Monsanto Company by Their Patent
Agent, De Penning and Depe Vs. Coramandal Indag Products (P) Ltd. [1986] INSC 6
(14 January 1986)
REDDY, O. CHINNAPPA (J) 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 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]
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.
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 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.
125
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, 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
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 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 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.
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