CENTRAL UNIVERSITY OF SOUTH

BIHAR

SCHOOL OF LAW AND

GOVERNANCE

SUBJECT: IPR (INTELLECTUAL PROPERTY LAW) LAW 500

CASE BRIEFING: STANDIPACK PVT. LTD. V. OSWAL
TRADING CO. LTD. 1999 (19) PTC 479 (DEL.)

SUBMITTED TO-

DR. DIGVIJAY SINGH

FACULTY (ASSOCIATE

PROF.), SLG CUSB

SUBMITTED BY-
VISHAL RANJAN
B.A. LLB 9TH (SEMESTER)
CUSB1613125059
SESSION: 2016-
2021
 ACKNOWLEDGEMENT

At this point of time I would like to express my gratitude to all those who gave me their
support to complete this Case Briefing.

I am grateful to my IPR Law teacher who is Dr. Digvijay Singh (Associate Prof.) SLG, for
giving me permission to commence this Case Briefing in the first instance and to do
necessary study and research. I want to thank law faculty members and other faculty
members for all their professional advice, value added time, effort and enterprise help,
support, interest and valuable hints that encouraged me to go ahead with my project.

I am deeply indebted to my colleagues for their meticulous planning, layout, presentation

and above all for their consideration and time.

My heartfelt appreciation also goes to seniors and my classmate for their stimulating
suggestions and encouragement which helped me at each level of my research and in writing
of this project.

Especially, I would like to give my special thanks to my parents, family members and god
whose patient love enabled me to complete this project in this ongoing pandemic situation in
the world.

I have tried my best to enclose practical approach of IPR Law and also theoretical approach
to my Case Briefing.

(Signature of the Student)

Vishal Ranjan

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PREFACE

The objective of the project was to understand the Provisions and cases. The objective of the
study was to analyse the legal provision and the judgements given in the case.

The project was started on 1st of December 2020 after knowing relevant information regarding
the project, under the guidance of my IPR Law teacher Dr. Digvijay Singh.

The first part of my project involves the study of facts of the given case and relevant provision.
For this I used books as a primary source and a secondary source is the internet.

Since, the next part of my project involves the study of judgements and issues of the given case.
For this I used books as a primary source and a secondary source is the internet

Most important part of my project is analysing the information.

(Signature of the Student)

Vishal Ranjan

3
INTRODUCTION:

 CASE DETAILS:

Jurisdiction Under: Delhi High Court

Case Name- Standipack Pvt. Ltd. V. Oswal Trading Co. Ltd.
Citation- 1999 (19) PTC 479 (DEL.), AIR 2000 Delhi 23

 Hon’ble Judges:
Justice Dr. Mukundakam Sharma

 Counsels:
For Petitioner- Adv. Mr. P.N. Lekhi and Adv. Mr. H.P. Singh.
For Respondent- Adv. Mr. Manmohan Singh, Adv. Mr. Chander Shekhar
and Adv. Ms.Sadhna Sharma.

 Date of Judgment-
26.05.1999

 Relevant Sections:
Section 3 (d) of the Indian Patents Act,1970
Section 3 (f) of the Indian Patents Act,1970
Section 64 of the Indian Patents Act,1970
Section 9 (4) of the Indian Patents Act,1970
Section 17 of the Indian Patents Act,1970
Rule 1 & Rule 2 of Order 39 & 38 of CPC
Section 48 & 108 of the Indian Patents Act,1970

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FACTS OF THE CASE:

The case deals with a petition for temporary injunction to restrain the defendant from
manufacturing or using the patented pouch for storage and dispensing of a liquid such as
lubricating oil - The plaintiff had relied upon and had claimed the right of patent under Section
3(d) and (f) of the Act1,1970, for the thickness of the film used in manufacture of pouches.

Injunction applications have been filed by the plaintiff seeking for a temporary injunction
restraining the defendant from manufacturing or using the patented pouch of the plaintiff. The
case sought to be made out by the plaintiff in the injunction applications is that the patent in
respect of pouch for storage and dispensing of a liquid such as lubricating oil was granted to the
plaintiff by the Controller of Patents. Corresponding patents have also been granted to the
plaintiff in various other developed countries including USA, Europe and Australia. It is stated
that subsequent thereto it has come to the notice of the plaintiff that the defendants have started
selling pouches of the same construction as the patented pouches of the plaintiff and thereby
violating the patent in as much as even sale/marketing of the said pouches would constitute
violation of the patent. Accordingly, the plaintiff filed the suit for infringement, injunction and
rendition of accounts and also for temporary injunction alleging violating of the patent by the
defendants and Therefore, granting interlocutory injunction in favor of the plaintiff and against
the defendants restraining the said defendants from infringing the patent of the plaintiff and
restraining them from manufacturing, selling pouches as those patented by the plaintiff.

Various defendants appeared in the suits by filing written statement and reply to the injunction
application contending inter alias that the patent was granted to the plaintiff illegally and in
violation of the provisions of the Patents Act and the Rules framed therein and in few of which
applications have been filed by various parties seeking for revocation of the patent granted. It is
also stated that the goods in question were pre-published and Therefore, the same was not
entitled to be granted patent. It is also stated that there was suppression of material facts and
variations in the stand of the plaintiff in the plaint and the stand taken at the time of arguments
and Therefore, the plaintiff is not entitled to any injunction as sought for. It was also stated that
post-dating of the application of the plaintiff is also in violation of the provisions of the Act and

1
Indian Patents Act,1970

5
that there is vital and marked difference in the pouches of the plaintiff and that of the various
other parties namely - the defendants and Therefore, no injunction should be granted in favor of
the plaintiff. Indian Oil Corporation and Castrol India have filed petitions praying for revocation
of patent, which are registered as C.O. 25/1995 and C.O. 11/1998 respectively.

It was also submitted that the patent granted in favor of the plaintiff was prior published and, in
this connection, reference was made to the Committee Report, contents of which, it was
submitted, prove and establish prior publication of the patent. It was also submitted by the
counsel appearing for the defendants/parties that the post-dating of the application for grant of
patent was in violation of the provisions of the Patents Act and in support of the contention
reliance was sought to be placed on the original records of the Registrar of the Patents. An
application was also made by some of the defendants that there has been suppression of material
facts by the plaintiff which disentitles the plaintiff from getting an injunction from this court. In
the light of the aforesaid rival submissions of the counsel appearing for the parties several issues
arise for my consideration at this stage for deciding as to whether the plaintiff has been able to
make out a prima facie case for grant of an ad interim injunction or not.

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ISSUE OF THE CASE:

1. Whether an article was really an invention within the provision of the act or not?
2. Whether Post-Dating of the patent by the controller is in violation of section 92 of the act?
3. Whether the application filed for the injunction was granted or not?

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furnishing provisional and complete specifications

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DECISION OF THE CASE:

Considering the entire facts and circumstances of the case and the principles discussed above, it
was decided by the hon’ble court that the plaintiff has failed to make out any prima facie case for
the grant of temporary injunction in its favour. The injunction as sought for is also refused on the
ground that the plaintiff did not act with clean hands rather suppressed material fact from the
Court at Ambala where a suit was instituted by the plaintiff against one of the defendants. The
application seeking for interim injunction was rejected and the applications filed under ‘Order 39
Rule 4 CPC’3 was allowed by the Hon’ble court. Also, the injunction order granted by Ambala
Court was declared of no effect consequently.

REASONING OF THE CASE:

3
Order for injunction

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 1- According to Section 3(d) of the Act4 provides that mere discovery of any new property
or new use for a known substance or of the mere use of a known process, machine or
apparatus unless such known process results in a new product or employs at least one
new reactant, could not fall within the category of an invention. Section 3(f) of the Act
provides that mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way, would not constitute an
invention for the purposes of the Patents Act.
The submission made by the plaintiff that the patent was granted to the plaintiff after the
examiner had examined the patent in terms of the provisions of the patent act, cannot be
accepted in view of the fact that the examiner who examined the patent accepted the
patent on the basis of the declaration made by the plaintiff and the examiner had no
knowledge at that point of time that the pouches were already available in the market.
The application of the plaintiff was examined on the basis of the declaration made by the
plaintiff and as per the record available. On consideration of the documentary evidence
read with the aforesaid statutory provisions it is prima facie held that the said contention
of the plaintiff is not tenable. In this connection reference may be made to the case of
Bishwanath Prasad Vs. Hindustan Metal Industries5. In the said decision the Supreme
Court held that in order to be patentable an improvement on something known before or a
combination of different matters already known, should be something more than a mere
workshop improvement; and must independently satisfy the test of invention or 'inventive
step'. It was further held that mere collection of more than one integer or things, not
involving the exercise of any inventive faculty, does not qualify, for the grant of a patent.
The Supreme Court has categorically held that in order to be patentable, the new subject
matter must involve invention producing new result or a new article or better or cheaper
article. In my considered opinion the nature and manner of construction of layers, was
publicly known, used and practiced in India, prior to the date of patent and thus there is
novelty attached to it. The invention as claimed by the plaintiff does not satisfy the test
laid down in the aforesaid decision for an invention.

4
Indian Patent Act,1970
5
(1979)2 SCR 757

9
 2- The relevant Sections 96 & 177 of the act, make it crystal clear that post-dating of the
patent can be done only to the date of filing of the complete specifications. In the present
case the Controller of Patents had filed the original records relating to the grant of patent
in favor of the plaintiff. The said records reveal that the application for the grant of patent
was originally filed by plaintiff on 11.4.1989 and the complete specification was filed on
11.10.1990. The Controller of Patents however, post-dated the patent to 11.7.1989
although complete specifications followed by the provisional specification was filed on
11.10.1990. Thus, the post-dating of the patent by the Controller to 11.7.1989 prima facie
appears to be in violation of the provisions of Section 9 of the act. The date of the patent,
Therefore, should have been 11.10.1990. The patent document referred the validity of the
patent for 14 years from 11.7.1990. Thus, the validity of the patent has also been ignored
by the Controller of Patents. The plaintiff also during the course of arguments admitted
that complete specifications were submitted on 11.10.1990, which is the date from which
the Patent granted would be effective. Thus, post-dating the Patent to 11.7.1989 appears
to be illegal in view of the provisions of Section 9(4) of the Patent Act and the provisions
of Section 17 are subject to Section 9.
3- According to the given facts and principles that the plaintiff has failed to make out any
prima facie case for the grant of temporary injunction in its favor. Also, an injunction as
sought for is also refused on the ground that the plaintiff did not act with clean hands
rather suppressed material fact from the Court at Ambala where a suit was instituted by
the plaintiff against one of the defendants. The application seeking for interim injunction
stands rejected and the applications filed under Order39 Rule 4 CPC stand allowed. The
injunction order granted by Ambala Court stands vacated.

REFERENCES:

1- www.manupatra.com
2- www.indiankanoon.org

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Indian Patent Act,1970
7
Indian Patent Act,1970

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