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PETITIONER: BISWANATH PRASAD RADHEY SHYAM

       Vs.

RESPONDENT: HINDUSTAN METAL INDUSTRIES

DATE OF JUDGMENT13/12/1978

BENCH:

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

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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

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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 760 of manufacturing  of dishes  under the  former’s patent. The plaintiff served  a notice  upon the defendant asking him to desist from  infringing  the  plaintiff’s  patent,  but  the defendant continued to infringe the patent.      On the  preceding facts,  the plaintiff  prayed  for  a permanent  injunction   restraining   the   defendant   from adopting, imitating,  employing or  in any manner infringing the device  of the plaintiff’s patent. The plaintiff further prayed for a mandatory injunction requiring the defendant to destroy the  articles  used  for  the  infringement  of  his patent. The  plaintiff further  claimed  a  decree  for  Rs.

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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

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              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. 762           (7)  That the  method of holding an article by the                pressure of  a point  of a  pointed tailstock                was neither used nor known."      On these  findings, the Appellate Bench concluded : "In our  opinion,   the  method  of  mounting  patented  by  the appellant did  involve an inventive step and was a manner of new manufacture  and improvement". In the result, it allowed the appeals,  set aside  the  judgment  and  decree  of  the learned trial  Judge and  decreed the  plaintiff’s suit with costs.      Hence, these appeals.      Mr. Asthana,  learned counsel  for the  appellant,  has canvassed these points:      (i) The  method and  means claimed by the respondent in Patent No.  46368-51 did  not involve  any inventive step or 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

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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

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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

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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; 767      (c)  the   title  of   the  specification  sufficiently indicates the subject-matter of the invention;      (d) the  statement of  claim sufficiently  defines  the invention;      (dd)  the   invention  particularly  described  in  the

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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 768 provided in  Section 13(4)  of the Patents Act, 1970. In the light of  this principle, Mr. Mehta’s argument that there is a presumption  in favour  of the  validity  of  the  patent, cannot be accepted.      The term  limited in  every patent,  for  the  duration thereof, save  as otherwise  expressly provided by this Act, is 16 years from its date.(Sec. 14) The term can be extended if  a   petition  is  made  to  the  Central  Government  in accordance with Section 15.      Section  29(1)  of  the  Act  entitles  a  patentee  to institute  a   suit  against  any  person  who,  during  the continuance of  the plaintiff’s  patent, infringes  it. Sub- section (2)  of the  Section provides  that every  ground on which a  patent may  be revoked  under Section  26 shall  be available by  way of defence to a suit for infringement. The material part of Section 26 reads as under:           "(1) Revocation  of a  patent in  whole or in part      may be obtained on petition to or on a counter-claim in      a suit  for infringement  before a High Court on all or      any of the following grounds, namely:-                (a)  that the  invention has been the subject                     of a  valid prior  grant of  a patent in                     India;                (b)  that the  true and first inventor or his                     legal representative  or assign  was not

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                   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; 769                (h)  that the complete specification does not                     sufficiently and  clearly ascertain  the                     scope of the invention claimed;                (i)  that the  patent was obtained on a false                     suggestion or representation;                (j)  to (n).........................."      The ground is now clear for dealing with the problem in hand.      Although the  defendant had  both in his defence and in the counterclaim  for revocation  of the  patent pleaded six grounds mentioned in Clauses (d), (e), (f), (g), (i) and (b) of  Section  26(1),  yet,  in  this  appeal  before  us  the controversy has  narrowed down  into two issues: (i) Whether the patent  was not  at the  date of the patent, a manner of new manufacture  or improvement;  (ii) whether the invention does not  involve any  inventive step, having regard to what was known  or used  prior to the date of the patent ? At the trial,, M/s.  Biswanath Prasad  Radhay Shyam  had examined 9 witnesses to  show that  the method of manufacture described in the patent has been publicly known and in use at Mirzapur and elsewhere  long before  1951. On  the  other  hand,  the patentee firm,  M/s. Hindustan  Metal Industries, examined 4 witnesses to  prove that  the work of scraping and polishing of utensils formerly done at Mirzapur, was on crude machines and that the machine (Ex. CC) developed by the patentee is a distinct improvement over the machines of the old type.      The learned  trial Judge,  after a careful appraisal of the  evidence  produced  by  the  parties,  found  that  the following facts have been established:           "(i) The  manufacture   of  utensils   is  an  old                industry at  Mirzapur and  at other places in                U.P. and in other parts of 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; 770           (vi) work on  plates and  dishes was  suspended at

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              Mirzapur for a few years before 1951."      The trial  Judge then  found that  mere addition  of  a bracket did  not amount  to a  novelty. He  further observed that Circumstance  VI was  of a natural character because it could  not  be  definitely  held  that  the  work  had  been suspended due  to a defect in the contrivance which was then in use.  It might  well be  due to  labour  trouble  as  the witnesses  examined  by  the  appellant  had  deposed.  From Circumstances I,  II, III and IV, inspection of the machines (Ex. CC  and Ex.  XVI), produced  by the  appellant and  the other material  on record, the trial Court found both issue, set out above, against the patentee-firm.      We have  ourselves examined the evidence on record with the aid  of the  learned Counsel  for the  parties, and have ourselves compared  the machines  (Ex. CC and Ex. XVI) which were produced  before us.  We do  not  want  to  rehash  the evidence. Suffice  it to  say, we do not find that any piece of evidence  has been  misread, overlooked  or omitted  from consideration. The  view taken  by the trial Court was quite reasonable and  entitled to  due weight.  In our opinion, it did not  suffer from  any infirmity  or serious  flaw  which would have warranted interference by the Appellate Bench.      Be that  as it  may, from  the discussion that follows, the  conclusion   is  inescapable  that  the  invention  got patented by  M/s.  Hindustan  Metal  Industries,  respondent herein, was  neither a  manner of  new  manufacture,  nor  a distinctive improvement on the old contrivance involving any novelty or  inventive step having regard to what was already known and  practised in  the country  for a long time before 1951.      Let us  now have  a look  at the invention described in the ’specifications’  and the  ’claims’  in  the  patent  in question. In  the provisional  specification, the  title  or subject of the patent is described as follows:           "Method  of   end  means   for  mounting  metallic      utensils or  the like  on lathe for turning them before      polishing."      The title  of the  patent  mentioned  in  the  complete specification is as under:      "Means for holding utensils for turning purposes". Then follows a  description of the old method of manufacture, and it is stated:           "This invention  relates  to  means  for  mounting      metallic utensils  for the  purpose of turning the same      before polishing  and deals  particularly,  though  not      exclusively, with utensils of 771      the type  which cannot  be  conveniently  and  directly      gripped by the jaws of the chucks and where the utensil      tends to  slip off  the chuck  and a  certain amount of      risk is  involved in  applying the  tool in the turning      operation." Thereafter, the  new method of manufacture is described with reference to  three figures or sketches. The crucial part of this specification runs as below:           "According  to   a  preferred   feature  of   this      invention the  pressure end  of the pressure spindle is      rotatably mounted  and for this purpose it comprises an      independent piece  engaged  by  a  hollowed  end  in  a      spindle, said hollowed end being preferably fitted with      ball bearings  to enable  the said independent piece to      revolve  with   friction  when  it  is  in  contractual      relationship with  the utensil.  This independent piece      may have  a forward pointed end or said forward end may      be a blunt end, the pointed end or the blunt end as the

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    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 772      hollowed end  in a spindle, said hollowed and end being      preferably fitted with ball bearings to enable the said      independent piece  to revolve  with friction when it is      in contractual relationship with the utensil.           4. Means  as claimed  in previous  claims in which      the pressing  or inner  end of  the pressure spindle is      pointed or blunt.           5. Means  as claimed  in  Claim  1  in  which  the      pressure spindle  passes through  a bracket or the like      end said  bracket may  comprise the  arm  of  an  angle      shaped bracket  whose other arm may be fixed to a stand      or the like.           6. Means  as claimed  in Claims  1, 2 & 3 in which      the pressing end of the spindle may be a fixed end or a      revolving end.           7. Means  as claimed  in  Claim  1  in  which  the      adapter is shaped to seat the utensil.           8. Means  as claimed  in  Claim  1  in  which  the      adapter is made of wood or any other material.           9. Means  for holding  the utensil for the purpose      herein set-forth  and substantially  as  described  and      illustrated and utensils so turned."      As pointed  out in Arnold v. Bradbury the proper way to construe a specification is not to read the claims first and then see  what the full description of the invention is, but first to  read the  description of  the invention,  in order that the  mind may  be prepared  for what  it is,  that  the invention is  to be  claimed, for  the patentee cannot claim more than  he desires  to patent. In Parkinson v. Simon Lord Esher M.  R. enunciated  that as  far as possible the claims must be so construed as to give an effective meaning to each of them, but the specification and the claims must be looked at and 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.

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    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- 773      dustry much  before 1951.  So  neither  the  means  for      mounting  and   holding  metallic   utensil   nor   the      independent pressure  spindle can  be  said  to  be  an      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

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single frame  work. In  regard to  the use of the bracket or angle in Ex. CC, the learned Judge held that although it was new, it  was not a new idea, and concluded: "There is hardly any difference between fixing the headstock and tailstock to a common  base (as  the case in the machine Ex. XVI produced by Bhagwati  Prasad) or  fixing the  tailstock in  a bracket which is connected with the framework on which the headstock is fixed.  Whether we  consider Ex. CC as a whole or look at the invention  in its  separate parts,  we do  not find  any novelty in the alleged invention."      In our opinion, the findings of the learned trial Judge to the  effect that  the patent  is  not  a  manner  of  new manufacture  or   improvement,  nor   does  it  involve  any inventive step having regard to what was known or used prior to  the  date  of  patent,  should  not  have  been  lightly disturbed by  the Appellate  Bench. These  were, as  already observed, largely findings of fact, based on appreciation of the evidence  of witnesses  and  the  trial  Court  had  the initial  advantage  of  observing  their  demeanour  in  the witness-box. Moreover,  the approach  adopted by  the  trial Court was  quite in  conformity with the basic principles on the subject,  noticed in  an earlier  part of this judgment. The patented  machine is  merely an  application of  an  old invention,  known   for  decades   before  1951,   for   the traditional purpose of scraping and turning utensils, with a slight change  in the  mode of application, which is no more than a  ’workshop improvement’,  a normal  development of an existing manner of manufacture not involving something novel which would be outside the probable capacity of a craftsman. The alleged discovery does not lie outside the Track of what was known  before. It would have been obvious to any skilled worker in  the field,  in the state of knowledge existing at the date  of patent, of what was publicly known or practised before about  this process, that the claim in question viz., mere addition  of a  lever and  bracket  did  not  make  the invention the subject of the claim concerned. There has been no substantial exercise of the inventive power or innovative faculty. There  is no  evidence that the patented machine is the 775 result of  any research,  independent thought, ingenuity and skill. Indeed,  Sotam Singh frankly admitted that he did not know  whether  Purshottam  had  made  any  research  or  any experiments to  produce  this  combination.  Nor  does  this combination of old integers involve any novelty. Thus judged objectively, by  the tests  suggested  by  authorities,  the patent in question lacked novelty and invention.      We will  close the discussion of trial Court’s Judgment by referring  to a decision of the House of Lords in Harwood v. Great  Northern Dy.  Co. as,  in principle,  that case is analogous to  the one before us. In that case, a person took out  a  patent,  which  he  thus  described:  "My  invention consists in  forming a recess or groove in one or both sides of each  fish (plate), so as to reduce the quantity of metal at that  part, and to be adapted to receive the square heads of the  bolts, which  are thus  prevented from turning round when  the   nuts  are   screwed  on."  His  claim  was  "for constructing fishes  for connecting  the rails  of railways, with a  groove adapted  for receiving  the ends of the bolts employed for  securing such  fishes; and  the application of such fishes  for connecting  the ends  of railways in manner hereinbefore described.  The constructing of fish joints for connecting the  rails of railways with grooved fishes fitted to the  sides of  the rails, and secured to them by bolts or nuts, or  rivets, and having projecting wings firmly secured

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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- 776      quer  Chamber   that  a  mere  application  of  an  old      contrivance in  the old  way to  an analogous  subject,      without  any  novelty  or  invention  in  the  mode  of      applying such  old contrivance  to the  new purpose, is      not a valid subject-matter of a patent."      The above  enunciation squarely applies to the facts of the present  case. We  will now consider the judgment of the Appellate Bench,  which, it  may be recalled, has found that the novelty  and invention  of the patent lay in "the method of holding  an article  by the  pressure of  a  point  of  a pointed tailstock (which) was neither used or known."      This finding,  if  we  may  say  so  with  respect,  is inconsistent with  the Appellate  Bench’s own  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

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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, 778