Topic: Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries

Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries
Supreme Court of India - Date 0f Judgment13/12/1978



ACT:
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 construed.

HEADNOTE:
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]. 758

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, [1896] 14 Pat. Ca. 105; Blackey v. Latham, [1888] 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 Farbwerke Hoechst JUDGMENT:

referred to.

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, [1871] 6 Ch. A. 706; applied. Parkinson v. Simon, [1894] 11 RPC 483; referred to.

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 191/57.

K. B. Asthana and M. V. Goswami for the Appellant. S. K. Mehta and P. N. Puri for the Respondent. 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

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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 as under:

"(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 success. (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.

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(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 novelty.

(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 Act.

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 domain. 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 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, 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 judicial opinion.

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 same hereunder: "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 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 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 Laboratories.

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 as below:

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 specification; (b) the application, specification and drawings    have been prepared in the prescribed manner;

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(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) .................................

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 expedient.

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 proceedings. It is pertinent to note that this    position, viz.    the validity of a patent is not guaranteed by the grant, is now expressly

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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

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;

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(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 India;

(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 1951;

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(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

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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 under:

"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

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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 construed together.

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 commented:

"The pressure    spindle in a lathe is a well known contrivance. Pressure spindle or a tailstock was in use in this in-

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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 invention".

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 invention. 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 1951-52.

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

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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 railways. 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-

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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 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 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 any body 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. M.R.

Appeals allowed