PATENTING IN INDIA

Prof. Srividhya Raghavan Associate Professor of Law University of Oklahoma College of Law

S e r i e sE d i t o r Dr.V. C . Vivekanandan Professor & Coordinator NALSAR Proximate Education

P.G. Diploma in Patents Law

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© NALSAR University of Law, Hyderabad f o rc i r c u l a t i o nt o NALSAR P r oc a n d i d a t e s

Published by V. C . Vivekanandan on behalf of NALSAR P r o , NALSAR University of Law, Hyderabad

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CHAPTER I Introduction .................................................................... 5 CHAPTER II Patent Legislation – Salient Features .................................. 9 CHAPTER III Procedure For Patent Application .................................... 41 CHAPTER IV Patent Licensing ............................................................. 59 CHAPTER V Patent Search ................................................................ 71 REFERENCE MATERIAL List of Books .................................................................... 81 List of Articles ................................................................... 84 ANNEXURE I Case 1 ......................................................................... 86 Case 2 ....................................................................... 103 Case 3 ....................................................................... 128 Case 4 ....................................................................... 152 ANNEXURE II Patent Offices in India ...................................................... 178

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G. Patents are a way to create wealth for those who obtain a patent Patent policies can be tailored by a country based on its needs to foster and promote industrial development Patents enable research and development Most importantly. Perhaps the most important of intellectual properties is the patents. The roots of patent policies of developed nations can be traced to the post World War II P. In fact western scholars always associate development of a nation with patent policies. The patent policies of Europe and the US enabled it to develop in research and technology and gain global economic leadership position.I AN INTRODUCTION In the previous chapters the concept of intellectual property (IP) and the origin of intellectual property was introduced. patents provide the most fool proof form of intellectual property rights. 2. 4. The patent policy of Japan enabled it to understand and catch up with the American system within a short period of time. 3.AN INTRODUCTION CHAPTER . Diploma in Patents Law 5 NALSAR Pro . Importance of Patent Policy Patent policies have proved to be extremely important for several countries to develop. the patent policy pursued by India enabled it to becoming a big international player in the generic drug market. Patents are most important for these reasons: 1. In fact.

Countries expanded beyond national boundaries seeking superior trade and economic positions to flourish by investing and inventing. Diploma in Patents Law . Patent policies are manifested and implemented as patent statues/ legislations. For example. For example. such rules are 1 Martin J. Before the subject of patents is understood. The patent outlines the gist of the patent system in the country. where the application has to be submitted etc. As early as in the 1800s nations perceived that trade had a direct co-relation to the patent policy of the country.1 This era marks the shift in focus from war to trade.. the Indian Patent Act details what can be patented and that patent applications need to be made in order to get a patent. Patent legislation is what is called the Patent Act. Because of the many benefits and the importance of patents. Now. Thus the patent rules supplement and compliment the patent Rules legislation. certain terms need to be internalized by a prospective patent scholar to even attempt to understand the law of patents. Patent policy details a country’s policy for the patent system. As far as possible these terms are explained in the most logical manner for the reader to understand this in perspective. Adelman et al. The Patent Terms – General Terms Several terms define the various aspects of patents. Some times the patent office issues rules that are within their powers. Cases and Materials on Patent Law 1 (1998) 6 NALSAR Pro P.AN INTRODUCTION era. In the US. those interested in obtaining a patent need to understand what the application should contain. the patent policy of India in the 1950 was to ensure that there was local production of drugs. the subject of patents as such tends to be extremely interesting but very complicated. Hence the patent legislation catered to such a need by so drafting the legislation. The polices are made by the legislature and based on this policy the patent statute is drafted.G. These are called as patent notifications. All these procedural rules are covered in India by the Patent R ules.

Thus there will be no other competing products during the patent term. offering for sale. Such agreements are called as license agreements. Diploma in Patents Law 7 NALSAR Pro . Hence the patent owner can meet the demand of the market by supplying the entire market. manufacture and market the product for a specified period of time. The person in whose name the document is issued is the patent owner owner. This right is the “the right to exclude others from making. What is granted is not merely the right to make. using. These agreements will essentially give the companies and other entities (the licensee) the right to sell. use. This monopoly right is given so that research and development leading to inventions are encouraged. or selling” the invention or “importing” the invention. re-sell etc the invention. but the right to exclude others from making. This means that the government encourages people to invent more and tells that that their incentive for inventing more is the monopoly rights which enables the inventor to make more money during the patent term. offering for sale. the making of the inventions and the working of the P. she gets exclusive rights to sell. Thus the patent owner is vested with exclusive monopoly rights over that product. In return the inventor will get monetary returns termed as royalties. In Europe these same rules are laid down in the form of guidelines or Directives. This means that during the patent term no person other than the patent owner can ever sell the product. This means that the product is patent protected.G. Once a person becomes a patent owner.AN INTRODUCTION laid down in the form of patent guidelines. Lack of competition also allows the patent owner to set a higher price for the product since consumers can only access the patented product. Currently it is 20 years in the countries which re signatories to the TRIPS agreement of the WTO. can also be a patent owner by entering into an agreement with the patent owner. The . This document tells the holder of the document that a particular product is protected by a patent. using. selling or importing the invention. offer for sale. In return the government ensures that the patent owner describes the invention. produce. Sometimes companies or other entities patent owner can also be the inventor inventor. A patent itself is nothing but a document issued by the government. sell or import. This means that the product is protected from duplication and copying. This period is called patent term.

WIPO stands international organization for patent law is WIPO and WT WTO O for World Trade for World Intellectual Property Organization and WT WTO Organization. It then ensures that after the patent term expires. developed countries are the source of research and development. In India there is one central patent office in Calcutta and regional offices in India. Thus the government on the one hand promotes research and development and on the other hand ensures that the public continues to get the benefit from inventions. Hence developed nations wanted what is called as patent harmonization. NALSAR Pro 8 P. Patent Cooperation Treaty etc).AN INTRODUCTION invention in the application. they protect the rights of the inventors by adequate mechanisms. Therefore copying patented products (called as patent infringement) enable those who copy to sell the same products at the cheaper price. These treaties and conventions are enforced by international organizations. The most important O. This will ensure that the rights of patent holders of any country is protected internationally. Diploma in Patents Law . The public make an implied agreement to ensure that they get the benefit of research and development for indefinite period by paying a little extra during the patented term. (TRIPS is one such convention. Other patent conventions are Paris Conventions. WIPO is the main organization for the governance of all the treaties other than TRIPS. In these countries. The term patent harmonization essentially means that patents laws and patent protection becomes very similar across the world in all countries. This affects the right of the patent owner. any person interested can gather the information and manufacture similar or the same product. Such harmonization is attempted through patent conventions or patent treaties. Patents are sought from the patent office by making a patent application. In the US there is only one patent office located centrally at Washington DC. a lot of times patent owners sell products at higher prices. On the other hand. developing nations could survive only with a little copying in specified industrial sectors like pharmaceuticals etc. The WTO governs the trade related aspects of intellectual property rights.G. That is. Most often. Patents also affect trade internationally because of the above.

If the inventions is precisely same (therefore inventions that are not exactly the same but are different even in some minor aspects can still be novel and hence patentable) as the earlier work in the field. These subjects are termed as ‘patentable’ subject matter. However. In India. it is important to appreciate that patents protect inventions that are: 1.G. if the invention is something that a person skilled in that art (that is scientists working in the same area) finds it obvious. Patentable subject matter is normally established by statute. novel. The first issue normally in patents is the subject matter that can be protected by patents. NALSAR Pro P. Diploma in Patents Law 9 . even if the invention is novel. 2002 and finally in 2005 is the governing patent legislation. If the subject matter of the inventions is patentable. 2. it said to lack novelty and therefore will not be patentable. then the requirement for patentability is that the invention has to be new. non-obvious/ with an inventive step and useful. 1970 as modified in 1999.CHAPTER – II LEGISLATION – SALIENT FEATURE Patent Legislation In India – 1970 : An Overview Every study of patents will ultimately focus on the national legislation. the Indian Patent Act. 3. Before understanding the 1970 Act. then it will be denied a patent.

each specifies a novelty that the other covers lack. The other claims that the surface is thick enough to prevent breakage. The other assures a moth flow of water into the mouth through a small nozzle. The third assures quicker heating in microwave. For example. in America there are several existing patents for caps to cover the top of the bottle. However. one cover assures no spillage. In the US. The law degree of the scientist enables him to draft like a lawyer. the specification details the problem the technical problem that the invention solved. Claim drafting is a rather very technical subject. These are not peculiar or unusual inventions in the US. Diploma in Patents Law . a PhD holder in chemistry can ONLY draft a chemical patent. faster heating etc are defined technically by NALSAR Pro 10 P. It is claims that will distinguish one invention from the other. It is not merely the caliber of inventions that gains American so many patents. In fact in order to be patent prosecutor in the US. Though all these are ultimately nothing but bottle covers. Claim serve as the primary source of proprietary rights. one has to clear two bar exams. This job is normally called patent prosecution.G. The third assures easy close without having to keep winding the cover. It does NOT test law – it tests the candidates basics in that area of science in which the candidate wants to prosecute patent applications. The test is conducted by the bar council.PATENT LEGISLATION – SALIENT FEATURES When an invention is sought to be patented. This tests the law and gives the person eligibility to practice any law related subjects. This is to ensure that the patent drafter has a very good understanding of the invention enough to appreciate the scientific nitty gritties. One is the state bar exam. the patent application describes the invention by the use of claims and specification. To draft a biotech patent. It is the degree of sophistication in claim drafting that gives them the ability to bring out very minor differences that ensures America is flooded with invention. Also. Another interesting patent is for the bottom surface of tumblers. This Bar is conducted by the Institute of Engineers. those who aspire to work as patent prosecutors have to additionally pass the Patent Bar. One claims that it enables the glass tumbler to be placed firmly on smooth surface. All these lay man terms of less breakage. For example. patent prosecutors should mandatorily have a doctoral degree in SCIENCE along with a LAW degree. one should get a PhD in biotech and so on. The claims are the concise definitions of various aspects of the invention. In gist.

Diploma in Patents Law NALSAR Pro 11 . “Invention is to find out or discover something not found or discovered by any one before and it is not necessary that the invention should be anything complicated and the essential thing is that the inventor was the first one to adopt it and the principle therefore is that every simple invention that is claimed. Thus in India any ‘new and useful’ invention is a patentable subject matter. the Act) invention: any ‘new and useful invention. AIR 1978 Delhi 1. Section 2 (j) details that an invention has to be a new product or process involving an inventive stepand capable of industrial application. animal or plant life or health or to the environment. P.’ qualifies for a patent under section 2(j). These are: (a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws. In the area of patent law. (c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature. The court held that. The Act under section 3 defines what cannot amount to an invention. would be an invention and the claims and the specifications have to be read in that light and a new invention may consist of a new combination of all integers so as to produce a new or important result or may consist of altogether new integers and the claim for anticipation by the defendant has to be either by prior user or by prior publication”. it is claim drafting that is the most technical and difficult area to learn and accumulate. 1970: Patentable invention : Under the Patents Act.and includes a new and useful improvement over any of them. (b) an invention the primary or intended use or commercial exploitation of which could be contrary public order or morality or which causes serious prejudice to human. The term invention has been defined by the court in Raj Parkash v.PATENT LEGISLATION – SALIENT FEATURES claim drafting. so long as it is something novel or new. Mangat Ram Chowdhary. 1970 (hereinafter.G. Patent Act.

combinations and other derivatives of known substance shall be considered to be the same substance. therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products. (f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way. NALSAR Pro 12 P. Explanation: For the purpose of this clause. easters. (m) a mere scheme or rule or method of performing mental act or method of playing game. (h) a method of agriculture or horticulture. (i) any process for the medicinal. Diploma in Patents Law . polymorphs. diagnostic. curative. (l) a literary.G. particle size. prophylactic. isomers mixtures of isomers. pure form. dramatic. varieties and species and essentially biological processes for production or propagation of plants and animals. metabolites. (j) plants and animals in whole or any part thereof other than microorganisms but including seeds. (g) Omitted. complexes. (k) a mathematical or business method or a computer program per se or algorithms. salts. ethers. machine or apparatus unless such known process results in a new product or employs at least one new reactant. unless they differ significantly in properties with regard to efficacy (e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance. surgical. musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.PATENT LEGISLATION – SALIENT FEATURES (d) the mere discovery of a new form of a substance which does not result in the enhancement of a known efficacy of that substance or the mere discovery of a new property or new use of a known process.

Clause (g) of section 3 excludes ‘a method of agriculture or horticulture’ thereby excluding protection to plant varieties.5 Notably. 1970 A new Plant Variety Protection Act was passed in 1999 to tune in with TRIPS. supra note 6. (o) topography of integrated circuits. 1970 Id. The court have also read the concept of non obviousness into these terms in India. Exclusion of a ‘mere discovery of scientific principle or formation of an abstract theory’4 denies protection to software related material. In this decision. New and Useful : The Act does not define the terms ‘new’ and ‘useful’.PATENT LEGISLATION – SALIENT FEATURES (n) a presentation of information. The ‘law or morality’ phrase in section 3 is used to restrict biotech patents. M/s. Useful: But these terms have been given meaning by the decisions of the court in India. This clause is similar to the exception under art 27 in TRIPS. protection of plant varieties by some form of intellectual property is mandatory under TRIPS. art 27 13 NALSAR Pro P.6 India has enacted the Protection of Plant Varieties & Farmers Rights Act in 2001 to protect IP relating to Plants as per TRIPS provision. (p) an invention which in effect.2 the primary use or intended use of which would be contrary to law or morality or injurious to public health’ are excluded from patentability to3 facilitate compulsory license. Diploma in Patents Law . By this the court held that. 2 3 4 5 6 see Section 3 clause (b) Patent Act. the Supreme Court propounded the test of inventive step. is traditional knowledge or which is an aggregation or duplication of known properties or traditionally known component or components. ‘inventions. TRIPS. The terms ‘new’ and ‘useful’ are comparative to universal requirements of novelty and utility. Bishwanath Prasad Radhey Shyam v. The supreme court in the case of M/ s. reported in (1979) 2 SCC 511: (AIR 1982 SC 1444).G. Notably. Hindustan Metal Industries. Section 3(c) Patent Act.

This test becomes more crucial in the case of new improvements or even combinations. This term merely refers to the fact that if the invention is obvious then it is not patentable. Mere collection of more than one integers or things. it need not necessarily be a new article. Obviousness is to be judged by the standard of a man skilled in the art concerned. not involving the exercise of any inventive faculty. e. Diploma in Patents Law .PATENT LEGISLATION – SALIENT FEATURES “to be patentable the improvement or the combination must produce a new result or a new article or a better or of old than before. In India though there is no test of nonobviousness for patentability.G. lack of utility. Every patent application can be opposed on the grounds of anticipation by prior publication (that is someone else has already published this invention before and hence it is not a new invention). or there may be some ingenuity in the mode of making the adoption”.obviousness in order to be patentable. Noshir Shorabji. In considering whether the claim as made by the inventor is an invention. a patent granted by the patent office can be opposed on the ground of obviousness. intertwined the requirement of non-obviousness within new and useful. Therefore any invention has to pass the test non. The court held that. or a process. does not qualify for the grant of a patent. Obviousness: The term obviousness is also not defined specifically in the Act. …even in adopting the old contrivance to new purpose[s] there must be difficulties to be overcome requiring what is called invention. “New and useful method or manner of ‘manufacture’ need not necessarily be any product i. AIR 1983 Bom 144. ‘it may be any physical phenomenon in which the effect. be it creation or merely alteration may be observed. Patents: In the case of a product. The Supreme Court also held that whether an alleged invention involves novelty and an inventive step is a mixed question of law and fact. The combination article of known integers may be combined that by their working interrelation to produce a new process or improved result. prior use. The courts have also in the case of Press Metal Corporation Ltd v. it will have to be considered whether the subject matter is not obvious.” Process P atents: A patent may be granted for a product. In the case of a NALSAR Pro 14 P. the patent is in the end product. obviousness and lack of inventive step.

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process the patent does not lie in the end product but only in the process of production.7 Reasons for India to exclude the P roduct P atents in certain categories of Product Patents invention under the 1970 A CT . ACT CT. In 1950, foreign multinational made the entire drug supply in India.8 Foreign multinationals controlled more than 90% of the Indian pharmaceutical industry and hence determined supply and availability of drugs.9 Drugs were manufactured outside India and imported for a higher cost. The cost of drugs in India was amongst the highest in the world.10 The drug prices were so high that in 1961, the U.S Senate committee headed by Senator Estes Kefauver observed that India ranks among the highest priced nations in the world for drugs.11 Around the same period the government of India made the first fiveyear plan to carve India’s development path. Statistics reveal that income from industries was as low as a mere 6.6% of the total national income. A mere 8% of the total labor force was working in industrial establishment.12 Epidemic diseases accounted for 5.1% of the total mortality.13 The first fiveyear plan recorded that14 India was then the largest reservoir of epidemic diseases. Poverty was also at its peak in India. Around 50% of India’s population were living under poverty15 and were unable to afford the cost

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Raj Prakash v. Mangath Ram Chowdry., 1978 A.I.R. 1978 (Del.) 1. D. P . Dubey, Globalization and its Impact on the Indian Pharmaceutical Industry, Revolutionary Democracy (April, 1999), available at http://revolutionarydemocracy.org/ rdv5n1/pharmacy.htm Banerji, at 78 Id. Id. First Five Yr. Plan, (1951 – 1956), Planning Comm. Off. Doc., (Vol I & II) Government of India (Jan, 2002), available at http://planningcommission.nic.in/fiveyr/default.html Id. First five year plan World Bank, India shows mixed progress in the war against poverty, 98/1449SAS (Aug. 26, 1997) available at http://www.worldbank.org/html/extdr/extme/1449.htm
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of drugs. Consequentially, life expectancy was very low and mortality rate due to diseases was very high. The central government under the Drugs Act of 1940 imported required drugs since India had no local production of bulk drugs.16 Unable to control the expenditure on drugs the government of India took two significant steps to remedy the situation. First, the government signed an agreement with UNICEF to set up a factory for manufacturing of penicillin and other antibiotics.17 This resulted in the establishment of Hindustan Antibiotic Limited in 1954 to manufacture drugs at a cheaper rate for the public. Next, the government appointed Justice Rajagopala Ayyangar Committee18 in 195719 to recommend revisions to the patent law to suit industrial needs. The object of the committee was to ensure India developed a locally sustainable pharmaceutical market. The committee submitted its report in 1959.20 The report submitted that the patent legislation needed a clear directive. In recommending changes, the Ayyangar committee was bound by the provisions of the Indian Constitution. Article 21 of the Constitution guarantees right to life, which includes the right to good health. The preamble of the Constitution requires policies to balance ‘social and economic’ rights. Hence public health concerns need to be weighed with business interests in
16 Abhijit Dey et. al, Pharmaceutical Marketing In India: A Macroscopic View (Nov, 2001), at http://www.sbaer.uca.edu/Research/1999/SMA/99sma151.htm 17 Hindustan Antibiotics, Profile (1999) at http://www.hindantibiotics.com/htdocs/ profile.html 18 The report of this committee is considered to be the back-bone of the Indian Patent law that was enacted in the year 1970. 19 Between this period and 1950 (in 1950 the Dr Chand report was incorporated), a new Bill based on the UK Patents Act of 1949 was introduced and lapsed in India. 20 V R Krishna Iyer, GATT, TRIPS and Patent Law, The Hindu, September 11, 2000 at 5 where the wide admiration for the Rajagopala Ayyangar report has been recorded in the words of Justice Krishna Iyer, a renowned Judge in India known to fight for the cause of the downtrodden: “….A well-debated, development-oriented and patriotically processed statute of 1970, with a progressive perspective and successful sequel, passed after a thorough study (based on the Justice Rajagopala Ayyangar Commission report) proved a tremendous national triumph for the consumer and the manufacturer alike. This finest and most just parliamentary achievement…….”
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amending the patent legislation. The Ayyangar report argued that a patent policy vesting unrestrained monopoly would deny a vast section of India’s population from access to medicines. The report concluded that a policy with unfettered monopoly rights would violate the preamble of the Indian Constitution. The report studied the patent systems of U.K, Germany and the U.S and pointed that Germany’s weakened patent protection encouraged the growth of chemical industry. Hence the report recommended a compulsory licensing system21 and process patenting of drugs. The Act based on the Ayyangar report and the rules came into force in 1972.22 (Model I has additional details on the issue). Since health care was a major concern, the Drug Price Control Order was also passed in 1970.23 The order gave control over the prices of drugs to the government thus complimenting the compulsory license provisions in the Indian patent legislation.24 The patent policy of 1970 dramatically changed this condition.25 In 30 years, the Indian pharmaceutical industry is valued at USD 70 billion compared to a mere USD 2.1 million before 1970. Currently 24000 pharmaceutical companies are licensed in India. Of the 465 bulk drugs used in India, approximately 425 are manufactured within the country. Indian industry has emerged as a world leader in the production of several bulk drugs.26 Indian industry has emerged as a leader for the production of bulk
21 Id. 22 Patents Act, (1970) (India), 27 A.I.R. Manual 450 (1979) [hereinafter, Patents Act (1970)]. 23 The Drug Policy was established in the year 1978. 24 After the Drug Price Control Order was passed, the government of India placed most drugs under price control. 25 Id. 26 see Martin Adelman & Sonia Baldia, Prospects and Limits of the Patent Provisions in the TRIPS Agreement : The Case of India, 29 Vand. J. Transnat’l L. 507 (1996) arguing that strong intellectual property protection will be in India’s interest given its infrastructure in pharmaceutical production. In contrast, J.H. Reichman uses the same data to argue that free-riding is a way for a developing economy to accumulate the skills and capital necessary to become innovative, but see J.H. Reichman, Compliance with the TRIPS Agreement: Introduction to a Scholarly Debate, 29 Vand. J. Transnat’l L. 363 (1996).

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S.S during the Anthrax scare considered importing cheap generic drugs from India.00. Cipla tries to skirt South Africa AIDS-drug battle. Research and Global access.inflammatory drug Piroxicam costs less than USD 5 cents in India (Rs 14. (Nov 8. 27 (60 cents) per tablet eight years ago in India.04) as against the American price of USD 11. Indian drug-makers export the generic version of Cipro to Russia. NALSAR Pro 18 P.S for USD 5. 2001 at B1 explaining that although Bristol Meyers lowered their prices by 55%. Several companies like Ranbaxy.S. is sold in India for 7 cents a tablet. (Boston) the same drug from the same company costs USD 44. Dr.S. On an average. 29 see David Scondras.G. The U. March 9. 1999) at http://www.8231 is sold in India in capsule form for USD 1. southeast Asia and the Middle East at highly competitive prices. A visit to India – Drug prices.42 per 300 mg. The Wall Street Journal. Bristol Myers offers to sell two AIDS Drugs in Africa below cost. The anti. This is the final price after adding a 200% profit as allowed under the drug price control order. Other than developing indigenous pharmaceuticals.20.28 Most importantly.30 AZT (azidovudine) a drug retailed in the U. 1.org/news0599/0599_visittoindia. Brazil. 28 see Michael Waldholz and Rachel Zimmerman.wired. (May.61) in India compares to USD 12.50 (Rs 592). India has grown as a major player in the international generic drugs market. Reddy’s and Cipla have the potential to become billion dollar companies within the next few years. March 15. 31 Hytrin. The Wall Street Journal. A month’s supply of the drug costs about USD 4. at B6.26 (Rs 613.27 India emerged as a reliable exporter of the generic AIDS drugs in the South African AIDS crisis.48. The cost of cipro currently is Rs. The government of India has 27 see Manu Joseph.50 (4 cents). it was still higher than the price of Indian drug companies.beingalivela.PATENT LEGISLATION – SALIENT FEATURES drugs like sulphamethoxazole and ethambutol. drugs manufactured in India are more than a 100% cheaper than the same drugs in U. the price of antibacterial drug Norfloxacin at USD 6 cents (Rs 33. a sophisticated anti-hypertensive. see also Robert Block. Drug prices in India are one of the cheapest in the world today and are affordable to the population. Indian Cipro copies don’t pay off.48153.html. 2001) at http://www. In the U.1286.77) in America.html. 30 Id.29 For example. 2001. Being Alive. detailing the cost of cipro was Rs. Indian production accounts for nearly 50% of the world production. arguing that drug prices in India are between a 1000 to 4000 percent cheaper than the prices in the U. Wired News.com/news/medtech/0. the patent policy of 1970 has catered to the needs of the Indian poor. Diploma in Patents Law .

In 1994 only 73 drugs remained under price control. became reluctant to sell in India. Institute for International Studies.33 The government responded by steadily reducing price control on drugs. In 1970 most drugs were under price control.stanford. Novel and non-obvious process of making known products are patentable in developed nations (particularly the U. India’s Pharmaceutical companies prepare for 2005. Diploma in Patents Law 19 NALSAR Pro .32 Most multinationals complied with the minimum requirements necessary to maintain presence in the Indian market (such as producing simple formulations from imported bulks). By 1997. by 1984 this was reduced to 347 drugs.com with Ranjit Sahani. President of Pharmaceutical Producers Association of India. in Asia Pacific Research Papers 32 (Stanford Univ.S and Europe) by the 32 Jean Lanjouw. The Indian government assures availability of patented drugs in the market by retaining the power to compulsory license. once major players. 4. at http://www. and to 163 drugs in 1987. multinationals accounted for less than 30 percent of bulks and 20 percent of locally produced formulations. (2000). 35 Interview by Pharmabiz. 33 see Sean Eric Smith.phtml.com/interv/intrv73.asp.PATENT LEGISLATION – SALIENT FEATURES achieved the Constitutional mandate of social and economic balance by setting a maximum sale price while still leaving a reasonable profit.35 Examination of the policies of developed nations on patenting new methods of producing a known product treated in developed nations. (1998) NBER: Cambridge. Interestingly the Indian government has never used the compulsory licensing provision since the enactment of the patent legislation.G. Multinational companies. 2000) at http://APARC.34 In spite of such aggressive development of the indigenous pharmaceutical industry. P.edu.org/intnatl/news/2001-04-12.41. see also Pharmaceutical Research & Manufacturers of America International. (Jan 2002) at http:// www. while awaiting stronger patent protection. MA. The economic brunt of the 1970 patent policy has not escaped India. Working paper. only a mere 30% of India population has secured access to modern medication. The Introduction of Pharmaceutical Product Patents in India: Heartless Exploitation of the Poor and Suffering?. p.pharmabiz. Opening up to the World.phrma. India: A cautionary tale on the critical importance of IP Protection. 34 see supra note 108 – 112 and accompanying text.

37 Scripps Clinic & Research Foundation v. 2d at 838. 1970 states that. Patent Law . Diploma in Patents Law . 2d 834. drug or medicine).36 the plaintiff owned a patent containing process and product-byprocess claims for a shock absorbing shoe innersole made from an elastomeric material and polyurethane foam. 2d 834 (1992). The second manufacturer used a different process to achieve albeit an indistinguishable product. see generally William E. v. also see 974 F. 2d 1565 (1991). Rev. The U. In Atlantic Thermoplastics Co. Currently. the Atlantic Thermoplastics case related to a chemical process. no infringement of product-by-process claim.. 38 Atlantic. Genentech Inc. Faytex Corp. ‘… no patent shall be granted in respect of claims for the substances themselves. 970 F. The issue related to innersoles with elastomeric heel inserts distributed by the defendant. NALSAR Pro 20 P. Faytex Corp... 970 F . thus.PATENT LEGISLATION – SALIENT FEATURES use of process by product claims. both systems facilitate the same result and encourage novel methods of producing known products. Developing countries merely protect the process alone.S does not believe in process patent but facilitates the same result by the use of a process by product 36 see 970 F . This is the equivalent of the process patents of developing countries.38 In effect this judgment allows the patenting of a different processes of producing a known product.G. 927 F . but claims for the methods or process shall be patentable’ (in the case of chemical process. v.Limiting Infringement Protection for Product-byProcess Claims – Atlantic Thermoplastics Co. Defendant bought the product from two separate manufacturers using separate manufacturing process. 27 Suffolk U. Developed nations protect the product using the claimed process. Section 5 of the Indian Patent Act. as it contained all the claim limitations. 2d 1279 Judge Rich dissenting. Interestingly. McGowan. The plaintiff’s suit was against the defendant for infringing the patented process and therefore related to both the manufacturing process. 300 (1993). The Federal Circuit held that the process of one manufacturer infringed the patent. The Federal Circuit overruled Scripps Clinic37 by holding that a product claimed by a productby-process description is only infringed when the allegedly infringing product is produced via the same process described in the claim. substances that are intended to be used as or capable of being used as food. L.

Some generic drugs patentable in developed nation using process by product claim will be unprotected in developing nations.40 TRIPS patent policy requires developing countries to only award product patents. 1970. Local manufacturing requirement necessitates local manufacturing of the patented products to ensure that the patented inventions are worked on a commercial scale in India to the fullest extent reasonably practicable. 2d. P.G. The statement was made on May 14 (1992) meeting of AIPLA (Bulletin). Novel processes will not be patentable in developing countries since these countries do not use process by product claims. 2d 1279 (1992) 40 see Atlantic. 41 Section 94. Diploma in Patents Law 21 NALSAR Pro . The lesson from this is the need to improve claim drafting techniques. 39 974 F . April-June 1992 p.41 Compulsory license is granted under Section 84 of the Act. inventions patentable in developed nations by use of process by product claim will fall outside TRIPS compliant patent legislation of developing nations. Consequentially. Compulsory licenses and working of patents : The Ayyangar committee patents: recommendations to balance economic and social justice resulted in provisions on compulsory license and local manufacturing of patents.PATENT LEGISLATION – SALIENT FEATURES claim. the Assistant Vice President to the Pharmaceutical Manufacturers Association. where Judge Rich quotes a statement (made by Roger A Brooks. 974 F . ‘…innovative R & D is not going to be encouraged by the rule just laid down by the Atlantic Panel’. 475) discussing the cost of research and development and that. Any interested third party can seek a compulsory license after three years of grant of patent on the grounds that either the patent has not been worked in such a manner as to satisfy the reasonable requirement of the public or that the patented invention is not available at a reasonable price. Compulsory licenses enable the government to intervene if the patents are not worked for the benefit of the people. The controller of patents can compulsorily licenses the patent taking into account several factors including the nature of the invention and the ability of the applicant to work the invention to the advantage of the public. A careful study of Judge Rich in his overly harsh dissent criticizing the Federal Circuit for refusing to rehear Atlantic Thermoplastics case39 en banc reflects this argument. Patent Act.

since the license of right is deemed on inventions relating food. drug and erm: medicines for a term of five years from the date of sealing or seven years from the date of filing a complete specification. Satisfying the reasonable requirement of the public is a precondition to avoid compulsory licensing of the patent. 1970 NALSAR Pro 22 P.PATENT LEGISLATION – SALIENT FEATURES Alternatively. the establishment or development of commercial activities in India is prejudiced. However. The concept of licenses of right is alien to TRIPS. whichever is shorter. exclusive protection is effectively provided only for 42 Section 90 1(a) (iv) Patent Act. Licenses of right are granted on the same grounds for which compulsory licenses are granted.G. Article 27(1) of TRIPS deems importation as amounting to working the patents. Under section 86 (2). Section 90 of the Act deems that the reasonable requirement of the public is not satisfied unless the invention is worked in India. inventions entitled to process patents under section 5). The reasonable requirement of the public is also prejudiced under section 90. if by reason of the refusal of the patentee to grant a license. This section stipulates that patent rights shall be enjoyed “without discrimination as to the place of invention. field of technology and whether the products are imported or locally produced. medicine. Section 87 deems that a license of right is endorsed after three years from the date of sealing the patent for inventions in food.” TRIPS does not distinguish an importer from a local producer and vests the same rights on both. drug and chemical processes (that is. Diploma in Patents Law . TRIPS provides for compulsory license under article 31 subject to certain terms and conditions. the controller can issue an order to endorse the patent with a ‘license of right’ if the controller is satisfied with the arguments of the central government.42 Non-working the patent in India. the central government has the right to make an application requesting the controller to endorse a patent with the ‘license of right’. under section 86. A patent subjected to either a compulsory license or a license of right is open under section 88 for any person interested in working the patent to acquire a manufacturing license even if the patentee is not interested. Term : Section 53(1) of the act vests process patents in food. or manufacturing abroad and importing into India can be construed as violating section 90. drug and medicines after 3 years.

Art. India was required to fulfill this obligation by January 1. Diploma in Patents Law 23 NALSAR Pro . Article 34 vests the burden of proof on the defendant. The U. obligates developing countries to provide for a mailbox mechanism for depositing applications and an exclusive marketing regime right (hereinafter. During this time. or if an identical product is made and the patent owner is unable to determine the process used.43 Burden of proof: No provision in the Indian patent act clearly vests the burden of proof on either party. India could not afford to violate TRIPS and face trade sanctions impacting Indian exports. the Nagpur high court established in 1953 in the Bombay Agarwal v. The applicant is entitled to an exclusive marketing right over the product provided that a “patent application has been filed and a patent granted for that product in another member state and marketing approval has been obtained in such other member”.S. This contravenes article 34 of TRIPS. Patents protection for other inventions are available for a period of fourteen years as against the twenty years prescribed in TRIPS.) 154 P. However. Ramchand Diwan Chand44 that the ‘onus of proving infringement lies upon the plaintiff. This article applies if a new product is obtained by the patented process. 44 e. 65 (2) and (4) of TRIPS. 1999 Article 27 of TRIPS provides that members are obligated to provide patent protection for any invention.R. The mailbox provision mandates that such a facility should be available during the interim five years (until 2005) or until the time the product patent was introduced. Article 65 gives India until 2005 to establish its product patent regime. 70 (8).G. 1953 A. was extending preferential 43 TRIPS.PATENT LEGISLATION – SALIENT FEATURES three years.. The plaintiff not only has to prove the patent in his favor but also that the patent is being infringed by using a process patented by the plaintiff’. Patent Amendment Act.g.I. 1995. Furthermore. (Nag. EMR) for such inventions during the interim period. art 33. read with Art. in all fields of technology without discrimination based on the place of invention or production or field of technology. whether products or processes.

the biggest impediment to the implementation of the EMR legislation was the fear that the cost of medicines would increase substantially. Diploma in Patents Law . citing India’s poor protection of U. The Ordinance became effective on January 1.S. The Patents (Amendment) Bill of 1995. revoked duty-free treatment under the GSP for India’s exports of pharmaceuticals. the United States asked NALSAR Pro 24 P. The U.PATENT LEGISLATION – SALIENT FEATURES tariff treatment under the GATT Generalized System of Preferences (GSP). They argued that foreign drug companies would get the right for exclusive marketing in India before going through an examination in India. However. the party was forced to take an ambiguous position in fear of special 301 on one side and local politics on the other. promulgated the Patents (Amendment) Ordinance to amend the Patent Act of 1970 and provide for an EMR. which was intended to give permanent legislative effect to the provisions of the Ordinance. In fact. 1994. Congress (I) understood that patent amendments would directly affect the party’s popularity amongst people. but unfortunately lapsed in the Rajya Sabha. Congress (I) was aware that local economic conditions would impede amendments to the Patents Act.G. patented drugs resulting in a levy of $ 60 million thus reducing Indian exports. However. the Ordinance lapsed on March 26. On the other hand.S.1995 since legislation of this kind ceases to apply at the expiration of six weeks from the re-assembly of Parliament. was passed by the Lok Sabha in March 1995. Hence. 1995 and India notified the Council for TRIPS as required under Article 63(2) of TRIPS. It was also feared that the Indian drug companies would be driven out of business. 1970. Amidst all of this. Therefore. India did not fulfill its obligation to have a transitional system within the stipulated time period. Therefore the Patents (Amendment) Bill lapsed with the dissolution of the 10th Lok Sabha on that date in November 1995. thereby leaving the ground open for foreign multinationals to take over the market. Indian drug manufactures also felt that EMRs did not address domestic production. In order to fulfill the TRIPS obligations. Indian Drug manufacturers believed EMRs would lead to the destruction of the local drug industry and that it was more restrictive than even the product patent regime. the President of India on December 31. The Indian sentiment over the introduction of EMRs also accounted for the lapsing of the bill.

The U. 1996. the US asked for a consultation. With regard to Article 70(9).S. Diploma in Patents Law 25 NALSAR Pro .PATENT LEGISLATION – SALIENT FEATURES for a consultation on July 2. The Panel ruled that India was in default of its obligations because the administrative notifications could not be considered as a compliance with the requirements in TRIPS.S. the Appellate Body agreed with the Panel that India should have had a mechanism in place. This consultation failed on July 27. the appellate body upheld the P. Aggrieved by the decision of the Panel. Notwithstanding the above. India argued that as a developing country it was entitled to delay the process under Article 65 (2) for a period of 4 years. 1996 under Article 4 of the Understanding on Rules and Procedures Governing the Settlement of Disputes read with Article 64.G. Moreover. The second was whether there was a requirement under Article 70(8) to provide for exclusive marketing rights from the date of entry into force of the Agreement. The first concerned the proper interpretation of the word “means” in Article 70(8) of the TRIPS Agreement. The U. India raised three main issues at the appellate level. 1996 a panel was requested by the US which the Panel agreed to take up on November 20. However. then requested the Dispute Settlement Body (‘DSB’) of the WTO to examine whether India had defaulted in its TRIPS obligation. The Appellate Body agreed with the Panel. argued that the mere fact India felt the need for an ordinance at the outset indicated that there was a need for a formal legislation. to provide for the grant of exclusive marketing rights effective as from the date of entry into force of the WTO Agreement. On November 7. by Article 70(8)(a). The Panel also held that India was obligated under 70(9) to have a transitional system in place immediately and not after five years. to provide a legal mechanism for the filing of mailbox applications that provides a sound legal basis to preserve both the novelty of the inventions and the priority of the applications as of the relevant filing and priority dates and held that “administrative instructions” did not constitute a sound legal basis. India argued that the applications for chemical and biological patents were being filed in the patent office which in itself constituted an effective means as required by TRIPS. 1996. India said that its patent legislation had been supplemented by administrative notifications that had the force of law. and was of the view that India is obliged.

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ruling of the Panel and India lost the appeal. After the decision of the appellate tribunal of the WTO, India was forced to amend the Patent Act to avoid facing trade sanctions. Hence both the BJP and Congress party (which were at that time the opposition and the ruling parties respectively) were forced to put the much-delayed legislation in place. The Patent First Amendment Act was thus passed in December 1999.

Patent First Amendment Act of 1999:
This amendment introduced Chapter IVA dealing with exclusive marketing rights. The amendments under Section 24A(1) mandated the Controller to refer every application seeking an EMR to an examiner to see whether it is an invention for which a patent can be granted under Section 3 and 4 (and not under Section 5 which previously excluded drugs etc). Unless the Controller is satisfied that the claimed substance will not qualify for a patent under Section 3 of the Act, (in which case he can reject the application), he may proceed to grant an EMR. Section 24A(2), read with Rule 33G, allows the Controller to conduct tests and report it within 90 days thereby avoiding delays. The critical aspect is the issue of subjectivity vested in the Controller to determine whether it is an invention falling within Section 3 and 4. This will be the decisive factor for granting the EMR and it cannot be avoided since the office mechanism is not well equipped to accommodate a more expansive process. Section 24B(1)(b) authorizes the grant of an EMR for five years for inventions made in India on or after January 1, 1995 and for which a claim for process patent has been made, and granted. This provision has been criticized as being discriminatory on the basis of place of invention and contrary to the national treatment provision of TRIPS. However, the discrimination here is actually not on the basis of place of invention but on the grant of a process patent. The Act provides for this discrimination because in India there will only be process patent applications (as the product patent regime is not in place yet) and this can be disadvantageous to the applicant. In the case of substances that can be used as medicines or drugs, Section 24B(2) provides that prior publication or use, before the filing of the claim for patent by the applicant either in India or in a convention country, will not constitute EMR infringement. This implies that such prior use excludes use
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by the third persons. The section also does not specify whether such use by a third person (or even by the person himself), will bar the patentability of the invention (as in the United States). If patentability is not barred, then a person who clearly has an unpatentable invention is getting an EMR for five years. If patentability is barred, then it violates section 13. Section 13 bars patentability if the document has been published earlier in India or abroad. To qualify as a prior user, commercial use by the third party should be mandatory. Rule 33F of the draft rules states that documents relating to specifications and trial or use referred to in Section 24B(2) shall include public documents, public trials or use. Interestingly Rule 33F specifically excludes personal documents or secret trials or use. In doing so, this Rule implies that such a secret use by a person who later applies for a patent can constitute EMR infringement.

Patent First Amendment Rules, 1999:
The Patent Rules of 1972 provide the details of patent procedures. The first amendment to the patent act in tune with the international obligations resulted in the amending of the patent rules. Though the general procedure remain the same, this amendment incorporated several amendments in tune with the Patent Co-operation Treaty, 1970 (hereinafter, PCT). India became a signatory to this treaty in the year 1998. This treaty does not make any difference to the substantive patent law. It merely facilitates the procedure of patenting. Before the pct, even patent applicant had to apply for patents in each country where he proposes to market the invention. Other than the cost of making several applications in several countries using different currencies, the biggest hassle also was handling the procedural aspects and requirements in various legal system. Therefore the PCT was evolved with a view to reduce the burden on the inventors. PCT contemplates the making of a single application to get seek patent protection in several countries. Every country that is a signatory to the PCT therefore is bound to establish mechanism that enables the host country’s citizen’s to apply for patents in other countries. At the same time, the host country should also facilitate citizens of the PCT member countries to apply in their country. This application processes has been facilitated by the Patent (First) Amendment Rules. However, is it important to understand a few terms and procedural
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requirements before the PCT requirements can be understood. Therefore the entire issue of application within India, application for an EMR and PCT application is discussed in the next chapter. The next chapter will deal with procedures for patent application. The last chapter will deal with issues related to patent search.

Patent Second Amendment Bill Legislative action for Second Amendment:
Other than the EMR, India had one more milestones to cross the TRIPS barrier. This is to introduce product patents by January 1, 2005. The Patent Second Amendment Bill of 1999 was introduced in the Upper House on December 20, 1999 to cross the first milestone (and avoiding running into the DSB in Geneva). This bill sought to amend the Patent Act to make changes that were required immediately. A subject-by-subject discussion of each area sought to be amended by the second amendment is provided below. 1. P atentable Inventions: The Second Amendment Bill seeks to amend Patentable the definition of ‘invention’ in Section 2(j). The definition introduced in the second amendment requires that an invention should have an “inventive step” and is “capable of industrial application” which are synonymous with “non obvious” and “useful”, respectively. This new definition will perhaps force a different treatment of “inventive step” for the test of patentability and for the opposition procedure. 2. Exclusions from patentability: The Bill amends the existing Section 3 which provided a list of exclusions from the definition of invention to be in line with TRIPS. The new definition excludes, in sub- section 3, inventions whose “primary or intended use or commercial exploitation” is contrary to law and morality. The exclusions regarding primary and intended use, however, may also be contrary to Art. 27(2) of TRIPS which limits exclusions from patentability to “inventions,… the commercial exploitation of which is necessary to protect ordre public or morality”. That is the exclusions in TRIPS can only be made if it affects the ordere public. The proviso to Art 27(2) envisions that “such exclusion is not made merely because the exploitation
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The best solution is to possibly include it. P. This provision will go a long way in avoiding the turmeric and neem type disputes for India. The term begins from the date of filing of sealing the patent. the grant of a patent will always rest on very subjective factors. it does not specifically prohibit Members from seeking the source and origin of biological material. these exclusions will not be construed too strictly. Application R equirements: Section 8(d) of the proposed bill amends Requirements: Section 10 of the IPA (relating to the specification) and requires “an abstract of the technical information” of the patents. are harmonized or. However. there is neither a definition of the term “abstract” nor is there any criterion for the kind of technical information that is required. The bill removes Section 86 to 88 of the IPA which previously provided the right to the Central Government to seek a “license of right” over patents not worked for three years in India. interpretation. Three years after a patent is sealed. Section 8 also requires identification of the source and origin of the biological material in the specification. Compulsory Lice nsing: Chapter XVI of the Patent Act provides for Licensing: compulsory licensing . Regardless of how the IPA is amended to suit TRIPS. etc.PATENT LEGISLATION – SALIENT FEATURES is prohibited by their law”. at least clarified. any “interested party” can allege that the invention is not reasonably available to the public and can request the grant of a compulsory license.as a necessary safeguard for protecting the public interest. However. Diploma in Patents Law 29 NALSAR Pro . but as falling within the criterion of anticipation and obviousness within the Patent Rules. T erm and Date: The proposed bill amended the 14-year term to 20 Term years beginning from the date of the filing of the application in tune with Article 33 of TRIPS. Although such a requirement is not envisioned under TRIPS. 3. 4.G. 5. India also excludes the patenting of computer software and business methods patents specifically and biotech patents by implication. not as a requirement of the application. unless the law and the rules relating to claims and specifications including drafting. TRIPS envisions the exclusions in the Indian legislation are line with the international trend of patentability. (developing countries got concessions in this meeting). in view of the recent WTO meeting at Doha.

It is a fact that local manufacturing in India.” The Indian Government opines that its provision is in line with Article 31 of TRIPS that allows for the use of the patents within certain terms and conditions. field of technology and whether the products are imported or locally produced. dependent patents.PATENT LEGISLATION – SALIENT FEATURES The bill also amends Section 90 which deemed that reasonable requirements of the public are not satisfied if the invention is not manufactured in India or the patentee refuses to grant a license. Interestingly. Article 27. the bill introduces non-working in India as a specific criterion for the revocation of the patent. will go a long way in reducing cost of the product. but there is a likelihood of it being interpreted as violating the right of the patent holder to import as established under Art. which provides non-working in India under certain circumstances as a ground for imposing a compulsory license. a specific inclusion has been made enabling third parties to seek for a compulsory license on the ground that the invention is not manufactured in India. The criterion to be considered by the Controller to grant a compulsory license under Section 85 has also been amended to include a national emergency. more than 80% of the patents owned in India are owned by foreign multinationals. thereby removing a presumption that requirements of the public are satisfied based on local manufacture. This is envisioned as a balancing mechanism. After all. however. where labor and raw materials are cheap. NALSAR Pro 30 P. Diploma in Patents Law . It is also interesting to note that several countries including the Honduras. Brazil (which has several types of compulsory licenses. (and local manufacture is not one such criterion). Similarly. etc. Section 90(c). under Section 84. public interest and abuse of the rights) and China have incorporated provision relating to compulsory licensing. in Section 89. The foreign multinationals. The Indian Government also pointed out that there have been no instances of misuse of the provisions relating to compulsory licensing in India since 1970. It would be prudent to wait and watch the Government’s use of the provision before assuming the worst. including for lack of local working. 27 and Art.1 of TRIPS provides that patent rights shall be enjoyed “without discrimination as to the place of invention. 28 of TRIPS. national emergency.G. are skeptical that once the product patent regime comes into place the Government could potentially misuse the same. Argentina. has not been revoked.

G. as introduced in the bill. Therefore. the 1999 Bill includes Section 107A(b) detailing that importation of a patented product form a “person duly authorized by the patent holder” license holder will not amount to infringement. Right to import & parallel import: The IPA did not vest on the patentee or the license holder the right to import a patented product into India. See generally. is always less. This is a very welcome provision and is absolutely required considering that the bargaining power of an individual or company. thus favoring local manufacturing. This argument would completely beat the object of TRIPS and to some extent patents itself. Section 95A. compared with a patent holder. However. the exhaustion concept is also based on an implied license and therefore suggests that a buyer can remanufacture the goods and import it into the same market for lesser cost. Thus it opens the market more for foreign companies. the WTO and Developing Countries : The TRIPS Agreement and policy options. 1. The Indian Government considered the argument of “exhaustion” applies and allowing cheaper parallel imports. The bill provides for an appeal before an Appellate Board. the bill introduces Section 107A(b) which states that the importation of a patented product from a duly authorized license holder will not amount to infringement. on decisions of the Controller. Intellectual Property. 80-84 (Third World Network. also provides for revocation of the compulsory by the Controller himself if the circumstances that gave raise to it ceases to exist. including a grant of a compulsory license. where the patent holder imposes a condition for a grant back. Carlos Correa. Diploma in Patents Law 31 NALSAR Pro . 45 However. After the second amendment almost all of the restrictions on the need for local manufacturing had been removed. 45 This is very similar to the expressions of Prof Correa of Brazil. Hence there was a need to ensure the accessibility of products in all ranges of cost for the Indian consumers. India debated on whether to include this provision specifically or whether there was a concept of exhaustion – that is. Similarly. prevention of challenges to the validity of the patent is deemed to be against public interest. the patent holder does not have any control over a buyer or a licensee once the product has been out in the market.PATENT LEGISLATION – SALIENT FEATURES The bill also introduced a checking mechanism that requires an applicant for a compulsory license to prove that she approached the patentee with reasonable terms for a license. 2000) P.

The only reason that this is being asked is because of the obvious market advantages enabling the patent holder to reap the benefits of the market for another five years. “Bolar” Provision: The United States permits testing to establish the bio equivalency of drugs the expiration of the term of the patent.3 of TRIPS Is essential meant for data protection49 relating to trade secrets and therefore does NOT obligate any country to provide such a protection under the patent laws. 1984.47 The multinational companies48 have sought the inclusion of the following: a) inclusion of the data exclusivity provision detailed under article 39. (Copy on file with the author). Assuming this provision is introduced in the patent law the injunction has to be obtained from the civil courts and therefore there will not be any additional advantages on account of the same. a right to obtain an injunction for acts not directly linked to production. under the Civil Procedure code it is possible to get an injunction as a relief for such acts. 2000). NALSAR Pro b) c) 32 P. Diploma in Patents Law .46 One the other hand.”any act of making or using a patented invention within three years before the expiry of the term of the patent by any person for the purpose of development and submission of information to any regulatory authority responsible for grant of marketing approval for the product of invention” 48 See note 122 49 Corporate Law Group. It is notable that in India. 1970. 1999.….PATENT LEGISLATION – SALIENT FEATURES G. Restoration of the term of patent lost due to delays in obtaining the original regulatory approval. stock piling before the expiry of the term of the patent is prohibited. Report on the proposed Y2K changes to the Indian Patent Act. 47 Section 107A:. (November 16.G. Prohibition on approval of the generic drugs for sale in India during the term of the patent to ensure that by the time the approval is obtained another few years passes and the market share of the patent holder is 46 This is done to facilitate the generic drug market and is done in exchange for extending the patent term of the drug for a period of an additional five years under the US Drug Price Competition and Patent Term Restoration Act. A similar provision is sought to be introduced under Section 107A of the second Amendment Bill.

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intact during this term. This extends way beyond the scope of the term of patents stipulated under TRIPS. The reason quoted for seeking such an obligation is that the United States law allows such a bolar provisions. However, TRIPS nowhere obligates India to follow the United States law nor does TRIPS obligate India to provide more than a level playing field for the pharmaceutical companies. It is notable that the provision seeking for the prohibition of the generic drugs sale could be read as unconstitutional50 affecting the right for equal opportunities. The companies that seek these extensively pro market provisions in Indian law quoting the American law should be aware that in the United States there are more stringent medical and FDA guidelines that serve by themselves as a check on the excesses. However, till such laws are in place in a country like India where excesses are even likely to go unnoticed because of bad enforcement mechanisms (and unfortunately TRIPS is not linked with such other legislation) such provisions may have an adverse effect on the public health and history does reveal that even companies like Pfizer51 thaht follow the guidelines in the US have disregarded public health and individual dignity for profits. The Canadian patent law has a similar provision with a condition that the patent holder should be given a notice of the intention to use the invention. The law that was introduced in Argentina in 1996 has a similar law that is not linked with the extension of the term52.

50 Article 21 of the Constitution of India, 1950 51 Joe Stephens, The Body Hunters: As drug testing spreads, profits and lives hang in balance, (Pt.1), The Washington Post, A01 (December 17, 2000). This article, the first of a series of six articles, details some of the experiments that are conducted in the third world without any corporate ethics whatsoever on innocent children. It particularly details the studies conducted by Pfizer and its experiments even though authorities never approved marketing the antibiotic for children in the USA. Pfizer specifies that though an experiment of this nature would never have been cleared in the USA, it won independent approval of the authorities in Nigeria. Such a situation of approval is similar to what is likely to happen in India and hence it is imperative that the Indian law is not as market oriented as the American law is in some specified areas. 52 Supra note 121

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PATENTS (AMENDMENT) ACT 2002-Salient features
a) b) The definition of the term “invention” was modified in consonance with international practices and consistent with TRIPS Agreement. Section 3 of the present Act was modified to include exclusions permitted by TRIPS Agreement and also subject matters like discovery of any living or non-living substances occurring in nature in the list of exclusions which in general do not constitute patentable inventions and also to specifically exclude the inventions which in effect are traditional knowledge. The rights of patentee was aligned as per Article 28 of the TRIPS Agreement. A provision for reversal of burden of proof in case of infringement, suit on process patent, in accordance with Article 34 of the TRIPS Agreement, was added. Uniform term of patent protection of 20 years for all categories of invention as per Article 33 of the TRIPS Agreement was prescribed. The provisions relating to compulsory licensing was modified to suit the public interest requirements and also to comply with TRIPS Agreement A provision was incorporated for enabling parallel import of patented products at lowest international prices. To ensure smooth transition of a product from the monopoly status created by the patent to the public domain, a provision was incorporated for obtaining marketing approval from the appropriate regulatory authorities before the expiration of the patent term. Several provisions was incorporated for protecting bio-diversities and traditional knowledge. The provisions relating to national security was strengthened. A provision was incorporated for hearing of appeals which at present, lie before High Court, by the Intellectual Property Appellate Board, for speedy disposal of such appeals Several provisions was incorporated with a view to simplifying and rationalizing the procedures.
34

c) d)

e) f)

g) h)

i) j) k)

l)

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P.G. Diploma in Patents Law

PATENT LEGISLATION – SALIENT FEATURES

Additionally the Term of every patent which is in force including a patent restorable U/S. 60 as on 20.5.2003 has now become 20 years from date of filing. Time for restoration of a ceased patent U/S 60 has now increased from 12 months to 18 months; as such an application for restoration of a patent ceased on or after 20th May, 2003 can be filed within 18 months from the date of ceasing. A new definition of “Invention” meaning a new product or process involving inventive steps and capable of industrial application has now come into force. A method or process of testing during the process of manufacture will now be patentable. Process defined U/S 3(i) in case of plants, are now patentable while a process for diagnostic and therapeutic has now been considered as non patentable. A list of Authorized Depository Institutions have been notified in the Gazette Of India, Part II, Section 3 sub-section (ii) dated 20.5.2003 for depositing the biological materials mentioned in the specification at the time of filing a patent application. The source of Geographical origin of the biological material used in invention is required to be disclosed in the specification. 18 months publication has been introduced, therefore, every patent (except in which a secrecy direction is given U/S 35) will now be published just after 18 months from the date of filing/priority and will be open for public on payment. As such the filing intimation being published in the Gazette immediately after filing has been stopped. A request for examination system has been introduced and therefore all the patent applications in which First Examination Report has not been issued on or before 19th May, 2003 will now be examined U/S 12 only after filing a request for examination on Form –19 with prescribed fee. The applications for patent will now be examined in serial order in which the request for examination is filed. In case the application has been filed before the commencement of this Act, the request shall be made within a period of twelve months from the date of commencement of the Act i.e. 20th May 2003 or 48 months from the date of application, whichever is later. Provision for filing request for examination by any other interested person (other than applicant) also has been introduced. Provision for the
NALSAR Pro

P.G. Diploma in Patents Law

35

due to the late grant of patent can now be paid within 9 months from the date of record by taking an extension on Form-4. following shall be substituted. f. Provision for extension of time up to 6 months for paying the overdue renewal fees initially i.–In section 3 of the principal Act. b. Amendment of section 3. inventions limited to the fields of defence purposes or atomic energy has been reintroduced. for clause (d). renewal fees. Ground of opposition U/S 25 as well as revocation U/S 64 have been enlarged by adding following ground: a. disclosure or wrongly mentioning the source of geographical origin of biological material used for invention. In other words if the applicant can substantiate that it is new use for a known substance with some technical input such new use can be patented. 12 month priority will also be available to applications filed in EPO. e. the 3. application will be deemed to have been abandoned.1 1 53 . AIRPO. Time for putting the application in order for acceptance U/S 21 has now been reduced from 15/18 months to 12 months. therefore. d. if the applicant does not file reply statement and evidence. c. Anticipation having regard to the knowledge oral or otherwise available with in local or indigenous community in India or elsewhere. OAPI and EAPO. fixing hearing is not compulsory.e.G. the amendment now says “Mere new use for a known substance” is not an invention. In the definition of what are not inventions. namely:—“(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of 36 NALSAR Pro P. Patent (Amendment) Act 2005 –Salient Features53 1. Provision for allowing Paris Convention Priority has been extended to group or union of countries or inter governmental organizations. Diploma in Patents Law . Fees required to be paid on documents can now be paid within 1 month from its date of filing.PATENT LEGISLATION – SALIENT FEATURES withdrawal of application by applicant any time before grant has been introduced. which have become due. Section 39 in modified form prohibiting filing patent application outside India. Opposition Proceedings U/S 25 have been simplified and shortened.

no patent shall be granted in respect of claims for the substances them selves. 4. Inventions where only methods or processes of manufacture read as Chapter IIpatentable (1) In the case of inventions. The provision prohibiting product patent for food. drug and chemical processes has been removed. Diploma in Patents Law 37 NALSAR Pro . in the manner provided in Chapter IVA. semiconductors and inter-metallic compounds). as food or as medicine or drug. Method of tax collection. mixtures of isomers. food and chemical processes is implemented in India. The scope of patentability of a computer program has now been widened and is more or less on lines with US Patent grant. 2 3(K) a mathematical or business method or a computer program perse or algorithms. 3 Omission of section 5. Business method in the field of accounting. drug. polymorphs. machine or apparatus unless such known process results in a new product or employs at least one new reactant. In India with effect from 1st January 2005 product patent is available for medicine. In such cases the claims are treated as relating to software perse. combinations and other derivatives of known substance shall be considered to be the same substance. without prejudice to the other provisions of this Act. particle size. 3. Product patent regime in respect of drug. This is the most important amendment introduced by the new Ordinance. as medicine or drug. unless they differ significantly in properties with regard to efficacy. or capable of being used. [(2) Notwithstanding anything contained in subsection (1). esters. Explanation.5.G. Computer program product is claimed as “A computer program product in computer readable medium”. medicine. metabolites. salts. except the medicine or drug specified under sub-clause (v) of clause (1) of sub-section (1) of section 2. but claims for the methods or processes of manufacture shall be patentable. complexes.3 that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process. may be made and shall be dealt. or (b) relating to substances prepared or produced by chemical processes (including alloys.(a) claiming substances intended for use.PATENT LEGISLATION – SALIENT FEATURES 2. optical glass. pure form. irrespective of the medium of its storage and are not held patentable.”. or capable of being used. isomers. chemical processes and food. Examples in respect of other categories of subject matter are Scheme or method of bookkeeping.2 A mathematical method or business method or algorithms are not patentable. a claim for patent of an invention for a substance itself intended for use.] P. medicine. ethers.—For the purposes of this clause. “A computer-readable storage medium having a program recorded thereon”.–Section 5 of the principal Act shall be omitted.original act . etc. A computer program per se is not patentable but its “technical application to industry or a combination with hardware” is patentable.

Opposition to the patent. the application shall be deemed to be abandoned.5 Provisions relating to Exclusive Marketing Rights (EMR EMR) have been EMR removed. request the Controller to publish his application at any time before the expiry of the period prescribed under sub-section (1) and subject to the provisions of sub-section (3).— “(1) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification.–In section 11A of the principal Act. any person interested may give notice of opposition to the Controller in the prescribed manner… (3) (a) Where any such notice of opposition is duly given under sub-section (2).4 A patent application shall be examined only on a request in prescribed manner.G.–For sections 25 and 26 of the principal Act. namely:—“25. (b) On receipt of such notice of opposition. the Controller shall publish such application as soon as possible 6 Substitution of new sections for sections 25 and 26.— sub section(2) The applicant may. food. the Controller shall. (c) Every Opposition Board constituted under clause (b) shall conduct the examination in accordance with such procedure as may be prescribed. (4) On receipt of the recommendation of the 4 6. the following sections shall be substituted. EMR provision was introduced in India in the year 1999 in compliance with TRIPS as product patent for drug and medicine was not available in the Indian Act.”. the Controller shall notify the patentee. medicines. constitute a Board to be known as the Opposition Board consisting of such officers as he may determine and refer such notice of opposition along with the documents to that Board for examination and submission of its recommendations to the Controller.–In section 9 of the principal Act. Diploma in Patents Law . a complete specification shall be filed within twelve months from the date of filing of the application. Otherwise the application shall be deemed to be abandoned. As product patents can now be granted for Drugs. and chemical processes the EMR provision has become redundant and has been repealed. in the prescribed manner. Amendment of section 9. 7. and if the complete specification is not so filed. any person may. represent by way of opposition to the Controller against the grant of patent… (2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent. Without a request the patent applications would not be examined as a matter of routine as it was prior to the year 2003. 5 Amendment of section 11A. the complete specification should be filed within 12 months of filing of the application. NALSAR Pro 38 P.PATENT LEGISLATION – SALIENT FEATURES 5. by order in writing. in writing. If a patent application is accompanied by a provisional specification.–(1) Where an application for a patent has been published but a patent has not been granted.

The person making the representation is not a party to the proceeding. provided compulsory licence has been granted by such country or such country has. any person can make a representation to the Controller of Patents requesting him to refuse the application on the ground of lack of novelty. To avail of this provision.–(1) Compulsory licence shall be available for manufacture and export of patented pharmaceutical products to any country having insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned product to address public health problems.7 Opposition Board and after giving the patentee and the opponent an opportunity of being heard. specification and documents related thereto are opened for public inspection. (2) The Controller shall.–After section 92 of the principal Act. Diploma in Patents Law 39 NALSAR Pro .PATENT LEGISLATION – SALIENT FEATURES 8. (b) The recipient country should grant compulsory license for import and sale of the drug. (a) The country to which export has to be made has insufficient or no facility to manufacture. grant a compulsory licence solely for manufacture and export of the concerned P. the applicant should satisfy two conditions viz. When a patent has been published but has not been granted. 7 Insertion of new section 92A. allowed importation of the patented pharmaceutical products from India. 9. on receipt of an application in the prescribed manner. any person interested may give notice of opposition to the Controller. Compulsory licence for export of patented pharmaceutical products in certain exceptional circumstances.6 Only after grant of patent the application. The Controller shall consider such representation and dispose it off. The Act now provides for compulsory license for manufacture and export of patented pharmaceutical products to any country having insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned product to address public health problems provided compulsory license has been granted by such country.G. the Controller shall not take into account any personal document or secret trial or secret use. 10. namely:—‘92A. and industrial applicability. the following section shall be inserted. inventive steps. by notification or otherwise. After the grant of a patent but before the expiry of the period of one year from the date of publication of grant of a patent. (5) While passing an order under sub-section (4) in respect of the ground mentioned in clause (d) or clause (e) of sub-section (2). the Controller shall order either to maintain or to amend or to revoke the patent.

or product manufactured through a patented process. namely:— “117G.’.–All cases of appeals against any order or decision of the Controller and all cases pertaining to revocation of patent other than on a counter-claim in a suit for infringement and rectification of register pending before any High Court. of the pharmaceutical sector needed to address public health problems and shall be inclusive of ingredients necessary for their manufacture and diagnostic kits required for their use. 2002 (38 of 2002)]. ‘‘pharmaceutical products” means any patented product. Diploma in Patents Law .PATENT LEGISLATION – SALIENT FEATURES 11. (3) The provisions of sub-sections (1) and (2) shall be without prejudice to the extent to which pharmaceutical products produced under a compulsory licence can be exported under any other provision of this Act. shall be transferred to the Appellate Board from such date as may be notified by the Central Government in the Official Gazette and the Appellate Board may proceed with the matter either de novo or from the stage it was so transferred. Transfer of pending proceedings to Appellate Board. The power of revocation is also conferred with IPAB.— For the purposes of this section. the following section shall be substituted. Explanation.G.–For section 117G of the principal Act [as inserted by the Patents (Amendment) Act.8 pharmaceutical product to such country under such terms and conditions as may be specified and published by him.” NALSAR Pro 40 P. 8 Substitution of new section for section 117G. The Act also provides for appeal from the order of decision of the Controller to Intellectual Property Appellate Board (IPAB).

1970. The specification clause originates from Section 4 of the Patents Act.III PROCEDURE FOR PATENT APPLICATION The 1970 Act in section 6 reflects the first to file system by placing emphasis on date of application and not on the date of invention. This can be submitted after the inventor is ready with a prototype. 1949 of United Kingdom. 1972 within a maximum period of three months from the date of the application. Applications for a patent can be made by the true and the first inventor. 58 A provisional specification gives the mere description of the nature of the invention and its intended manner of working. 1970 56 Section 2(1)(y) of the Patents Act. The first importer of an invention or a person to whom the invention is first communicated from outside India will not be considered a first inventor56. 55 Section 6 of the Patents Act. P. Diploma in Patents Law 41 NALSAR Pro . These are Specification and Claims. It contains a 54 Proof of such assignment is required to be submitted by virtue of Rule 11 of the Patents Rule. The Patents Act provides that every application shall contain a specification57 – the specification can either be a provisional or a complete specification58.CHAPTER.G. Every patent application has two important aspects that will decide the fate of the application. or their assignees54 or legal representatives55. Provisional specification: A provisional specification is a document drawn in a prescribed format. 1970 57 Section 7(3) of the Patents Act.

b) disclose the best method of performing the invention which is known to the applicant. it is advised that the provisional specification be couched in broad terms. This is prevent a competing inventor to seek a broader patent based on the provisional specification. The title to the provisional specification should give a fair detail of area of science the application will deal with. Therefore it is very important to file the application as soon as possible. It does not include claims and description of manner of performing the invention. Complete Specification: After filing a provisional specification. Every complete specification shall. However. Diploma in Patents Law . This date is called the priority date and this date is accorded to the claims in the complete specification which can be filed later based on the provisional specification. 1970. NALSAR Pro 42 P. The provisional specification facilitates this. It is notable that in a first to file system like India the date of application for the patent becomes important. This application will contain a description of the nature of the invention. the provisional specification should with reasonable certainty relate to the same invention. a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed. If two inventors file patent application for the same invention. The courts have held that the construction of a specification is a matter of law. the applicant should submit a complete specification within 12 months of the date of filing of the provisional application without which the application will be deemed to be abandoned59.PROCEDURE FOR PATENT APPLICATION description of the essential features of the invention.G. The object of the invention and a statement of the actual invention need to set forth in the provisional specification. then the one whose application has the earlier date has the advantage of being awarded the patent. A provisional specification should be drawn in Form 2 of the Rules. and c) end with claim or claims defining the scope of the invention. The most important aspect is that when a complete specification is files. The date of filing the provisional specification becomes the date of the application. it is within the courts’ domain to properly construe the 59 Section 9(1) of the Patents Act. therefore.

PROCEDURE FOR PATENT APPLICATION specification60. 60 Lallubhai Chakbhai v. in 1978.. This is interrelated to the above concept. The Act demands that the claims shall relate to a single invention. 1978 Delhi 1 62 Section 11(2)(b) of the Patents Act. Claims: All complete specifications end with claims. Chinamanlal Chunilal. Diploma in Patents Law 43 NALSAR Pro . This will enable inventor No 2 to patent a revolving chair or may be a non-folding chair.”62 The object of claims are to: 1.R. and if inventor No 1 is the first inventor if just the folding quality of the 3. a claim for a folding chair should clearly so specify the features of a chair and limit the claim to chairs that fold. 1970 P. A. Needless to say. if chairs already exist. The words of the specifications should be given their ordinary meaning but where necessary must be construed in the sense in which they are used in a particular trade or sphere in which the invention is sought to have been made and it is the pith and marrow of the invention that has to be looked into.I. Therefore an Indian judge has unfettered power to construe the specification depending upon his predilections and preconceived notions or depending on which side of bed he or she gets up in the morning. The requirement of a claim seems is “fairly based on the matter disclosed in the specification. 2.G. A. 61 Raj Prakash v. to clearly set the limits of the claim. This will enable a narrow invention to be patentable later – Example. In the above example.I.R 1936 Bom 99. however. specification construction in India is therefore very subjective and unlimited. The Delhi High Court. noted that ‘whether a patent sets out an invention is to be determined by a true and fair construction of the specifications and the claims. State with precision the detail of the invention define the exact scope of the invention. in Indian law there are no additional guidelines to supplement this rule of interpretation. Mangath Ram.’61 This approach is similar to the American approach. In construing the specifications it would be erroneous to rely too much on the title thereof because the title cannot control the actual claim and a misleading title is of no consequence..

That is.G. A.I.R. it will encourage other inventors to find newer forms of chair – say a cushion chair. 1976 Delhi 87 See supra note 64 Press Metal Corporation v. A narrow claim is one that sets the limitations clearly. the Delhi high court in 1978 held that the title of the invention claimed has little consequence in controlling the claim65. This will keep all chairs other than the folding chairs within the public domain. Notably. Claims can be narrow or broad based on the invention.R. The Delhi High Court has held that the claim should specify the particular feature of the device and the distinguishing feature from the earlier invention. inventor A gets a patent on all chairs be drafting a broad claim and later inventor B invents a new ‘muscle massaging’ chair. if any and show the nature of the invention64. For example.PROCEDURE FOR PATENT APPLICATION chair. Though on a plain reading a broad claim seems to cover everything and seems like it is more desirable. 44 NALSAR Pro P. Thus the first inventor will slowly see that other narrow claims will result in him losing the exclusivity in his market. a claim language is said to be narrow if it limits the patent to a folding chair only. Therefore narrow claims are preferred. At the same time. The Supreme Court of India 63 64 65 66 See supra note 63 Ram Narain Kher v. The Bombay High Court detailed that the claim and the specification should be read together to understand the invention63. Ambassador Industries. However. Noshir Shorabji. In the above example. The claim will be a broad claim if it tries to cover all chairs. in reality it is not. 1983 Bombay 144.I. revolving chair. A. Diploma in Patents Law . 4. floating chair and so on. then the claims should set the limitation properly. The inventor B will also get a patent over the chair with a limitation that it should have a ‘muscle massaging’ feature. this inventor does not have exclusive rights over that chair. the Bombay High Court66 held that the duty of the patentee to ensure that the nature and the limits of the claim are laid out with clarity of language. Thus a later inventor narrows the scope of the claim of the earlier inventor.

68” 35 U. If.G. The American courts measure the scope of the patent protection from a careful reading of the language of the claims. whether complete or provisional. Subject to any rules that may be made in this behalf under this Act. and any drawings so supplied shall.PROCEDURE FOR PATENT APPLICATION later clarified that ‘by looking at the claim the description of the invention in the specification should be read in order to prepare the mind to understand what the inventor has claimed. Adelman et al. Contents of specifications (1) Every specification. and shall. the USPTO has strict policies governing over proper claim drafting. unless the Controller otherwise directs be deemed to form part of the specification. Cases and Materials on Patent Law 1 (1998) P.’ 67 A comparison to the American system reveals that claim construction is the heart and the soul of the American patent system. Section 10. be supplied for the purposes of any specification. Radhey Shyam Industries. whether provisional of complete. Claims in the United States reflect the “proprietary technological rights set forth by the patentee..C Section 112 provides the relevant statutory guidance. in any particular case. which is a direct result of increased applications for patents. drawings may. and references in this Act to a specification shall be construed accordingly. Apart from Section 112. shall describe the invention and shall begin with a title sufficiently indicating the subject matter to which the invention relates. (1979) 2 SCC 511 68 Martin J. but such model or sample shall not be deemed to form part of the specification. the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention. if the Controller so requires. such model or sample as he may require shall be furnished before the application is found in order for grant of a patent.S. Sophistication in claim draftsmanship is a mark of a sophisticated of the patent system. Diploma in Patents Law 45 NALSAR Pro . Every complete specification shall—(a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed. (b) disclose the best method of performing the invention (2) (3) (4) 67 Bishwanath Prasad v.

(5) The claim or claims of a complete specification shall relate to a single invention.PROCEDURE FOR PATENT APPLICATION which is known to the applicant and for which he is entitled to claim protection. be furnished in the prescribed form with the complete specification or within such period as may be prescribed after the filing of that specification. and (c) end with a claim or claims defining the scope of the invention for which protection is claimed. drawings. A declaration as to the inventorship of the invention shall. (C) access to the material is available in the depository institution only after the date of the application of patent in India or if a priority is claimed after the date of the priority. the title. (d) be accompanied by an abstract to provide technical information on the invention: Provided that. shall be clear and succinct and shall be fairly based on the matter disclosed in the specification. the application shall be completed by depositing the material to an international depository authority under the Budapest Treaty and by fulfilling the following conditions. and (ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b). Diploma in Patents Law . description. (D) disclose the source and geographical origin of the biological material in the specification. in such cases as may be prescribed. (4-A) In case of an international application designating India. address of the depository institution and the date and number of the deposit of the material at the institution. and if such material is not available to the public. or to a group of inventions linked so as to form a single inventive concept. when used in an invention. namely: — (A) the deposit of the material shall be made not later than the date of filing the patent application in India and a reference thereof shall be made in the specification within the prescribed period. (B) all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including the name. (i) the Controller may amend the abstract for providing better information to third parties. 46 (6) NALSAR Pro P.G. abstract and claims filed with the application shall be taken as the complete specification for the purposes of this Act.

Diploma in Patents Law . not necessary. it shall be sufficient to refer to them in the complete specification as those left with the provisional specification. Except in the case of an application (other than a convention application or an application filed under the Patent Cooperation Treaty designating India) which is accompanied by a complete specification. a declaration as to the inventorship of the invention. Where the invention requires explanation through drawings. if the applicant desires to adopt the drawings filed with his provisional specification as the drawings or part of the drawings for the complete specification. as the case may be. such drawings shall be prepared in accordance with the provisions of rule 15 and shall be supplied with. or the application for the main patent. shall be filed in Form 5 with the 47 NALSAR Pro (3) (4) (5) (6) P.(1) (2) Every specification. whether provisional or complete.PROCEDURE FOR PATENT APPLICATION (7) Subject to the foregoing provisions of this section. or additions to. or a modification of. the invention claimed in the specification of the main patent granted or applied for. and referred to in detail. description.G. claims and drawings. A specification in respect of a patent of addition under section 54 shall contain a specific reference to the number of the main patent. being developments or additions in respect of which the applicant would be entitled under the provisions of section 6 to make a separate application for a patent. and a definite statement that the invention comprises an improvement in. Irrelevant or other matter. a complete specification filed after a provisional specification may include claims in respect of developments of. in the opinion of the Controller. in the specification: Provided that in the case of a complete specification. A specification in respect of a divisional application under section 16 shall contain specific reference to the number of the original application from which the divisional application is made. shall be made in Form 2. for elucidation of the invention. Specifications. Rule 13. shall be excluded from the title. the invention which was described in the provisional specification.

the date of filing of the complete specification with respect to an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by the reference sign used in that drawing.G. technical problem to which the invention relates and the solution to the problem through the invention and principal use or uses of the invention.PROCEDURE FOR PATENT APPLICATION complete specification or at any time before the expiration of one month from the date of filing of the complete specification. accompanying the specification shall commence with the title of the invention. the applicant shall indicate on the abstract the figure. the figures of the drawings which may accompany the abstract when published. Where necessary. The summary shall indicate clearly the technical field to which the invention belongs. the abstract shall contain the chemical formula. or exceptionally. in particular by making it possible to assess whether there is a need to consult the specification itself. The title of the invention shall disclose the specific features of the invention normally in not more than fifteen words. (8) NALSAR Pro 48 P. (7) (a) The abstract as specified under clause (d) of sub-section (4) of section 10.—For the purposes of this rule. (b) The abstract shall contain a concise summary of the matter contained in the specification. as the Controller may allow on an application made in Form 4. which characterises the invention. (e) The abstract shall be so drafted that it constitutes an efficient instrument for the purposes of searching in the particular technical field. (c) The abstract may not contain more than one hundred and fifty words. Explanation. The period within which reference to the deposit shall be made in the specification under sub-clause (A) of clause (ii) of sub-section (4) of section 10 shall be three months from the date of filing of the application. (d) If the specification contains any drawing. Diploma in Patents Law .

G.PROCEDURE FOR PATENT APPLICATION Complete Specification is required to have the following components: (a) Title (b) Preamble of the invention (c) Name. address and nationality of the applicant (d) Field of Invention (e) Use of Invention: A brief statement of the advantages of the invention (f) Prior Art (g) Problem to be solved (h) Object of Invention(may be more than one) (i) (j) General statement of invention Detailed Description of Invention[ with reference. This is called the ‘Fairly Based’ principle. characteristics of the technology or the invention. The inventor gets a period of 12 months before filing the complete specification to conduct further research and incorporate further advances into the complete specification provided it does not change the nature. Diploma in Patents Law 49 NALSAR Pro . The patent applicant will get the advantage of the priority date of the provisional application in the complete application so long as the nature of the invention remains the same. the application is allotted by the controller to specific examiners to see whether a patent should issue. to drawings. The examiner allotted by the controller P. If the nature of the invention is changed the inventor cannot get the advantage of the provisional specification. if any) Statement of claims (k) Best method /example of working of the invention (l) (m) Signature with date (n) Drawings (o) Abstract Grant of patents: After the complete specification has been filed.

If the applicant makes a request in Form 9 (before the expiry of 18 months from the date of priority if no priority claimed from the date of filing) with the prescribed fee Rs.G. Diploma in Patents Law . 1972 NALSAR Pro 50 P.2.500/. the application will be published within one month from the date of filing of such request. Then a prior art search covering publications in India and abroad is then conducted. 1970 read with Rules 21 to 23 of the Patent Rules. or one month from the date of request for publication under rule 24A.for natural person(s) and Rs.10.PROCEDURE FOR PATENT APPLICATION determines the procedural validity and compliances before proceeding to check the claims. Provided that the period within which the Controller shall publish the application in the Journal shall ordinarily be one month from the date of expiry of said period.69 Rule 24: Publication of application The period for which an application for patent shall not ordinarily be open to public under sub-section (1) of section 11A shall be eighteen months from the date of filing of application or the date of priority of the application. (2) Omitted by Act 15 of 2005 (3) In case of an application in respect of a claim for a patent filed under sub-section (2) of section 5 before the 1st day of January. 2005 a request for its examination shall be made in the prescribed 69 Chapter VI of the Patents Act. EXAMINATION OF APPLICATIONS Section 11 Request for examination (1) No application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period. This stage of the application is termed the examination. whichever is earlier.000 for legal entity [other than natural person(s))].

(1) When a request for examination has been made in respect of an application for a patent in the prescribed manner under subsection (1) or sub-section (3) of section 11B. (2) The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section (1) shall ordinarily make the report to the Controller within such period as may be prescribed. P. (b) whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application. and 145 (d) any other matter which may be prescribed. (c) the result of investigations made under section 13. and (ii) in a case where secrecy direction has been issued under section 35.G. withdraw the application by making a request in the prescribed manner. Diploma in Patents Law 51 NALSAR Pro . the request for examination may be made within the prescribed period from the date of revocation of the secrecy direction. the application shall be treated as withdrawn by the applicant: Provided that—(i) the applicant may.PROCEDURE FOR PATENT APPLICATION manner and within the prescribed period by the applicant or any other interested person. at any time after filing the application but before the grant of a patent. (4) In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) or subsection (3). the application and specification and other documents related thereto shall be referred at the earliest by the Controller to an examiner for making a report to him in respect of the following matters. namely:— (a) whether the application and the specification and other documents relating there to are in accordance with the requirements of this Act and of any rules made there under. Section 12: Examination of application.

whichever is later. 2005 or the period specified under these rules. or within six months from the date of revocation of the secrecy direction.G. 2005 shall be the period specified under the section 11B before the commencement of the Patents (Amendment) Act. (ii) The period within which the examiner shall make the report under sub-section (2) of section 12. (ii) The period within which the request for examination under sub-section 3 of section 1I B to be made shall be forty-eight months from the date of priority if applicable. (iii) The request for examination under sub-section (4) of section 11B shall be made within forty-eight months from the date of priority or from the date of filing of the application.PROCEDURE FOR PATENT APPLICATION Rule 24 B: Examination of application. or forty-eight months from the date of filing of the application. whichever expires later. whichever is later. (2) (i) The period within which the Controller shall refer the application and specification and other documents to the examiner in respect of the applications where the request for examination has been received shall ordinarily be one month from the date its publication or one month from the date of the request for examination whichever is later: Provided that such reference shall be made in order in which the request is filed under sub-rule (1). shall ordinarily be one month but not exceeding NALSAR Pro 52 P. whichever is earlier. (iv) The request for examination of application as filed according to the ‘Explanation’ under sub-section (3) of section 16 shall be made within forty eight months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application. (ii) The period for making request for examination under section 11B. of the applications filed before the 1st day of January. Diploma in Patents Law . (1) (i) A request for examination under section 11 B shall be made in Form 18 within forty-eight months from the date of priority of the application or from the date of filing of the application.

2d 1556. an intimation of such examination may be sent to such interested person. Recently.PROCEDURE FOR PATENT APPLICATION three months from the date of reference of the application to him by the Controller. In the American system the review is based on the error in the patent which can either be an error in conduct or an error in patent. Bausch and Lomb Inc. any person can oppose the grant of the patent within six months from the date of notification of the acceptance of the complete specification. (iii) the period within which the Controller shall dispose off the report of the examiner shall ordinarily be one month from the date of the receipt of the such report by the Controller. In case other interested person files the request for examination. 882 F. China amended its laws and replaced pre grant opposition with post grant revocation. The American patent system envisages a post grant opposition called the re-issue and the re-examination.G. A notice of opposition needs to be filed in the appropriate office within six months. P.70 One the one hand. With the new act even after the grant an interested person can file for opposition within a 12 month period which is known as the post-grant opposition system. this change allowed applicants to obtain their patent rights more quickly by 70 Hewlett Packard Co v. Opposition: In India. The 2005 amendment changed the pre-grant system incorporating both pre grant and post grant opposition. (4) The time for putting an application in order for grant under section 21 shall be twelve months from the date on which the first statement of objection is issued to the applicant to comply with the requirements. Diploma in Patents Law 53 NALSAR Pro . the post grant opposition has its advantages because a pre-grant procedure can block the applicant from getting a patent for many years. Whereas the pre grant opposition is favoured to stop patents which are not eligible. (3) A first examination report along with the application and specification shall be sent to the applicant or his authorised agent ordinarily within six months from the date or the request for examination or six months from date of publication whichever is later.

2000). Therefore the inventor ought to have disclosed the best method of making. It is purely an area for law practitioners to handle. 71 Lehman. The best mode is not disclosed in the complete specification. and merely technical. country for filing the PCT applications. the application is not enabled for the public.com. India is one such convention country. The PCT application can be filed if atleast one of the applicants (need not be the inventor) resides or is a national of a PCT convention country . That is unless the patent application reveals the best mode of making. There are several ways to determining the best mode of making in India as well as in the US. Best mode is a very important requirement in across the world. PCT. Diploma in Patents Law . there are several grounds for opposing a patent. Lee & Xu. That the applicant has wrongfully obtained the patent from the person opposing the application b. The term best mode means that in the patent application the inventor should disclose not only the invention but the best method of making the invention. Therefore the following is a mere gist of the PCT . India should consider adopting a post-grant procedure. Comments on Amendments of Patent Law. at http://www. Therefore the application will fail. China Virtual Intellectual Property Law Newsletter. The invention is already known to a person skilled in the art (obviousness) c. (September.PROCEDURE FOR PATENT APPLICATION speeding up the examination procedure. The claims do not relate to an invention within the ambit of the Act e. This requirement is called the enablement requirement in the US. The invention has been in public use in India d.lalawfirm. This is because after the expiry of the term of the patent (that is after the inventor loses his exclusivity and monopoly rights). Applications for P atents under the PCT : Any country that has signed the Patents PCT: PCT is termed as the convention country . PCT applications are complicated country.71 In India.cn NALSAR Pro 54 P. Some of the most important grounds are: a.G. the public should be able to work the patent.

for Indian scientists when they make a new invention that can However. This has the advantage of avoiding the national stage in each of the European countries. Where there are regional conventions like the European Patent Convention. But with the recent changes in PCT all themembe countries are automatically designtated. the patent will be valid for all countries that are members of the European Convention. old invention). 4. P. However. Europe and sometimes even the US if the cost is not too formidable.PROCEDURE FOR PATENT APPLICATION However . The competent office for filing a PCT application In India is the Patent Office. A PCT application will contain the following: 1.G. and its branch Offices at new Delhi. These states are called the designated states. PCT applications are filed in India in the competent office. Bombay. A request under Art 4 of the PCT. when the applicant get a patent. Calcutta. In the earlier system an applicant has to designate the countries where it should be applied. In this request the applicant will have to designate contracting states or state where he seeks patent protection. it is best to make a PCT application covering India. 6. description of the invention claims abstract of the invention Drawings (where applicable) Fees 55 NALSAR Pro 2. 3. (even if it is a improvement over the internationally. since US will insist on following the national procedure (after the application reaches the national stage). Madras. Diploma in Patents Law . An application with such a designation will be centrally processed under the European Patent Convention. Several countries are members of the PCT. However . be ground breaking internationally . entire Europe can be made as one designation. 5. Also. it is also best to designate countries like Singapore that will accept the international search and immediately award a patent.

the application proceeds into domestic laws. That gives the inventor another 12 months to continue with the invention before he can file PCT application. NALSAR Pro 56 P. For Indians this means that you can file a simple provisional application in India as the inventor is reasonably ready. But some of the regional offices have sought only one copy so that they can make the required copies and send it to the international bureau. India has announced its recognition of Chinese Patent Office and US Patent Office as authorised international search and examining authorities in addition to the Australian. This means that the applicant can claim the priority date (date of application for patent) in another PCT convention country if that application has been made before the PCT application. This means that the formal requirements of each state needs to be met and national fees need to be paid.PROCEDURE FOR PATENT APPLICATION 7. Since an earlier date is likely to be considered this is called priority date. Claiming priority. Otherwise the provisional specification will lose the priority date in the Indian patent office). Diploma in Patents Law . This is a very important advantage. After this stage. Different countries also have different levels of accepting the PCT preliminary examination report. Normally 4 copies are required to be filed. A PCT application thus filed later 12 months can bear the priority date from the date of filing the provisional application in India. then the date for the PCT application will begin with the international filing date. Austrian and European Patent Offices. National Stage: The International preliminary examination has to be done within 21 months if the applicant decides to proceed with the application for obtaining patent in India based on the international search report. or (b) 31 months from the priority date. The PCT application may claim priority under the Paris Convention. If no such priority is claimed. (This is because 12 months is the latest period given to file the complete specification. if the applicant opts for an international preliminary examination. Then the application enters the national phase.G. This means that if the inventor had made a national application earlier that date can be considered as the filing date for PCT.

Depending on the searching authority the fee varies from USD 100 to USD 800. P. The fees for these can be anywhere between USD 100 to 1000 depending on several factors like which country is being designated. the application will enter the national phase in that country after 30 more months. The advantage of this is that before the inventor starts paying the national fees the inventor can know whether there are flaws in the application. These are called the Basic fees and Designation fees fees. One is at the receiving office. Both these fees are transferred to the international bureau. That way there are more chances of getting the patent in the country or designated state..G. ee: This is retained by the office in India. Search F ee: This is transferred to the international searching Fee: authority. 3. These fees are also reduced by 75% for Indian nationals residing in India. That is. Fees become due and payable at two stages. These offices collect the following fees: 1.PROCEDURE FOR PATENT APPLICATION The most important issue in the PCT application is the fee. If such a preliminary examination is sought by designating a country. if Europe as a whole is designated in the PCT-application. for India these fees are payable at Calcutta or the regional offices at Madras. These include Transmittal f fee: the fee for preparing certified copy of priority document and transmission of the same to the international bureau. International F ees: There are two kinds of international fees Fees: collected by the receiving office in India. This is termed as a Demand and is optional. the International Preliminary Examination Report that is already available may favorably influence the granting procedure of the European patent application. But Indian nationals may be eligible for a reduction of these fees by 75% provided a request for reduction of fee is filed in a prescribed form. Bombay or New Delhi. However. in case the patent application exceeds 30 pages. an additional fee is levied for each additional page that needs to be processed. Diploma in Patents Law 57 NALSAR Pro . Other fees are payable if the inventor wants to seek an non-binding opinion on whether the claimed invention appears to satisfy the novelty and involves an inventive step. For example. These fees are known as handling fees and preliminary examination fee. 2.

The International Preliminary Examination Report (optional and can be sought by filing a Demand). which may smoothen the granting procedure in most cases. so providing more time for the inventor to decide as to whether or not the inventor needs to file foreign patent applications. Diploma in Patents Law . PCT application has the advantage of extension of the priority year by 8 to 18 months. but it provides some extra time for making a commercially sound decision as to whether foreign patent protection should be sought.G. A PCT-application as such will never mature into a patent. 3. NALSAR Pro 58 P.PROCEDURE FOR PATENT APPLICATION The most important aspect to bear in a PCT application is the following: 1. 2.

business management skills. strong marketing schemes. Diploma in Patents Law 59 NALSAR Pro . After the manufacturer does all of the work.CHAPTER – IV PATENT LICENSING Licensing could very well be the most lucrative way to make a living today. copyright. licensing was born. Licensing started with Disney’s creation of Mickey Mouse some 70 years ago. worry about payroll to all of its employees. This is an especially good feature of scientists. The need to run a factory successfully and acquiring financing. or trademark.000 wooden pencil boxes paid for permission to do so. licensing is the selling of intellectual property to a person or business that wishes to produce it for a profit. nothing. an understanding of cash flow. The biggest advantage of this is that the inventor can make more money from an invention without having to worry about business needs.G. As the character took off in popularity a businessman who wanted to put the character on 10. from shirts to lunch boxes. At its basics. P. which equates to more than 50% of the profit for each transaction. They don’t need to manage all sorts of factories. find distributors. This is an example of trademark and copyright licensing. etc will be eliminated. Thus. Disney receives the 15% royalty. This chapter deals with patent licensing. In all of these items Disney receives 15% of the wholesale price of anything depicting its characters. Since then. The intellectual property could be a patent. there has been all sorts of products with the Disney characters on them.

and potential market.G. They then detail the aspects that are different in technology from the prior art. 2. Companies need to be aware that it is important to gain value from their patent portfolio through the identification and development of patent licensing programs. and since the market is changing so often. Diploma in Patents Law . A technical person first looks at the patent and then examines the prior art for the invention. This step is the beginning of a market research and seeks to determine the possibility of the product entering the market by analyzing issues such as timing. There are three elements to do successful patent licensing. Hence when an inventor enhances their businesses. the specific competitive advantages or disadvantages. This generates significant revenue stream for many semiconductor and electronics firms in last two decades of the twentieth century. manufacturers will pay the inventor/owner. Indian companies typically lack the funding or the know how to start their own patent licensing campaign. Indian companies and Indian licensees are not yet suave into this.PATENT LICENSING When the patent is licensed. Normally licensing companies or licensing agents (as seen abroad) first judge and evaluate inventions that requires to be licensed based on general criteria that are essential in the success of a product in both marketability and “licensibility. Once the TRIPS agenda starts coming into play foreign competition will make us enter and excel in these aspects of inventions as well.” Some of these criteria are the invention’s impact on society. Businesses need to manufacture products that will sell. Elements of Patent Licensing Licensing is an important aspect of getting the benefit from the patents. These criteria are sometimes as high as 50 to 60 different aspects. These are: 1. businesses always need new ideas. NALSAR Pro 60 P. Foreign business and patents owners use this to their benefit very successfully. establishing Unique Selling Position etc. Licensing Management Technical Experts: They become important for getting the patent as well as for licensing the patent. profitability. they can demand the manufacturer to provide a fair royalty percentage. competition.

foreign companies hire legal experts.PATENT LICENSING Then they detail the use and advantage of the new feature. The lawyer has to draft the agreement keeping in mind the technical contours of the patent. Legal Experts: Along with the technical experts. While drafting licensing agreements. The licensee’s lawyers tells them where the agreement is flawed enough to allow infringement. The drafter also knows the exact areas where the contract may be infringed and keeps his team ready for any consequences. The interaction is important because the technical expert has to advice the lawyer of the exact contours of the patent that needs to be licensed. Once these issues are sorted and the patent is obtained. 3. the licensee will also allow his expert lawyers to see the agreement. Similarly. the technical people are necessary to write the technical details of the patent for the interested licensors. Once a contract is drafted. the legal experts are also important for getting the patent as well as for licensing the patent. Technical people attempting to write the agreement are another common mistake in India. Diploma in Patents Law 61 NALSAR Pro . It is important for the legal expert to be clear where the new invention differs from the prior art in the technology. it is also a common problem for lawyers to ignore the importance of technical experts and vice-versa. Before getting patent protection the legal experts discuss the technology with the technical expert to understand the development in technology. One of the big issues that Indian companies do is undermining the importance of one or both experts. Then the legal expert adequately prepares the claim and limits the claim to the particularities of the invention. Thus both sides are aware and are ready to face every consequence. the expenses they are likely to face if the case goes to the court and the gains that they are likely to receive. during the stage of licensing the interaction between legal and technical experts become all the more important. what are the consequences they may face if they over step the limit of the contract.G. After the invention has been patented. Indian companies typically are technologically strong but will tend to save money at the crucial juncture of drafting the P. These are the agreements that foreign companies with well trained lawyers will infringe.

licensing also can increase the incentive for its creation and thus promote greater investment in research and development. This integration can lead to more efficient exploitation of the intellectual property. to sell rights to the intellectual property. workforces. rather than supplying these complementary factors itself. The Indian agreements therefore are a big source of revenue for foreign companies. Licensing may promote the coordinated development of technologies that are in a blocking relationship. which use such loopholes to their maximum. Sometimes the use of one item of intellectual property requires access to another. benefiting consumers through the reduction of costs and the introduction of new products. and other limitations on intellectual property licenses may serve pro-competitive ends by allowing the licensor to exploit its property as efficiently and effectively as possible. Licensing. By potentially increasing the expected returns from intellectual property. Field-of-use. or otherwise transferring intellectual property can facilitate integration of the licensed property with complementary factors of production. Complementary factors of production include manufacturing and distribution facilities. on improvement on a patented machine can be blocked by the patent on the machine. Especially since we are technically strong. and other items of intellectual property. or to enter into a joint venture arrangement for its development. the owner finds it most efficient to contract with others for these factors. Such arrangements increase the value of intellectual property to consumers and to the developers of the technology. India should use all the strength to its benefit. Licensing Agreement It is important to understand that intellectual property particularly patents typically is one component among many in a production process that derives value from its combination with complementary factors. Often. An item of intellectual property “blocks” another when the second cannot be practiced without using the first. The owner of intellectual property has to arrange for its combination with other necessary factors to realize its commercial value. For example.PATENT LICENSING agreements. These various forms of NALSAR Pro 62 P.G. Blaming them later will not lead us everywhere. territorial. Diploma in Patents Law . cross-licensing.

the licenses anticompetitively foreclose access to competing technologies (in this case. others permit use only in group medical practices. or selling any other program. ComputerCo licenses the program in an arrangement that imposes both field of use an territorial limitations.gov/atr/public/guidelines/ipguide. or from competing in any other good or service other than in the use of the licensed program. for example. The restrictions may do so. for example. for example. Discussion: The key competitive issue raised by the licensing arrangement is whether it harms competition among entities that would have been actual or likely potential competitors in the absence of the arrangement. None of the licensees are actual for likely potential competitors of ComputerCo in the sale of inventory management programs. most likely competing computer 72 see http://www. All of ComputerCos’s licenses permit use only in specified portions of the United States and in specified foreign countries.PATENT LICENSING exclusivity can be used to give a licensee an incentive to invest in the commercialization and distribution of products embodying the licensed intellectual property and to develop additional applications foe the licensed property. They may also increase the licensor’s incentive to license. These benefits of licensing restrictions apply to patent. by protecting the licensor from competition in the licensor’s own technology in a market niche that it prefers to keep to itself.72 Following is the example that the US Government has used while discussing the issues related to anti competitive guidelines of licensing: ComputerCo develops a new. ComputerCo charges different royalties for the different uses. Diploma in Patents Law 63 NALSAR Pro . The licenses contain no provisions that would prevent or discourage licensees from developing. copyright. The program has wide application in the health field.G. Soime of ComputerCo’s licenses permit use only in hospitals. Such harm could occur if.usdoj. using. copyrighted software program for inventory management.htm P. by protecting the licensee against free riding on the licensee’s investments by other licensees or by the licensor. and to know-how agreements. and trade secret licensees.

In this hypothetical. the licensor can penetrate market it could not hope to serve. Based on these facts. (See section 3. in licensing Microsoft’s disk operating system software (“MS-DOS”) to IBM. licensing broadens geographic markets. Second. most likely computer programs).1. The Agency therefore would be unlikely to object to this arrangement. and distribution systems. For example. Third. or facilitate market allocation or price-fixing for any product or service supplied by the licensees.) If the license agreements contained such provision. licensing broadens product markets. copyright or trade secret. The following are the nine advantages: 1. Licensing adds the resources of the licensee to those of the licensor. 3.PATENT LICENSING programs). goods may require modification to conform with local laws and regulations. 73 Id NALSAR Pro 64 P. marketing. prevent licensees from developing their own competing technologies (again. the Agency evaluating the arrangement would analyze its likely competitive effects as described in parts 3-5 of these Guidelines. This is especially true for Indian businesses. in this case. Microsoft obtained the benefit of IBM’s global sales. for example. there are no such provisions and thus the arrangement does not appear likely to harm competition among entities that would have been actual or likely potential competitors if ComputerCo had chosen not to license the software program. By granting the licensee the right to market and distribute the licensor’s product. Most product6s going into foreign countries require some form of adaptation: labels and instructions must be translated. the result of the antitrust analysis would be the same whether the technology was protected by patent. A firm may have the resources to exploit its intellectual property through only one 2. the license barred licensees from using any other inventory management program. Diploma in Patents Law .73 There are at least 9 advantages for licensing that Nicholas Gikkas identifies in his paper on international licensing. The Agency’s conclusion as to likely competitive effects could differ if.G. and marketing may have to be adjusted.

the copyright. delegating through licensing speeds up the process. small biotechnology companies license their intellectual property to large drug companies not only to distribute their product to more people but to beat their competitors to market. Fourth. 6. 7. to firms that can make master video tapes. For example. For example. a developer of mainframe computer software with expertise only in mainframes might grant a license to a developer of software for personal computers. Another technology barter scheme is cross-licensing. Fifth. The producers will license their intellectual property. which further increased the market penetration of MS-DOS. and distribute the cassettes. If the licensee’s market is too close to the licensor’s market. software is best supplied with the hardware rather than as an optional package. but the intellectual property may be applicable to other products or services.PATENT LICENSING product. undesired competition may be created. Seventh. Cross65 NALSAR Pro 5. a company may license at the request of a firm in a noncompeting field. 4. Sixth. Third party software companies had to write for an MS-DOS environment to gather the greatest market share for their product. licensing is one way for a firm to barter for technology it would otherwise have to pay for. manufacture the copies. A licensor may barter for the licensee’s improvements to the intellectual property. some products sell best when they are incorporated or sold for use with another product. For example.G. For example. Improvements to the intellectual property are granted back to the licensor. Microsoft’s MS-DOS became the industry standard operating system as the IBM-PC became the industry standard microcomputer. Diploma in Patents Law . P. if a firm has insufficient capital or personnel to enter a market quickly. producers of movies and television shows do not usually have the resources to mass produce and distribute video tapes. Licensing for this purpose works best when the licensor has no interest in exploiting the intellectual property in the noncompeting field.

Alternately. For example. Both are fine and it really depends on the individual parties to decide the method of licensing that they wish to follow. Cross-licensing creates the same sort of synergy as a joint venture without the inconvenience and delay of setting up joint operations. service. then the licensee’s marketing efforts benefit the licensor’s reputation and goodwill (as long as the licensee maintains quality in product. Some times the inventor can also license for a small sum and seek a percentage of the royalty that the company will get by re-licensing the patent. licensing may allow a firm to achieve some degree of control over its own innovations and also over the direction of the industry. NALSAR Pro 66 P. In these cases the company will either make the patent application in the Name of the inventor and then the inventor will license the invention to the name of the inventor and then the inventor will license the invention to the company giving away all rights to the company for a royalty. and sales). 9. 8. Diploma in Patents Law . Eighth. And finally. when the licensor’s trademark is licensed for use in the market along with the intellectual property.PATENT LICENSING licensing occurs when two competing firms with different research and development strengths can take advantage of the other’s progress. the inventor will immediately get a royalty and license the patent to the company. Modalities of the Agreement Normally the inventor will be an individual scientist or an employee of a company. new to the mass computer market. This way the inventor will be the owner of the patent. AT&T.G. IBM would probably have developed an operating system on its own which might have been very different from MSDOS and taken away MS-DOS’s place in the operating systems market. if Microsoft did not allow MS-DOS to be licensed. For example. The company will make the patent application in its name and then gets ownership over the patent. gained positive publicity for its UNIX operating system which it licensed it to computer makers.

A partially exclusive is where although the entire product may be licensed to other interested manufacturers. This is the area that we will be dealing with in the following paragraph. The type of license of being applied for (e. That way the license is partially exclusive. 2. A non exclusive license is one where several manufacturers will get the right to license the product.. The title of the invention and issue date of the patent (if available) should also be given with clarity. both parties agree that there will be only one licensee. Each of these licenses is significant in describing the extent of rights that the licensor and the licensee will share. exclusive. then the company licenses the patent to other manufacturers that are interested in using the patent or manufacturing the patent. By entering into this kind of agreement. The invention must be identified by either the patent application serial number (in the case of a pending patent). An exclusive license is one where the patent owner gives the rights over the invention to one licensee. sing and also massage the back of a person sitting it in. Typically a license should include the following: 1. singing and massaging.g. partially exclusive.G. Name of the owner of the patent (individual or company) 67 NALSAR Pro P. or non exclusive). The following information about the inventor: Name Address of the inventor. He may decide that TABA company only gets the license to manufacture all the three features of talking. The identity of the invention for which a license is desired.PATENT LICENSING Once such ownership and licensing requirements cleared. 3. or the patent number (in the case of an issued patent). He is the exclusive licensee. For example. The owner may decide to give the rights for manufacturing talking and singing functions to several manufacturers. Diploma in Patents Law . one portion of the invention will not be licensed to anyone except for the particular licensee. assuming the patent owner want to license the patent rights in for a chair that talk.

The applicant’s latest annual report including a balance sheet. 6. and operating costs. income statement. as a minimum. projected growth rates. A description of the nature and the type of applicant’s business. and telephone number of the applicant’s representative with whom future correspondence should be exchanged. This section should include. and an auditor’s note should be provided. A five-year projected income statement should also be provided. but not be limited to: A statement indicating the applicant’s capability and commitment to fulfill this plan to achieve a successful commercial product. This statement should include identified targeted markets and their size.G. address. The company’s place of incorporation 4. and the applicant’s estimated market shares. 7. financial. and other resources the applicant believes will be necessary to bring the invention to market. The representative should have authority to conduct licensing negotiations. This statement shall include information pertaining to the applicant’s manufacturing. expected sales. A statement of the nature and amount of anticipated investment of capital. Address and registered office of the company or organization applying for the license. 5. The above description should include any products or services that the applicant has successfully commercialized within the last 10 years and approximate number of people employed by the applicant.PATENT LICENSING Address of the owner of the patent (individual or company) Name of the company organization applying for the license. and technical resources. Diploma in Patents Law . A commercialization plan showing the steps proposed to develop the technology into a viable product. The projected income statement should include. 68 NALSAR Pro P. The name. The interested party’s citizenship or if it a company whether it is a foreign company and what is the status of the company. marketing. cost of goods sold.

The other most important aspect to bear in mind is the royalty. Diploma in Patents Law 69 NALSAR Pro . Business pay this sum to ensure that the inventor always come back to them when they get new ideas. This is one way of keeping the inventor happy so that they can benefit from future ideas. the inventor/owner needs to ensure for an agreed upon non-refundable amount that will serve as a portion of the royalties to be paid to them in the first year.G. research. Identification of the role of inventor and the owner of the patent. P. A statement of the geographic areas in which the applicant intends to manufacture any products embodying the invention and the geographic areas where the applicant intends to use or sell any products embodying the invention. or is otherwise available commercially. design. A statement of the field(s) of use in which the applicant intends to apply the technology.PATENT LICENSING A timeline. the Government. A statement of previous licenses or agreements to be detailed. such as project management approach. and technical knowhow. or other engineering assistance be required? A clear definition of anticipated facility and/or personnel requirements should be detailed. describing the extent to which the invention is being practiced by private industry. laboratory and manufacturing capabilities/facilities. containing the applicant’s best knowledge. 8. Will technical consultation. which the applicant feels will support their selection as a commercial partner. A statement. Advance in royalty fees: This means that when negotiations are made. description or chart of key steps or milestones the applicant believes will be required to bring the invention to practical application. If the product bearing the patent does not sell enough. 10. or both. 11. 9. Practical application is defined as the invention being utilized and that its benefits are to the extent permitted by law or Government regulations available to the public on reasonable terms. Any other information. still the inventor gets his money.

Also. In India letting the invention dormant may also result in compulsory licensing by the government. then the litigation is normally only with the licensee and therefore that need not be covered unless there are special circumstances that warrant such coverage. 13.000.G. Litigation costs covered by the licensee: This means that if the licensee withholds any royalties from the inventor. Such a clause in the agreement provides protection for the inventor in the event that the invention causes harm or injury to those who use it. the inventor has the right to acquire them through litigation at the licensees cost. Normally. The sum can be lesser in India as Indian courts tend to award less damages. it provides the inventor with insurance that the licensee will seek to develop the invention and not just let it sit dormant. Insurance covering the inventor: Normally the Indian companies do not follow this. if there are defects in the products.PATENT LICENSING 12. 14. This is an agreement that the licensee will. at their cost. buy an insurance policy covering the inventor for 1.000 rupees or dollars in damages and send the inventor a certificate which shows that they are on the policy. But if the product is sought to be marketed in the US it is better to ask for a bigger insurance since damages in American courts are higher. NALSAR Pro 70 P. But after liberalization if Indian inventors seek to license their products to foreign manufacturers this is strongly advised. The sum gets larger every year to allow for the licensee to manufacture and distribute your invention. a Yearly minimum royalty is also given to the inventor from the licensee for usually the first 3-5 years of the license agreement. Diploma in Patents Law . Also.

b) Infrastructure. P. The delay in the Indian system is attributed to the backlog caused due to the examiner’s “workload. The new five year plan initiatives to include and improve a) Human Resources.G. c) Computerization. 74 The head office for patents was located in Calcutta where it was reported that there were less than 70 examiners who were responsible for thousands of applications. The Government of India with WIPO and UNDP has provided 1.75 This has resulted in delay in the processing applications to nearly eight years whereas the average time taken in the United States is about a year and half and the time taken in Japan is a maximum of four and half to five years.”76 Hence a two pronged strategy to: a) strengthen the Patent information system resources. 1999) (on file with the Confederation of Indian Industry). 76 Memorandum from the Confederation of Indian Industry on First Interactive Session on Indian Patent law .Approaches: Enforcement Issues (June 28.22 million for setting up of the Office of the Patent Information System in 1980. and b) the patent Enforcement Mechanisms was sought to be implemented. The issue of modernization of the patent office is included in the Ninth Five Year Plan. 75 Section 74(2) of the Patents Act.CHAPTER-V PATENT SEARCH Patent Office in India The manner of functioning of the Patent offices including the office procedure of the patent office. 1970. Diploma in Patents Law 71 NALSAR Pro . the staff. the lack of qualified examiners 74 (is controlled by the Central Government and function under the direction of the Controller).

was adopted. the Strasbourg (IPC) Agreement Concerning the International Patent Classification. 1. a Joint ad hoc Committee of the Council of Europe and BIRPI on the International Classification of Patents was set up in 1969 to facilitate: 1. which is most often referred to as the IPC. 2. in Strasbourg. product or apparatus. has now existed for 25 years and is the only truly worldwide classification system for technical information.PATENT SEARCH d) Elimination of the backlog. 1971. Diploma in Patents Law . in establishing translations of the Classification into languages which were not official languages of the Council of Europe.G. International Patent Classification The International Patent Classification. which was entrusted with studies on the harmonization of national laws and formalities. 3. The system was not developed from scratch but was based on an already existing classification system. NALSAR Pro 72 P. on March 24. product or apparatus) was contemplated. Finally. the International Classification of Patents for Invention. which had been elaborated under the auspices of the Council of Europe. On account of several issue. A system combining functionoriented principles (according to the intrinsic nature or function of a process. in 1951 set up a Classification Working Party with the task of elaborating an international patent classification system. independent of its field of application) and applicationoriented principles (according to the particular use or application of a process. This project is sought to be implemented within the next 5 years to enable a full fledged office in place by the time the product patent regime is established. The Council of Europe’s Committee of Experts on Patents. during the years 1954 to 1965. the use of the Classification to prepare the five-yearly revisions of the Classification to ensure the uniform application of the Classification and to assist as far as possible.

The second edition of IPC:CLASS. Diploma in Patents Law 73 NALSAR Pro . A technical subject classified into such a field of the IPC could.G. The indexing entries permit indexing of aspects of the technical subject that cannot be classified. Introduction of Indexing Schemes: In December 1979. as a result of both organizational alterations and modified working methods in the International Bureau of WIPO. which mainly means the revision of the Classification and its further development. also be indexed. Patent Search: Patent searching Importance: Patent search is one of the important tools for information. It was not merely the publication of the current version of the IPC on this new type of data carrier. for example. contains all six IPC editions in English as well as catchword indexes and revision concordance data. which should be presented in an indexing scheme. the IPC Committee of Experts decided that–when a specific technical field of the IPC could not be further developed by using conventional classification techniques–in order to improve the effectiveness of the IPC as a search tool. if appropriate. published in September 1994. intended mainly for the user who is not very familiar with the IPC. but the publication of a complete search system for the IPC.PATENT SEARCH Administration of the IPC: The administration of the IPC. the classifying entries of that field could be supplemented by indexing entries. This helps decide weather to see if the inventions made is already in the public domain P. The IPC:CLASS CD-ROM: In May 1992. a technical subject classified according to its intrinsic nature may be indexed according to its application. The indexing system of the IPC will be dealt with in the appropriate international conventions module. has over the years undergone substantial changes. WIPO published the first edition of the IPC:CLASS CD-ROM. The use of IPC:CLASS obviates the voluminous collection of publications which otherwise has to be used in order to identify in different IPC editions the places which cover a given technical subject.

Patents Class. you can get a patent for the nib of the pen if it can write in a different manner (say lithographic writing. and more). The European patent applications since 1978 European patents issued by the EPO since 1980. US patents issued from 1790 to the present are available in the USPTO Search Rooms in paper and in image microfilm. if you are trying to search whether an ink pen is patented. Search can be made either manually or electronically. The main advantage of manual search is Confidentiality. In any case even if there is a similar invention. a good lawyer with through knowledge of science can advice whether the claims can be broadened or narrowed to accommodate the new invention. However. To that extent this can be strenuous. even if a pen has already been patented. thicker writing.G. The publishing Patents Gazette The Electronic patent searching mechanism has the advantage of fastest Searching Speed and a better interface because of the Selective Dissemination of Information. Patents Snap and Patents Assign. Listed below are some of the documents that are available in paper form which interested companies or libraries can purchase: US patents issued from 1790 UK Patent applications published since1979. Diploma in Patents Law . CASSIS CD-ROM products by the USPTO: Patents Bib. one needs a collection of foreign and other journals and manuals. For example. PCT patent applications since 1978. in order to do a manual search. The following are available as CD. 74 NALSAR Pro P..ROMS: USPS: Bibliographic data of the United States patents since 1975. Each of these searches has it sown advantages and disadvantages. For example.PATENT SEARCH or is patentable. It is easier to use and normally has either country wide or world wide information. Espace-Access: Bibliographic data of the European patent applications since 1978. thinner writing. a nib that can adjust its writing. Patents Assist. So never give up.

The results of a good patent search should reveal any identical. It is for the inventor to look at some of the sites and decide the functional qualities that best suites the inventors requirement for a search. CH and US). Other than these are several web sites that provide the patent search. DE. Even if you hire someone else to do the patent search for you and that is highly recommended for beginners . Some are cost effective some are more equipped with prior art material etc. Patent Search A patent search involves searching different databases to see if your idea has already been patented. FR. GB.more about this later. to know if you can patent your idea. As a bonus. GLOBALPAT: Patent family and bibliographic data of the patent since 1978 for several countries and treaties (PCT. similar. They may be in the market to license patents in your field of invention . or partially similar inventions to the one you might patent. Most of these sites can be accessed by typing in ‘patent search’.PATENT SEARCH PAJ: Bibliographic data of the Japanese patent applications Since 1976. You have to do (or hire someone else to do) a patent search before investing in the cost of patenting. EPO. Diploma in Patents Law 75 NALSAR Pro .do a preliminary search yourself and bring that research to the intellectual property P. viewing and reading already issued patents will: help you to write your patent application help you understand your competition help you avoid patent infringement help you learn more about your field of invention It is also a good idea to write down any patent assignees that you notice listed in the patents you examine. Each of these web sites have different features that are user friendly. or something similar in the google site.G. Note that even the Indian Government has a CD-ROM details of which can be obtained from NISSAT. The details and categories of search and indexing are dealt with while dealing with the Strasbourg Convention.

Present) both provide free online databases. 77 iSee About. structure. 9. 4. effect. The title link will take you to the full text of the patent.G.com. CD-ROM) Begin with this alphabetical subject index to the Manual of Classification. 8.Mary Bellis. With online patent be sure to examine other referenced patents that the inventor has listed. Classification Definitions (microfiche/CD-ROM/USPTO web) Read definitions to establish the scope of class (es) and subclass (Es) 2. You can search using keywords or phrases that describes your invention. Diploma in Patents Law . For better results the inventor could visit one of the 87 patent and trademark depository libraries . Note where the terms fall within the US Patent Classification System.you can make an appointment with one of the patent librarians for further help. You will not be able to do a complete search online for a pre1976 patent unless you know the exact patent number. Locate those numbers in the Manual of Classification. You can do a patent search online. In conducting a patent search at a PTDL. Scan the entire class schedule. 3. Doing so will save you money. you will need to take the next steps.Present) and Delphion (1974 .S. Search for your keywords. Note class and subclass numbers. Your Guide to Inventors NALSAR Pro 76 P. The results will list the title and number of all patents related to your keywords (l976 forward only). The U. Look for common terms describing the invention and its function. plus provide the other benefits mentioned above. Revise search strategy as needed. paying attention to the dot indent.77 How to search-Key points 1. The index to the US Patent Classification (paper. Patent and Trademark Office (1790 . 7. 6. 5. end-product.PATENT SEARCH attorney or agent that you hire. and use.

Diploma in Patents Law . Patents CLASS (CD-ROM or WEST) . Use an attorney. retrieve results and examine titles. 12. WEST. Keep your own search results and compare them to the professional search. Not every reference librarian in each PTDL library will be skilled in patent searching. what databases will be used. 3. 77 NALSAR Pro 2. obtain a list of all patent numbers (1790-present) granted for every class and subclass to be searched. CD-ROM.) or WEST (1971. Patents BIB (CD-ROM.PATENT SEARCH relevant to the search. 11. Revise your search by using applicable keywords. or USPTO web.Check if you are on the right path. 13. Dos and Don’ts of Search 1. Watch out for invention scams. search Patents BIB (1969 . WEST) .G. 14. Official Gazette .Once relevant class (Es)/ subclass (Es) are identified. Complete Patent Document (microfilm. 10. Sign a non-disclosure agreement before hiring a professional.) for a particular class/subclass. Professional searches can come with a formal written opinion or simply be copies of the prior art found in the search. note the classes and subclasses and go back to step 8. P. Ask before you make an appointment. They include important search notes and suggestions for further search. 4. Try other relevant classes/subclasses. years of coverage vary) Search the complete text and drawing(s) of closely related patents to determine how different they are from the invention. agent or independent research company when quality becomes more important.Patent Section (paper or microform) Go to the Gazette and look for exemplary claim(s) and a representative drawing for all patents on the list(s) to eliminate those unrelated to the invention. paper. Ask how the search will be done.

Take note that each element of the bibliographic data is associated with a 2-digit number or code. patent number (11). name of the applicant. In general. country of issue (19). date of application. Check classification numbers associated with each patent you examine. etc.PATENT SEARCH 5. Go to the Manual of Classification to find out what the number/s state and then go to the Definition of Classifications to understand the invention. A description. hence satisfying the legal aspect of the patent document. An abstract (may be accompanied by a drawing) .providing bibliographic information on the granted patent or patent application. the format and information contents of patent documents are as follows: Bibliographic data . e.g.372.G. Diploma in Patents Law . the title of the invention.e.giving a concise summary of the technology of the invention. there are the bibliographic data about the patented invention i. An example of patent document is shown in Annex I i. name of the patentee(s) and addresses. These numbers are related to the “Handbook on Industrial Property 78 ii Ibid NALSAR Pro 78 P. In the first or ‘front’ page of the patent document.78 Contents of Patent Documents Patent documents are published in fairly standard format and structure by patent offices all over the world. filing and publication dates. A claim or claims-defining the scope of protection for the invention under consideration. name of the inventor.e.disclosing clearly the technical details of the invention concerned. US-A 5. There is also an abstract that contains an illustrative drawing of the invention. and date of grant and so on. normally illustrated by working examples showing how to carry out the invention into practice. which includes the document number.018. in most cases including drawings .

Diploma in Patents Law 79 NALSAR Pro . The recommendation on bibliographic data covers a list of approximately 60 distinct titles widely used on the front page of patent documents.e.PATENT SEARCH Information” published by WIPO. A technical discussion of the problem or problems which the invention intends to solve. After the front page. Said recommendation is aimed at improving the access to information relating to the bibliographic content of patent documents such that information users would have no difficulty in retrieving the information they want. A description of the invention in sufficient detail with reference to one or more working embodiments. which is sometimes called the “patent specification”. The claims of patent documents have an important legal function i. a device for preventing theft of a vehicle. Drawing(s) relating to the working embodiments to assist the understanding of the invention mentioned in the description. which are placed after the above-mentioned specification of the same document. They are identified through code numbers. one of which concerns bibliographic data. In the example given. we can find the main body of the patent document. the patent document further includes the claims of the invention. as required by the law for a skilled person to be able to practice the invention. Generally. to define the scope of protection for the inventions P. known as the “INID” code or “Internationally agreed Numbers for the Identification of Data”. given in a small circle or between brackets are placed before the relevant bibliographic data element. patent specification includes the standard contents about the invention in the following sequence: An identification of the technology or technical field to which the invention concerns e. An assessment on the prior art in the technical field or background of the invention. The “INID” code numbers. The above-mentioned handbook has many recommendations on the publication of patent documents.g.G.

Lee Yuke Chin.PATENT SEARCH concerned. constitute the legal aspect of patent documents.Document prepared by Mr. General Manager. They differentiate The prior art from the new technology as defined by the inventions and hence. SDN.79 79 iii Extracted from WIPO regional training course on Intellectual property for developing countries of Asia and the pacific . Malaysia NALSAR Pro 80 P. Malaysian Technology Consultants. BHD. Diploma in Patents Law .G.

.REFERENCE MATERIALS List of Books 1..1976 / Ed. .. Cases and materials on patent law including secrets. . 9. Ed. How to protect computer programs (A case history of the first pure software patent) / Pal Asija. Patent law / P Narayanan.G. . 10. Keayle. 6. . Patent law review .Indian experience and options available / B.Calcutta: Eastern Law House. 1983. New Delhi: National Working Groups on Patent Laws. 1985. Diploma in Patents Law 81 . New York: West Publishing Co.4th Ed. 2000.New York: West Publishing Co. A treatise on the law of patentability. 3. 5.New York: Clark Boardman Co. 8. 1995. 1998. I-XIV: New York: Lexis Publishing. . copyrights trademarks / William Francis. validity and infringement / Donald S Chisum. 7. K.Vol. Protecting and exploiting new technology and designs /Keith Hodkinson.2nd. NALSAR Pro 2.London: E & F N Spon. Cases and materials on patent law / Martin J Adelman et al. 1990. 1990. Conventions against super 301: Patents regime . . Allahabad: Law Publishers (India) Pvt.. Patent system and related issues at a glance / New Delhi: National Working Group on Patent Law. P. 1990. 1987. Third world patent convention / New Delhi: National Working Group on Patent Laws. 4.Ltd. by Thomas E Costner . 1976.

. Industrial design law in Australia and New Zealand / Kanwal K Puri. 21. International intellectual property and the common law world / Ed.Cambridge: Cambridge University Press. 1998. By Lionel Bently and Spyros Maniatis . 16. The new world trade organization agreements: Globalizing law through services and intellectual property / Christopher Arup. by Carlos M Correa and Abdulqawi A Yusuf..2nd Ed.G. 22. 24. 20.REFERENCE MATERIALS 11. . 1999.: West Publishing Co. 2000. . 1986. Guide to the application of the Paris convention for the protection of industrial property as revised at Stockholm in 1967 / G H C Bodenhausen . Asian regional colloquium on the judiciary and intellectual property system / P M Bakshi. 1992. 19. A practical guide to patent law / Brain C Reid. 18. Vol.Oxford: Hart Publishing. Intellectual property and ethics.4 / Ed. Vol. World Trade Organisation: An Indian perspective / Jayunta Bagchi. . . A course book in international intellectual property / Doris Estelle Long and Anthony D’Amato. Diploma in Patents Law . 1994. London: Sweet & Maxwell. . 17. by Michael Blakeney. 1997. 1991. The patents and trademarks cases digest 1981-1997 / Sandeep Bhalla.London: Sweet & Maxwell.II: Implications for India and the third world / N K Chowdhury and J C Aggarwal. 2000.St. Vol.Calcutta: Eastern Law House. . Dunkel proposals. . Delhi: Patents & Trade Mark. – New Delhi: World Intellectual Property Organisation. . Minn. 82 14. 15. Intellectual property and international trade: The TRIPS agreements / Ed.Paul. 1998.London: Sweet & Maxwell. Intellectual property aspects of ethno biology / Ed. 13. 1996. 2000. by Charles E F Rickett and W Austin Graeme. I / Hugh C Hansen. 23. . London: Sweet & Maxwell.Sydney: Butterworths.Delhi: Shipra Publications.Geneva: UNBIRPI. 1993. NALSAR Pro P. 2000. 12. .London: Kluwer Law International. International intellectual property law and policy.

. P. .Penang (Malaysia): Third World Network. Intellectual property in the new technological age / Robert P Merges. . the Uruguay round and the third world / Chakravarthi Raghavan. . . 2000. Intellectual property rights under WTO: Tasks before India / T Ramappa.Hongkong: Sweet & Maxwell. 1997.London: Sweet & Maxwell. Report peoples commission on the constitutional implications of the final draft embodying the results of the Uruguay round of multilateral trade negotiations / V R Krishna Iyer. . Harmonisation of intellectual property in Europe. 35. Intellectual property rights in agricultural biotechnology / Ed.REFERENCE MATERIALS 25.England: Ashgate Publishing Co. . Intellectual property law of East Asia / Ed. 34. Commercial exploitation of intellectual property /Hilary E Pearson and Clifford G Miller . 1990. Afsar H Jafri and Gitanjali Bedi et. Intellectual property and criminal law / N S Gopalakrishnan.London: Blackstone Press Pvt. al. 1971. 2000.New Delhi: Research Foundation For Science. Ltd. Intellectual property / W R Cornish. European intellectual property law / Terence Prime. by Candler Adrian. 26. 1990. Recolonization GATT. by F H Erbisch and K M Maredia. . 27.New Delhi. Ltd. indigenous knowledge and intellectual property rights / Vandana Shiva.London: Sweet & Maxwell.New Delhi: Centre for Study of Global Trade System & Development.. New Delhi: Wheeler Publishing. 2000. .2nd Ed.Bangalore: National Law School of India University.2nd Ed. 28. 1998. 29. 36. 1997. 83 NALSAR Pro 31. 30. Indian law of patents and designs / K K Gujral. by Alan S Gutterman and Robert Brown. 1996. 32. 33.G.Gaithersburg: Aspen Law & Business.. 37. . . Vol. Diploma in Patents Law . Peter S Menell and Mark A Lemley. Technology & Ecology.3: A case study of patent procedure / Philip Leith Ed.Hyderabad: Universities Press (India) Ltd. The enclosure and recovery of the commons: Biodiversity. ... 1989. 1994. . 1998.

5th Ed.373-379. 0. patent. Captive minds.REFERENCE MATERIALS 38. p. 46. Licensing guide. 40. . 47. 1977. 5th Ed.London: Sweet & Maxwell. Spranger. By Peter Millett.. 39.Allahabad: Wadhwa & Co.Bangalore: National Law School of India University. 45. Indian patents law [ As Amended by Patents (amendement) act 1999] / D P Mittal . technology transfer and licensing. The encyclopedia of forms and precedents Vol.Delhi: Om Law Book House. 1997. Gearing up for patents : The Indian scenario / Prabuddha Ganguli. 1987.Dehra Dun: Research Foundation for Science Technology. The seed keepers / Vandana Shiva . 1999.. by Peter Millet. B 12-21: Consumer credit to intellectual property / Ed.. Law shop on intellectual property regime for pharma Industry / Ed.Hyderabad: Universities Press (India ) Ltd. 41. by V C Vivekanandan..New Delhi: Navdanya.Bombay: Rustom R Dadachanji. 1998. List of Articles 1. 1996. captive lives: Essay on ethical and sociological implications of patents on life / Vandana Shiva . 1973. 2000. The encyclopedia of forms and precedents Vol. 1995.London: Butterworths. . Supreme Court on trademarks. .G. copyright. . 44. by P S Sangal and Kishore Singh . 49. The law of patents in a nutshell with act 39 of 1970 and rules of 1972 / Rustom R Dadachanji. patents and designs 1950 . . IP taxing / Ed. No.Ethical aspects of patenting human genotypes according to EC biotechnology directive. 1995. Patenting software under the European patent convention / Keith Beresford. 2000. Indian patent system and Paris Convention: Legal perspectives / Ed. Diploma in Patents Law . Tade Matthias . 48.New Delhi: Taxmann Allied Services (P) Ltd. for developing countries: A guide on the legal aspects of the negotiation and preparation of industrial property licenses and technology transfer agreements appropriate to the needs for developing countries /Geneva: World Intellectual Property Organization. 43. 42.1999 / P K Mittal and O P Chadha. XXI (1): Intellectual property. . . 1999.London: Butterworths. International Review of Industrial Property and Co. 84 NALSAR Pro P.

48-57.15-19.Incremental inventions in Europe : A legal and economic appraisal of second tier patents. No.03.Internet business method patent policy. 2nd June. Khera.G. Vol. 14th Oct 2000. Vasudeva. 6.42. p.87. No.89.536. Merwe. Vol. Manoj. 1998. No. William C. March. p.3-12. 14. Vol. Julie E and Lemley.87. 2001. 7. A rule-based war : Dr. Iwasaka.109.35. Harpal Kaur . Andries Van Der . Vol. Yale Law Journal.Patent scope and innovation in the software industry.04. Mainstream. Vol. April-June. No.3726-3728. Vol. No. Vol.From Chakrabarthy to Chimeras: The growing need for evolutionary biology in patent law.04.1-58.REFERENCE MATERIALS 2. V .03. Shinoj .Patents and the pharmaceutical sector. Manushi. 2001. India and the TRIPS Mandate.729-780. Uma . Virginia Law Review. Central India Law Quarterly.Patents versus patients : AIDS. 2001. July-Aug.380-388. Jennifer-Holding the sovereign universities accountable for patent infringement after Florida prepaid and college savings Bank.507. p. Suthersane. 5.EU-Canada patents row: How does it affect India? Economic and Political Weekly. 10. p. 2001. 85 NALSAR Pro 3.319-343. 9.Patenting biotech products: Complex issues. 2000. Economic and Political Weekly. Vol. 13. Vol.01. p. 2001. California Law Review. Cohen.4. Journal of Business Law.33.35.15.04. June.11-12. No. 2000.89. Economic and Political Weekly.1505-1515. Diploma in Patents Law . p. p. p. May. No. Ryan M T . April 2000. p. p.Masheekars message. Polse. Jan. No. No.31.13. 11.1616-1618. 2000.19. Vol.05. International Review of Industrial Property and Co. p. P. Vol.Patents on Life. p. California Law Review.152-154. Mark A . TNCs and drug price wars.Patents this! ABA Journal.02. 6th May. Lawyers Collective. Smith. Kavaljit . Patent. Matthew G . No. No.39.24. Wells. Singh. P K . Koshy. 12. 2001. p. 15.Patents and sui generis system for protection of plant varieties: A threat to food security and health care.06. 2000. No. 4. 8. P K. publish and prosper.182-196.Experimental use and submission of data for regulatory approval. No.02. . March. No. Vasudeva. July. p. 2000. Vol.

G. within whose jurisdiction Mirzapur is situated. 1952 in the Court of the District Judge. appellant herein. in the defendant on September 9. 1966. particularly shallow dishes. 1953. a tailstock without the utensil either being NALSAR Pro 86 P. M/S HINDUST AN MET AL SHYAM HINDUSTAN METAL INDUSTRIES AIR 1982 Supreme Court 1444 Justice Sakaria: These two appeals on certificate arise out of a common judgment and decree. BISHW ANT PRASAD RADHE Y BISHWANT RADHEY SHY AM V. 1952. the plaintiff instituted a suit for injunction and damages. (hereinafter called the plaintiff) is a registered partnership firm carrying on the business of manufacturing brass and German silver utensils at Mirzapur. (hereinafter called the defendant) is a concern carrying on the business of manufacturing dishes and utensils in Mirzapur. Allahabad. dated January 18. of a Division Bench of the High Court of Allahabad.ANNEXURE I CASE 1: M/S. On August 8. preceded by a notice served on the defendant on September 9. was to turn scrap and polish them on some sort of headstock. with these allegations. The old method of manufacturing utensils. The facts material to these appeals may be set out as under: M/s Hindustan Metal Industries respondent herein. M/s Biswanath Prasad Radhey Shyam. Diploma in Patents Law .

that of a lathe (headstock. The plaintiff further claimed a decree for Rs. but the defendant continued to infringe the patent.3. P. 1911 (hereinafter called the Act). 1951 as assignee of the said patent. the plaintiff prayed for a permanent injunction restraining the defendant from adopting. and that the patent has no utility and therefore it was liable to be revoked. Diploma in Patents Law 87 NALSAR Pro . a manner of new manufacture or improvement. convenience. one of the partner of the plaintiff firm. By virtue of this patent the plaintiff acquired the sole and exclusive right of using this methods and means for the manufacture of utensils. imitating. The plaintiff further prayed for a mandatory injunction requiring the defendant to destroy the articles used for the infringement of its patent. In September 1952.000/ as damages.G. Parsottam Dass. the plaintiff learnt that the defendant was using and employing the device and method of manufacturing dishes under the former’s patent. got the alleged invention patented under the Indian Patents and Designs Act. 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. Consequently with a view to introduce improvement. 1953 with effect from December 13. in 1951. speed.4636851 on May 6. employing or in any manner infringing the device of the plaintiff’s patent. The plaintiff after filing the necessary specifications and claims in the Patent Office. invented a device and method for the manufacture of utensils. The defendant resisted the suit on various grounds. at No. nor did it involve any inventive step or ingenuity having regard to what was known or used prior to the date of the patent. On the preceding facts. safety and better finish.ANNEXURE . 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.I fixed to the headstock by thermoplastic cement or held in the jaws of a chuck fixed to the headstock. The plaintiff served a notice upon the defendant asking him to desist from infringing the plaintiff’s patent. This system was however fraught with risk to the workers inasmuch as the utensils used to fly off from the headstock. that the alleged invention of the plaintiff was not on the date of the patent.

praying for revocation of the patent on the same grounds which he had set out in the written statement. It did not involve any novelty.G. the learned Judge dismissed the plaintiffs suit (No. 1953. material for our purpose. On October 13. Oak. The plaintiff’s suit along with the counterclaim of the defendant was transferred to the High Court under S.3 of 1955). The defendant had publicly manufactured goods before the date of the patent substantially according to the method claimed by the patentee as its invention. 29 (Proviso) of the Act. Mirzapur on the same grounds which were raised in his counterclaim in the suit for injunction and damages. The work of turning or scraping utensils of various designs has been going on at Mirzapur and other places for many years before 1951. 4636851) that had been issued to the plaintiff. of the learned trial Judge are: (i) (ii) The patent does not involve any inventive step having regard to what was known or used prior to the patent. Both the suits were consolidated and tried together by a learned Single Judge (V. Diploma in Patents Law . J.2 of 1954) with costs and revoked the Patent (No. The findings. Aggrieved the plaintiff preferred two Special Appeals to a Division Bench of the High Court. The alleged invention was not on the date of the patent. 26. but allowed the petition for revocation (in suit No. The changes introduced by the patentee in En. The alleged invention has got utility The patent obtained by the plaintiff was liable to be revoked and the plaintiff was not entitled to any damages (iii) (iv) (v) In the result. a manner of new manufacture or improvement. the defendant along with three other business concerns filed a petition under S.ANNEXURE .G.). of the Act for revocation of the patent that had been granted to M/s Hindustan Metal Industries.I The defendant also filed a counterclaim. CC are of a minor nature. The Appellate Bench held as under: NALSAR Pro 88 P. Issues were framed and evidence were led by the parties.

they used to fly off. That the method of holding an article by the pressure of a point of a pointed tailstock was neither used nor known.4636851 did not involve any inventive step or novelty. it allowed the appeals. Diploma in Patents Law . That.’ In the result. That lathes have been well known for along time and they consist essentially of a headstock and a tailstock which are used for holding the article to be worked upon That the known uses. 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 tailstock. immediately after this the work of manufacturing plates and dishes restarted at Mirzapur and was carried on with success. plates and dishes were attached to an adopter on the headstock by means of an adhesive like lac or shellac and in turning the plates or dishes. the method of mounting patented by the appellant did involve an inventive step and was a manner of new manufacture and improvement. the plaintiff invented the method of mounting which has been patented. That. Asthana. formerly. learned counsel. Mr. for the appellant has canvassed these points: (i) (ii) The method and means claimed by the respondent in Patent No. inasmuch as 89 NALSAR Pro P. in 1951. 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.ANNEXURE . causing injuries to the workmen. to which a tailstock has been put were centering the article. (2) (3) (4) (5) (6) (7) On these findings the Appellate Bench concluded: ‘In our opinion.I (1) That.G. 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. set aside the judgment and decree of the learned trial Judge and decreed the plaintiff suit with costs.

The object of Patent law is to encourage scientific research. Grant of exclusive privilege to own. Even in cases of doubt proceeds the argument the Court should uphold the patent. 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 incentive step. Before dealing with these contentions let us have a general idea of the object the relevant provisions and the scheme of the Act. appearing for the respondent submits that whether the process got patented by the respondent involves a method of new manufacture of improvement is one purely of fact. The alleged inventor Purushottam Dass. The High Court thus made out a new case for the plaintiff. presumed to have been duly granted. should be.G. 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.’ (iii) The Division Bench of 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. It is submitted that a patent is granted by the Controller after due inquiry and publication and unless the contrary is proved.I 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 for the pointed tailstock but rather it specifically says that ‘the pressure spindle may be pointed or blunt. as a matter of practice. be disturbed by this Court. who was a partner of the plaintiff firm. In the instant case. though he attended the Court on some dates of hearing did not dare to appear in the witness box. would give rise to an inference adverse to the plaintiff. which had not been alleged either in the specifications in the subject of the patent or in the pleading. Diploma in Patents Law . stimulates NALSAR Pro 90 P. Mehta. The failure to examine Purushottam Dass.ANNEXURE . it is urged. and should not. contradicted itself in concluding that holding an article by the pressure of a pointed tailstock was neither used nor known. (iv) As against this Mr. new technology and industrial progress. use or sell the method or the product patented for a limited period.

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. and must independently satisfy the test of invention or an ‘inventive step’. 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’. 26 (1) (f) of the 1911 Act recognised lack of utility as one of the grounds on which a patent can be revoked . but there must be novelty in the mode of application. v Lathe. Mere collection of more than one integers or things.. put in Balkey and Co.. The price of the grant of the monopoly is the disclosure of the invention at the Patent Office. As Cotton L. The fundamental principle of Patent Law is that a patent is granted only for an invention which must be new and useful. and Co. 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. apart from being a new manufacture must also be useful. Thierry (189614 RPC 105 (HL). But Courts have always taken the view that a patentable invention. after the expiry of the fixed period of the monopoly. or there may be some ingenuity in the mode of making the adoption. The combination article known integers may be combined that by their working interrelation they produce a new process or improved result. not involving the exercise of any inventive faculty. 2(8) of 1911) Act).’ (S.. that the purpose is new or that there is novelty in the application so that the article produced is in that sense new. Diploma in Patents Law 91 NALSAR Pro . ‘Invention’ means any manner of new manufacture and includes an improvement and an allied invention.J. ‘It is not enough. The foundation for this judicial interpretation is to be found in the fact that S. should be something more than a mere workshop improvement.’ said LORD DAVEY in Rickmann v.G.I new inventions of commercial utility. (1889) 6 RPC 184 (CA) ‘to be new in the patent sense the novelty must show invention’. It is essential for the validity of a patent that it must be inventor’s own discovery as opposed to mere verification of what was already known before the date of the patent. That is to say. does not qualify for the grant of a patent. To be patentable the improvement or the combination must produce a new result or a new article or a better or of old than before.ANNEXURE . In other P. it must have novelty and utility. passes into the public domain.

whether the ‘manner of manufacture’ patented. ‘Head the document been placed in the hands of a competent draftsman (or engineer as distinguished from a mere artisan). Syer (1887-4 RPC 407) ‘by any means whatsoever. 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. For the determination several forms of the question have been suggested. The ‘obviousness’ has to be strictly and objectively judged.’ Another test of whether a document is a publication which would negative existence of novelty or an ‘inventive step’ is suggested. John Tye and Son Ltd. (1967) RPC 297. no subsequent patent for it can be granted either to the true or first inventor himself or any other person. says Hindmarch on Patents (quoted with approval by Fry L. 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.. used and practiced in the country before or at the date of the patent. The one suggested by Salond L. is apposite. have acquired special significance in the terminology of Patent Law.G.26 (1) (e) of the Act and its equivalent word ‘obvious’. ‘If the public once becomes possessed of an invention’.J in Humpherson v. If the answer to this question is ‘yes’.. in Rado v. Determination of this question which in reality is a crucial test. and has led to considerable conflict of judicial opinions . depending largely on the circumstances of the case. as under. has been one of the most difficult aspects of patent law... was publicly known. for the public cannot be deprived of the right to use the invention . certain broad criteria can be indicated..ANNEXURE .’ The expression ‘does not involve any inventive step’ used in S.I words in order to be patentable the new subject matter must involve ‘invention’ over what is old. Diploma in Patents Law .J..the public already possessing everything that he could give. Although no absolute test uniformly applicable in all circumstances can be devised.. it will negative novelty or ‘subject matter’. Whether an alleged invention involves novelty and an ‘inventive step’ is a mixed question of law and fact. endowed with the common NALSAR Pro 92 P.

. Diploma in Patents Law 93 NALSAR Pro .I general knowledge at the ‘priority date’. ‘this gives me what I want’ (Encyclopedia Britanica. M/s. To put it in another form:’was it for practical purposes obvious to a skilled worker in the field concerned. (i) and (b) of S. Corporation v. On the other hand the patentee firm.. that he would or should make the invention the subject of the claim concerned’ Halsbury 3rd Edn. was on crude machines and that the machine (Ex. 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.42 referred to by Vimadaial J.G. It is noteworthy that the grant and sealing of the patent. In the light of this principle.ANNEXURE .. who was faced with the problem solved by the patentee but without knowledge of the patent invention.. (ii) whether the invention does not involve any inventive step. CC) developed by the patentee is a distinct improvement over the machines of the old type. in the state of knowledge existing at the date of the patent to be found in the literature then available to him.. (f). yet. 26 (1). Unichem Laboratories (AIR 1969 Bom 255). ibid). having regard to what was known or used prior to the date of the patent. (e). Although the defendant had both in his defence and in the counterclaim for revocation of the patent pleaded six grounds mentioned in Clauses (d). would he have said. p.. Bishwanth Prasad Radhey 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. Mr. Mehta’s argument that there is a presumption in favour of the validity of the patent cannot be accepted. or the decision rendered by the Controller in the case of opposition does not guarantee the validity of the patent. a manner of new manufacture or improvement. 29. At the trial M/s. Hindustan Metal Industries. Vol. examined 4 witnesses to prove that the work of scrapping and polishing of utensils formerly done at Mirzapur.. It is pertinent to note that this position viz. which can be challenged before the High Court on various grounds in revocation or infringement proceedings. After referring to the procedure to be followed the court added. 1970. of Bombay High Court in Farbwerke Hoecinst and B. (g). the validity of a patent is not guaranteed by the grant is now expressly provided in S. P.. 13(4) of the Patents Act.

CC and Ex. From circumstance I. the conclusion is inescapable that the invention got patented by M/s. Adapters were in use for holding turnably articles () of suitable sizes for holding plates and dishes. In our opinion.I The learned trial Judge. III and IV. set out above. No bracket or angle. II. II.which were produced before us. and other parts of India.’ The trial Judge then found that mere addition of a bracket did not amount to a novelty. Hindustan Metal NALSAR Pro 94 P. overlooked or omitted from consideration. We have ourselves examined the evidence on record with the aid of the learned counsel for the parties. from the discussion that follows. It might well be due to labour trouble as the witnesses examined by the appellant had deposed.G. The view taken by the trial Court was quite reasonable and entitled to. We do not want to rehash the evidence.P . the trial court found both the issues. we do not find that any piece of evidence has been misread. and have ourselves compared the machines (Ex. inspection of the machines (Ex. CC) appears to have been used in this industry before 1951. XVI). against the patentee firm. Be that as it may. were in use before 1951. IV. Diploma in Patents Law . He further observed that Circumstance VI was of a neutral 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 did not suffer from any infirmity or serious flaw which would have warranted interference by the Appellate Bench. Lathe is a well-known mechanism used for spinning and a number of other processes. Suffice it to say. found that the following facts have been established: I. produced by the appellant and the other material on record. due weight. also. VI. as used in the defendant’s machine (Ex.ANNEXURE . The manufacture of utensils is an old industry at Mirzapur and at other places in U. XVI). III. CC and Ex. The tailstock was probably used in this industry before 1951. V. Work on plates and dishes was suspended at Mirzapur for a few years before 1951. after a careful appraisal of the evidence produced by the parties.

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. be of 1 cm in diameter. with utensils of the type which cannot be conveniently and directly gripped by the jaws of the chucks and where the utensil tends to slip of the chuck and a certain amount of risk is involved in applying the tool in the turning operation.’ The title of the patent mentioned in the complete specification is as under. the new method of manufacture is described with reference to three figures or sketches.’ Thereafter. though not exclusively. In the provisional specification.’ (Emphasis added) P. e.G. being firmly held against the utensil. ‘Means for holding utensils for turning purposes. Diploma in Patents Law 95 NALSAR Pro . the title or subject of the patent is described as follows: ‘Method of and means for mounting metallic utensils or the like on lathe for turning them before polishing. involving any novelty or inventive step having regard to what was already known and practiced 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. 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. 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 contactual relationship with the utensil.I Industries respondent herein.’ Then follows a description of the old method of manufacture. was neither a manner of new manufacture nor a distinctive improvement on the old contrivance.ANNEXURE . The blunt end may.g.

Means as claimed in Claim 1 in which the adapter is made of wood or any other material. 9.’ 2. Diploma in Patents Law . Means as claimed in Claims 1. 2 & 3 in which the pressing end of the spindle may be fixed end or a revolving end.G. 5. Means for mounting and holding metal utensil more particularly of the shallow type for the purpose of turning before polishing comprising a shaft or spindle carrying at its one end adapter having a face corresponding to the shape of the article or utensil to be held. Means as claimed in previous claims in which the pressing or inner end of the pressure spindle is pointed or blunt. The utensil being maintained in held position by an independent pressure on the utensil when seated on the adapter. at the foot of the complete specification 9 claims are set out which read as under: 1.ANNEXURE . 8. 6. Means for holding the utensil for the purpose herein set forth and substantially as described and illustrated and utensils so turned. 3. Means as claimed in claim 1 in which the pressure spindle passes through a bracket or the like and said bracket may comprise the arm of an angleshaped bracket whose other arm may be fixed to a stand or the like.I Then. 7. the inner end of the spindle pressing against the utensil. means being provided to set and lock the pressure spindle in any desired position. said hollowed end being preferably fitted with ball bearings to enable the said independent piece to revolve with friction when it is in contactual relationship with the utensil. Means for the purpose herein set forth and as claimed in Claim 1 in which the pressure spindle is adapted to pass through a guide block and has a regulating handle at the outer end. Means as claimed in Claim 1 in which the adapter is shaped to suit the utensil. 4. Means as claimed in Claims 1 and 2 in which the pressure end of the pressure spindle is rotatably spindle. NALSAR Pro 96 P.

5 he found that the use of the bracket was new but the end bracket can hardly be said to be an invention. Purshottam had attended on some dates of hearing.R.I As pointed out in Arnold v. He first construed and considered the description of the invention in the provisional and complete specifications and then dealt with each of the claims. The learned trial Judge precisely followed this method of construction. (1894) 1) RPC 463 (CA). but the specification and the claims must be looked at and construed together. Sotam Singh 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 trial Judge then noted that Purshottam who was stated to be the inventor. for the patentee cannot claim more than he desires to patent. 1. Regarding Claim No.’ In Claims 3. (1871) 6 Ch A 706. enumerated that as far as possible the claims must be construed as to give an effective meaning to each of them. as admitted by Sotam Singh (DW 3). and as such was the best person to describe the invention.G. in the light of the evidence on record. in order that the mind may be prepared for what it is. did not appear in the witness-box. individually. So neither the means for mounting and holding metallic utensil nor the independent pressure spindle can be said to be an invention. 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.ANNEXURE . though. Diploma in Patents Law 97 NALSAR Pro . that the invention in order that mind may be prepared for what it is. Simon. Pressure spindle or a tailstock was in use in this industry much before 1951. The learned Judge found this explanation 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 P. he found no novelty or inventive step having regard to the fact that these were well known and were in use long before 1951. Thereafter. the learned Judge commented: ‘The pressure spindle in a lathe is a well known contrivance. In Parkinson v. 4. With regard to Claim No. he considered the claims and specifications as a whole. Lord Esher M. that the invention is to be claimed. Bradbury. 6 and 7 also.

The witness were speaking with discordant voices as to the alleged ‘inventive step’ involved in the patent. if any.ANNEXURE . therefore. the pointer with the nut. After a critical appraisal of the evidence produced by the parties. and tailstock to a common base (as the case in the machine Ex. He was a partner of the patentee-firm and a brother of Sotam Singh (DW 3). to examine him as a witness so that the story of the particular invention being a new manufacture or improvement involving novelty could. In variance with it. In this connection. The trial Judge further noted that the witnesses examined by the patentee firm had given a garbled account as to the patented invention. and personally knowing all the circumstances of the case. it was his duty as well as of the respondent-firm. that tailstock or pointer was also in use. we do not find any novelty in the alleged invention. 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. He was the best informed person who might have answered the charge of lack of novelty leveled by the opponent side by explaining what was the novelty of the alleged invention and how and after. Diploma in Patents Law . what research. In regard to the use of the bracket or angle in Ex-CC. CC as a whole or look at the invention in its separate parts. we may add that Lakshmi Dass (DW 1) another witness examined by the patentee-firm.the side supporting iron plate. had admitted that machines like Ex. it was not a new idea. took the heavy risk of the trial Court accepting the charge of lack of novelty made by the appellant herein. Purshottam was not a stranger. XVI produced by Bhagwati Prasad) or fixing the tailstock in a bracket which is connected with the framework on which the headstock is fixed. and the adapter. the learned Judge held that although it was new. in all its aspects be subjected to cross-examination. NALSAR Pro 98 P. the respondent-firm. Mata Parshad (DW 2) stated the invention lies in fixing the Charhi on the pointer on the same iron base. By keeping Purshottam away from the witness-box. 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 it was a common practice to fix the headstock and tailstock permanently to a single framework. he made this alleged discovery’.I from being the best informed person about the matter in issue. Whether we consider Ex. Being a partner of the respondent firm. Sotam Singh (DW 3) said that his patent covers three factors .G.

Thus judged objectively. a normal development of an existing manner of manufacture not involving something novel which would be outside the probable capacity of a craftsman. The patented machine is merely an application of an old invention. Sotam Singh frankly admitted that he did not know whether Purshottam had made any research or any experiments to produce this combination. a person took out a patent. known for decades before 1951. These were. the approach adopted by the trial Court was quite in conformity with the basic principles on the subject.’ His claim was ‘for P. not does it involve any inventive step having regard to what was known or used prior to the date of patent. The alleged discovery does not lie outside the Track of what was known before. should not have been lightly disturbed by the Appellate Bench. so as to reduce the quantity of metal at that part. and to be adopted to receive the square heads of the bolts. Nor does this combination of old integers involve any novelty. in principle. Moreover. that the claim in question viz. Co. There is no evidence that the patented machine is the result of any research. in the state of knowledge existing at the date of patent. that case is analogous to the one before us. the patent in question lacked novelty and invention.I 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. In that case. which he thus described: ’My invention consists in forming a recess or groove in one or both sides of each fish (plate). for the traditional purpose of scraping and turning utensils. noticed in an earlier part of this judgment. based on appreciation of the evidence of witnesses and the trial Court had the initial advantage of observing their demeanour in the witness-box. with a slight change in the mode of application. (186465) 11 HLC 654) as. as already observed. of what was publicly known or practiced before about this process. which are thus prevented from turning round when the nuts are screwed on. mere addition of a lever and bracket did not make the invention the subject of the claim concerned.. Great Northern Rly. largely findings of fact.G. There has been no substantial exercise of the inventive power of innovative faculty. by the tests suggested by authorities. We will close the discussion of trial Court’s judgment by referring to a decision of the House of Lords in Harwood v. It would have been obvious to any skilled worker in the field. Diploma in Patents Law 99 NALSAR Pro . independent thought. which is no more than a ‘workshop improvement’. Indeed.ANNEXURE . ingenuity and skill.

and screwed to them by bolts or nuts. and having projecting wings firmly secured to and resting upon the sleepers or bearers. the fishes were flat pieces of iron with round holes for bolts. has found that the novelty and invention of the patent in ‘the method of holding an article by the pressure of a point of a pointed tailstock (which) was neither used or known.G. to put into them.I constructing fishes: and the application of such fishes for connecting the ends of railways in manner hereinbefore described. and render the fish lighter for equal strength. till the time of the patent. or rivets. that lathe consisting of a headstock and a tailstock NALSAR Pro 100 P. or stronger for an equal strength. without any novelty or invention in the mode of applying such old contrivance to the new purpose. there must be invention so applied as to produce a practical result.’ On these facts it was held that what was claimed as an invention was not a good ground to sustain a patent Blackburn L.’ This finding. is inconsistent with the Appellate Bench’s own Findings Nos. if we may say so with respect. And we quite agree with the Court of Exchequer Chamber that a mere application of an old contrivance in the old way to an analogous subject. We will now consider the judgment of the Appellate Bench. and. Diploma in Patents Law . In others the extreme ends of the holes were made square and the bolt-heads square. which it may be recalled. In some cases.ANNEXURE . so as to support the rails by their sides and upper flanges.’ The above enunciation squarely applies to the facts of the present case. in some square recesses were made in the flat pieces of iron for the same purpose. The constructing of fish joints for connecting the rails of railways with grooved fishes fitted to the sides of the rails. (5) and (6). is not a valid subject-matter of a patent.’ It was proved that before the date of his patent fish-joints had been used to connect and strengthen the rails of railways. the consolidated substance of which is to the effect. succinctly summed up the rule of the decision. or stronger for an equal weight of metal. but. the heads of the bolts being held in their places by separate means. thus: ‘In order to bring the subject-matter of a patent within this exception..J. 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.

(7) on its own. this finding of the Appellate Bench stands in contradiction to what Sotam Singh (DW 3) patentee himself has admitted in the witnessbox. without allowing itself to get into the unenviable position of appearing more Royalist than the King. it is evident that there is no assertion of novelty for the pointed tailstock. it was not possible for the Court to work out Finding No. there would be no infringement of my patent …. The grant P. CC. 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 I and 1-A. CC and Ex. have been well known for a long time.’ Sotam Singh further admitted that machines like Ex. In cross examination. XVI). extracted earlier. We find that the tailstock in each of these machines has a blunt end of slightly above 1 cm. Sotam Singh (DW 3) said: ’I am not using any other pointer than that of Ex. In the face of the admissions of the representative of the patentee.ANNEXURE . holding an article is metal spinning by the pressure of a pad attached to the tailstock. I conducted no experiments before obtaining the patent. himself.. CC..I and its uses for centering the article. 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. his patented machine has no other end of tailstock excepting of the (blunt) type in Ex. It may be reemphasised that according to Sotam Singh himself. I have not used any rotating pointer either at Benaras or at Mirzapur ……. I have got no apparatus for scraping utensils except like Ex. (7) of the Appellate Bench goes beyond the scope of the specifications and claims made by the patentee. For all the reasons aforesaid. CC. rather it is stated that ‘the pressure spindle may be pointed or blunt. We have ourselves examined and compared the machines (Ex.’ Furthermore. XI in a lathe. having regard to what was publicly known or used prior to the date of the patent. in diameter. in the subject of the patent. Finding No. From a perusal of the specifications and the claims’. Diploma in Patents Law 101 NALSAR Pro . I do not know what kind of experiments Purshottam carried out. 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.G.If anybody uses a wooden adapter in a chuck and does scraping work on a Katora in such a wooden chuck without a pointer.

Appeal Allowed NALSAR Pro 102 P.ANNEXURE . the appeals are allowed. Before parting with this judgment we will like to dispose of another argument of Mr. The argument is that since the Courts below have concurrently held that the invention had utility the patent should be sustained.G. the judgment of the Appellate Bench is set aside and that of the trial Court restored. In the result.I of the patent in question was therefore invalid and was liable to be revoked on the grounds mentioned in Clauses (d) and (e) of S. As pointed out already. Diploma in Patents Law . Mehta. the parties are left to bear their own costs throughout. We are unable to accept this contention. the crucial test of the validity of a patent is whether it involves novelty and an inventive step.26 (1) of the Act. That test goes against the patentee. In the peculiar circumstances of the case.

Whether the appellant is the inventor and is it covered by patent Whether there can be counter claim by respondent. Defendants have infringed the patent. 1972. who decided the Suit between the parties on the Original Sides of the High Court. Held: 1. whereas defendants have faced to prove their claim for revocation of the patents. MANGAT RAM CHOUDHARY AND OTHERS AIR 1978 Delhi 1 Justice Prakash Narain & Justice B. Diploma in Patents Law . 1973. Is so can the patent be revoked According to Section 151 the plaintiffs has proved the breaches. A counter claim for revocation of patent was put by defendants. Misra: This appeal is against the judgment of Learned Single Judge. preferred against the Judgment of the learned Single Judge delivered on December 15. The plaintiff/appellant produces and markets a toy called a viewer and patented. was admitted on February 28. This first Appeal is directed against the Judgment of a learned Single Judge of this Court.G. That Appeal came up for hearing before a Bench 103 NALSAR Pro P.CASE 2: RAJ PRAKASH V. C. The Appeal.

The contesting Defendants denied that the Plaintiff had developed any process which could be called an invention for exposing or manufacturing of film strips made out of standard 35 mm. medially cut positive film or which are printed one or more pictures viewed through a lens fitted in a viewer specially adapted for use of medically cut strips of 35 mm positive films so as to get a virtual image of a normal frame in a 35 mm. The second Judgment in consequence of the remand Order was delivered on January 27. The matter thereafter came up before us. It was denied that the Defendants were manufacturers of the strip viewers. 1974 framed an additional issue and remanded the case back to the learned Single Judge for a finding on the said issue and disposal of the Suit thereafter.I of this Court consisting of the Honourable Chief Justice Mr. The Plaintiff/Appellant produces and markets a toy called a viewer. We shall presently deal with the patent as granted to the Plaintiff in some detail. On the other hand it was contended that they were only sellers of film strip viewers and got. First Defendant is said to be the owner-proprietor of the Second Defendant Firm. Andley and Justice Prakash Narayan.G. The Third Defendant is stated to be agent of First Defendant and is only alleged to be selling and marketing the infringing viewers. 2. Suffice it to say at this stage that the toy above-mentioned is attractive enough for children and may be used even by grown-ups for viewing interesting and educative pictures and is said to have had a good sale. Cinematograph film in viewers in a manner which is identical viewers being manufactured and marketed by the Plaintiff. The Plaintiff obtained a patent bearing Number 111926 for what he calls his invention. The Bench by its Order dated April 30. to quote from the Written Statement: 3. This viewer uses a 35 mm. The First and Second Defendants resisted the Suit but the Third Defendant did not put in appearance and was proceeded ex parte. Diploma in Patents Law . N. Justice S. Cinematographic films. and is alleged to be the main offender. NALSAR Pro 104 P. 1975. It is the Plaintiff’s case that the Defendants have infringed the patent of the Plaintiff inasmuch as they are manufacturing and selling in the open market film strip viewers utilising a medically cut 35 mm.ANNEXURE .

G. that the Defendants had been selling ½ film strip viewers for five years much before the Plaintiff claims that he invented something or got his patent. that there was prior publication and knowledge of the alleged invention of the Plaintiff.ANNEXURE . It was pleaded: • • that the Plaintiff was not the true and first inventor of the alleged invention. had been known as an ordinary process in photographic art for 50 years. that the alleged invention of no utility. After the Plaintiff had filed a reply to the Written Statement. Similarly.I ‘their ½ film strips manufactured from different agencies for the last five years much before the alleged patent claim of the Plaintiff. 4. A counterclaim for revocation of the patent was put in by the First and Second Defendants. that the patent was obtained by fraud etc. it was said. the process of dividing and sub-dividing a cine standard frame of 35 mm film or other different formats of photographic films for purposes of copyright prints of pictures and for other purposes. reiterating his case and statements before issues were recorded. Diploma in Patents Law . not only the invention claimed by the Plaintiff was disputed but also its worth or value. The process of printing four pictures on the cine standard frame of 35 mm film adopted by the Defendants was not claimed to be an invention and it was said that the process was common knowledge among photographers. a learned Single 105 NALSAR Pro P. that there were other producers of films strips claimed by the Plaintiff as his patent. In short.’ It was contended that the Defendants were getting printed four pictures of equal size on a cine standard frame of 35 mm film so that four pictures of equal size are obtained on each cine standard frame of 35 mm film and thereafter cutting the printed film medially into two halves to get two film strips which were capable of being separately used in film strip viewers. • • • • 5.

This finding was recorded by the learned Single Judge by his judgment dated January 27. 3. the Suit was disposed of by a learned Single Judge of this Court by his judgment dated December 15. NALSAR Pro P.) Is the invention covered by patent Number 111926 of no utility (O. The Suit for grant of injunction and claim of infringement was dismissed by the learned Single Judge because.P . Diploma in Patents Law .D.D.G. 1975. He came to the conclusion that neither the manufacture of the viewers nor the cutting nor the exposing of the film are by themselves an essential part of the combination of the methods in Claim 3 for use in the viewers.P . according to him. As noticed earlier. which is the essential feature of the Plaintiff’s patent and the production of the film was done by the Plaintiff by masking.I Judge of this Court. Justice V. did not use this process in manufacturing their films used in viewers marketed by them.D. D.D.ANNEXURE . 1967 (O. Singhal was the first inventor of the alleged invention covered by patent Number 111926 dated August 11.P . an additional issue was framed and the case remanded. 6. there was no issue on that point.D. The Defendants.P .) 2. 6.) Is the invention covered by patent Number 111926 not a new manufacture in view of the sale by the Defendants (O. settled the following issues: 1.P .P .) If Issue Number 5 is proved. As noticed earlier. Our learned brother once again went into the detailed specifications of the patent 106 7. K. 5. The learned Single Judge partly upheld the patent of the Plaintiff but dismissed the Suit for infringement of the patent. In this judgment the learned Single Judge notices that by his earlier judgment only part of the claim of the Plaintiff had been upheld by him.) Whether the Defendants have a locus standi to claim revocation of the patent by way of a counter-claim (O.) Whether the invention was not at the date of the patent a manner of new manufacture and improvement (O. Whether V. 1972. according to the learned Judge. 4. whether the patent be revoked (O.D. Misra. The parties went to trial on the above issues.

1967 reads as under: ‘Government of India’ THE PATENT OFFICE Number 111926 of 1967.ANNEXURE . P. The patent that was granted to the Plaintiff on August 11. The validity of the patent this time was upheld on the basis of the technique used by the Plaintiff inasmuch as he collected previous well-known processes in a combination. The learned Judge observed that according to the specifications and descriptions in the patent the Plaintiff has a patent restricted to a process for making a film for a film strip viewers. Lajpat Nagar. He again recorded a finding that there was no infringement by the Defendants. information and belief. of BI/154. And whereas he hath by and in his complete specification particularly described and ascertained the nature of the invention and the manner in which the same is to be performed. WHEREAS Raj Prakash. an Indian National hath declared that he is in possession of an invention for a process for printing picture films for use in filmstrip viewer and the films made thereby and that he is the true and first inventor thereof. 8.I granted to the Plaintiff and came to the conclusion that the specifications showed that the Plaintiff only claims as his patent the process for printing photographic films for use in film strip viewers and also in respect of the films made thereby for viewers. And whereas he hath humbly prayed that a patent might be granted to him for the said invention. He rejected an alleged claim made by the Plaintiff of patent in the viewers themselves. After dilating at great length on various types of frames in diverse types of cameras the learned Single Judge took the view that the whole case was one of technique used in film making and processing the films. and that the same is not in use in India by any other person to the best of his knowledge. New Delhi.G. He did not claim any patent for a film strip viewer. Diploma in Patents Law 107 NALSAR Pro .

if it is to be maintained. subject to the conditions that the validity of this patent is not guaranteed by Government and also provided that the fees prescribed for the continuation of the patent are duly paid. 1967. The following specifications particularly describe and ascertain the nature…of the invention and the manner in which it is to be performed: This invention relates to movie films of 35mm size particularly for use in film viewers and has its principal object to economise in the quantity of film to be used in the film viewers and to cut down the cost to practically half. Due to the present import restrictions its cost has gone up so NALSAR Pro 108 P. Vedaraman Controller of Patents and Designs.000 Renewal fees will be due on this patent. Diploma in Patents Law . Dated of sealing 14th March 1969/23 phn. New Delhi. selling and using the invention throughout India and of authorising others so to do for the term of sixteen years from the 11th day of August. The specifications submitted by the Plaintiff for grant of the patent read as under: ‘A process for printed picture films for use in film strip viewers and the films made thereby. an Indian National. 1967. Raj Prakash. resident of B1/154. 9. In witness whereof the Central Government has caused this patent to be sealed as of the 11th day of August. on the 11th day of August 1971 and on the same day in each year thereafter’.G. 1911. Sd/-S.ANNEXURE . MGIPO-84-32 Patent/63-12-5-64-1. subject to the provisions of the Indian Patents and Designs Act.I The Central Government is pleased to order by these presents that the above said petitioner(s) (including his legal representatives and assigns or any of them) shall. 1890 (Saka) P & D 87. as patentee(s) have the exclusive privilege of making. The film as generally used in film strip viewers is mostly obtained from imports. Lajpat Nagar.

another object in proposing the method of printing picture films for use in film strip viewers according to the present invention is to economise in the film and to cut down the cost practically to half for use in the strip viewers. As this stage the final print is ready and thereafter the said print is cut into two halves medially to separate out the two film strips. Same is also the case regarding the availability and price situation of the coloured films required for use in the film strip viewers.ANNEXURE . The principal object thereafter of the method of printing picture film for use in film strip viewers according to the present invention is to utilise a 35 mm standard film in getting two pictures in one Single frame of silent movie standard frame and to view the same by increasing the magnification of the object lens to the strip viewers to obtain the same size picture as would normally be obtained from a full size standard silent movie frame.G. The negative is exposed on a standard 35 mm coloured or black and white film negative by masking as required in such a manner that 2 pictures of equal size appear in the standard movie frame.I that it has become increasingly difficult to have it available in sufficient quantities for use in the film strip viewers for cheap production in the field of toys. After carrying out extensive experimental work I have devised a method by which the standard size film (cinematographic) whether coloured or black and white which is usually available in a standard size of 35 mm with perforations on both the sides can be cut into half size of 17½ mm. In view of the increased cost and difficulty in the availability of the imported films particularly the coloured films. This method enables getting two pictures of equal size in one Single frame of silent movie standard frame in such a way that after cutting the complete film medially into two halves. P. two film strips are obtained from a Single standard film of 35 mm size for use in the film strips viewers. Thereafter this negative film is printed on 35 mm positive film so that the two pictures come on the positive film. This accordingly. Such cutting of the film into two halves does not disturb the perforation on each side of the film and the cut film thus can be operated in the improved film strip viewers. This also effect a considerable saving in the foreign exchange. Diploma in Patents Law 109 NALSAR Pro . reduces the cost of the film to be used in the film strip viewers to practically half.

Figures 1 and 2 show the standard film of 35 mm size having perforations 1 and 2 on either side and the middle line along which the film is cut. Diploma in Patents Law . The standard silent movie frame is shown at 3 in Figure 1. In order to obtain the same size picture as is normally obtained from a full frame the magnification of the object lens of the film strip viewer is increased so that the same effect is obtained. It is clear that film strip cut in this manner and having its perforations undisturbed on one side can be used in the film strip viewers for getting two pictures of equal size instead of one as in the conventional type of film strip standard frame. it is adopted to the viewers in the film strip viewers of which the object lens has increased magnification to provide the same size picture as is normally obtained from a full size standard cine movie frame.I The film cut into two halves medially and having perforations only on one side to be used in the film strip viewers according to the present invention is illustrated in the accompanying drawings throughout which like reference numerals indicate corresponding parts in the various figures.G. It would be appreciated that the half cut positive film strip to be used in the film strip viewer. These perforations. Thus. The same half frame obtained after cutting the film in two halves is shown at 4 (Figure 3) and 5 (Figure 4). Figures 3 and 4 show the standard film cut into two halves having the perforations only on one side for use in the film strip viewers according to the present invention. the photographic process for picture film for use in film strip viewers comprises the steps of exposing two pictures of equal size on a standard 35 mm negative cinematographic films by making as required printing the same on standard 35 mm positive film so that 2 pictures of equal size are obtained on each frame of the standard film thereafter cutting the printed film medially into two halves to get two picture film strips each of which is capable of being separately used in film strip viewers. have perforations only on one side of the strip. on the one side of the half cut film strip support the film and also facilitate in the free and smooth movement in the strip viewer. Since each picture of the half cut film strip is of a reduced size. according to the present invention.’ NALSAR Pro 110 P.ANNEXURE .

’ 2. The Plaintiff/Appellant and First and Second Defendant also entered into an agreement for supply of the patented viewers by the Plaintiff/Appellant to Second Defendant. On the basis of the above specifications. 3. A process for picture film for use in film strip viewers as claimed in Claim 1 substantially as described and illustrated in the specification. when called upon. A photographic process of printing picture films for use in film strip viewers comprising the steps of exposing two pictures of equal size on standard 35 mm negative cinematographic films by masking as required.ANNEXURE . A combination of film as claimed in Claim 2 with a film strip viewers capable of using a standard 35 mm cinematograph film cut into half as claimed in any of the above Claims characterised in that each picture of the half cut positive film strip. The statements P.I 10. A cinematographic film of 35 mm standard size for use in the film strip viewer made according to any of the above claim substantially as described and illustrated in the specification. Diploma in Patents Law 111 NALSAR Pro . printing the same on standard 35 mm positive film so that two pictures of equal size are obtained on each frame of the standard film thereafter cutting the printed film medially into two halves to get two pictures film strips each of which is capable of being separately used in the film strips viewers. 11. A printed picture film for use in film strip viewers consisting of a half portion of the standard 35 mm cinematograph film in the picture frame of which a plurality of picture are printed according to the method claimed in Claim 1. 4. the claims made by the Plaintiff which were incorporated in the patent read as under: 1. the Counsel for the Plaintiff/Appellant and First and Second Defendants (First and Second Respondents herein) gave almost similar construction to the claims in patent Number 111926. After prolonged hearing. which is of reduced size. 5.G. is adopted to be viewed in the film strip viewer of which the object lens has increased magnification to provide the same size picture as is normally obtained from a full size standard silent movie frame.

as claimed by the Plaintiff. For the time being we shall restrict ourselves to the exposition of law and its application to the facts of the present case. creates a monopoly in favour of the patentee but then law throughout the free world recognizes that an inventor must first get the benefit of his invention even if it means creating a monopoly. Whether a patent sets out an invention is to be determined by a true and fair construction of the specifications on the basis of which an inventor claims that he is the first inventor of an invention. Diploma in Patents Law . The grant of patent. we are really concerned with the Act of 1911. Invention. Though Third Defendant (Third Respondent herein) was ultimately represented by Counsel. no doubt. Even First and Second Defendant entered into an agreement which is operative only for one year. is to find out something or discover something not found or discovered by anyone before. Nearer home. NALSAR Pro 112 P. Although First and Second Defendants have admitted the patent. Hence. We shall presently deal with the other provisions of the law as we proceed to deliver our judgment. it is necessary that we lay down the correct law not only on the basis of statements made by the parties but necessitated by the limited period for which the agreement has been entered into between the Plaintiff on the one hand and First Defendant on the other. According to Section 2 clause 8 of the Act of 1911 an ‘invention’ means any process of new manufacture and includes an improvement in an alleged invention.I made by the Counsel for the parties were duly recorded in Court. Inasmuch as the patent claimed by the Plaintiff was granted in 1967. and have also admitted infringement of such patent. In 1970 this Act was amended so as to apply only to design and Act 39 of 1970 was passed by the Parliament confined exclusively to patents.G.ANNEXURE . as is well known. one should give ordinary meaning to the words but where necessary the words must be construed in the sense in which they are used in a particular trade or sphere in which the invention is sought to have been made. the Patents and Designs Act was first passed in 1911. it would be necessary to clearly set out what is the invention that the Plaintiff claims and what has actually been patented. it did not enter into any arrangement with the Plaintiff/Appellant. Section 2 clause 11 of defines ‘patent’ to means one granted under the provisions of the Act. In order to properly construe the specifications. 12. which is to be patented.

Gaumont -British P icture Corporation Limited and British A coustic F ilms Gaumont-British Picture Acoustic Films Limited. it would be an invention and the claims and specifications have to be read in that light. the first thing to be determined is the proper construction of the specification. Indeed one can get bogged down by the techniques of photography. to read the specifications and the claims from the point of view of the persons in the trade manufacturing film strip viewers. 1885 (2) RPC 45 (65) (65). A careful reading of the claims put in by the Plaintiff and understanding the same in their ordinary meaning would clarify the whole situation. decision of the Court of appeal in R. Birmingham Sound Reproducers Limited. in the same case: ‘As in all patent is put in which the validity of the patent is put in issue. To quote from another well-known . Collaro Limited and Collaro Limited v.G. C. The principle. As was said by Heald K. According to the learned Single Judge it means one thing. 1956 RPC 232). the diverse frames used in a still camera or in a movie camera. The essential thing is that the inventor was the first one to adopt it. reported as Hinde v v. as was observed in the famous hair-pin case. really not concerned with all that. We have. therefore is that every simple invention that is claimed. so long as it is something which is novel or new. Diploma in Patents Law 113 NALSAR Pro . It is the pith and marrow of the invention claimed that has to be looked into and not get bogged down or involved in the detailed specifications and claims made by the parties who claim to be patentees or alleged violators. Lissen Limited 1937 (54) RPC 307 and affirmed by Justice Romer. the first thing to do is to determine what the invention is. A A. . according to the Plaintiff quite another. (refer to Birmingham Sound Reproducers Limited v.C. however. v.…’ P. for it is to those persons that it is addressed and it must be read with their eyes’.I 13. therefore.ANNEXURE . It is not necessary that the invention should be anything complicated. 14. As observed by us a little earlier. We are. 1936 (53) RPC 167 167: ‘The specifications must be construed in the first instance as a written instrument and without regard to the alleged infringement. Photophone Limited v . in Electrical and Musical Industries Limted v. Osborne. but the specification must be construed with a proper appreciation of the meaning that it would convey to person engaged in the art to which it relates.

if novel. nor is it serious. 1933. the rule itself indicates that the title of the specifications does not govern the specification or . ‘let us see what the Plaintiffs’ invention is. A misleading title similarly is of little consequence. because after all you must read the title by the means of the specification. that being a comparatively immaterial question…’ amp W orks Limited v . Justice Field the claims. Therefore.ANNEXURE . which are well known. lays down that the title should give a fair indication of the art or industry to which the invention relates.G.. The complete specification and the provisional specification do not altogether agree with each other. free from fancy expression. Pope’s Lamp Limited.. after all. Sometimes people fall into error in construing specifications by relying too much on the title given to the specifications of the invention. Macrory did not put it as anything serious. as I said just now. ‘Therefore. At first that seemed to threaten a technical ground that they had claimed by their complete specification more than was covered by their provisional specification. Mr. It should be brief. Rule 33 of the Indian Patents and Designs Rules. Thus. The title is that it is for ‘A new or improved tricycle’. Diploma in Patents Law . I think. P ope’s Electric L amp Company 16. but. The title is certainly somewhat misleading. inter alia. Richardson. put the proposition rather succinctly and if we may be allowed the liberty to quote. It is on a proper construction of the specifications and the claims that the true nature of the invention claimed is to be determined and the patent granted has to be construed. the Defendant did not proceed upon that. in the present case NALSAR Pro 114 P. In Brereton v v. It is settled law that the title of the specifications of an invention claimed does not control the actual claim. In Osram L Lamp Works v. the great object to both parties must be to have their rights settled for the future. 1915 RPC 538 the above aspect is further highlighted by Justice Joyce who emphasised that the essential parts of the specifications have to be carefully read and held as an invention. free from ambiguity and as precise and definite as possible but it need not go into the details of the invention itself. 1884 (1) RPC 165. without reference to any question of that sort. as a machine. without getting mixed up in the unessential and the usual parts of processes.I 15. that is per se. very fairly and very prudently. because.

Lancashire Yorkshire Railway Company. The patentee is obliged under Rule 34 of the aforesaid Rules to describe means of performing the invention in the best manner known to him and disclose the same. RPC 229 229. The description in the Complete Specification should satisfy the following requirements: (i) The complete Specification must be framed with the utmost good faith and must not contain any false representation or 115 NALSAR Pro P. requires: Description. The description of the invention should be preceded by the following preamble: The following specification particularly describes and ascertains the nature of this invention and the manner in which it is to be performed…. and see. or as clear as the nature of the case will permit. The object of stating. is in order to tell the public what inventions they are prohibited from using during the period of its monopoly. the nature of his invention…’ 18. 1884 Westinghouse v . which has to be looked into in construing the patent without being misled by the title or being carried away by the usual processes known to photography. without reference to any infringement at all. or rather. without his licence. In orkshire R ailway Company . otherwise nobody would know whether they were infringing a patent or not. in the first instance. Diploma in Patents Law . By the proviso in the letters patent a patentee is obliged to do two things. therefore. I should say. incumbent upon the patentee to let the public know in clear terms. these two requisites apply to different contingencies. what the real claim of the patentee is. The L ancashire and Y v. The public ought to be properly and explicitly informed of that. Now.I also it is the essential aspect. It is. particularly ascertaining and describing for the words are strong the nature of his invention. and the means of performing the same.ANNEXURE . He is obliged to particularly ascertain and to describe the nature of the invention. The above proposition is codified in India in the form of Rule 34 of the aforesaid Rules.G. Justice Grove observed as under: ‘It would seem to me that the better way of looking at a patent…is to read the specification of the Plaintiff’s patent. Form Number 3-A. inter alia. The law in this behalf had long been settled. 17.

(iii) … (iv) The Complete Specification must describe the best method known to the patentee of performing the invention and all his knowledge relating thereto.G. or otherwise mislead the public. In the case of an article the patent is in the end product or the article. Justice Vimadalal in Farwerke Hoechst Aktiengesellschaft V ormals Meister L ucius & Bruning Vormals Lucius a Corporation v . 255 held v. Regarding other substances the law continues to be the same as before and any invention so long as it does not fall within Section 3 of the Patents Act. The onus as to the invalidity of a Plaintiff’s NALSAR Pro 116 P. as food or as medicine or drug which may also be patentable. speaks of inventions where methods or processes of manufacture are patentable and also speaks of inventions claiming substances intended for the use or capable of being used. He further observed that where one of the claims in respect of which infringement is alleged is wide enough to cover all methods for achieving particular result. 1970. is patentable.I misdescription of the invention or any material part of it. 1970. Unichem L aboratories. including that which he may have acquired during the period of provisional protection prior to the date of filing the complete specification’. Section 5 of the Patents Act. the patent does not lie in the end product. that the main function of the Court is to construe the claims (stated at the end of specifications in the patent) which are alleged to have been infringed without reference to the body of the specifications and to refer to the specifications only if there is any ambiguity or difficulty in the construction of the claims in question.ANNEXURE . Diploma in Patents Law . (ii) The complete specification must not be framed in ambiguous language but must be as clear and concise as the nature of the subject will admit. in the case of a process. The invention for which patent is claimed may be a product or an article or a process. Laboratories. AIR 1969 Bom 255. but only in the process by which it is arrived at. 19. the question is not as to the method actually followed by the Plaintiffs but is whether the method followed by the Defendants is covered by the claim in the Plaintiffs’ patent.

(with one or plurality of picture) and its use in combination with viewers specially adapted for the use of such medially cut strips.ANNEXURE . In our view.’ 21. It is in the light of the above law. before us they admitted the patent. The half strip thus used may also contain a plurality of picture and that is part and parcel of Appellant’s patent.e. so as to get a virtual image of the same size as the virtual image of normal 35 mm frame. but to enable the Court to formulate the questions of fact to be answered. want of novelty. The patent that he claims as having been granted to him is in a medially cut positive 35 mm printed film. that the patent was invalid due to insufficiency of description.I patent and the grounds of insufficiency of description. that the patent in the present case has to be determined. use of any particular type of camera or any type of technique including masking in exposing a film.G. the Plaintiff/Appellant has rightly construed P. Diploma in Patents Law 117 NALSAR Pro . in developing the negative film and printing the positive films. The patentee’s duty is not to prevent all possible argument as to whether there is or is not infringement in particular cases.’ and the description must be fair i. and the patentee need not so simplify his claim as to make it easy for infringers to evade it. Our task is made easier by the statement of the Plaintiff/Appellant made before us which we set out below: ‘The patent that the Appellant claims as already submitted is not in the process of exposing of a film. in processing a film. We are in respectful agreement with these observations. The learned Judge further observed that in an action for infringement of patent to meet the defence under Section 29 subsection (2) read with Section 26.. The complete specification must describe ‘an embodiment’ of the invention claimed in each of the claims and the description must be sufficient to enable those in the industry concerned to carry it into effect ‘without their making further inventions. absence of inventive steps and want of utility was rightly placed on the Defendants. as claimed by the Plaintiff and set out above. Though there was spirited contest put in any First and Second Defendants to the specifications and claims of the Plaintiff/Appellant.. 20. the claim in the specifications of the patent need only be as clear as the subject admits. it must not be unnecessarily difficult to follow.

the film is placed in a cine camera and half the film is masked so that only half of the film is exposed and a second photograph is taken on the other half of the film.. In fact. a Single exposure can be taken at one time with a leica camera using four photographs on the leica frame as 1/4th portion of the leica camera frame. I would like to describe the process used by the two parties …. 1975. According to the Defendant. However.. and we say it with great respect.ANNEXURE . The learned Single Judge. therefore.. Diploma in Patents Law . According to the Plaintiff. after remand. It is possible that the masking may be done in other ways also. a practical demonstration of the two methods was given in Court at the stage of the original Trial.. which is the claim for a combination.G. cannot uphold the Plaintiff’s case that he had a patent for making two pictures in a Single cine-frame. That object was metallic strip. the third claim.. it means that each of these 1/4th sized pictures will be equal to half size pictures in a cine camera frame. As the leica camera frame is twice the size of a cine camera frame.’ ‘…I cannot see that the process described by the Defendants is at all the one which has been patented. The essential part of the description given by the Plaintiff in his patent has the use of masking…’ NALSAR Pro 118 P.’ ‘.I the scope of his patent as in Claims 1 to 5.. 1972: ‘I find that taking two photographs on one film by using half the film at one time is not an usual idea… (After dealing with the demonstration given in Court and referring to encyclopaedia of photography) I.’ In the judgment dated January 27. the learned Single Judge observed: ‘I must point out that there is an essential difference between the technique relied upon by the Plaintiff in his specifications and the technique relied upon by the Defendant’s witness in making the same type of photograph. To quote the words of the Judgment dated December 15.The masking is brought about by putting an object between the lens of the camera and the film. is novel in the sense that no one before had thought of making a viewer using a half-cut film by the method used by the Plaintiff. went wrong in holding that the patent lay in the process of filming by masking.

the next aspect is to determine whether the invention is new with reference to (a) prior publication. In the claims put forward by the Plaintiff in the Patents Office the entire process was described. Having determined the nature of the invention and having upheld the validity of the patent.ANNEXURE . It was only in the statement before issues that Mangat Ram. then of course. as defence to their infringement. 23. are also well-known. I have upheld the patent on the ground that the Plaintiff does not use masking in the sense that he shuts off the light from half the frame of his camera in a particular way. 22. I must hold that Defendant’s. From this process the essential and the unessential parts have to be separated and the same stand separated in discerning and finding out the invention of the Plaintiff. use of a particular type of film or camera or taking plurality of picutres on one film or in one frame is neither novel nor new. in as much as he has connected previously well-known process in a combination. Therefore. Diploma in Patents Law 119 NALSAR Pro . therefore.I ‘…In fact. Photography and its various techniques are known to those interested in and indulging in this art for a long time. technique of photography etc. The technique of masking. as set out above. I have upheld the patent on the ground that the Plaintiff has used a new technique. super-imposing etc.G. The various developments are well-publicised in photographic magazines. in the novel idea mentioned in the statement of the Counsel for the Appellant recorded by us earlier. there will be nothing inventive about it. upheld as valid. method is different from this means that I must come to the conclusion that what is stated in the Written Statement does not amount to being an admission on the Plaintiff’s case’. The Defendants did not disclose any case of prior publication in the Written Statement. The patent consisted. said that the first inventor of the alleged invention P. leica frames. First Defendant. and (b) prior use. inter alia. when we read his Counsel’s statement set out hereinabove. If all techniques are covered by this patent. the Trial Court fell in error in being confused by the Defendants who put up a case of cine-frames. Therefore. The patent in its entirety is.

Medical Photographer in the Willingdon Hospital. Singhal. 24. He stated that the film strips of the Plaintiff were half the cinema-size films while the film strips brought by Prem Sharma to him were of full size. Films stated in Court that he used to get film strips with a full leica frame of 35mm prepared from Bombay Film Laboratories. who appeared as Defendant’s Witness 3. Patel of Bombay Film Laboratories on commission at Bombay. is clearly attracted. Singhhal’s process is not claimed even by him to have been made public prior to the claim of patent filed by the Plaintiff. known as leica frame.ANNEXURE . these could be medially cut and used. Singhal. prior user and the rule enunciated in Pope Appliance Corporation v v. Therefore. P . Prem Sharma.G. Motion Picture Producers. P . produced or got produced by the Defendants prior to 1967. we have no hesitation in rejecting the contention of the Defendants. There is no evidence of . Diploma in Patents Law . New Delhi. There is no evidence of prior to the claim of patent filed by the Plaintiff. Therefore. It was urged on behalf of the Defendants that although full films were got produced by him. 1929 (46) RPC 23 Pulp Paper 23. In other NALSAR Pro 120 P. K. since 1965. New Delhi. the Plaintiff’s patent is valid. as claimed by the Plaintiff to be his patent. He then put the said negative in an enlarger and took pictures 1cm x 1cm and prepared slides from the filmstrips in which he had taken plurality of pictures in a leica frame. K. Karol Bagh. The Plaintiff also examined Gordhanbhai G. Plaintiff’s Witness 3 of H. Films. Spanish River P ulp and P aper Mills Limited. This is something quite different from preparing medially cut strips of 35mm films having plurality of pictures for use in viewers specially adapted for these halfstrips to give a virtual image of a full cine-frame. All that he deposed about was that he took plurality of pictures on a 24 mm x 35 mm frame. In the statement before issues Mangat Ram stated that he was getting half film-strips manufactured from M/s H. on this point also.I was Shri V. In the Written Statement Defendants had pleaded that they do not manufacture the infringing cine-strips themselves but are getting the same manufactured in Bombay from various agencies. He did not speak of any half-cut films. In any case. Reading the statement of V. it is obvious that at no stage were filmstrips. 25.

’ 26. Section 12 of the Patents and Designs Act. H. The process of photography mentioned in the specifications and the claims. It is not enough.I words. As was held in Martin and Biro Swan Limited v . This is the quo. to use the familiar metaphor which has perhaps been run to death. or as is sometimes said.H . unduly prolific. A new invention may consist of a new combination of all integers so as to produce a new or important result or may consist of altogether new integers. does not detract from the essential features of the Plaintiff’s invention of which. as has already been held by us. quid is the knowledge disclosed to the public and quo is the monopoly granted for the term of the patent. 221 and an infringing hair-pin Company. there is neither anticipation nor prior user. 1911 sets out that a patent once granted confers on the patentee the exclusive privilege of making.ANNEXURE . was held as piracy of the Plaintiff’s invention with the following observations: P. in our view. Osborne patent. The claim for anticipation has to be either by prior user or by prior publication. 1884 (1) RPC 221. The quid is compliance with the various provisions resulting in the grant of the ord Hinde v . The effect of the grant of a patent is quid pro quo. To establish this it had to be proved by the Defendants that is some prior publication there is found information about the alleged invention more or less similar to what is claimed by the Plaintiff. Hilwood Limited 1956 RPC 125 by the House of v. Diploma in Patents Law 121 NALSAR Pro . This is particularly the case where the invention is said to consist of a novel combination. the Defendants has anticipated what has been claimed by the Plaintiff as his invention. selling and using the invention throughout India and of authorising others so to do. Lords.G. the Defendants must show that in some prior publication there is to be found information about the alleged invention… ‘equal for the purposes of practical utility to that given by the patent in Suit. 27. Garrett and Company . The very simple device upheld in John L Lord v. a new functional inter-relation of integers…. to make a mosaic of prior publication and to say that thus the whole invention has been already disclosed. Mere possibility of such a thing being made is of no consequence.

Suffice it to quote the words of M. Unessential features in an infringing article or process are of no infringing article or process are of no account. On the evidence as it stands. This is what was done in the hair-pin case. There is a catena of authority in support of this view. Diploma in Patents Law . This is the simplest way and indeed the only sure way to find out whether there is piracy. Some trifling or unessential variation has to be ignored. above-referred to. He cannot get out of it by some trifling or unessential variation. The importation and sale here is prima facie an infringement. has to be compared with the infringing article or process to find out whether the patent has been infringed. …. already referred to. I ask you. and is indeed. He is not permitted to do that where the monopoly has been secured to an inventor. A person is guilty of infringement if he makes what is in substance the equivalent of the patented article. We need not cite all those cases which were brought to our notice at the Bar. Laboratories 406: ‘The evidence here shows that in marking hetacillin in the Untied States the Defendants use a principal part of the processes which are protected here by the English patents.’ This law is codified in India by the provisions. If a man obtains a patent. it makes no difference that somebody else who has not got a patent has thought of the same thing and has used it. 28. and in consideration of their giving me that monopoly I will tell them in my specification the nature and manner of using the invention. in Beecham Group Limited v . then the process.G. there is ground for saying that hetacillin is medically NALSAR Pro 122 P.ANNEXURE . to give me a monopoly for a certain number of years. There is a further point. and therefore at the expiration of the time that is guaranteed for my monopoly the public will be the gainers because they will learn how to do this. I claim.I ‘The inventor says. A person is guilty of infringement if he makes what is in substance the equivalent of the patented article. or rather I ask the Crown. the public. If the infringing goods are made with the same object in view which is attained by the patented article then a minor variation does not mean that there is no piracy. always done. R Lord Denning. Bristol L aboratories Limited 1967 RPC 406 v. The patented article or where there is a process. and thus obtains a monopoly.

We have dealt with this matter in detail because Third Defendant has put in appearance at the last stage but does not admit infringement. The idea of the Plaintiff which is a novelty is clearly infringed. The law on this point must first be noticed. By trifle variations if the effect obtained by the Defendants is the same. Section 20 of the Act of 1911 laid down that there will be a Register of Patents maintained in the Patent Office wherein shall be entered the names and addresses of grantees of patents. and what the Defendants market is substantially the same thing as was conceived by the Plaintiff. of licences under patents and of amendments. we hold that there is clear infringement of the Plaintiff’s patent. have the same effect as ampicillin. 30. The Defendants have made certain variations in its viewers but theses are unessential.G. and a fourth viewer are definitely objects produced by piracy of the Plaintiff’s patent. In any case. there is a clear piracy. Therefore. ‘Mecorama’. it does. referred to above. by delayed action. extensions and revocations of patents and such other matters affecting the validity or proprietorship of patents as may be prescribed. after an interval.I equivalent to ampicillin. The infringement having been proved and admitted by First and Second Defendant. I think there is a prima facie case for saying there was an infringement. The Register of Patents shall be prima facie evidence of any matters by that Act directed or authorised to be inserted therein. the infringement is admitted by First and Second Defendant. As soon as it is put into the human body. and we hold that it is the same. Diploma in Patents Law 123 NALSAR Pro . an Order of injunction and accounts must follow. then according to the rule enunciated in the Ampicillin case. The viewers marked and kept on the record as (1).’ 29. which we have delineated above. We have seen the viewers marketed by the Defendants and the viewers produced by the Plaintiff.ANNEXURE . The process is so similar and the product so equivalent that it is in substance the same as ampicillin. (1-A). In these circumstances. Section 32 of the Act provided as under: 32. Certificate of validity questioned and costs thereon . notifications of assignments and of transmissions of patents.In a Suit for infringement of a patent the Court may certify that the validity of the P. 31.

’ 32. then in any subsequent Suit in that Court for infringement of the same patent the Plaintiff. who shall cause an entry thereof and reference thereto to be made in the register of patents. Transmission of Orders of Courts to Controller (1) Every Order of the High Court on a petition for revocation. as claimed by the Plaintiff. First and Second Defendants also admitted infringement thereof and prayed that a decree declaring the validity of the patent of the Plaintiff with an NALSAR Pro 124 P.G. as the case may be. Apart from admitting the patent. including Orders granting certificates of validity of any claim shall be transmitted by the High Court to the Controller.I patent came in question and if the Court so certifies.’ 33. (2) Wherein any Suit for infringement of a patent or in any Suit under Section 106 the validity of any claim or a specification is contested and that claim found by the Court to be valid or not shall transmit a copy of its judgment and decree to the Controller who shall on receipt thereof cause an entry in relation to such proceeding to be made in the prescribed manner in a supplemental record. (3) The provisions of sub-sections (1) and (2) shall also apply to the Court to which Appeals are preferred against decisions of the Courts referred to in those sub-sections. charges and expenses of and incidental to the said Suit properly incurred. Diploma in Patents Law .’ Section 33 reads as follows: ‘Transmission of decrees and Orders to the Controller . who shall cause an entry thereof and reference thereto to be made in the register. on obtaining a final Order or judgment in his favour. a proper Order has to be drawn up in the present case and transmitted to the Patent Office. unless the Court trying the Suit otherwise directs. have his full costs. 1970 reads as under: ‘151. 34. shall.A Court making a decree in a Suit under Section 29 or an Order on a petition under Section 26 shall send a copy of the decree or Order. Section 151 of the Patents Act. to the Controller. Thereafter.ANNEXURE .

Clinton Rubber Company Limited. With regard to the claim for accounts and damages the Plaintiff and First and Second Defendants agreed that out of the sum of Rupees 15.G. as required by section 151 of the Act of 1970. 35. We can do not better then to refer to Dunlop Pneumatic Tyre Company Limited v. and an injunction is issued restraining the Defendants from in any way infringing the said patent of the Plaintiff during its terms or extension thereof.ANNEXURE .and proportionate interest thereon to First and Second Defendant by way of full and final satisfaction of all claims till date of damages and for accounts against First and Second Defendant. accordingly. 36. Before we draw up the Order.deposited by First and Second Defendant by way of security in this Court a sum of Rupees 5000/. We. along with copies of the judgment and decree. This Order will be communicated to the Patent Office by the Registry of this Court. We might also notice that once First and Second Defendants admitted the validity of the patent of Plaintiff/Appellant and violation thereof at P.000/. The final decree will be made up after a Local Commissioner has gone into the accounts and submitted a report. hold that the Plaintiff is entitled to the balance of the amount in deposit in this Court after payment of Rupees 5000/. Diploma in Patents Law 125 NALSAR Pro . The patent law being rather technical. we would like to clearly state that the case of revocation of the patent put up by the Defendants stands disproved. 1903 (20) RPC 393. The Plaintiff/Appellant would also be entitled to delivery up Order of infringing articles and dyes in accordance with the delivery up Order to be made by the Court. As against Third Defendant who has been proved to be a seller of infringing viewers a decree for accounts is passed.be refunded to First and Second Defendant with proportionate interest thereon and the balance be paid to the Plaintiff in full and final satisfaction of all claims of damages and accounts for the past period. A preliminary decree for accounts is passed.I injunction against the Defendants be passed prohibiting them from infringing such patent. as claimed and set out by us hereinabove. not only by the admissions but in view of the discussion of evidence hereinabove. it will be but proper that we set out the formal final Order in our judgment itself. Against all three Defendants a declaration is given about the validity of the patent of the Plaintiff. for the correct form of the Order.

37. the same being upheld.G. draw up the formal Order as under: ‘This Court does order that R. 1972 and January 27. 1967 or any extension thereof from infringing the said patent of which the Plaintiff is the owner. and it is NALSAR Pro 126 P. This aspect needs also to be recorded in the formal Order and communicated to the Patent Office. This agreement. the claim of damages and accounts against First and Second Defendant having been satisfied in accordance with what is stated in our judgment hereinabove. the Plaintiff/Appellant as a matter of gesture of goodwill towards First and Second Defendant agreed to enter into an agreement with them to supply filmstrips viewers manufactured by him and First and Second Defendant agreed to take such viewers only from the Plaintiff/Appellant and market the same. They entered into an agreement in this behalf dated January 17. It is further ordered have been sustained by the Plaintiff by marketing of the infringing viewers by Defendant Number 3. however. We.ANNEXURE . and it is further ordered that First and Second Defendant do within 10 days hereafter make a full and sufficient affidavit stating what infringing viewers. The patent claimed by the Plaintiff and construed by this Court. is that the Plaintiff/Appellant is the owner of the patent which is in a medially cut positive 35 mm printed film (with one or plurality of picture) and its use in combination with viewers specially adapted for the use of such medially cut strips. and the judgments of the Trial Court dated December 15. films.A. (Original Suit) 2 of 1973 is allowed. Diploma in Patents Law . which was recorded by us.I the hearing before us.F. the Defendants by themselves or through their servants and agents are restrained during the continuances of patent Number 111926 dated August 11. is only for one year but the effect of it is that First and Second Defendant admit the patent of the Plaintiff/Appellant and earlier violation thereof by them. The Plaintiff having raised the question of the enforcement of his patent. 1975 are discharged. custody or power. They have also agreed to purchase the viewers manufactured by Plaintiff/ Appellant. therefore. The patent thus is also in a half cut 35 mm positive film and the viewers with such film fitted therein. so as to get a virtual image of the same size as the virtual image of normal 35 mm frame. dyes are in their possession. 1977.

I ordered that the Defendants do within 10 days after filing of the said affidavit deliver up to the Plaintiff the infringing viewers. Costs of the proceedings will be borne by the parties themselves. copy of which is Annexure ‘A’ to the formal Order. 1977 has been recorded by Court. 1977.’ Appeal allowed. This Court hereby certifies. Diploma in Patents Law 127 NALSAR Pro .G. pursuant to Section 151 of the Patents Act. And it is further ordered by this Court that the agreement between the Plaintiff and First and Second Defendant executed on January 17. 1970. P.ANNEXURE . films and dyes in consonance with the Court proceedings and orders passed on January 24. that the Plaintiff has proved the particulars of breaches and First and Second Defendant have failed to prove their claim for revocation of the patent.

128 P. The application was accepted by the Controller of Patents and the acceptance was notified in the Gazette of India dated 19-8-1972.. 1980 of the Assistant Controller of Patents and Designs dismissing the opposition to the grant of patent and directing the Complete Specification to be amended as indicated in the said order. On 10-2-1973 the applicant filed his reply to the Notice of Opposition and on 26-2-1973 the applicant filed NALSAR Pro 2. NOSHIR SORABJI POCHKHANAWALLA & ANOTHER AIR 1983 Bom 144 Justice Rele Order 1. On 14-6-71 the applicant filed complete specifications. Diploma in Patents Law .CASE 3: PRESS METAL CORPORATION LTD. On 28-3-1971 one Noshir Edulji Pochkhanawalla made an application numbered 130620 for registration of a Patent for an invention relating to ‘Improvement in or relating to Mufflers or Exhaust Silencers for Internal Combustion Engines’ along with provisional specifications. The petitioners filed notice of opposition under Section 25 of the Patents Act 1970. The opponents have preferred this appeal against the order arid decision dated 5th July.G. V.

K. 1980 and remanded the proceedings to the Asstt.G. On that day the petitioners feed affidavit of Shri G. 1976 for the hearing of the said application. the Petitioners preferred Petitions Nos. The 1st respondent obtained probate of the Will and the 1st Respondent was substituted as applicant. Parekh. It appears that the petitioners did not file their evidence in time and even before the extended period which was up to 10th December 1975. 1976. Parekh affirmed on April 26. Engineering Manager of the Petitioners. 26. fixed on the application of the 1st Respondent on April. the matter was heard afresh and the said impugned order dated 5th July. therefore. 129 NALSAR Pro 4. The Controller passed an order on May 27. Controller of Patents and Design to determine the matter afresh after taking the affidavit of Shri G. J. K. The hearing was. Pendse. But curiously heard the main application of the 1st Respondent on 26th and 27th April. 3. 250 and 251 of 1977 in this Court. 1976 and the judgment was reserved.I his reply Statement. P. set aside the impugned orders by order dated 21st Jan. and relied upon the exhibits annexed to that affidavit in support of the opposition. secondly that the invention was publicly known and publicly used in India before the priority date of the claim. The Controller fixed May 27. Against the said orders. Therefore. The 1st Respondent filed his affidavit affirmed on 15th April 1975 adopting the written statement of the deceased Noshir Edulii Pochkhanawala and evidence in support of the application for patent. 1976. Diploma in Patents Law . 1976 on record as evidence in support of the opposition. 1980 was passed. It appears that the Controller also dismissed the application of the Petitioners for extension of time to file their evidence. He has taken me through the records of the case and he has submitted that the invention as claimed by the inventor in the claim of complete specification has been published before priority date of the claim. On or about 21st June 1973 the said Noshir Edulji Pochkhanawalla died leaving a Will whereby he appointed the 1st Respondent as Executor.ANNEXURE . The Petitioners also applied for extension of time for production of the evidence. Shri Daruwalla has submitted that the Controller was in error in rejecting the grounds of opposition. rejecting the grounds of opposition and granting the application.

130 P. before whom the very same grounds of opposition were canvassed on behalf of the petitioners. Having set out the said two characterizing features. and seventhly that it is incorrect to state that the first respondent’s invention is a combination. fourthly that the alleged invention is obvious. fifthly that the claim is not a novelty. I shall take each of these grounds separately. (a) rigidly securing the two perforated pipe section with their respective closed ends at short distance apart from 1’ to 3' or more and the unperforated portions of each of said pipes being projecting outwardly from said muffler box. it will be necessary to refer to the order passed by the learned Controller. viz. Shri Daruwalla has also submitted that the order of the Controller passed on 5th July. 5. as illegal and without any jurisdiction and that. The learned Controller has proceeded to deal with the opposition by first-setting out the characterizing features of the invention and the learned Controller felt that the invention comprises of two characterizing features. 1980 amending claim 1 of the complete specification. and observing that: NALSAR Pro 6. the learned Controller proceeded to dispose of the ground of objection that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed by stating that the characterizing features of the invention lies in the said features stated by him. It appears to me that the entire approach of the learned Controller was an erroneous approach. and (b) one of the said pipes carrying smaller size perforations forming an inlet pipe and the other carrying larger perforations forming the outlet pipe.G. therefore on this around also the order deserves to be set aside.I thirdly that the claim is not an invention at all and it does not contain any inventive step. so as to make it more clear and specific to dearly bring out the characterizing features of the invention and deleting claims 2 to 7 and renumbering the remaining claims as proposed in the annexure to the order. sixthly that the complete specification does sot sufficiently and clearly describe the invention nor does it sufficiently and clearly describe the method by which it is to be performed. but before I do so.ANNEXURE . Diploma in Patents Law .

the learned Controller has overruled the ground of objection viz. 1969. e. and the principal claim itself does not clearly distinguish characterizing feature of the invention and then has found as a fact that claims 2 to 7 relate to distinct invention.G. P. therefore.’ It was on these bases that the learned Controller overruled this objection. Automobile Engines’ by Arthur W. the applicant has not given the size of perforation in the inlet and outlet pipe and. is therefore. So also there is nothing on record to show what is the relative size of the perforations and this observation of the learned Controller is also baseless. Judge. And (2) ‘Motor Services Automotive Encyclopedia’. on the ground that no details are given regarding the size of perforations in the inlet and outlet pipe in the said book which happens to be one of the characterizing features of the applicant’s invention. Similarly. The relative size of the perforation has been stated in the description and claims and the applicant has not kept the public fully in the dark it. The learned Controller has then stated that generally the principal claim.ANNEXURE . As stated above. It is on these baseless and imaginary grounds that the learned Controller has rejected this ground of opposition. 7.I ‘this construction produces some distinct advantages which have been supported by tests and has not been refuted by evidence from the opponents. this objection NALSAR Pro 8. prior publication in the two books (1) ‘Motor Manuals. He then proceeds to state: ‘It is clearly evident that claims 1 to 7 do not form within the scope of the principal claim. claim 1 defines the essential novel features of the invention and optional features are made the subject matter of subordinate claims and this is claimed in combination with the subject matter of the principal claim. there is nothing on record to show what distinct advantages have been supported by tests and this observation of the learned Controller. 7th Ed. i. baseless and without any evidence. Further the size of the perforations is only one of the characterizing features of the invention. Diploma in Patents Law 131 . Now.’ 8A. 1970 Ed.

in the specification about the relative size of the holes to be provided in the inlet and outlet pipes and have also stated that the size of the perforations will vary according to the size of NALSAR Pro 132 P.’ This is also on a purely baseless ground. This ground of rejection of the opposition is also baseless and imaginary. it is stated that shortly before March 5. The learned Controller observed that the applicant i. The petitioners also opposed the application on the ground that in Para 7 of the affidavit of the Legal Representative Shri Noshir Sorabji Pochkhanawala. He further observed albeit on an imaginary ground. inventor has not set up any secret use or any accidental or fortuitous use. 9. 11.ANNEXURE . 12. in strict confidence. affirmed on 26th April 1976 that the complete specification of Shri Noshir Sorabji Pochkhanawala are identical with the drawings submitted by the said customers of the petitioners. Diploma in Patents Law . The petitioners then referred to drawings dated 16-5-1957 submitted to them by Premier Automobile Ltd for manufacturing muffler boxes of silencers in accordance with the said drawings and they stated in para 13 of the affidavit of their Engineering Manager Gopaldas Kantilal Parikh.e. General Manager of the Premier Automobiles Ltd. This ground of opposition was also rejected by the learned Controller on an altogether untenable ground. that: ‘In transaction of this type there is likely to be same degree of confidence and I believe the applicant that it was done in confidence. On the question of ground of objection that the complete specification is not an invention and that what is claimed by the inventor is not new and that there is no novelty. baseless and imaginary grounds. the inventor submitted. five different mufflers for testing to Dy. The ground of obviousness was disposed of by the learned Controller on the ground that has not been proved before him. as he had no facility to test attenuation between the back pressure and noise level.G. the learned Controller found that:‘the applicant has stated. 1971.I has been overruled on purely untenable. This ground of abjection was also disposed of on the same ground as the other ground of prior publication was disposed of by the learned Controller. 10.

He has P. Parikh.’ This finding also is baseless and imaginary. affirmed on 15th April.) of the Premier Automobiles Ltd. 2970 Ed. Exs. and also to the fact that the said inventor Noshir S. by Arthur W. Dy. General Manager (Engg. 13. Toboldt and Larry Johnson. 1989. ‘A’ and ‘B’ to the affidavit of Shri Noshir S. Shri Daruwalla has contended that Figure 5 of the drawings accompanying complete specification is identical with the said drawings submitted by Premier Automobiles Ltd. Automobile Engines by Arthur W Judge. Ex. Shri Daruwalla has contended that the invention has been published in Motor Manuals. the learned Counsel appearing on behalf of respondent No. Moreover the sine of the perforations is only one of the characterizing features of the invention. 1 has submitted that none of the different silencers shown in the Motor Manuals Automobile Engines. Pochkhanawala. Engineering Manager of the petitioners affirmed on 26th April.ANNEXURE . Talnania. D are drawings submitted by Premier Automobiles Ltd. He has submitted that this is a question which has to be decided on evidence. 1976 and he has contended that this also constitutes prior publication. to the petitioners in or about the year 1964 for fabricating Exhaust Silencer. D to the affidavit of Shri G. Regarding the first ground of prior publication. He has also referred to Ex. therefore. 7th Edition at pages 203 to 211 and also in Motor Services Automotive Encyclopaedia by William K.I the engine and volume of exhaust gases discharged by the muffler. K. 14. Judge can give any idea to any person to manufacture applicant’s muffler. J. I shall now deal with each of the grounds of opposition. Pochkhanawala had given five different mufflers to Premier Automobiles Ltd. 14A. for testing and he has contended that this would constitute prior publication and prior user.G. So also the finding that the invention falls within the scope of the invention defined in Section 2 (i) (j) of the Patents Act. and that. Diploma in Patents Law 133 NALSAR Pro . Shri Shah. 1970. 1971 written by Shri C. 1975. it constitutes prior publication. Legal Representative of the inventor. at pages 286 and 291. Shri Daruwalla has contended that the publication is found in the letters dated 5th March 1971 and 24th April.

Section 25 of the Patents Act deals with the grounds of opposition. it was necessary to have been set out and. v. page 198. it cannot be said that there is prior publication. His submission is that Shri Parikh has not stated that he can manufacture muffler of the design given by the applicant which.V . 15.V . In regard to the letters written by Premier Automobiles Ltd. Judge’s Motor Manuals Automobile Engine and Motor Services. Shri Shah has submitted that the question as to how far the drawings in the two books viz. 1912.V. V an Der L ely N .ANNEXURE . or P. He has. 16. K.G. according to Shri Shah. he has referred to the decision in the . relied upon by Shri Daruwalla to show publication. Parikh. Engineering Manager of the petitioners affirmed on 26-4-1976 and he has submitted that the only evidence on prior publication is to be found in Judge’s Motor Manuals Automobile Engines at page 203. therefore. In regard to the prior publication. Automotive Encyclopaedia are relevant. therefore. His submission that if a picture of a machine is own without describing it at all.I referred to Para g of the affidavit of Shri G. submitted trot this objection should be overruled. Diploma in Patents Law NALSAR Pro 134 . to the inventor. it is not meant only for those who follow a similar or same vocation and unless there is evidence of the mechanic as to how he understood drawings. is necessary to be considered. Shri Shah has submitted that the question of confidentiality is a matter between Premier Automobiles and the inventor and is not a matter of public knowledge. In this connection. Squire. In the same strain. Van Lely N. 198 and also to the decision in the case of C. Ex. (1889) 6 RPC 194 at case of Herrburger Schwander Etcie v v. D to the affidavit of Shri Parikh cannot be taken as prior publication and as it does not constitute anticipation. Bamfords Limited (1963) RPC 61 61. Section 25 (1) (b) states : ‘Section 25 (1) (b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim (i) in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January.

Diploma in Patents Law 135 NALSAR Pro . 29:’ Section 29 of the said Act states: ‘Section 29 (1) An invention claimed in a complete specification shall not deemed to have been anticipated by reason only that the invention was published in a specification filed in pursuance of an application for a patent.ANNEXURE . or (where he is not himself the true and first inventor) from any person from whom he derives title. and was published without his consent or the consent of any such persons. that the application or the application in the convention country. 1912. (2) of Section. made in India and dated before 1st day of January. before the date of the application for protection in a convention country.I (ii) in India or elsewhere. and (b) where the patentee or the applicant for the patent or any person from whom he derives title learned of the publication before the date of the application for the patent.G. as the case may be. (2) Subject as hereinafter provided an invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published before the priority date of the relevant claim of the specification. if the patentee or the applicant for the patent proves (a) that the matter published was obtained from him. otherwise than for the purpose of reasonable trial. was made as soon as reasonably practicable thereafter:Provided that this sub-section shall not apply if the invention was before the priority date of the claim commercially worked in India. in the cap of convention application. (ii) shall not be available where such publication does not constitute anticipate of the invention by virtue of sub-sec. or. either by the patentee or the applicant for the patent or any person from whom he derives title or by any other person P. in any other document: Provided that the ground specified in sub-cl.

’ 17. D submitted by Premier Automobiles Ltd.ANNEXURE . The claims contained in the complete specifications filed by Noshir E. In the present case. that the inventor had given different mufflers to Premier Automobiles for testing and thirdly. In order to deprive an invention of patentability on the ground of anticipation by prior publication. that the drawings marked Ex. Firstly. the invention is opposed on the ground of prior publication. Secondly. it must be shown that the invention claimed was published in any document. Pochkhanawala are as follows:1. or by reason only that after the date of filing of that other application the invention was used or published without the consent of that person.I with the consent of the patentee or the applicant for the patent or any person from whom he derives title. an invention claimed in that specification shall not be deemed to have been anticipated by reason only of any other application for a patent is respect of the same invention made in contravention of the rights of that person. by the applicant in respect of that other application. to the Petitioners much prior to the priority date of the complete specification in the present case. that it was published in the two books. A muffler or exhaust silencer for internal combustion engines constituting of two pipe sections of equal or unequal diameters.G. (3) Where a complete specification filed in pursuance of an application for a patent made by a person being the true and first inventor or deriving till from him. each carrying perforations of equal or unequal dimensions of any geometrical pattern extending from its middle up to its closed end said perforated portions being rigidly secured in a line within the muffler box with their respective closed ends at short distance varying from 1’ to 3' or more apart from each other and the unperforated portion of each of said and the pipe being projecting outwardly from said muffler box and one of the said pipes carrying smaller size perforations forming an inlet pipe and the other carrying larger perforations from an Outlet pipe. or by any other person in consequence of any disclosure of any invention by that applicant. Diploma in Patents Law NALSAR Pro 136 .’ P.

ANNEXURE - I

2.

A muffler or exhaust silencer as claimed in Claim-1 wherein the inlet and the outlet pipe sections secured within the muffler box are in eccentric relationship with each other (substantially as shown in Figure 3 of the drawing) with the inlet and outlet ends projecting out from said muffler box in opposite directions.’ A muffler or exhaust silencer as claimed in Claim-1 wherein the inlet and the outlet pipes sections are secured within the muffler box side by side in parallel relationship with each other with the inlet pipe and the outlet pipe projecting out from the muffler box in opposite directions. A muffler or silencer as claimed in Claim-1 wherein the outlet end of the muffler box is provided with two perforated pipes of same dimensions and the inlet pipe of the muffler box is provided with one perforated pipe. A muffler or exhaust silencer claimed in Claim-1 wherein the perforated closed ends of the inlet and outlet pipes are tied together form a straight line or a straight pipe is provided with a partition in its middle to form two pipe sections and each pipe section is provided with perforations extending from its closed end up to its middle or 2/3rd its length and said perforated pipe is rigidly secured within said muffler box in such a way that the unperforated portions of said pipe projects out through the closed end of said muffler box and respectively form inlet and outlet pipes for the muffler box. A muffler or exhaust silencer as claimed in Claim 1 wherein the muffler box is provided with a partition panel carrying perforations or openings and fitted with a perforated pipe carrying a dividing partition in its middle is rigidly secured to said muffler box so that induced expansion gases collected within the muffler box chamber are rapidly discharged into the atmosphere via said opening formed in the partition panel and the perforation in the outlet end of said pipe. A muffler or exhaust silencer as claimed in Claim 1 wherein the two short pipes carrying perforations and rigidly fitted within the
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3.

4.

5.

6.

7.

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muffler box are in parallel relationship with each other and the inlet and the outlet ends of the said pipes are projecting out from the same side of the muffler box. 8. A muffler or exhaust silencer as claimed in Claim-1 to 7 wherein the perforations formed in the outlet pipe are at least 14 to 3 times larger than the corresponding perforations formed in the inlet pipe. A muffler or exhaust silencer as claimed in Claim 1 to 8 wherein the perforations formed in the outlet pipe are progressively larger in size and diameter for stabilizing even flow of diffused gases from the muffler box into the atmosphere.

9.

10. A muffler or exhaust silencer as claimed in Claim 1 to 8 wherein the shape and size of the muffler box varies and depends upon the availability of space and the length of the inlet and the outlet pipes varies with the size of the internal combustion engine and the volume of exhaust gases discharged by the engine manifold are required to be regulated by the muffler or exhausts silencer. 11. A muffler or exhaust silencer as claimed in claim 1 to 8 wherein the size of the perforations or holes formed in the inlet and the outlet pipes will vary according to the size of the engine and the volume of the exhaust gases discharged by the engine manifold are to be regulated by the muffler or exhaust silencer. 12. A muffler or exhaust silencer as claimed in Claim-1 to 8 wherein the perforations formed in the inlet and the outlet pipes are of any geometrical shape and pattern and formed from continuous or non-continuous line or in parallel lines or a pair of rings or parallel perforated lines separated by angular unperforated rings or are helical lines of perforations any geometrical pattern separated unperforated helical lines farmed there between. 13. A muffler or exhaust silencer as claimed in Claim 1 wherein the said inlet and the outlet pipes are respectively provided with angularly launched perforations or holes of geometrical pattern or shape which are in the direction of the flow of exhaust gases. 14. A muffler or exhaust silencer as claimed in Claim 1 wherein the said inlet and the outlet pipes respectively provided with angularly
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punched perforations or holes of any geometrical pattern or shape which are in the direction opposite to the direction of the flaw of the exhaust gases. 15. A muffler or exhaust silencer as claimed in Claim-1 wherein the upper half and the lower half respectively of said inlet and outlet pipes are non-perforated and the lower half and the upper half respectively of said inlet and outlet pipes are provided with straight or angularly punched perforations or holes so that the flow of gases from said inlet end to the outlet end is substantially in the form of inverted ‘S’ in shape. 16. A muffler or exhaust silencer as claimed in Claim 1 and 13 to 15 wherein the punched perforations or holes formed in said inlet pipe are smaller in size than corresponding punched holes formed in said outlet pipe. 17. A muffler or exhaust silencer as claimed in Claims 1 and 13 to 15 wherein the punched perforations or holes formed in said outlet pipe are progressively larger in size and characterized in that the smaller sized punched holes are formed near the end of said outlet pipe. 18. A muffler or exhaust silencer claimed in Claims 1 to 17 and substantially as herein described and illustrated. 18. In Arthur W. Judge’s Motor Manuals Automobile Engines at p. 203 under the heading ‘Exhaust System’ it is stated as under: ‘The Exhaust System - The ex gases leave the cylinders of a modern automobile engine, soon after each of the exhaust valves open, at a pressure of about 55 to 80 lbs. Per sq. in., and at a temperature of between 600 C. and 800 C., with a high velocity, namely about 150 feet per second in the case of a high speed engine. At each charge discharge i.e. on every exhaust stroke, a compression, or sound wave, is sent out, giving the characteristic exhaust note of the engine. It is necessary in public interests to reduce this noise considerably and for this purpose the exhaust gases are expanded into a silencing chamber, where the strong sudden discharges are broken up into a more or less
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(maximum) developed by the engine. than when separate exhaust pipes are used for each cylinder or pairs of cylinders. It is. A well-designed silencer will not reduce the power of the engine appreciably the results of tests show that very good silencing can be obtained with a loss of power of about 2 to 3 percent. whilst the ordinary design of silencer should have a capacity of about 14 cubic inches for every B. The best design of silencer enables the exhaust gases to cool down and expand into the atmosphere continuously and to emerge as a more or less uninterrupted stream.’ NALSAR Pro 140 P.’ 19. P . 20. necessary.When a multi-cylinder engine is fitted with a single exhaust manifold with one exhaust pipe outlet. Judge has given diagram of three types of exhaust silencers. This not only increases the exhaust value temperature and therefore enhances the tendency to detonation but lowers the volumetric for charge efficiency by heating the incoming charge that follows. per B. Diploma in Patents Law . In order to illustrate. Thus. the exhaust valves temperatures are higher.P . Arthur W. emitting little noise. The internal diameter of the exhaust pipe should not be less than one quarter to one-third of the cyclinder diameter. the effect of successive and rapid discharges of gases from the various cylinders is to increase the mean pressures in the manifold and to create a series of pressure pulsations that may lead to power loss. H. Usually a number of baffles are fixed in silencing chamber. at the maximum value. It should not weigh more than about 0.I continuous one. but careful trop tinning of these is necessary in order to avoid back pressure and overheating of the engine. An indirect effect of back pressure is to leave more of the hot exhaust gases in the cylinder when the exhaust value closes. Arthur W.G.ANNEXURE . a four-cylinder vertical engine would have four separate exhaust pipes leading into a common pipe of larger diameter and thence to the silencer.1 lb. He states: ‘Multiple Exhaust pipes .H. Judge has also dealt with multiple exhaust pipes at page 204. therefore. Further. to modify the exhaust systems as indicated.

Back pressure prevents free flow of the exhaust gases from the engine.I 21. of expansion and cooling of the exhaust gas is provided for in the design of the exhaust manifold and exhaust pipe. it is stated: ‘Mufflers in order to reduce the noise of the exhaust of an internal combustion engine. The silencer consists of a central perforated tube. The fluctuations of pressure in the exhaust gases. A certain amount. On an automotive vehicle. the power of the engine is reduced.This design of absorption silencer represents a scientific attempt to silence the exhaust by storing some of the gas at high pressure and returning it at low pressure in a more or less continuous stream. It is surrounded by another cylinder of sheet metal. The gas then passes through the exhaust pipe into the muffler. and are also cooled before they are discharged into the tail pipe and the atmosphere. Arthur W.G. Fig 28-3. From the muffler it passes into the tail pipe and from there into the atmosphere at the reap of the vehicle. In addition. the engine first exhaust into the exhaust manifold. At page 210. or exhausted from the cylinders. the intervening space being filled with a special sound absorbing material. and as a result. so that the noise must also be reduced in intensity. In Automotive Encylopaedia at page 287 under the heading Exhaust System. The muffler is so good that the gases are expanded slowly.ANNEXURE .’ 22. Diploma in Patents Law 141 NALSAR Pro . which are the cause of the exhaust noise are appreciably reduced in the gases flowing out of the central tube. Judge has dealt with the Burger Silencer as follows: ‘The Burger Silencer . Usually these are designed to provide by two to four times the volume P. exhaust gases from the engine are passed through a muffler. 28-2. Such unexpelled gases dilute the incoming combustible gases. the design must be such that there is a minimum of back pressure developed. Fig. which is unobstructed throughout its whole length. and as a result. not all of the burned gases will be expelled. The theory of this silencer is that during the high pressure fluctuations the gases pass through the perforations where they are stored in the sound absorbing material in effect the high pressures are reduced by the damping action of the latter material.

In order to reduce the noise of the exhaust below that attained by a single muffler. Care must be exercised that there are no dents in the exhaust system that would tend to obstruct the free flow of the exhaust gases. One type is known as the straight through type. the power loss has increased to 8 hp. In this design. as any obstruction would reduce power and fuel economy. and has the advantage of conserving space. Muffler Design: The design of the muffler varies with different manufacturers. The description of the exhaust system and of the muffler as stated in Claim 1 is not materially different from the NALSAR Pro 142 P. In some instances. back pressure at 70 mph. Note also for a given car speed. approximately three times the diameter of the pipe. 28-1. It will be seen from the above that what is claimed as an invention by the inventor Noshir Edulji Pochkhanawala has been already published in the two books. The additional expansion is then provided for in the Muffler. Another type of muffler reverses the flow of the exhaust gases. many systems are equipped with two mufflers in each line. A centrally located pipe with perforations is provided: Surrounding this pipe is a sheet metal shell. Fig. fuel consumption is increased as muffler back pressure increases. the power loss is 4 hp and when the back pressure is 4 lbs. 23.G. The additional unit is usually known as a resonator. back pressure also increases. Similarly. It will be noted that as the speed of the vehicle increases. the loss in power increases very rapidly with the increase in back pressure. For example: with 2 lbs.ANNEXURE . Diploma in Patents Law . Back Pressure: In Fig. the loss in engine power due to back pressure from the exhaust system is shown. Such construction is particularly necessary on cars with a long wheel based and powered with a high output engine. the space in between the outer shell and inner pipe is open and in other cases it is filled with steel wool or some other heatresistant sound deadener and Porous material. a straight path is provided for the gases which extends from the front to the rear of the unit. 28-4. 28-6. This is shown graphically in Fig. The double shell and two shell are still other forms of modern mufflers. 284. Fig.I of a single cylinder of the engine. Fig. 28-5.

the passage ways forming the manifold are made as large in size as practical in order to reduce the resistance to the flow of the burned gases. In regard to the public knowledge and public use in India of the invention before the priority date of the claim. 24. Diploma in Patents Law 143 NALSAR Pro . Section 25 (1) (d) provides as under: ‘Section 25 (1) (d) .’ Further it is stated that ‘The design must be such that there is a minimum of back pressure developed. must necessarily be sustained.ANNEXURE .’ The claim made by the inventor is no more than an individual design.G. and as a result. a work-shop modification. the power of the engine is reduced.’ 25.that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim. Explanation .’ It is also stated with specific reference muffler design in the Automotive Encyclopaedia that: ‘The design of the muffler varies with different manufacturers and that as the speed of the vehicle increases.For the purposes of this clause. What is claimed as an invention by the inventor in the present case is no more than an individual design and the statement in the exhaust system may be recalled here that: ‘Regardless of the individual design. therefore.I description of the muffler and of the exhaust system contained in the said two books. the back pressure also increases. The objection. that the invention as claimed in the claim of complete specification is published before the priority date. Such unexpelled gases dilute the incoming combustible gases. an invention relating to a process for which a patent is claimed shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only. Shri Daruwalla has referred to the giving of five different mufflers to the Premier Automobile for testing and submitted that this would show P.

) of the Premier Automobile has addressed a letter date 5th Mar.. . .. Tahsania. .. 27. text books and other documents ... (b) or having regard to what was used in India before the priority date of the applicant’s claim. The question must be answered NALSAR Pro 144 P.. an argument was advanced before me on the basis of the affidavit of the first respondent herein that these mufflers were given secretly. Section 25 (1) (e) provides as under:‘Section 25 (1) (e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step. General Manager (Engg. 26. .. Dy. their drawing for production of mufflers was enclosed and the inventor Noshir Edulji Pochkhanawalla was requested to prepare and submit the counter design incorporating the feature tested in last sample. It is difficult to accept this submission for the reason that the legal representative could have no personal knowledge in regard to the giving of five different mufflers to Premier Automobiles Ltd for testing secretly. 1195-169 RPC 63 at page 69) may be made wherein it is stated by the court of appeal: ‘The matter of obviousness is to be judged by reference to the ‘state of the art’ in the light of all that was previously known by persons versed in that art derived from experience of what was practically employed. A reference to the case of Allamana Svenska Elektriska A/B v..’ The first thing that is to be considered in this connection is how obviousness is to be fudged. J.. 1971 wherein it is stated that they have received five different mufflers and in said letter.I prior publication by prior use. .. This using of mufflers by Premier Automobiles Ltd would also constitute prior user and this ground of objection also must be sustained. In regard to the giving of five different mufflers. specifications.G. Diploma in Patents Law . as well as from the contents of previous writings. The real question is: was it for all practical purposes obvious to any skilled mechanic .. . having regard to the matter published as mentioned in cl.ANNEXURE . The third ground of objection made is that the claim is obvious and that it does not contain any inventive step. Ltd. Shri C.. Burntisland Shipbuilding Co.

ANNEXURE . then Tribunal should in the normal case not try to resolve such conflict. 1971 RPC 7 it was held: ‘(1) That if. in view of the disclosures of the prior art and the relevant evidence. for it is immaterial that. (3) That. Tyre Rubber v. there was no reason why it should not resolve the conflict. Pure Drug Co. v . 457 Shri Shah has submitted that there is no evidence whatsoever to come to a conclusion that the invention is obvious.G. involving as it did matters of opinion which could not satisfactorily be resolved without often lengthy cross-examination. so that the Tribunal felt it was in a position to come to a correct answer on the question of fact. the invention claimed was in truth an invention of (the inventor) in the sense of being the result of independent work end research on his part ——without knowledge on his part of many of the matters which must. Diploma in Patents Law 145 NALSAR Pro . In a proper case it was under the duty of doing so. 29.. if satisfied that the evidence had dealt with the matter comprehensively. Due Pont De Nemours and Co. was of the opinion that there was really no genuine conflict and that. (2) That it was sometimes different if the question to be resolved was one of pure fact such as might.. after reviewing the whole of the evidence there was a genuine conflict on the question of obviousness. on any view.. when the question before it was one of obviousness. (Holland). has argued that the question whether the invention is obvious is a jury question and being a jury question. it would be for the court to decide on the evidence before the court whether the invention is obvious.’ P. Shri Shah. however.F irestone T yre and R ubber Co. arise in cases of prior user. I.) (45 RPC 153 a page 173 173). 28.’ (See Sharpe and Dohme Inc. Ltd.I objectively.. In E. if the Tribunal.. and should act upon the normal principles of proof in civil actions. in opposition proceedings. He has referred to the decision in the case of General T yre and R ubber Co. be taken .. the alleged invention was obvious and clearly lacking in inventive step. for example. Ltd. v v. Boots P ure into account by the court. Firestone Tyre Rubber 1972 RPC 457. then equally the Tribunal must proceed to decide the case in accordance with the same rules of proof.. Then.

although not quite the same. apparatus or other article 146 P. Mayor and c. at page 524) wherein it is held: 1. If the new use involves too ingenuity.G. no manner of new manufacture within the meaning of the Statute of James. An improved this Produced by a new and ingenious application of a known contrivance to an old thing. is a manner of new manufacture with-in the meaning of the Statute. 30. (ii) machine. and cannot be supported.’ 2. 32. He has relied upon the decision . 33. of Manchester (1892) in the case of Gadd and Mason v v.I In view of the disclosure of the prior art in the two books referred to above. without any additional ingenuity in overcoming fresh difficulties is bad. on the other hand.ANNEXURE . It is the novelty and the ingenious application of the known contrivance which entitles the inventor to a patent. The next point to be considered is whether the invention as claimed is at all invention. It is in the manner of new manufacture. According to Shri Daruwalla no ‘invention’ lies in such mufflers. 9 RPC 516. there is no invention. 31. 1970 as under ‘Section 2 (1) (i) ‘invention’ means any new and useful —(i) NALSAR Pro art. that lies in the invention. The inventor in the present case. method or manufacture. Shri Shah. A patent for the mere new use of a known contrivance. Diploma in Patents Law . Invention is defined in Section 2 (1) of the Patents Act. according to Shri Shah. On the other hand. but is in manner and purpose analogous to the old use. Shri Daruwalla has contended that the alleged claim1 and the other claims derived therefrom which merely show different types of perforations and assembly of pipes which are common in mufflers cannot be an invention within the meaning of the Patents Act. 1970 nor is it patentable under the said Act. pro. a patent for a new use of a known contrivance is good and can be supported if the new use involves practical difficulties which the patentee has been the first to see and overcome by some ingenuity of his own. has submitted that a patent for a new use of known contrivance is good. has produced a new muffler by a new and ingenious application of a known contrivance to the old muffler. it must be held that the alleged invention was obvious and clearly lacking in inventive step.

an invention to be patentable must be a new and useful method or manner of manufacture. (b) the making of articles or materials (now on a large scale) by physical labour and mechanical power. and (c) a branch of productive industries. The word ‘manufacture’. If the words ‘new and useful manner of manufacture’ were limited to the production of new articles without reference to the process of manufacture involving patent and improved method. ‘Manufacture’ is a term which is difficult to define. The word ‘manufacture’ would. According to Oxford Dictionary the word ‘manufacture’ is defined as: (a) the action or process of making by hand. or at the least of some new mode of employing practically his art. and skill.’ (See Terrell on the Law of Patents. in the following terms: ‘Something of a corporeal and substantial nature. include improvements in manufacture and changes in the method by which an article is manufactured. Manufacture in its ordinary parlance generally conveys the idea of making tangible goods by hand or by machine. J. An attempt was made at defining the term ‘manufacture’ by Abbott C. is it a method or manner of manufacture and secondly is it new and useful. the inducement which law intended to give to the inventor would be encompassed within very narrow rules. In order to entitle an inventor to a grant of a patent. 35. both these conditions must be present. Diploma in Patents Law 147 NALSAR Pro . para 315. in my opinion.ANNEXURE .’ Section 25 (1) states: ‘that the subject of any claim of the complete specification is not an invention within the meaning of this Act. and an alleged invention. would also extend to a new process to be carried on by known implements. in my opinion.G. is requisite to satisfy this word. Under the Patents Act.I (iii) substance produced by manufacture and includes any new and useful improvement of any of them.’ 34. page 12). P. It involves two separate conditions. something that can be made by man from the matters subjected to his art and skill. or is not patentable under this Act. viz.

appears to be no more than a workshop modification (sic). 38.’ 37. per sq. to 1½ lb. Section 25 (1) (e) states as follows: ‘that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step. it need not necessarily be a new article.back pressure from ½ 1b. to 1. The objection. per sq. In the present case. In considering whether the claim as made by the inventor is an invention.’s Application. to be not more than a workshop modification. Diploma in Patents Law . 36. There is also nothing to show the economy in the fuel consumption.75 Ibs. C. to 1. Whereas mufflers or exhaust silencers generate a . therefore. D. the inventor has stated: ‘In actual practice it has been found that the mufflers or exhaust silencers of the known types generate a back pressure of 1 lb. In explaining the hack pressure.G. inch and the noise level is from 68 to 102 DB. ‘it may be any physical phenomenon in which the effect. as it appears to me. having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of applicant’s claim. There is no evidence whatsoever that the known type of mufflers generated rated back pressure of 1 lb.’ (See N. inch and the noise level is 72 to 102 DB. ‘New and useful method or manner of ‘manufacture’ need not necessarily be any product i. inch and the noise level is 72 to 102 DB. 25 at page 32). R. P . be it creation or merely alteration may be observed.75 Lbs.e. per sq. it will have to be considered whether the subject matter is not obvious. C. The fuel economy offered and obtained by the mufflers according to this invention when used on a motor vehicle is as much as 20% to 25% over the current fuel consumption of the same vehicle using the known type of muffler or exhaust silencer.’ NALSAR Pro 148 P. is no invention at all and as already stated.ANNEXURE . Obviousness is to be judged by the standard of a man skilled in the art concerned. 68 R. claim No.I There is no hard and fast rule to consider what is the new and useful method or manner of manufacture. that the claim made by the inventor in the complete specification. 1 ambiguous.

‘So obvious that it would at once occur to anyone acquainted with the subject. V ickers & Seas Ltd. Vickers 304). 39. 370) By Lopes LJ in Savage v v. 25 (1) (g) provides a ground of opposition as follows: ‘that the complete specification does not sufficiently and dearly describe the invention or the method by which it is to be performed. P ‘The matter of obviousness is to be judged by reference to the ‘state of the art’ in the light of all that was previously known by persons versed in that art derived from experience of what was practically employed. Herschell in Siddell v v. No such claim that the invention is a combination claim has been made before the Controller of Patents. 370). The test by which obviousness is to be judged is as laid down by Lord . Ltd. This is stated here only to be dismissed. specifications. (1890-7 RFC 291 at p.I . the combination consists of three features in claim No. C. For the same reason stated above in considering whether it was an invention. textbooks and other documents. Sec.’ (See Terrell on the Law of Patents page 125 Para 307).G. the objection to the patent must be upheld on the ground that it is obvious. 41. Diploma in Patents Law 149 NALSAR Pro .’ If the invention was obvious.’ 40. as well as from the contents of previous writings. 1. Harris & Sons (1896-13 RPC 364 at p.’ .’ It is the duty of a patentee to state clearly and distinctly the nature and limits of what he claims. there could be no inventive step whatsoever.(1951-69 R. An argument has been advanced before me by Shri Shah that the claim of the inventor is a combination claim and according to Shri Shah.ANNEXURE . . v The Burntisland Shipbuilding In Allmanna Svenska Elecktriska A/B A/B. 63) it was stated by the Court of appeal: Co. If the language used by the patentee is obscure P. and desirous of accomplishing the end. the test laid down is that:‘The material question to be considered in a case like this 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.

So also Sec. unless the complete specifications is amended to the satisfaction of the Controller. Section 16(3) empowers the Controller to require such amendment of the complete specification filed in pursuance of either the original or a further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other. he may refuse the application unless the specification is amended by insertion of such disclaimer in respect of that claim of the invention. 42. It is undoubtedly true that the language used in describing an invention would depend upon the class of persons versed in the art and who intend to act upon the specifications. 57. This brings me to the last question viz. the patent is liable to be refused. 1970.I and ambiguous no patent can be granted and it is immaterial whether the obscurity in the language is due to design or carelessness or want of skill.G.ANNEXURE . The modifications have been effected by the Controller without any jurisdiction whatsoever. So also if it appears to the Controller that any invention in respect of which an application for patent is made might be used in any manner contrary to law. and on this ground also. Sec. Shri Shah also submitted before me that he is not in a position to support the modification effected by the Controller in the order passed by him. In the present case. Diploma in Patents Law . 57 empowers the Controller to allow amendment of a specification of an application made by the applicant for the patent. the amendment effected by the Controller in the order passed by him. 18(1) the Controller is empowered to refuse to accept complete specification if it appears to the Controller that the claim is anticipated unless the applicant amends his complete specifications to the satisfaction of the Controller. So also Sec. 19. Under Sec. 15 empowers the Controller to require the applicant’s specifications or drawings to be amended to his satisfaction before he proceeds with the application if he is satisfied that the application or specification does not comply with the requirements of the Act or the Rules made thereunder. the invention is described in an obscure and ambiguous language. 59 and 78 of the Patents Act. 19(1) empowers the Controller to direct the insertion of other patent which is likely to be infringed. 18. as already stated above. NALSAR Pro 150 P. The powers to amend a specification are to be found in Sections 15.

correction or explanation. No amendment of an application for a patent or a complete specification shall be made except by way of disclaimer. therefore in error in overruling the objections and granting the patent with modifications. P.I Section 59 (1) provides as follows: ‘Section 59 (1). In conclusion it may be stated that each of the grounds of opposition to the grant of patent is well founded. None of these sections empowers the Controller to make an amendment suo motu as has been done by the Controller in the present case. right in their submissions that the modifications effected by the Controller cannot be justified. The order of the Controller is set aside and all the grounds of opposition are sustained. except for the purpose correcting an obvious mistake. Diploma in Patents Law 151 NALSAR Pro . prior knowledge. or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.G. therefore. would claim or describe matter not in substance disclosed in the specification before the amendment. 43. Counsel were. The opposition on the ground of prior publication. and no amendment thereof shall be allowed.’ Section 78 (1) empowers the Controller to correct clerical errors etc. prior uses that it is not an invention at all.ANNEXURE . pass the following order: Appeal allowed. 44. and amendment of a complete specification shall be allowed the effect of which would be that the specification as amended. that is obvious. In the circumstances of the case there will be no order as to costs. Therefore. that it does not contain an inventive step and that the complete specifications suffer from insufficiency are grounds which must necessarily be sustained. The Controller was.

FAYTEX CORPORATION.CASE 4 ATLANTIC THERMOPLASTICS CO. NALSAR Pro 152 P.S. a defendant must prove that the complete claimed invention is embodied in or obvious in view of the thing sold or offered for sale before the critical date. V.S. Diploma in Patents Law . even though not ready for satisfactory commercial marketing..C.C.2d 834 Head Notes: Patent Law : Statutory Bars : On Sale A defendant in a patent infringement case bears the burden of showing invalidity under the on-sale bar defined by 35 U. Patent Law : Statutory Bars : On Sale A single sale or offer to sell suffices to bar patentability. § 102(b) (1988). Patent Law : Statutory Bars : On Sale To invoke the on-sale bar under 35 U. Defendant/CrossAppellant. The on-sale bar invalidates a patent for an invention offered for sale.G.S. by clear and convincing evidence. § 102(b) (1988). UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT 970 F .S. Plaintiffs-Appellants.

although eligible for a process patent.S. Diploma in Patents Law 153 NALSAR Pro . on the basis that a sale or offer was experimental.S. § 102(b) (1988).G. To determine whether profit motivated a transaction. Patent Law : Novelty & Anticipation Patent Law : Specification & Claims : Claim Language A patent applicant cannot obtain exclusive rights to a product in the prior art by adding a process limitation to the product claim.C.I Patent Law : Statutory Bars : On Sale If a patent owner seeks to avoid the on-sale bar under 35 U. the offeror’s objective intent.S. P.S. § 102(b) (1988). Patent Law : Infringement : Claim Interpretation Patent claims are interpreted in light of the claim language. Patent Law : Specification & Claims : Claim Language Every patent for a product or composition of matter must identify it so that it can be recognized aside from the description of the process for making it. a trial court must determine whether the patent owner sought the sale primarily for profit rather than as part of a testing program. A new process. cannot capture exclusive rights to a product already in the prior art. or else nothing can be held to infringe the patent which is not made by that process.ANNEXURE . Patent Law : Specification & Claims : Claim Language The infringement inquiry for product claims with process limitations focuses on whether the accused product is made by the claimed process or its equivalent. the courts follow the rule that the process limits a product-by-process claim. In reviewing for infringement. a court must examine the claimed features. and the totality of the circumstances.C. the specification. and the prosecution history proceeding from the vantage point of one skilled in the art. Patent Law : Statutory Bars : On Sale Mere offers to sell trigger the on-sale bar rule under 35 U.

NALSAR Pro 154 P. still. Product-by-process claims are usually deemed infringed only by a product made by the same process. and nonobvious process. but cannot claim rights to a product already in the prior art by merely adding a process limitation. Patent Law : U.G. and other claims to determine the proper construction of the claim language. Patent Law : Patentable Subject Matter : Processes Patent Law : Novelty & Anticipation Patent Law : Utility Requirement : Proof of Utility Patent Law : Nonobviousness : Tests & Proof of Obviousness Patent Law : Specification & Claims : Claim Language An applicant can obtain a process patent for a new. Patent Law : Infringement : Claim Interpretation The courts must consult the specification. Patent Law : Specification & Claims : Claim Language Even though product-by-process claims are limited by and defined by the process. useful. determination of patentability is based on the product itself. Patent & Trademark Office Prosecution Procedures : Examination of Applications Courts permit the United States Patent and Trademark Office to give claims their broadest reasonable meaning when determining patentability.I Patent Law : Specification & Claims : Claim Language Although a product has definite characteristics by which it may be identified apart from the process. nothing can be held to infringe the claim which is not made by the process. prior art. prosecution history. Diploma in Patents Law . Patent Law : Specification & Claims : Claim Language A claim to a product by a specific process is not infringed by the same product made by a different process.S.ANNEXURE . but is set forth in the terms of the process. if in a claim for the product it is not so described.

4. this court vacates the district court’s judgment 1 Faytex makes numerous requests for sanctions under Fed. Inc. Faytex does not allege that Atlantic brought or conducted its suit in bad faith.. In any event. This court affirms the district court’s infringement determination. Cir. Inc. Diploma in Patents Law 155 NALSAR Pro . however. not an embodiment of the claims. v. Mass. Opinion By: Judge RADER Atlantic Thermoplastics owns U. Patent Law : Infringement : Claim Interpretation Patent infringement analysis compares the accused product with the patent claims.S. 38 and under 35 U. No. Faytex Corp. Atlantic Thermoplastics Co.C. After a bench trial. the United States District Court for the District of Massachusetts held that Faytex infringed the ‘204 patent by selling innersoles manufactured by Surge. § 285 (1988). Faytex is the accused infringer and thus. July 27. § 102(b) (1988).C.I Patent Law : Infringement : Claim Interpretation Patent infringement requires the presence of every claim limitation or its equivalent.” Atlantic sued Faytex Corporation1 for infringing the ‘204 patented process with innersoles manufactured by two separate processes.S. An accused infringer can avoid infringement by showing that the accused device lacks even a single claim limitation. that Faytex did not infringe the ‘204 patent by selling innersoles manufactured [**2] by Sorbothane.ANNEXURE .G. The court held. Faytex’s sanction requests lack merit. 1990). cannot accuse Atlantic of willful infringement.S. Patent No. this court does not consider Atlantic’s appeal frivolous. Section 285 does not permit sanctions except in exceptional cases.204 ( ‘204 patent) entitled “Shock Absorbing Innersole and Method of Preparing Same. Patent Law : Specification & Claims : Claim Language Process terms in product-by-process claims serve as limitations in determining infringement. 88-0210-H (D. R. Unfounded requests for sanctions are themselves frivolous and sanctionable.674. P. The trial court also determined that the ‘204 patent is not invalid under the on-sale bar of 35 U. Because unable to determine whether the district court applied the correct legal standards under section 102(b).

which method comprises: (a) (b) introducing an expandable. Two different manufacturers — Surge Products and Sorbothane NALSAR Pro 156 P.ANNEXURE . open-celled polyurethane foam material. The elastomeric heel insert enhances shock absorption. and the insert material having sufficient surface tack to remain in the placed position in the mold on the introduction of the expandable polyurethane material so as to permit the expandable polyurethane material to expand about the insert material without displacement of the insert material. molded innersole for insertion in footwear. Claim 1 of the ‘204 patent defines the process: In a method of manufacturing a shock-absorbing. The polyurethane foam forms around the heel insert and supplies the rest of the innersole. and recovering from the mold an innersole which comprises a contoured heel and arch section composed of a substantially open-celled polyurethane foam material. the improvement which comprises: (i) placing an elastomeric insert material into the mold. or heel cups. Faytex distributes half-sole innersoles. if liability is again established.G. this court also remands for recalculation of lost profits. Because the trial court improperly determined damages. Background The ‘204 patent contains both process claims and product-by-process claims for a shock absorbing shoe innersole. the insert material having greater shock-absorbing properties and [**4] being less resilient than the molded. and (ii) recovering a molded innersole with the insert material having a tacky surface forming a part of the exposed bottom surface of the recovered innersole. with an elastomeric heel insert. The innersole is formed in a mold having a contoured heel and arch section. Two different materials combine to make the innersole: an elastomeric material in the heel section. Diploma in Patents Law .I as to validity and remands for findings [**3] on the on-sale issue. polyurethane into a mold. and a polyurethane foam.

849 F. Faytex bears [**6] the burden of showing invalidity under section 102(b) by clear and convincing evidence. The district court concluded that the Sorbothane process did not infringe the ‘204 patent. Sorbothane injects polyurethane into the same mold to [**5] form the rest of the innersole.S. 1988). This court must determine whether the district court erred in concluding that Faytex did not meet its burden. first injects a liquid elastomeric precursor into the mold. Faytex had to show that Atlantic sold or offered for sale the claimed innersole before October 9. 1326-27 (Fed. § 102(b).2d 671. Sorbothane. This reading leaves injection of liquid elastomers outside the scope of the claims.I — make Faytex’s innersoles. 1985). by distributing products allegedly made by the claimed process.G. Surge first manually places a solid elastomeric insert into the heel section of the innersole mold.” Atlantic argues that Faytex. 7 USPQ2d 1325. However.. Atlantic cannot charge Faytex with infringement of the process claims. is liable as an infringer. While the heel insert is solidifying. v. 4 (Fed. Because Faytex does not manufacture the innersoles. Cir. 761 F. The Surge process for making innersoles differs from the Sorbothane process. Faytex cross-appeals from the award of lost profit damages for the sale of Surge and Sorbothane innersoles. To prevail. 1984. In re Caveney. See Buildex Inc. Cir. P. Kason Indus. The district court read the claims to require placement of a solid elastomeric insert into the mold. The parties agree that the Surge process infringes the ‘204 patent. Discussion I. Diploma in Patents Law 157 NALSAR Pro . Surge then injects polyurethane around the solid heel insert to form the innersole. Atlantic contests this construction. claim 24 of the ‘204 patent states: “The molded innersole produced by the method of claim 1. 226 USPQ 1. 1462-63.2d 1461. 676.ANNEXURE . which solidifies to form the heel insert. On Sale Bar: Faytex asserts that the ‘204 patent is invalid because the claimed invention was on sale more than one year before the filing date of the application. A single sale or offer to sell suffices to bar patentability. Faytex also appeals the district court’s determination that the ‘204 patent is not invalid under the on-sale bar of 35 U. on the other hand.C.

715. and the totality of the circumstances. The district court apparently assumed. that mere offers do not trigger the on-sale bar rule. 911 F. 221 USPQ 561. U. If a patent owner seeks to avoid the on-sale bar on the basis that a sale or offer was experimental.2d 713. Cir. the district court’s finding does not consider several offers to sell before October 1984. 1984 in January of 1985. . 816 F. 2d 761. . 816 F . NALSAR Pro 158 P. 1990). Ct. Barmag Barmer Maschinenfabrik AG v. a court must examine the claimed features. 748 (1988). v. Envtl. 656. a defendant must prove that the complete claimed invention is embodied in or obvious in view of the thing sold or offered for sale before the critical date. Murata Mach. 1471 (Fed. The on-sale bar invalidates a patent for an invention offered for sale. To invoke the on-sale bar.2d 647. 1984). U. 1900 (Fed. 567 (Fed.S.S. To determine whether profit motivated a transaction. as the invention was not commercially marketable before that time . a trial court must determine whether the patent owner sought the sale primarily for profit rather than as part of a testing program. even though not ready for satisfactory commercial marketing. 1025 98 L. denied. the offeror’s objective intent. incorrectly. Atlantic Thermoplastics. United States.. Ed. v. Environmental Products.S. cert. 1987). Cir. this court cannot determine whether the trial court properly considered those offers of sale and therefore applied the correct legal standard.2d 831. 731 F. 484 U. at 26. with factual findings underlying that conclusion subject to review for clear error.2d at 716. Cir.I Appellate review of an on-sale bar proceeds as a question of law. 838. Prods. .G. In any event. 2 USPQ2d 1465. 15 USPQ2d 1898. this court reviews the trial court’s conclusion de novo. the district court’s sole finding in this case consists of a conclusory statement: [Atlantic’s] first offer to sell and a definite sale were made to Triangle Corporation after October 9. 911 F. Westall. UMC. Thus. The district court did not provide any findings of fact or analysis for its conclusion. Despite the many issues affecting any application of the on-sale bar rule. slip op. UMC Elecs.ANNEXURE . in the absence of findings.2d at 657. Moreover. 108 S. Diploma in Patents Law . Co.

52(a). cert. Cir. Ct. Therefore.ANNEXURE . any error cannot be harmless error. Therefore. Nutrition 21 v. 111 S. Inc. This interpretation proceeds from the vantage point of one skilled in the art. Genentech. 869. 1349 (Fed. Cir.2d 1558. these limitations describe a method of manufacturing innersoles by which a solid or cellular preformed elastomeric insert material is manually placed or put in the heel portion of the mold and an open-celled expandable polyurethane foam material is then injected or poured into the mold so as to expand about the solid preformed elastomeric insert material without [**10] displacement of the insert material. 1434 (1991). Cir. According to the trial court. 8 USPQ2d 1468. 15 USPQ2d 1039. a trial court must put forth the findings of fact relied upon to justify its actions.2d 878. The parties agree that the district court correctly determined that the Surge process includes each limitation of claim 1. v. This court interprets the ‘204 patent claims in light of the claim language. this court has no basis to evaluate whether [**9] the district court’s analysis uses the proper legal standard. 930 F . Helena Labs. this court vacates the district court’s judgment on validity and remands for a proper on-sale analysis. slip op. 859 F . R. 1042-43 (Fed.2d 867. 882. at 14. 1988).I After a bench trial.” Atlantic Thermoplastics. Hormone Research Found. 1471 (Fed. 1990). Smithkline Diagnostics v. the Surge process infringes the ‘204 patent. Civ. the specification. The Sorbothane process is a “two-pour” process which first injects a liquid elastomer and then a liquid polyurethane into the mold.G. 18 USPQ2d 1347. The trial court specifically rejected any interpretation which allowed injection of the heel insert as a liquid into the mold. Because the absence of findings goes to the heart of the issue. 1991) (preliminary injunction). 904 F . Fed. P . The court further held that the claim requires that the solid insert material be held in position by the inherent “tack” of the material. II.. Id. dismissed. Cf.. Diploma in Patents Law 159 NALSAR Pro . The Sorbothane mold includes a [**11] dam which outlines the heel placement of the insert. 1562. Infringement The district court determined that infringement turned on the proper interpretation of two claim limitations: “placing an elastomeric insert material into the mold” and “the insert material having sufficient surface tack to remain in the placed position on the introduction of the expandable polyurethane material. P. at 15. United States. and the prosecution history. Without findings.

The dam ensures that the elastomer solidifies in place to form the heel insert. As a liquid. The district court found that the Sorbothane process did not literally infringe the ‘204 patent for two reasons. tackiness does not hold the insert immobile during insertion and expansion of the polyurethane foam. slip op. Thus. Substantial evidence from expert witnesses supports the district court’s interpretation. the liquid polyurethane lacks elastomeric properties. This court also finds no clear error in the district court’s finding that the Sorbothane process does not use tackiness to hold the elastomeric insert in place during injection of the polyurethane foam. The specification repeatedly refers to the insert as a “solid or cellular material” not a liquid. The district court also found no infringement under the doctrine of equivalents. held the insert in place in the mold. according to the district court.G.I This dam captures and confines the liquid elastomer. rather than the tackiness. the district court determined that the dam. the court determined that the insert lacked the elastomeric qualities specified in the claim. Second. The Sorbothane process thus does not meet the “surface tack” claim limitation.” Atlantic Thermoplastics. designed to reduce any surface tack. the small dam in the heel section holds the elastomeric material in place during its liquid and solid states. The trial court determined that the way the Sorbothane process performed its NALSAR Pro 160 P. The record suggests no clear error in this finding. The Sorbothane process introduces a liquid insert into a mold within the larger innersole mold. upon introduction under the Sorbothane process. the Sorbothane process did not satisfy the tackiness limitation of the claim. thus facilitating release of the heel cup from the mold. the dam — not the tack of the elastomeric material — holds the insert in place during introduction of polyurethane foam. This court finds no clear error in the district court’s findings that in situ molding of the liquid elastomeric insert material does not fit within the placing limitation. Furthermore. Thus.ANNEXURE . Diploma in Patents Law . sprayed with mold release. as the district court found. upon injection of the liquid elastomeric material. The trial court specifically found that the “tackiness of the chemical composition has no effect on the ‘Sorbothane’ process. Rather. as an essential component of this process is the use of a teflon-coated mold. First. the injection of liquid elastomeric material did not fit within the “placing” limitation. “Placing an elastomeric insert material into the mold” is a limitation in claim 1. at 20. The teflon-coated mold and mold release of the Sorbothane process inhibit the tackiness of the solidified insert. Thus. The district court’s finding comports with the language used in the ‘204 claims.

this court affirms the district court’s determination that Sorbothane innersoles do not infringe claim 24 of the ‘204 patent.. 1035 n. Phyfer. P. the Sorbothane innersoles — though made by a different non-infringing process — also infringe. Inc. 2 This court in Scripps Clinic ruled without reference to the Supreme Court’s previous cases involving product claims with process limitations. Id. we necessarily so conclude. For the reasons set forth below.ANNEXURE . Atlantic argues that Scripps Clinic & Research Foundation v.2 This inquiry begins with several century-old Supreme Court cases. according to Atlantic. this court must examine the history of products claimed with process terms.2d 1565. 1583-84. A. In Scripps Clinic. III. Diploma in Patents Law 161 NALSAR Pro . See Tucker v. Atlantic urges this court to ignore the process claim language in its product-by-process claim. this court stated: The correct reading of product-by-process claims is that they are not limited to product prepared by the process set forth in the claims. Genentech. Cir.” and devoted one paragraph to resolving the jurisdictional issue and one paragraph to the merits. at 1583. The district court found that use of a dam to hold the insert in place is substantially different from use of tack to perform the same function. Supreme Court and Regional Circuit History To construe and apply the product-by-process claim of the ‘204 patent.2d 1565. This court discerns no clear error in this finding. Atlantic states that the Sorbothane process results in innersoles which are indistinguishable from innersoles made by the Surge process and claimed in the ‘204 patent. In the absence of responsive briefing of the issues by the Scripps Clinic parties. 1015 (Fed. 927 F . Genentech. v. Inc. this court noted that it was reviewing an “undeveloped record. In sum.7 (11th Cir. This court finds no basis to reverse the district court’s non-infringement finding on the Sorbothane process. Therefore. Therefore. Scripps Clinic & Research Found. 1991). 927 F . 819 F. Product-by-Process Claims In the alternative. A decision that fails to consider Supreme court precedent does not control if the court determines that the prior panel would have reached a different conclusion if it had considered controlling precedent.. even under the district court’s present interpretation of the claims.G. demands reversal of the non-infringement finding. 1987). 18 USPQ2d 1001.I function was substantially different from that claimed in the ‘204 patent.2d 1030.

1985) (in banc). the claim be read. See.ANNEXURE . v. Thus. Goodyear Dental Vulcanite Co. or its equivalent. 227 USPQ 577. 26 L.S.3 The Supreme Court stated that the product could not be separated from the process by which it was made: The invention. the invention claimed and patented is [the dental plate produced by the vulcanization process]. The process detailed is thereby made as much a part of the invention as are the materials of which the product is composed. . then. both the material of which the dental plate is made. Under the old practice for claims with the phrase “substantially as described. The Supreme Court concluded that both the process and the product of that process were patentable.G.g. 775 F. substantially as described.” This claim was not drafted in contemporary product-by-process terms. in connection with the preceding part of the specification. 102 U. A district court had held that a celluloid plate for artificial teeth with its differing process did not infringe the patent.. 23 L. . Ed. the specification added process limitations to the claimed product. 93 U. at 493. or teeth and gums. is a product or manufacture bade in a defined manner. A few years later. 494. 23 L.. or its equivalent. 149 (1880). and the process of constructing the plate. for holding artificial teeth.”). . Goodyear Dental Vulcanite Co. 486. 952 (1877).. described a process for embedding teeth in soft vulcanite which later hardened to hold the artificial teeth firmly in place. Goodyear Dental Vulcanite Co.S. 494. 493. but instead incorporated the specification. Ed. e. and construed in the light of the explanation which that gives.S.” the Supreme Court treated the specification as part of the claim. On that basis. 222. 162 NALSAR Pro P. SRI Int’l v. The specification. 501. 93 U. Id.Cir. Ed. to constitute an infringement of the patent. as it should be. Matsushita Elec. 93 U. the Supreme Court construed a patent claiming a “plate of hard rubber. Diploma in Patents Law .. 486. the same patent was again before the Supreme Court — this time in an infringement context. Smith. The Supreme Court first quoted from its Smith opinion to clarify that the patent claimed both product and process. 952 (1877) (“If. or a process equivalent thereto.2d 1107. the Supreme Court concluded: Hence.S. in turn.I In Smith v. 585 (Fed. It is not a product alone separated from the process by which it is created. must be employed. 1121. at 493. 3 Incorporation of the specification into the claim is contrary to current claim practice. Smith v. then. or vulcanite. Davis.

24 L. Merrill argued.G.” id. Id. if the patent claimed “a new oil. the patentee of heavy hydrocarbon oils deodorized by an innovative process sued retailers. because it is made to appear in the case that the oils sold by defendants were produced by a process very different from that described by appellant. Id. some importance must be attached to them. on the other hand. Diploma in Patents Law 163 NALSAR Pro . Atlantic Thermoplastics has sued Faytex. Indeed in the case at bar. that product-by-process claims may serve to bring retailers within the scope of an infringement action. It is necessary to insist on this view. at 568. Id. 568. These retailers sold a product nearly identical to the patentee’s oil. however. under the product-by-process claims of the ‘204 patent. In discussing the process limitations. they must either refer to the process of making the oils for which the applicant is claiming a patent. at 571. Yeomans. The Supreme Court noted that Merrill’s counsel had to make that argument because defendants sold oil made by a different process. process.4 Therefore. Ed. 4 This case suggests. by whatever mode it may be produced. and. 94 U. a celluloid plate. Id.S. the retailers did not use that.ANNEXURE . the patent claimed only the process. If. when produced by treating the oils in the manner before described. a retailer. the retailers were not proper parties. (emphasis added). the Court said by the well-settled rules of construing all instruments.I Id. After noting that “the [celluloid] process is wholly unlike that employed in making hard rubber or vulcanite plates.” then the sellers of that product may be liable as infringers. though deodorized by a different process. at 224. is not “substantially the same as one made of hard rubber. In Merrill v. Another Supreme Court case in this time frame illustrated the significance of claiming a product with process limitations. against this interpretation: The counsel for appellant disclaim this latter construction.” Id. if they are to be regarded at all. As the Supreme Court noted. Id. for good reason. or they are intended to limit his claim for a patent for the product to that product only. at 229. The Court again read the process language in Merrill’s specification as a limitation on the claims. The Court also reasoned that the product of that process. the Court affirmed the district court’s noninfringement decree. The Court concluded that Merrill claimed only a process. or any other. and allege that the patent covers the oil described. P. 235 (1877).

4 S.321 covering the product. 455 (1884) (emphasis added) (BASF). or by any other method which will produce a like result. sold artificial alizarine made by a sulfuric acid reaction process.321 patent. at 310. BASF sued Cochrane for infringing the 4. BASF involved alizarine. 4 S. or else nothing can be held to infringe the patent which is not made by that process. except that such product is to be the result of the process it describes. therefore. 164 NALSAR Pro P. Instead. 111 U. Ed. 305-06. at 305.S. 28 L. the accused infringer. as produced by a bromine reaction process.321 patent not infringed because the defendants had used a different process. 111 U. 5 The court construed the seemingly broad language “by any other method which will produce a like result” as being limited to “any process substantially the same” as the two methods described in the specification (presumably the cause of the underlined phrase). The Supreme Court disagreed. the process did not matter. BASF obtained Reissue Patent No. 455 (1884) (BASF).321 furnishes no test by which to identify the product it covers. the Supreme Court held the claim of the 4. BASF contended that Cochrane infringed because it made artificial alizarine “from anthracine or its derivatives by some method. 433 . Cochrane v. Ed.” Id.S. BASF argued that Cochrane made artificial alizarine. The Supreme Court noted. the Supreme Court considered an infringement case. artificial alizarine. a dye. Id. 296. Based on this standard. Id.G. Ct. 4. 293. Ct. Badische Anilin & Soda Fabrik. The claim stated: Artificial alizarine. Id. Before the Supreme Court. 4.5 Cochrane. 28 L. the Supreme Court enunciated a rule for products claimed with process limitations: Every patent for a product or composition of matter must identify it so that it can be recognized aside from the description of the process for making it. The district court determined that Cochrane’s product made by a sulfuric process infringed the 4. produced from anthracine or its derivatives by either of the methods herein described. at 309 (emphasis added).” Id. 433 . Badische Anilin & Soda Fabrik. at 296.I In Cochrane v.321 patent. The circuit agreed. at 310. 293. “No.ANNEXURE . Diploma in Patents Law .

Office 199 (1922). the other rule focused on the product with less regard for the process limits. In other words.S. in BASF .S. whatever likeness [**24] may appear between the product of the process described in the patent and the article made by the defendants. see also The Wood-Paper Patent.G.” BASF . 7 S. Thus. the Court forbade an applicant from claiming an old product by merely adding a new process. Diploma in Patents Law 165 NALSAR Pro . cited BASF twice — once for an infringement rule and once for a patentability rule. 31 (1874). A new process. the Supreme Court offered an alternative “view of the case. a patent applicant could not obtain exclusive rights to a product in the prior art by adding a process limitation to the product claim. another claimed the product of that process. 111 U. In assessing validity in terms of patentability. Pat. BASF could have claimed a new process for making artificial alizarine. 1922 C. Id. In judging infringement. Therefore. 30 L. “While a new process for producing it was patentable..D. After reviewing the prior art and descriptions of both patents. One claimed an improved process for bronzing or coloring iron. for instance. The infringement rule focused on the process as a limitation.” Id.I After stating this rule for claim construction. the Supreme Court reviewed two patents. So that. 596. the product itself could not be patented. 302 Off. the Court stated: It may be assumed that the new article of manufacture called Tucker bronze is a product which results from the use of the process described in the patent. 120 U. Sargent. the Court treated the process terms as limitations on the patentee’s exclusive rights. A decision from the Patent Office.ANNEXURE . Ed. their identity is not established unless it is shown that they are made by the same process. the Supreme Court addressed both infringement and validity (in terms of patentability) of product claims containing process [**23] limitations.S. at 443. 442. Ed. In Plummer v. although eligible for a process [**22] patent. 18. In the words of the Supreme Court.” Id. at 311. 90 U. Ct. could not capture exclusive rights to a product already in the prior art. BASF’s artificial alizarine was an “old article. P. Gaz. even though it was a product made artificially for the first time. 640 (1887). 566. Ex parte Fesenmeier. and not one which may be produced in any other way. 737 . but it had no rights to claim the product. 23 L.

In reviewing for infringement. For instance. the Supreme Court determined that the claim did not adequately describe the invention. Under R. After finding it “difficult. although a product has definite characteristics by which it may be identified apart from the process.” Id. the Court concluded that “the two processes differ. The First Circuit stated: It is also a well-recognized rule that. In General Electric v. General Elec.S. still. 34 (1st Cir.S. 226 F . At that point. at 448. the Court affirmed the circuit court’s noninfringement ruling. if not impossible” to discern differences between the accused product and the product claimed with process limitations. in Hide-Ite Leather v. General Elec. Id. 899 (1938). 82 L. § 112 (1988)). at 373 (footnote omitted). Ed. at 449. In that context. the Supreme Court stated in a line of cases that the infringement inquiry for product claims with process limitations focuses on whether the accused product was made by the claimed process or its equivalent. to the process by which he produced it. 304 U. at 368.G. express or constructive. 364. 1915).ANNEXURE . if in a claim for the product it is not so described. Diploma in Patents Law . at 450. Wabash Appliance. 58 S.S. Thus. Fiber Products. the United States Court of Appeals for the First Circuit affirmed the trial court’s noninfringement holding because the accused product was not made by the claimed process or its equivalent. the Supreme Court considered a product claim for a filament in incandescent lamps. the Court stated: Although in some instances a claim may validly describe a new product with some reference to the method of production. the Court considered whether the process described in the specification made the claim more definite. In reviewing the claim.S. Ct. Accordingly.. but is set forth NALSAR Pro 166 P. cannot secure a monopoly on the product by whatever means produced.C. 1402 . 4888 (the forerunner of the current 35 U.S. 304 U. a patentee who does not distinguish his product from what is old except by reference. the regional circuits followed the rule that the process limits a product-by-process claim..” Id. 304 U. the Court quoted from BASF: “nothing can be held to infringe the patent which is not made by that process.I Id. at 373-74.

American Cyanamid Co. Id. denied. 82 L. There is considerable case authority supporting the position [that productby-process claims cover only products made by the process specified in the claim] including a nineteenth century Supreme Court decision. 2 D. the process in a product-by-process claim serves as a limitation. . 1953). stated: “It has been said that a claim for a product produced by any process which will produce a like result covers the product only when made by equivalent processes. Another legal text states: Product-by-process claims are usually deemed infringed only by a product made by the same process. 1535 . .I in the terms of the process. Western Shade Cloth Co. Donald Chisum states: A “product-by-process” claim is one in which the product is defined at least in part in terms of the method or process by which it is made. 97 (7th Cir.2d 94. Most decisions hold that such a claim is infringed only by a product made through a substantially identical process .2d 571. 93 F . 304 U. 58 S. in infringement proceedings. 1985). 1937). 238 (6th Cir. v. Lipscomb III. In Parke.05 (1991) (footnotes omitted). Ct. 1039 (1938). Davis & Co. Lipscomb’s Walker on Patents states: A claim to a product by a specific process is not infringed [**28] by the same product made by a different process. 3 E.G.S. 570. 207 F .. Patents § 8. 99 USPQ 237. Chisum. Ed. In his treatise. the Seventh Circuit in National Carbon Co.. . nothing can be held to infringe the claim which is not made by the process.” The Sixth Circuit determined that a synthetic folic [**27] acid process did not infringe the claimed extraction process. cert. Commentators have generally read this line of cases to mean that.” Indeed sister circuits that examined the standard for infringement of product-by-process claims uniformly followed the Supreme Court’s lead. Lipscomb’s Walker on Patents § 11:19 (3d ed. v. 572.ANNEXURE . Diploma in Patents Law 167 NALSAR Pro . P. the patentee’s product claim included a process limitation: “said acid being the acid derived by autolysis of mammalian liver tissue. Likewise.

Recognizing this rule. not by reference to its manufacturing process. Office 999 (1891) (emphasis in original). When the case arises that an article of manufacture is a new thing. e.2d 264. Thus. .” In re Hughes.P . NALSAR Pro 168 P. rev.2d 261. . 357 F. For instance. 37 USPQ 209. 496 F . 89 USPQ 641 (CCPA 1951).G. 594. 210 (CCPA 1938). 1219. 108 (CCPA 1974).2d 591. Gaz. B. 157 USPQ 620. 394 F.I [This precedent represents] a hundred years of prior law . 1182. In re McKee. In re Painter.C. 1989). limited this exception to those instances where the applicant could describe an invention in no way other than in terms of its manufacturing process. In re Lifton. and embodies invention.ANNEXURE . 182 USPQ 106.g. See.P . . 53 C. In re Johnson.03(e) (5th ed. a useful thing. . 149 USPQ 55 (CCPA 1966). the PTO. a case is presented which constitutes a proper exception to the rule. with the approval of the CCPA.A. 623 (CCPA 1968).. 95 F . For years. the Patent Office — though recognizing the general rule — acknowledged the need for an exception: It requires no argument to establish the proposition that as a rule a claim for an article of manufacture should not be defined by the process of producing that article. Diploma in Patents Law .2d 1216. PTO and Court of Customs and Patent Appeals (CCPA) The CCPA consistently [**29] stated the general rule that an applicant must claim an article of manufacture by its structural characteristics. 57 Off.” MPEP 706. 189 F .A. In re Bridgeford. and that article cannot be properly defined and discriminated from the prior art otherwise than by reference to the process of producing it. the Patent and Trademark Office’s Manual of Patent Examining Procedure (MPEP) still refers to product-by-process claims as “peculiar” in comparison to products “claimed in the conventional fashion. 55 C. 1463.C. . the court stated: This court has repeatedly held that a claim for an article capable of such definition must define the article by its structure and not by the process of making it. 1983. Pat. 266. As early as 1891.2d 679. . the CCPA contrasted productby-process claims with “true product claims.

Gaz. 117 F.2d at 279.P . . Thus.C. 357 F. Bridgeford. Office 199. where applicants could not adequately describe their inventions in terms of structural characteristics. it might be an important protection . however. . . the court permitted product-by-process claiming. . In 1969. 567. As product-by-process claiming became more common. . . While it would in that case not be infringed by anything but the product of the machine or of the process. Id. 302 Off.A. the CCPA moved toward accepting product-by-process claims without a showing of necessity. Thus. this claim format remained an exception to the general rule. 162 USPQ 145 (CCPA 1969). 48 USPQ 542 (CCPA 1941).2d 565. In re Pilkington. . the court P. In particular.ANNEXURE .2d 1345.I In re Moeller. Diploma in Patents Law 169 NALSAR Pro . 56 C. The court instead determined [**33] that the applicant had adequately described the invention in accordance with the requirements of section 112. . the court reversed a Board of Appeal’s decision holding a product-by-process claim improper because the applicant could claim the invention without relying on the process. Judge Learned Hand foresaw important product-by-process protections against infringement “if the machine or the process was used in another country and the product imported. 1237. The CCPA also recognized further reasons for the product-by-process exception: The right to a patent on an invention is not to be denied because of the limitations of the English [**31] language .2d at 682. whether due to language lagging behind innovations or existing technology lagging behind in the ability to determine those characteristics. .G. As noted. Fesenmeier. 77 F . -Circuit Judge Learned Hand explained that this exception protected inventors’ exclusive rights to their inventions to the degree that they were able to define their innovation: It might be possible to patent a product merely as the product of a machine or process . The limitations of known technology concerning the subject matter sought to be patented should not arbitrarily defeat the right to a patent on an invention.” Id. 411 F. Pat. Buono.

P . Brown. at 1218. 173 USPQ 685 (CCPA 1972). 59 C. the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.2d at 682-83.2d 742. however. The court. Hughes. Diploma in Patents Law . 186 USPQ 161 (CCPA 1975).g.2d 1228. See. The court uniformly followed the Supreme Court’s rule. but could not claim rights to a product already in the prior art by merely adding a process limitation. The PTO’s administrative difficulty presented another reason that the CCPA continued to regard product-by-process claims as exceptions to the general rule. Bridgeford. it encountered a daunting administrative task. Therefore. As the PTO confronted more product-by-process claims. 489 F . an applicant could claim a product in product-by-process terms as a hedge against the possibility that those broader product claims might be invalidated. Hughes. e. An applicant could obtain a process patent for a new. In weighing patent-ability. 496 F . continued to regard product-by-process claims as an exception to the general rule. Id. 496 F. useful. 459 F .2d at 1219. The overall effect of these cases made the product-by-process exception more available to applicants. In re Fessmann.I shifted the emphasis away from the necessity for product-by-process claiming and toward determining whether the claim adequately defines the invention. 180 USPQ 324 (CCPA 1974). In Hughes. The court regarded “true product claims” as broader in scope than product-by-process claims — a distinction which acknowledges the process as limiting the scope of the claim. 459 F.ANNEXURE ..G. the PTO lacked facilities to replicate processes and compare the resultant product with prior art.2d at 535. The CCPA began to handle an increasing number of cases [**34] where applicants sought exclusive rights to an old or obvious product claimed by reference to a new process for its manufacture. NALSAR Pro 170 P.2d 531. 357 F. In re Brown. Id.2d at 1218. 1036. In re Avery.A. the CCPA permitted product-by-process claims even though the applicant could describe the invention in structural terms.C. The CCPA recognized this difficulty: As a practical matter. and nonobvious process. 518 F.

the court stated: We think the rule is well established that where one has produced an article in which invention rests over prior art articles.ANNEXURE . the PTO needed a practical administrative tool.In assessing patentability. the court clarified that the process defines and limits the scope of the claim. 459 F. but is limited in his protection to articles produced by his method referred to in the claims. . for instance. See id.2d at 1218. however. 535 F. 496 F . In Moeller.I . Diploma in Patents Law 171 NALSAR Pro .2d at 535.3.” Bridgeford. 357 F. In fact. To prevent an applicant from obtaining exclusive rights to an old product by merely claiming a new process.2d at 568. . Hughes. if the process limitations of a product-by-process claim did not adequately define the invention. the process limitation defined a product. see also In re Hirao.G. 190 USPQ 15. Rather.2d at 1218-19 (product claim was of a broader scope than product-by-process claims).2d at 682 n.2d at 535. 357 F. has developed with full cognizance of the fact that in infringement suits some courts have construed such claims as covering only a product made by the particular process . Indeed. 496 F . an applicant would fail to satisfy section 112. In other words. the court stated: The policy of the Patent Office in permitting product-by-process [**37] type claims .3 (CCPA 1976). the court in Bridgeford called the process a claim limitation.2d at 682 (emphasis in original). he is permitted to so claim his article..2d 67. . . See also Brown. the PTO necessarily concentrated on discerning what product or products might result from the processes in the claim. moreover.5 (emphasis in original). did not deny that the process language in the claim was a defining limit of the product claim. the process is a defining limit. Brown. This stress on the product was appropriate because “the invention so defined is a product and not a process. The CCPA. treated the claimed process as a limitation. 69 n. The CCPA also explicitly acknowledged that the process operates as a limitation in infringement actions. not a process. 17 n. In Hughes. 117 F. 459 F . even in reviewing only for patentability. P. In Bridgeford. and where it is not possible to define the characteristics which make it inventive except by referring to the process by which the article is made. Hughes. . This point of emphasis.

Though using only process terms. a product-by-process applicant sought rights to a product. however. in both patentability actions before the CCPA and infringement actions before the Supreme Court or the regional circuits. 223 USPQ 1089. 106 S. not to acquire exclusive rights to a product already in the prior art. the product could not be claimed in any other terms. v.. This court. This court already distinguishes treatment of claims for patentability before the PTO from treatment of claims for validity before the courts. cert. in its initial consideration of a product-by-process claim for patentability. 496 F. This court permits the PTO to give claims their broadest reasonable meaning when determining patentability. Diploma in Patents Law .ANNEXURE . 1984).2d 1553. see also J. Therefore. denied. The entire history of product-by-process claims suggests a ready explanation for the apparent difference of view about treatment of those claims during ex parte administrative proceedings and during litigation. The PTO and the CCPA did not reason that the process was not a defining limit of the product.2d 319. determination of patentability is based on the product itself. not a process. The practice and governing law have developed in response to the need to enable an applicant to claim an otherwise patentable product that resists [**39] definition by other than the process by which it is made.G. 1989). This exception. For this reason. 73 (1985).I In sum. 1566. the process was the only way to define and limit — in sum. 88 L. Indeed by definition in most cases. even though product-by-process claims are limited by and defined by the process. the applicant had to show that no prior art product anticipated or rendered obvious the product defined in process terms. 2d 60 .P . 13 USPQ2d 1320. 474 U. 747 F . Id. During litigation NALSAR Pro 172 P. 321. 822.2d at 1218. to claim — the product.. permitted an applicant to claim a product in process terms. Cir. Hughes. 893 F . Cir. 1322 (Fed. Ed. the courts regarded the process language in product-by-process claims as limiting the claim.S. Thus. Lex Tex Ltd. Stevens & Co. In re Zletz. 1098 (Fed. the PTO and the CCPA acknowledged product-by-process claims as an exception to the general rule requiring claims to define products in terms of structural characteristics. To the contrary. acknowledged that process claim limitations define the product: Product-by-process claims are not specifically discussed in the patent statute. Ct.

7. 1286. In any event. however. 745 F . In addition. (T) 129 (1987). e. Rather the courts must consult the specification. 768 F . however. The same rule. accommodating the demands of the administrative process and recognizing the capabilities of the trial courts. Thus. e. See. Atlantic’s invitation to disregard the claim limitations also would require this court to determine infringement by comparing an accused product with an embodiment of the claims.G. claims mean the same for infringement and validity. This court has repeatedly stated that infringement requires the presence of every claim limitation or its equivalent. Continental Paper Bag Co.2d 1437. 1985). Ed..I determining validity or infringement. 818 n. 4 USPQ2d 1283.2d at 321. Ct. 1989). Cir. Cir. 419. 1322 n. this approach is inapplicable. See. Senmed. Richard-Allan Medical Indus. e.. [**40] DeGeorge v. not an embodiment of the claims. Eastern Paper Bag Co. 12 USPQ2d 1508. Moreover.ANNEXURE . 888 F .. 210 U. prosecution history. P.2 (Fed. Thus. Cir.g.2d 1318.”). The PTO’s treatment of product-by-process claims as a product claim for patentability is consistent with policies giving claims their broadest reasonable interpretation. 748 (1908) (“The claims measure the invention. This court has repeatedly emphasized that infringement analysis compares the accused product with the patent claims. 1511 n. and other claims to determine the proper construction of the claim language. Cir. this court treats claims differently for patent-ability as opposed to validity and infringement. Kimberly-Clark Corp.2d 815. v. 1984). Thus. See. United States Int’l Trade Comm’n. v. ignoring the claim limits of a product-by-process claim would clash directly with basic patent principles enunciated by the Supreme Court and this court.2.. 223 USPQ 603 (Fed. Tandon Corp.g. Atlantic’s invitation would require this court to directly ignore basic patent principles.. Zletz. For instance. v. 226 USPQ 758. 761 n. An accused infringer can avoid infringement by showing that the accused device lacks even a single claim limitation.S. accepting Atlantic’s invitation to ignore the process limitations in the ‘204 patent’s product-by-process claims would require this court to disregard several other mainstay patent doctrines. 52 L. 893 F . Bernier. 831 F . not the claims themselves.2d 1017. Diploma in Patents Law 173 NALSAR Pro . does not apply in validity and infringement litigation. 5 Fed. v. 1122 . Inc. prior art. 1021. 28 S. Atlantic in effect invites this court to discount the significance of excluding claim limitations from infringement analysis. 405. Johnson & Johnson.g.7 (Fed.

2d at 697. This difference originated with the Supreme Court’s BASF rules — a difference this court endorsed as recently as 1985. Atlantic is not entitled to lost profits on Faytex’s sales of Sorbothane innersoles. However. rejects Atlantic’s invitation to ignore the process limitations in its product-by-process claims. Diploma in Patents Law . The district court erred in calculating lost profits.ANNEXURE . Thus. process terms in product-by-process claims serve as limitations in determining infringement. on remand. It merely assumed that Faytex was the only other supplier of innersoles and that Atlantic would have made all of Faytex’s sales. this court acknowledges that infringement analysis proceeds with reference to the patent claims. the district court also held.000 based on a lost profits valuation. The court assessed damages at $ 68. This court. therefore. See Thorpe. Neither does this court disturb the PTO’s present practice for assessing patentability of product-by-process claims. In so holding. Moreover the record contains no evidence that Atlantic would have made both Surge and Sorbothane sales.I In light of Supreme Court caselaw and the history of product-by-process claims. Faytex also sold non-infringing Sorbothane innersoles. 777 F . This court recognizes that product-by-process claims will receive different treatment for administrative patentability determinations than for judicial infringement determinations. this case does not involve a two-supplier market which would justify the assumption that the patent owner would have made all the infringer’s sales. and this court agrees. that Sorbothane innersoles did not infringe. IV. The district court. While a market share approach may be appropriate here. Thus. the district court did not properly apply this approach. The court thus declined to award enhanced damages.G. will recalculate appropriate damages NALSAR Pro 174 P. this court acknowledges that it has in effect recognized another reason to regard product-by-process claims as exceptional. This court’s infringement rules do not require reversal of the district court’s non-infringement finding regarding the Sorbothane process. Lost Profits: The district court determined that Faytex’s sale of Surge innersoles did not constitute willful infringement of the patent.

RICH. this court charges costs to Faytex. Plaintiffs-Appellants.I using a permissible market share approach. to review. 1992. NEWMAN. This is no casual slip in an opinion. and REMANDED ATLANTIC THERMOPLASTICS CO.. VACATED-IN-PART..2d 1279 August 14. As a sanction for casting unsupported and unsupportable allegations that Atlantic filed a frivolous appeal. Diploma in Patents Law 175 NALSAR Pro . It has violated a rule of this court which has existed since its creation. if the patent is determined to be valid. AFFIRMED-IN-PART. The panel has misapprehended its function as an arm of this court.ANNEXURE . UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT 974 F. RICH. LOURIE OPINION: ON REQUEST FOR REHEARING IN BANC DISSENT BY: NIES. just what the Atlantic panel. I join the Chief Judge’s request for and the opinions of Judges Lourie and Newman in support of in banc rehearing. INC.G. FOX. v. I wish to point out to the other members of this court and to the bar. assuming market share analysis is appropriate. NEWMAN. LOURIE DISSENT: RICH. The panel has gone on an unnecessary excursion beyond the needs of this case. SULLIVAN and RICHARD B. JAMES B. the entire field of product-by-process claims and lay down a universal rule applicable to all such claims in these words: P. Defendant/Cross-Appellant. Decided JUDGES: NIES. I was one of the objectors for three principal reasons. The panel opinion herein was not handed down without objection. dissenting from the denial of rehearing in banc. FAYTEX CORPORATION. as it sees it. It has misconstrued the early Supreme Court opinions on which it relies to justify violation of the rule. as Judge Newman calls it. if need be. Circuit Judge. has done.

The cost of developing an NCE continues to rise each year. innovation comes at a premium cost.G. this whole excursion was unnecessary because the patentee admitted that claim 24. We are not here to provide restatements of the law. for unexplained reasons. Such restatements should not be made without an opportunity for all affected parties to be heard from. And R&D productivity is measured generally in terms of an individual’s or nation’s ability to develop what we call new chemical entities. The affected parties here are not the vendors of inner soles but largely the entire chemical industry.I Thus [summarizing its view of case law]. no occasion to review the law to determine how the claim should be construed. Nevertheless.000 or 10. process terms in product-by-process claims serve as limitations in determining infringement. As Judge Lourie has succinctly pointed out. April-June 1992 p. After pointing out that the more than 100 research-based members of PMA are highly dependent on intellectual property protection to provide the incentive to invest risk capital. Mr. 30. It was not an issue in the case. in both patentability actions before the CCPA and infringement actions before the Supreme Court or the regional circuits. which is its proper function. By 1990. was limited to the process. NALSAR Pro 176 P. 475).” This kind of innovative R&D is not going to be encouraged by the rule just laid down by the Atlantic panel. the courts regarded the process language in product-by-process claims as limiting the claim. this figure has risen nearly fivefold to over $ 230 million per NCE. Judge Newman’s opinion refers to the cost of producing a new drug.” There was. the cost of moving an NCE from laboratory to market was $ 54 million. p. or NCEs.ANNEXURE . [Slip opin. the product-byprocess claim. To this I would add a recent statement by Roger A. meeting of AIPLA (Bulletin.] In light of Supreme Court caselaw and the history of product-by-process claims. Brooks said: In the pharmaceutical industry. 27. p. Diploma in Patents Law . 1992. the panel devoted over 60% of its opinion (19 of 31 pages) to undertake a restatement of the law instead of simply deciding the case.000 compounds discovered ever make it to the market.] No exceptions. The claim read: “The molded innersole produced by the method of claim 1. this court acknowledges that infringement analysis proceeds with reference to the patent claims. Thus. particularly the pharmaceutical manufacturers. For example in 1976. [Slip opin. Brooks. He then pointed out that “only one out of 5. an Assistant Vice President of the Pharmaceutical Manufacturers Association [**4] (PMA) made at the May 14. therefore.

44. But the conflict should have been eliminated in banc to avoid confusion in the law. the Atlantic panel] determines that the prior panel [in the Scripps case] would have reached a different conclusion if it had considered controlling precedent. 286): PTCJ COMMENT: One might fairly inquire about the vitality of the Federal Circuit’s “prior panel rule” in light of this ruling. Phyfer.G.I The most egregious act of the Atlantic panel. beyond anything else. which accounts for the fact that we do not agree with the Atlantic panel’s interpretation of them. In concluding. The rationale in footnote 2 for not following Scripps cited another footnote from an Eleventh Circuit juvenile incarceration case (see Tucker v.ANNEXURE . around which the whole law of infringement revolves. to observe that three of the four judges currently dissenting from the failure to in banc this case are those who have spent their entire professional careers in the law procuring and litigating patents — and defending against them. the logic would seem to permit the invocation of other CCPA and CAFC precedent as well. This is not only insulting to the Scripps panel (Chief Judge Markey. of its rule that no precedent can be disregarded or overruled save by an in banc court. Diploma in Patents Law 177 NALSAR Pro . I quote from the BNA PTC Journal report on this case their editorial comment (Vol.2d 1030. it is mutiny. It is interesting. Res ipsa loquitur. for the first time in this court’s nearly ten-year history. 819 F. P. indeed. The extensive efforts of Judge Newman to explain what they are all about speak for all of us and I need not say more. p. It is illegal. n. While the correction in this case involved overlooked Supreme Court precedent. Their patent work involved. Two of these judges had earlier careers as research chemists. the writing. 1037.” The Atlantic panel continued: A decision that fails to consider Supreme Court precedent does not control if the court [i. but future panels may still be entitled to cite it since it is not expressly repudiated here.7 CA 11 1987) which in turn cited no authority: The precedential status of the Scripps ruling appears to have been clouded. interpreting. It is more than a little bit possible that we have considered the Supreme Court [**6] cases on which the Atlantic panel relies. on the stated [**5] but feeble ground that the authors of the precedential opinion “ruled without reference to the Supreme Court’s previous cases involving product claims with process limitations. Fortunately.e. Judge Newman and a visiting judge). and more than once. It is heresy. is its defiant disregard. the earlier precedent controls. this court has another rule — as yet to be ignored by a panel. I believe — that where there are conflicting precedents. however. and arguing about claims.

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