Biswanath Prasad Radhey Shyam Vs.
Hindustan Metal Industries  INSC 255 (13 December 1978)
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
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 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].
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,  14 Pat. Ca. 105;
Blackey v. Latham,  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
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,  6 Ch. A. 706;
Parkinson v. Simon,  11 RPC 483;
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 than a `workshop
improvement'. [770 D-E, 774 F].
759 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
K. B. Asthana and M. V. Goswami for the
S. K. Mehta and P. N. Puri for the
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.
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.
761 (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
"(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
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
(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
(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 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 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
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
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, 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
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
"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 Hind march 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 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
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
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
(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 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
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 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
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 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
(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;
769 (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
(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
770 (vi) work on plates and dishes was
suspended at 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 771 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 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
"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 772 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
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.
With regard to Claim No. 1, the learned Judge
"The pressure spindle in a lathe is a
well known contrivance. Pressure spindle or a tailstock was in use in this in-
773 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
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
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 774 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
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 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 775 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 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
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
(5) and (6), the consolidated substance of
which is to the effect, 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 anybody
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 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 1 777 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.