This is merely a workshop improvement.