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PETITIONER: MONSANTO COMPANY BY THEIR PATENT AGENT, DE PENNING AND DEPEN

       Vs.

RESPONDENT: CORAMANDAL INDAG PRODUCTS (P) LTD.

DATE OF JUDGMENT14/01/1986

BENCH: REDDY, O. CHINNAPPA (J) BENCH: 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

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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]

JUDGMENT:      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.

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    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

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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,

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         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

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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

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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

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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. 131