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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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Contents
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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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AN INTRODUCTION
CHAPTER - I AN INTRODUCTION
In the previous chapters the concept of intellectual property (IP) and the origin of intellectual property was introduced. Perhaps the most important of intellectual properties is the patents. Patents are most important for these reasons: 1. 2. 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, patents provide the most fool proof form of intellectual property rights.
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Importance of Patent Policy

Patent policies have proved to be extremely important for several countries to develop. In fact, the patent policy pursued by India enabled it to becoming a big international player in the generic drug market. The patent policies of Europe and the US enabled it to develop in research and technology and gain global economic leadership position. The patent policy of Japan enabled it to understand and catch up with the American system within a short period of time. In fact western scholars always associate development of a nation with patent policies. The roots of patent policies of developed nations can be traced to the post World War II
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AN INTRODUCTION
era.1 This era marks the shift in focus from war to trade. Countries expanded beyond national boundaries seeking superior trade and economic positions to flourish by investing and inventing. As early as in the 1800s nations perceived that trade had a direct co-relation to the patent policy of the country. Patent policies are manifested and implemented as patent statues/ legislations. Because of the many benefits and the importance of patents, the subject of patents as such tends to be extremely interesting but very complicated. Before the subject of patents is understood, certain terms need to be internalized by a prospective patent scholar to even attempt to understand the law of patents.
The Patent Terms General Terms

Several terms define the various aspects of patents. As far as possible these terms are explained in the most logical manner for the reader to understand this in perspective. Patent policy details a countrys policy for the patent system. The polices are made by the legislature and based on this policy the patent statute is drafted. For example, the patent policy of India in the 1950 was to ensure that there was local production of drugs. Hence the patent legislation catered to such a need by so drafting the legislation. Patent legislation is what is called the Patent Act. The patent outlines the gist of the patent system in the country. For example, the Indian Patent Act details what can be patented and that patent applications need to be made in order to get a patent. Now, those interested in obtaining a patent need to understand what the application should contain, where the application has to be submitted etc. All these procedural rules are covered in India by the Patent R ules. Thus the patent rules supplement and compliment the patent Rules legislation. Some times the patent office issues rules that are within their powers. These are called as patent notifications. In the US, such rules are
1 Martin J. Adelman et al., Cases and Materials on Patent Law 1 (1998)
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AN INTRODUCTION
laid down in the form of patent guidelines. In Europe these same rules are laid down in the form of guidelines or Directives. A patent itself is nothing but a document issued by the government. This document tells the holder of the document that a particular product is protected by a patent. This means that the product is patent protected. This means that the product is protected from duplication and copying. The person in whose name the document is issued is the patent owner owner. The . Sometimes companies or other entities patent owner can also be the inventor inventor. can also be a patent owner by entering into an agreement with the patent owner. Such agreements are called as license agreements. These agreements will essentially give the companies and other entities (the licensee) the right to sell, produce, re-sell etc the invention. In return the inventor will get monetary returns termed as royalties. Once a person becomes a patent owner, she gets exclusive rights to sell, manufacture and market the product for a specified period of time. Currently it is 20 years in the countries which re signatories to the TRIPS agreement of the WTO. This period is called patent term. This means that during the patent term no person other than the patent owner can ever sell the product. Thus the patent owner is vested with exclusive monopoly rights over that product. This right is the the right to exclude others from making, using, offering for sale, or selling the invention or importing the invention. What is granted is not merely the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Thus there will be no other competing products during the patent term. Hence the patent owner can meet the demand of the market by supplying the entire market. Lack of competition also allows the patent owner to set a higher price for the product since consumers can only access the patented product. This monopoly right is given so that research and development leading to inventions are encouraged. 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. In return the government ensures that the patent owner describes the invention, the making of the inventions and the working of the
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AN INTRODUCTION
invention in the application. It then ensures that after the patent term expires, any person interested can gather the information and manufacture similar or the same product. 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. 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. Patents also affect trade internationally because of the above. That is, a lot of times patent owners sell products at higher prices. Therefore copying patented products (called as patent infringement) enable those who copy to sell the same products at the cheaper price. This affects the right of the patent owner. Most often, developed countries are the source of research and development. In these countries, they protect the rights of the inventors by adequate mechanisms. On the other hand, developing nations could survive only with a little copying in specified industrial sectors like pharmaceuticals etc. Hence developed nations wanted what is called as patent harmonization. The term patent harmonization essentially means that patents laws and patent protection becomes very similar across the world in all countries. This will ensure that the rights of patent holders of any country is protected internationally. Such harmonization is attempted through patent conventions or patent treaties, (TRIPS is one such convention. Other patent conventions are Paris Conventions, Patent Cooperation Treaty etc). These treaties and conventions are enforced by international organizations. The most important O. 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. The WTO governs the trade related aspects of intellectual property rights. WIPO is the main organization for the governance of all the treaties other than TRIPS. 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. In India there is one central patent office in Calcutta and regional offices in India.
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CHAPTER II LEGISLATION SALIENT FEATURE

Patent Legislation In India 1970 : An Overview
Every study of patents will ultimately focus on the national legislation. In India, the Indian Patent Act, 1970 as modified in 1999, 2002 and finally in 2005 is the governing patent legislation. Before understanding the 1970 Act, it is important to appreciate that patents protect inventions that are: 1. 2. 3. novel, non-obvious/ with an inventive step and useful.
The first issue normally in patents is the subject matter that can be protected by patents. These subjects are termed as patentable subject matter. Patentable subject matter is normally established by statute. If the subject matter of the inventions is patentable, then the requirement for patentability is that the invention has to be new. 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, it said to lack novelty and therefore will not be patentable. However, even if the invention is novel, if the invention is something that a person skilled in that art (that is scientists working in the same area) finds it obvious, then it will be denied a patent.
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PATENT LEGISLATION SALIENT FEATURES
When an invention is sought to be patented, the patent application describes the invention by the use of claims and specification. In gist, the specification details the problem the technical problem that the invention solved. The claims are the concise definitions of various aspects of the invention. Claim serve as the primary source of proprietary rights. It is claims that will distinguish one invention from the other. Claim drafting is a rather very technical subject. This job is normally called patent prosecution. In the US, patent prosecutors should mandatorily have a doctoral degree in SCIENCE along with a LAW degree. Also, a PhD holder in chemistry can ONLY draft a chemical patent. To draft a biotech patent, one should get a PhD in biotech and so on. This is to ensure that the patent drafter has a very good understanding of the invention enough to appreciate the scientific nitty gritties. The law degree of the scientist enables him to draft like a lawyer. In fact in order to be patent prosecutor in the US, one has to clear two bar exams. One is the state bar exam. This tests the law and gives the person eligibility to practice any law related subjects. The test is conducted by the bar council. However, those who aspire to work as patent prosecutors have to additionally pass the Patent Bar. This Bar is conducted by the Institute of Engineers. It does NOT test law it tests the candidates basics in that area of science in which the candidate wants to prosecute patent applications. It is not merely the caliber of inventions that gains American so many patents. 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. For example, in America there are several existing patents for caps to cover the top of the bottle. Though all these are ultimately nothing but bottle covers, each specifies a novelty that the other covers lack. For example, one cover assures no spillage. The other assures a moth flow of water into the mouth through a small nozzle. The third assures easy close without having to keep winding the cover. Another interesting patent is for the bottom surface of tumblers. One claims that it enables the glass tumbler to be placed firmly on smooth surface. The other claims that the surface is thick enough to prevent breakage. The third assures quicker heating in microwave. These are not peculiar or unusual inventions in the US. All these lay man terms of less breakage, faster heating etc are defined technically by
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claim drafting. In the area of patent law, it is claim drafting that is the most technical and difficult area to learn and accumulate.
Patent Act, 1970:

Patentable invention : Under the Patents Act, 1970 (hereinafter, the Act) invention: any new and useful invention, qualifies for a patent under section 2(j). Section 2 (j) details that an invention has to be a new product or process involving an inventive stepand capable of industrial application;and includes a new and useful improvement over any of them. Thus in India any new and useful invention is a patentable subject matter. The term invention has been defined by the court in Raj Parkash v. Mangat Ram Chowdhary, AIR 1978 Delhi 1. The court held that, 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, so long as it is something novel or new, 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. The Act under section 3 defines what cannot amount to an invention. These are: (a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws; (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, animal or plant life or health or to the environment; (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;
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(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, machine or apparatus unless such known process results in a new product or employs at least one new reactant. Explanation: For the purpose of this clause, salts, easters, ethers, polymorphs, metabolites, pure form, particle size, isomers mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, 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; (f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way; (g) Omitted. (h) a method of agriculture or horticulture; (i) any process for the medicinal, surgical, curative, prophylactic, diagnostic, 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. (j) plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals; (k) a mathematical or business method or a computer program per se or algorithms; (l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions; (m) a mere scheme or rule or method of performing mental act or method of playing game;
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(n) a presentation of information; (o) topography of integrated circuits; (p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties or traditionally known component or components. Notably, inventions,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. The law or morality phrase in section 3 is used to restrict biotech patents. Exclusion of a mere discovery of scientific principle or formation of an abstract theory4 denies protection to software related material. Clause (g) of section 3 excludes a method of agriculture or horticulture thereby excluding protection to plant varieties.5 Notably, protection of plant varieties by some form of intellectual property is mandatory under TRIPS.6 India has enacted the Protection of Plant Varieties & Farmers Rights Act in 2001 to protect IP relating to Plants as per TRIPS provision. New and Useful : The Act does not define the terms new and useful. Useful: But these terms have been given meaning by the decisions of the court in India. The terms new and useful are comparative to universal requirements of novelty and utility. The court have also read the concept of non obviousness into these terms in India. The supreme court in the case of M/ s. Bishwanath Prasad Radhey Shyam v. M/s. Hindustan Metal Industries, reported in (1979) 2 SCC 511: (AIR 1982 SC 1444). In this decision, the Supreme Court propounded the test of inventive step. By this the court held that,
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see Section 3 clause (b) Patent Act, 1970 Id. This clause is similar to the exception under art 27 in TRIPS. Section 3(c) Patent Act, 1970 A new Plant Variety Protection Act was passed in 1999 to tune in with TRIPS. TRIPS, supra note 6, art 27
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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. The combination article of known integers may be combined that by their working interrelation to produce a new process or improved result. Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent. even in adopting the old contrivance to new purpose[s] there must be difficulties to be overcome requiring what is called invention, or there may be some ingenuity in the mode of making the adoption. The Supreme Court also held that whether an alleged invention involves novelty and an inventive step is a mixed question of law and fact. Obviousness: The term obviousness is also not defined specifically in the Act. This term merely refers to the fact that if the invention is obvious then it is not patentable. Therefore any invention has to pass the test nonobviousness in order to be patentable. This test becomes more crucial in the case of new improvements or even combinations. In India though there is no test of nonobviousness for patentability, a patent granted by the patent office can be opposed on the ground of obviousness. 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), prior use, lack of utility, obviousness and lack of inventive step. The courts have also in the case of Press Metal Corporation Ltd v. Noshir Shorabji, AIR 1983 Bom 144, intertwined the requirement of non-obviousness within new and useful. The court held that, New and useful method or manner of manufacture need not necessarily be any product i. e. it need not necessarily be a new article; it may be any physical phenomenon in which the effect, be it creation or merely alteration may be observed. In considering whether the claim as made by the inventor is an invention, it will have to be considered whether the subject matter is not obvious. Obviousness is to be judged by the standard of a man skilled in the art concerned. Process P atents: A patent may be granted for a product, or a process. Patents: In the case of a product, the patent is in the end product. In the case of a
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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 Indias 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 Indias 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 Indias 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 Germanys 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. Transnatl L. 507 (1996) arguing that strong intellectual property protection will be in Indias 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. Transnatl L. 363 (1996).
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drugs like sulphamethoxazole and ethambutol. Indian production accounts for nearly 50% of the world production. Several companies like Ranbaxy, Dr. Reddys and Cipla have the potential to become billion dollar companies within the next few years. Other than developing indigenous pharmaceuticals, India has grown as a major player in the international generic drugs market. The U.S during the Anthrax scare considered importing cheap generic drugs from India.27 India emerged as a reliable exporter of the generic AIDS drugs in the South African AIDS crisis.28 Most importantly, the patent policy of 1970 has catered to the needs of the Indian poor. Drug prices in India are one of the cheapest in the world today and are affordable to the population. On an average, drugs manufactured in India are more than a 100% cheaper than the same drugs in U.S.29 For example, the price of antibacterial drug Norfloxacin at USD 6 cents (Rs 33.61) in India compares to USD 12.26 (Rs 613.77) in America. The anti- inflammatory drug Piroxicam costs less than USD 5 cents in India (Rs 14.04) as against the American price of USD 11.50 (Rs 592).30 AZT (azidovudine) a drug retailed in the U.S for USD 5.8231 is sold in India in capsule form for USD 1.42 per 300 mg. The government of India has
27 see Manu Joseph, Indian Cipro copies dont pay off, Wired News, (Nov 8, 2001) at http://www.wired.com/news/medtech/0,1286,48153,00.html, detailing the cost of cipro was Rs. 27 (60 cents) per tablet eight years ago in India. The cost of cipro currently is Rs. 1.50 (4 cents). Indian drug-makers export the generic version of Cipro to Russia, Brazil, southeast Asia and the Middle East at highly competitive prices. 28 see Michael Waldholz and Rachel Zimmerman, Bristol Myers offers to sell two AIDS Drugs in Africa below cost, The Wall Street Journal, March 15, 2001 at B1 explaining that although Bristol Meyers lowered their prices by 55%, it was still higher than the price of Indian drug companies. see also Robert Block, Cipla tries to skirt South Africa AIDS-drug battle, The Wall Street Journal, March 9, 2001, at B6. 29 see David Scondras, A visit to India Drug prices, Research and Global access, Being Alive, (May, 1999) at http://www.beingalivela.org/news0599/0599_visittoindia.html, arguing that drug prices in India are between a 1000 to 4000 percent cheaper than the prices in the U.S. 30 Id. 31 Hytrin, a sophisticated anti-hypertensive, is sold in India for 7 cents a tablet. A months supply of the drug costs about USD 4.20. This is the final price after adding a 200% profit as allowed under the drug price control order. In the U.S, (Boston) the same drug from the same company costs USD 44.48.
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achieved the Constitutional mandate of social and economic balance by setting a maximum sale price while still leaving a reasonable profit. The Indian government assures availability of patented drugs in the market by retaining the power to compulsory license. Interestingly the Indian government has never used the compulsory licensing provision since the enactment of the patent legislation. The economic brunt of the 1970 patent policy has not escaped India. Multinational companies, once major players, became reluctant to sell in India. By 1997, multinationals accounted for less than 30 percent of bulks and 20 percent of locally produced formulations.32 Most multinationals complied with the minimum requirements necessary to maintain presence in the Indian market (such as producing simple formulations from imported bulks), while awaiting stronger patent protection.33 The government responded by steadily reducing price control on drugs. In 1970 most drugs were under price control, by 1984 this was reduced to 347 drugs, and to 163 drugs in 1987. In 1994 only 73 drugs remained under price control.34 In spite of such aggressive development of the indigenous pharmaceutical industry, only a mere 30% of India population has secured access to modern medication.35 Examination of the policies of developed nations on patenting new methods of producing a known product treated in developed nations. Novel and non-obvious process of making known products are patentable in developed nations (particularly the U.S and Europe) by the
32 Jean Lanjouw, The Introduction of Pharmaceutical Product Patents in India: Heartless Exploitation of the Poor and Suffering?, (1998) NBER: Cambridge, MA. p. 4. 33 see Sean Eric Smith, Opening up to the World, Indias Pharmaceutical companies prepare for 2005, in Asia Pacific Research Papers 32 (Stanford Univ. Institute for International Studies, Working paper, 2000) at http://APARC.stanford.edu; 34 see supra note 108 112 and accompanying text. 35 Interview by Pharmabiz.com with Ranjit Sahani, President of Pharmaceutical Producers Association of India, (2000), at http://www.pharmabiz.com/interv/intrv73.asp; see also Pharmaceutical Research & Manufacturers of America International, India: A cautionary tale on the critical importance of IP Protection, (Jan 2002) at http:// www.phrma.org/intnatl/news/2001-04-12.41.phtml.
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use of process by product claims. In Atlantic Thermoplastics Co. v. Faytex Corp.,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. The issue related to innersoles with elastomeric heel inserts distributed by the defendant. Defendant bought the product from two separate manufacturers using separate manufacturing process. The plaintiffs suit was against the defendant for infringing the patented process and therefore related to both the manufacturing process. The Federal Circuit held that the process of one manufacturer infringed the patent, as it contained all the claim limitations. The second manufacturer used a different process to achieve albeit an indistinguishable product, thus, no infringement of product-by-process claim. 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.38 In effect this judgment allows the patenting of a different processes of producing a known product. This is the equivalent of the process patents of developing countries. Section 5 of the Indian Patent Act, 1970 states that, no patent shall be granted in respect of claims for the substances themselves, but claims for the methods or process shall be patentable (in the case of chemical process, substances that are intended to be used as or capable of being used as food, drug or medicine). Interestingly, the Atlantic Thermoplastics case related to a chemical process. Developed nations protect the product using the claimed process. Developing countries merely protect the process alone. Currently, both systems facilitate the same result and encourage novel methods of producing known products. The U.S does not believe in process patent but facilitates the same result by the use of a process by product
36 see 970 F . 2d 834, also see 974 F. 2d 1279 Judge Rich dissenting; see generally William E. McGowan, Patent Law - Limiting Infringement Protection for Product-byProcess Claims Atlantic Thermoplastics Co. v. Faytex Corp., 970 F . 2d 834 (1992), 27 Suffolk U. L. Rev. 300 (1993). 37 Scripps Clinic & Research Foundation v. Genentech Inc., 927 F . 2d 1565 (1991). 38 Atlantic, 970 F. 2d at 838.
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claim. 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.40 TRIPS patent policy requires developing countries to only award product patents. Novel processes will not be patentable in developing countries since these countries do not use process by product claims. Consequentially, inventions patentable in developed nations by use of process by product claim will fall outside TRIPS compliant patent legislation of developing nations. Some generic drugs patentable in developed nation using process by product claim will be unprotected in developing nations. The lesson from this is the need to improve claim drafting techniques. 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. Compulsory licenses enable the government to intervene if the patents are not worked for the benefit of the people. 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.41 Compulsory license is granted under Section 84 of the Act. 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. 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.
39 974 F . 2d 1279 (1992) 40 see Atlantic, 974 F . 2d, where Judge Rich quotes a statement (made by Roger A Brooks, the Assistant Vice President to the Pharmaceutical Manufacturers Association. The statement was made on May 14 (1992) meeting of AIPLA (Bulletin), April-June 1992 p. 475) discussing the cost of research and development and that, innovative R & D is not going to be encouraged by the rule just laid down by the Atlantic Panel. 41 Section 94, Patent Act, 1970.
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Alternatively, under section 86, the central government has the right to make an application requesting the controller to endorse a patent with the license of right. Licenses of right are granted on the same grounds for which compulsory licenses are granted. Under section 86 (2), 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. Section 87 deems that a license of right is endorsed after three years from the date of sealing the patent for inventions in food, medicine, drug and chemical processes (that is, inventions entitled to process patents under section 5). 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. The concept of licenses of right is alien to TRIPS. TRIPS provides for compulsory license under article 31 subject to certain terms and conditions. Satisfying the reasonable requirement of the public is a precondition to avoid compulsory licensing of the patent. Section 90 of the Act deems that the reasonable requirement of the public is not satisfied unless the invention is worked in India. 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, the establishment or development of commercial activities in India is prejudiced.42 Non-working the patent in India, or manufacturing abroad and importing into India can be construed as violating section 90. Article 27(1) of TRIPS deems importation as amounting to working the patents. 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. TRIPS does not distinguish an importer from a local producer and vests the same rights on both. Term : Section 53(1) of the act vests process patents in 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, whichever is shorter. However, since the license of right is deemed on inventions relating food, drug and medicines after 3 years, exclusive protection is effectively provided only for
42 Section 90 1(a) (iv) Patent Act, 1970
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three years. Patents protection for other inventions are available for a period of fourteen years as against the twenty years prescribed in TRIPS.43 Burden of proof: No provision in the Indian patent act clearly vests the burden of proof on either party. However, the Nagpur high court established in 1953 in the Bombay Agarwal v. Ramchand Diwan Chand44 that the onus of proving infringement lies upon the plaintiff. 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. This contravenes article 34 of TRIPS. Article 34 vests the burden of proof on the defendant. This article applies if a new product is obtained by the patented process, or if an identical product is made and the patent owner is unable to determine the process used.
Patent Amendment Act, 1999

Article 27 of TRIPS provides that members are obligated to provide patent protection for any invention, whether products or processes, in all fields of technology without discrimination based on the place of invention or production or field of technology. Article 65 gives India until 2005 to establish its product patent regime. Furthermore, Art. 70 (8), read with Art. 65 (2) and (4) of TRIPS, obligates developing countries to provide for a mailbox mechanism for depositing applications and an exclusive marketing regime right (hereinafter, EMR) for such inventions during the interim period. 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. 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. India was required to fulfill this obligation by January 1, 1995. During this time, India could not afford to violate TRIPS and face trade sanctions impacting Indian exports. The U.S. was extending preferential
43 TRIPS, art 33. 44 e.g., 1953 A.I.R. (Nag.) 154
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tariff treatment under the GATT Generalized System of Preferences (GSP). The U.S. revoked duty-free treatment under the GSP for Indias exports of pharmaceuticals, citing Indias poor protection of U.S. patented drugs resulting in a levy of $ 60 million thus reducing Indian exports. On the other hand, Congress (I) was aware that local economic conditions would impede amendments to the Patents Act, 1970. In fact, Congress (I) understood that patent amendments would directly affect the partys popularity amongst people. Hence, the party was forced to take an ambiguous position in fear of special 301 on one side and local politics on the other. In order to fulfill the TRIPS obligations, the President of India on December 31, 1994, promulgated the Patents (Amendment) Ordinance to amend the Patent Act of 1970 and provide for an EMR. The Ordinance became effective on January 1, 1995 and India notified the Council for TRIPS as required under Article 63(2) of TRIPS. However, the Ordinance lapsed on March 26,1995 since legislation of this kind ceases to apply at the expiration of six weeks from the re-assembly of Parliament. The Patents (Amendment) Bill of 1995, which was intended to give permanent legislative effect to the provisions of the Ordinance, was passed by the Lok Sabha in March 1995, but unfortunately lapsed in the Rajya Sabha. Therefore the Patents (Amendment) Bill lapsed with the dissolution of the 10th Lok Sabha on that date in November 1995. The Indian sentiment over the introduction of EMRs also accounted for the lapsing of the bill. 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. They argued that foreign drug companies would get the right for exclusive marketing in India before going through an examination in India. Indian drug manufactures also felt that EMRs did not address domestic production, thereby leaving the ground open for foreign multinationals to take over the market. However, the biggest impediment to the implementation of the EMR legislation was the fear that the cost of medicines would increase substantially. It was also feared that the Indian drug companies would be driven out of business. Amidst all of this, India did not fulfill its obligation to have a transitional system within the stipulated time period. Therefore, the United States asked
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for a consultation on July 2, 1996 under Article 4 of the Understanding on Rules and Procedures Governing the Settlement of Disputes read with Article 64, the US asked for a consultation. This consultation failed on July 27, 1996. The U.S. then requested the Dispute Settlement Body (DSB) of the WTO to examine whether India had defaulted in its TRIPS obligation. On November 7, 1996 a panel was requested by the US which the Panel agreed to take up on November 20, 1996. 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. Moreover, India said that its patent legislation had been supplemented by administrative notifications that had the force of law. 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. The U.S. 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. 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. The Panel also held that India was obligated under 70(9) to have a transitional system in place immediately and not after five years. Aggrieved by the decision of the Panel, India raised three main issues at the appellate level. The first concerned the proper interpretation of the word means in Article 70(8) of the TRIPS Agreement. 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 Appellate Body agreed with the Panel, and was of the view that India is obliged, by Article 70(8)(a), 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. With regard to Article 70(9), the Appellate Body agreed with the Panel that India should have had a mechanism in place, to provide for the grant of exclusive marketing rights effective as from the date of entry into force of the WTO Agreement. However, the appellate body upheld the
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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 countrys citizens 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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is prohibited by their law. TRIPS envisions the exclusions in the Indian legislation are line with the international trend of patentability. However, in view of the recent WTO meeting at Doha, (developing countries got concessions in this meeting), these exclusions will not be construed too strictly. India also excludes the patenting of computer software and business methods patents specifically and biotech patents by implication. 3. 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. The term begins from the date of filing of sealing the patent. 4. 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. However, there is neither a definition of the term abstract nor is there any criterion for the kind of technical information that is required. Regardless of how the IPA is amended to suit TRIPS, unless the law and the rules relating to claims and specifications including drafting, interpretation, etc. are harmonized or, at least clarified, the grant of a patent will always rest on very subjective factors. Section 8 also requires identification of the source and origin of the biological material in the specification. Although such a requirement is not envisioned under TRIPS, it does not specifically prohibit Members from seeking the source and origin of biological material. This provision will go a long way in avoiding the turmeric and neem type disputes for India. The best solution is to possibly include it, not as a requirement of the application, but as falling within the criterion of anticipation and obviousness within the Patent Rules. 5. Compulsory Lice nsing: Chapter XVI of the Patent Act provides for Licensing: compulsory licensing - as a necessary safeguard for protecting the public interest. Three years after a patent is sealed, any interested party can allege that the invention is not reasonably available to the public and can request the grant of a compulsory license. 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.
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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, thereby removing a presumption that requirements of the public are satisfied based on local manufacture. 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, etc. (and local manufacture is not one such criterion). Interestingly, under Section 84, 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. Similarly, in Section 89, the bill introduces non-working in India as a specific criterion for the revocation of the patent. Section 90(c), which provides non-working in India under certain circumstances as a ground for imposing a compulsory license, has not been revoked. This is envisioned as a balancing mechanism, but there is a likelihood of it being interpreted as violating the right of the patent holder to import as established under Art. 27 and Art. 28 of TRIPS. Article 27.1 of TRIPS provides 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. 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. It is also interesting to note that several countries including the Honduras, Argentina, Brazil (which has several types of compulsory licenses, including for lack of local working, national emergency, dependent patents, public interest and abuse of the rights) and China have incorporated provision relating to compulsory licensing. 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. The foreign multinationals, however, are skeptical that once the product patent regime comes into place the Government could potentially misuse the same. It would be prudent to wait and watch the Governments use of the provision before assuming the worst. After all, more than 80% of the patents owned in India are owned by foreign multinationals. It is a fact that local manufacturing in India, where labor and raw materials are cheap, will go a long way in reducing cost of the product.
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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. Similarly, where the patent holder imposes a condition for a grant back, prevention of challenges to the validity of the patent is deemed to be against public interest. This is a very welcome provision and is absolutely required considering that the bargaining power of an individual or company, compared with a patent holder, is always less. The bill provides for an appeal before an Appellate Board, on decisions of the Controller, including a grant of a compulsory license. Section 95A, as introduced in the bill, also provides for revocation of the compulsory by the Controller himself if the circumstances that gave raise to it ceases to exist. 1. 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, thus favoring local manufacturing. After the second amendment almost all of the restrictions on the need for local manufacturing had been removed. Hence there was a need to ensure the accessibility of products in all ranges of cost for the Indian consumers. Therefore, 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. Thus it opens the market more for foreign companies. India debated on whether to include this provision specifically or whether there was a concept of exhaustion that is, the patent holder does not have any control over a buyer or a licensee once the product has been out in the market. 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. This argument would completely beat the object of TRIPS and to some extent patents itself. The Indian Government considered the argument of exhaustion applies and allowing cheaper parallel imports. 45 However, 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.
45 This is very similar to the expressions of Prof Correa of Brazil. See generally, Carlos Correa, Intellectual Property, the WTO and Developing Countries : The TRIPS Agreement and policy options, 80-84 (Third World Network, 2000)
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G. Bolar Provision: The United States permits testing to establish the bio equivalency of drugs the expiration of the term of the patent.46 One the other hand, stock piling before the expiry of the term of the patent is prohibited. A similar provision is sought to be introduced under Section 107A of the second Amendment Bill, 1999.47 The multinational companies48 have sought the inclusion of the following: a) inclusion of the data exclusivity provision detailed under article 39.3 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. a right to obtain an injunction for acts not directly linked to production. It is notable that in India, under the Civil Procedure code it is possible to get an injunction as a relief for such acts. 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. Restoration of the term of patent lost due to delays in obtaining the original regulatory approval. 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. 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, 1984. 47 Section 107A:- .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, Report on the proposed Y2K changes to the Indian Patent Act, 1970, (November 16, 2000), (Copy on file with the author).
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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.
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c) d)
e) f)
g) h)
i) j) k)
l)
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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
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withdrawal of application by applicant any time before grant has been introduced. Time for putting the application in order for acceptance U/S 21 has now been reduced from 15/18 months to 12 months. 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; b. Anticipation having regard to the knowledge oral or otherwise available with in local or indigenous community in India or elsewhere. c. Section 39 in modified form prohibiting filing patent application outside India, inventions limited to the fields of defence purposes or atomic energy has been reintroduced. d. Opposition Proceedings U/S 25 have been simplified and shortened, fixing hearing is not compulsory, if the applicant does not file reply statement and evidence, application will be deemed to have been abandoned. e. Provision for extension of time up to 6 months for paying the overdue renewal fees initially i.e. renewal fees, which have become due, 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. f. Fees required to be paid on documents can now be paid within 1 month from its date of filing. Provision for allowing Paris Convention Priority has been extended to group or union of countries or inter governmental organizations, therefore, 12 month priority will also be available to applications filed in EPO, AIRPO, OAPI and EAPO.
Patent (Amendment) Act 2005 Salient Features53

1. In the definition of what are not inventions, the amendment now says Mere new use for a known substance is not an 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.1
1
53
. Amendment of section 3.In section 3 of the principal Act, for clause (d), the 3. following shall be substituted, 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
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2.
3. 4.
A computer program per se is not patentable but its technical application to industry or a combination with hardware is patentable. The scope of patentability of a computer program has now been widened and is more or less on lines with US Patent grant.2 A mathematical method or business method or algorithms are not patentable. The provision prohibiting product patent for food, medicine, drug and chemical processes has been removed. In India with effect from 1st January 2005 product patent is available for medicine, drug, chemical processes and food. This is the most important amendment introduced by the new Ordinance. Product patent regime in respect of drug, medicine, food and chemical processes is implemented in India.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, machine or apparatus unless such known process results in a new product or employs at least one new reactant. Explanation.For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;. 2 3(K) a mathematical or business method or a computer program perse or algorithms. Computer program product is claimed as A computer program product in computer readable medium, A computer-readable storage medium having a program recorded thereon, etc. In such cases the claims are treated as relating to software perse, irrespective of the medium of its storage and are not held patentable. Examples in respect of other categories of subject matter are Scheme or method of bookkeeping. Business method in the field of accounting. Method of tax collection. 3 Omission of section 5.Section 5 of the principal Act shall be omitted- original act - 5. Inventions where only methods or processes of manufacture read as Chapter IIpatentable (1) In the case of inventions- (a) claiming substances intended for use, or capable of being used, as food or as medicine or drug, or (b) relating to substances prepared or produced by chemical processes (including alloys, optical glass, semiconductors and inter-metallic compounds), no patent shall be granted in respect of claims for the substances them selves, but claims for the methods or processes of manufacture shall be patentable. [(2) Notwithstanding anything contained in subsection (1), a claim for patent of an invention for a substance itself intended for use, or capable of being used, as medicine or drug, except the medicine or drug specified under sub-clause (v) of clause (1) of sub-section (1) of section 2, may be made and shall be dealt, without prejudice to the other provisions of this Act, in the manner provided in Chapter IVA.]
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5.
If a patent application is accompanied by a provisional specification, the complete specification should be filed within 12 months of filing of the application. Otherwise the application shall be deemed to be abandoned.4 A patent application shall be examined only on a request in prescribed manner. Without a request the patent applications would not be examined as a matter of routine as it was prior to the year 2003.5 Provisions relating to Exclusive Marketing Rights (EMR EMR) have been EMR removed. 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. As product patents can now be granted for Drugs, medicines, food, and chemical processes the EMR provision has become redundant and has been repealed.
Amendment of section 9.In section 9 of the principal Act, (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, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.; 5 Amendment of section 11A.In section 11A of the principal Act, sub section(2) The applicant may, in the prescribed manner, 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), the Controller shall publish such application as soon as possible 6 Substitution of new sections for sections 25 and 26.For sections 25 and 26 of the principal Act, the following sections shall be substituted, namely:25. Opposition to the patent.(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, 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, 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), the Controller shall notify the patentee. (b) On receipt of such notice of opposition, the Controller shall, by order in writing, 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. (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
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8.
When a patent has been published but has not been granted, any person can make a representation to the Controller of Patents requesting him to refuse the application on the ground of lack of novelty, inventive steps, and industrial applicability. The Controller shall consider such representation and dispose it off. The person making the representation is not a party to the proceeding. 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, any person interested may give notice of opposition to the Controller.6 Only after grant of patent the application, specification and documents related thereto are opened for public inspection.
9.
10. 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. To avail of this provision, the applicant should satisfy two conditions viz. (a) The country to which export has to be made has insufficient or no facility to manufacture. (b) The recipient country should grant compulsory license for import and sale of the drug.7
Opposition Board and after giving the patentee and the opponent an opportunity of being heard, the Controller shall order either to maintain or to amend or to revoke the 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 not take into account any personal document or secret trial or secret use. 7 Insertion of new section 92A.After section 92 of the principal Act, the following section shall be inserted, namely:92A. Compulsory licence for export of patented pharmaceutical products in certain exceptional circumstances.(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, provided compulsory licence has been granted by such country or such country has, by notification or otherwise, allowed importation of the patented pharmaceutical products from India. (2) The Controller shall, on receipt of an application in the prescribed manner, grant a compulsory licence solely for manufacture and export of the concerned
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11. The Act also provides for appeal from the order of decision of the Controller to Intellectual Property Appellate Board (IPAB). The power of revocation is also conferred with IPAB.8
pharmaceutical product to such country under such terms and conditions as may be specified and published by him. (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. Explanation. For the purposes of this section, pharmaceutical products means any patented product, or product manufactured through a patented process, 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.. 8 Substitution of new section for section 117G.For section 117G of the principal Act [as inserted by the Patents (Amendment) Act, 2002 (38 of 2002)], the following section shall be substituted, namely: 117G. Transfer of pending proceedings to Appellate Board.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, 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.
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CHAPTER- 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. Applications for a patent can be made by the true and the first inventor, or their assignees54 or legal representatives55. 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. Every patent application has two important aspects that will decide the fate of the application. These are Specification and Claims. The specification clause originates from Section 4 of the Patents Act, 1949 of United Kingdom. The Patents Act provides that every application shall contain a specification57 the specification can either be a provisional or a complete specification58. Provisional specification: A provisional specification is a document drawn in a prescribed format. It contains a
54 Proof of such assignment is required to be submitted by virtue of Rule 11 of the Patents Rule, 1972 within a maximum period of three months from the date of the application. 55 Section 6 of the Patents Act, 1970 56 Section 2(1)(y) of the Patents Act, 1970 57 Section 7(3) of the Patents Act, 1970. 58 A provisional specification gives the mere description of the nature of the invention and its intended manner of working. This can be submitted after the inventor is ready with a prototype.
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PROCEDURE FOR PATENT APPLICATION
description of the essential features of the invention. It does not include claims and description of manner of performing the invention. It is notable that in a first to file system like India the date of application for the patent becomes important. If two inventors file patent application for the same invention, then the one whose application has the earlier date has the advantage of being awarded the patent. Therefore it is very important to file the application as soon as possible. The provisional specification facilitates this. The date of filing the provisional specification becomes the date of the application. 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. A provisional specification should be drawn in Form 2 of the Rules. This application will contain a description of the nature of the invention. The title to the provisional specification should give a fair detail of area of science the application will deal with. The object of the invention and a statement of the actual invention need to set forth in the provisional specification. The most important aspect is that when a complete specification is files, the provisional specification should with reasonable certainty relate to the same invention. However, 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. Complete Specification: After filing a provisional specification, 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. 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 which is known to the applicant, and c) end with claim or claims defining the scope of the invention. The courts have held that the construction of a specification is a matter of law, therefore, it is within the courts domain to properly construe the
59 Section 9(1) of the Patents Act, 1970.
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specification60. The Delhi High Court, in 1978, 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. 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. 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...61 This approach is similar to the American approach, however, in Indian law there are no additional guidelines to supplement this rule of interpretation. 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. Needless to say, specification construction in India is therefore very subjective and unlimited. Claims: All complete specifications end with claims. The Act demands that the claims shall relate to a single invention. The requirement of a claim seems is fairly based on the matter disclosed in the specification.62 The object of claims are to: 1. 2. State with precision the detail of the invention define the exact scope of the invention. This will enable a narrow invention to be patentable later Example, a claim for a folding chair should clearly so specify the features of a chair and limit the claim to chairs that fold. This will enable inventor No 2 to patent a revolving chair or may be a non-folding chair. to clearly set the limits of the claim. This is interrelated to the above concept. In the above example, if chairs already exist, and if inventor No 1 is the first inventor if just the folding quality of the
3.
60 Lallubhai Chakbhai v. Chinamanlal Chunilal, A.I.R 1936 Bom 99. 61 Raj Prakash v. Mangath Ram, A.I.R. 1978 Delhi 1 62 Section 11(2)(b) of the Patents Act, 1970
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chair, then the claims should set the limitation properly. This will keep all chairs other than the folding chairs within the public domain. That is, this inventor does not have exclusive rights over that chair. At the same time, it will encourage other inventors to find newer forms of chair say a cushion chair, revolving chair, floating chair and so on. 4. Claims can be narrow or broad based on the invention. A narrow claim is one that sets the limitations clearly. In the above example, a claim language is said to be narrow if it limits the patent to a folding chair only. The claim will be a broad claim if it tries to cover all chairs. Though on a plain reading a broad claim seems to cover everything and seems like it is more desirable, in reality it is not. For example, inventor A gets a patent on all chairs be drafting a broad claim and later inventor B invents a new muscle massaging chair. The inventor B will also get a patent over the chair with a limitation that it should have a muscle massaging feature. Thus a later inventor narrows the scope of the claim of the earlier inventor. Thus the first inventor will slowly see that other narrow claims will result in him losing the exclusivity in his market. Therefore narrow claims are preferred.
The Bombay High Court detailed that the claim and the specification should be read together to understand the invention63. 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, if any and show the nature of the invention64. However, the Delhi high court in 1978 held that the title of the invention claimed has little consequence in controlling the claim65. Notably, 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. The Supreme Court of India
63 64 65 66 See supra note 63 Ram Narain Kher v. Ambassador Industries, A.I.R. 1976 Delhi 87 See supra note 64 Press Metal Corporation v. Noshir Shorabji, A.I.R. 1983 Bombay 144.
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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. 67 A comparison to the American system reveals that claim construction is the heart and the soul of the American patent system. Claims in the United States reflect the proprietary technological rights set forth by the patentee.68 35 U.S.C Section 112 provides the relevant statutory guidance. Apart from Section 112, the USPTO has strict policies governing over proper claim drafting. The American courts measure the scope of the patent protection from a careful reading of the language of the claims. Sophistication in claim draftsmanship is a mark of a sophisticated of the patent system, which is a direct result of increased applications for patents.
Section 10. Contents of specifications

(1) Every specification, whether provisional of complete, shall describe the invention and shall begin with a title sufficiently indicating the subject matter to which the invention relates. Subject to any rules that may be made in this behalf under this Act, drawings may, and shall, if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so supplied shall, unless the Controller otherwise directs be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly. If, in any particular case, 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, such model or sample as he may require shall be furnished before the application is found in order for grant of a patent, but such model or sample shall not be deemed to form part of the specification. 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. Radhey Shyam Industries, (1979) 2 SCC 511 68 Martin J. Adelman et al., Cases and Materials on Patent Law 1 (1998)
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which is known to the applicant and for which he is entitled to claim protection; and (c) end with a claim or claims defining the scope of the invention for which protection is claimed; (d) be accompanied by an abstract to provide technical information on the invention: Provided that; (i) the Controller may amend the abstract for providing better information to third parties; 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), and if such material is not available to the public, the application shall be completed by depositing the material to an international depository authority under the Budapest Treaty and by fulfilling the following conditions, 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, address of the depository institution and the date and number of the deposit of the material at the institution; (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; (D) disclose the source and geographical origin of the biological material in the specification, when used in an invention. (4-A) In case of an international application designating India, the title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of this Act. (5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification. A declaration as to the inventorship of the invention shall, in such cases as may be prescribed, be furnished in the prescribed form with the complete specification or within such period as may be prescribed after the filing of that specification,
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(6)
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(7)
Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification, 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.
Rule 13. Specifications.(1) (2) Every specification, whether provisional or complete, shall be made in Form 2. 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. A specification in respect of a patent of addition under section 54 shall contain a specific reference to the number of the main patent, or the application for the main patent, as the case may be, and a definite statement that the invention comprises an improvement in, or a modification of, the invention claimed in the specification of the main patent granted or applied for. Where the invention requires explanation through drawings, such drawings shall be prepared in accordance with the provisions of rule 15 and shall be supplied with, and referred to in detail, in the specification: Provided that in the case of a complete specification, 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, it shall be sufficient to refer to them in the complete specification as those left with the provisional specification. Irrelevant or other matter, not necessary, in the opinion of the Controller, for elucidation of the invention, shall be excluded from the title, description, claims and drawings. 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, shall be filed in Form 5 with the
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(3)
(4)
(5)
(6)
complete specification or at any time before the expiration of one month from the date of filing of the complete specification, as the Controller may allow on an application made in Form 4. Explanation,For the purposes of this rule, 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. (7) (a) The abstract as specified under clause (d) of sub-section (4) of section 10, accompanying the specification shall commence with the title of the invention. The title of the invention shall disclose the specific features of the invention normally in not more than fifteen words. (b) The abstract shall contain a concise summary of the matter contained in the specification. The summary shall indicate clearly the technical field to which the invention belongs, technical problem to which the invention relates and the solution to the problem through the invention and principal use or uses of the invention. Where necessary, the abstract shall contain the chemical formula, which characterises the invention. (c) The abstract may not contain more than one hundred and fifty words. (d) If the specification contains any drawing, the applicant shall indicate on the abstract the figure, or exceptionally, the figures of the drawings which may accompany the abstract when published. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by the reference sign used in that drawing. (e) The abstract shall be so drafted that it constitutes an efficient instrument for the purposes of searching in the particular technical field, in particular by making it possible to assess whether there is a need to consult the specification itself. 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.
(8)
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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. to drawings, 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, the application is allotted by the controller to specific examiners to see whether a patent should issue. 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, characteristics of the technology or the invention. 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. If the nature of the invention is changed the inventor cannot get the advantage of the provisional specification. This is called the Fairly Based principle. The examiner allotted by the controller
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determines the procedural validity and compliances before proceeding to check the claims. This stage of the application is termed the examination. Then a prior art search covering publications in India and abroad is then conducted.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, whichever is earlier. 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, or one month from the date of request for publication under rule 24A. 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.2,500/- for natural person(s) and Rs.10,000 for legal entity [other than natural person(s))], the application will be published within one month from the date of filing of such request.
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. (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, 1970 read with Rules 21 to 23 of the Patent Rules, 1972
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manner and within the prescribed period by the applicant or any other interested person. (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 shall be treated as withdrawn by the applicant: Provided that(i) the applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in the prescribed manner; and (ii) in a case where secrecy direction has been issued under section 35, the request for examination may be made within the prescribed period from the date of revocation of the secrecy direction.
Section 12: Examination of application;

(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, 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; (b) whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application; (c) the result of investigations made under section 13; and 145 (d) any other matter which may be prescribed. (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.
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Rule 24 B: Examination of application.

(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, whichever is earlier; (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, or forty-eight months from the date of filing of the application; (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, or within six months from the date of revocation of the secrecy direction, whichever is later; (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, whichever is later; (ii) The period for making request for examination under section 11B, of the applications filed before the 1st day of January, 2005 shall be the period specified under the section 11B before the commencement of the Patents (Amendment) Act, 2005 or the period specified under these rules, whichever expires 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). (ii) The period within which the examiner shall make the report under sub-section (2) of section 12, shall ordinarily be one month but not exceeding
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three months from the date of reference of the application to him by the Controller; (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. (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. In case other interested person files the request for examination, an intimation of such examination may be sent to such interested person. (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. Opposition: In India, any person can oppose the grant of the patent within six months from the date of notification of the acceptance of the complete specification. A notice of opposition needs to be filed in the appropriate office within six months. The 2005 amendment changed the pre-grant system incorporating both pre grant and post grant opposition. 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. The American patent system envisages a post grant opposition called the re-issue and the re-examination. 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.70 One the one hand, 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. Recently, China amended its laws and replaced pre grant opposition with post grant revocation, this change allowed applicants to obtain their patent rights more quickly by
70 Hewlett Packard Co v. Bausch and Lomb Inc, 882 F.2d 1556.
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speeding up the examination procedure. India should consider adopting a post-grant procedure.71 In India, there are several grounds for opposing a patent. Some of the most important grounds are: a. That the applicant has wrongfully obtained the patent from the person opposing the application b. The invention is already known to a person skilled in the art (obviousness) c. The invention has been in public use in India d. The claims do not relate to an invention within the ambit of the Act e. The best mode is not disclosed in the complete specification. Best mode is a very important requirement in across the world. 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. This is because after the expiry of the term of the patent (that is after the inventor loses his exclusivity and monopoly rights), the public should be able to work the patent. Therefore the inventor ought to have disclosed the best method of making. This requirement is called the enablement requirement in the US. That is unless the patent application reveals the best mode of making, the application is not enabled for the public. Therefore the application will fail. There are several ways to determining the best mode of making in India as well as in the US. Applications for P atents under the PCT : Any country that has signed the Patents PCT: PCT is termed as the convention country . India is one such convention country. country for filing the PCT applications. 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 . PCT applications are complicated country. and merely technical. It is purely an area for law practitioners to handle. Therefore the following is a mere gist of the PCT . PCT.
71 Lehman, Lee & Xu, Comments on Amendments of Patent Law, China Virtual Intellectual Property Law Newsletter, (September, 2000), at http://www.lalawfirm.com.cn
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However , for Indian scientists when they make a new invention that can However, be ground breaking internationally , (even if it is a improvement over the internationally, old invention), it is best to make a PCT application covering India, Europe and sometimes even the US if the cost is not too formidable. However , However, since US will insist on following the national procedure (after the application reaches the national stage), it is also best to designate countries like Singapore that will accept the international search and immediately award a patent. Several countries are members of the PCT. In the earlier system an applicant has to designate the countries where it should be applied. But with the recent changes in PCT all themembe countries are automatically designtated. PCT applications are filed in India in the competent office. The competent office for filing a PCT application In India is the Patent Office, Calcutta, and its branch Offices at new Delhi, Bombay, Madras. A PCT application will contain the following: 1. A request under Art 4 of the PCT. In this request the applicant will have to designate contracting states or state where he seeks patent protection. These states are called the designated states. Where there are regional conventions like the European Patent Convention, entire Europe can be made as one designation. An application with such a designation will be centrally processed under the European Patent Convention. This has the advantage of avoiding the national stage in each of the European countries. Also, when the applicant get a patent, the patent will be valid for all countries that are members of the European Convention. description of the invention claims abstract of the invention Drawings (where applicable) Fees
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2. 3. 4. 5. 6.
7.
Claiming priority. 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. The PCT application may claim priority under the Paris Convention. This means that if the inventor had made a national application earlier that date can be considered as the filing date for PCT. Since an earlier date is likely to be considered this is called priority date. For Indians this means that you can file a simple provisional application in India as the inventor is reasonably ready. That gives the inventor another 12 months to continue with the invention before he can file PCT application. (This is because 12 months is the latest period given to file the complete specification. Otherwise the provisional specification will lose the priority date in the Indian patent office). A PCT application thus filed later 12 months can bear the priority date from the date of filing the provisional application in India. This is a very important advantage. If no such priority is claimed, then the date for the PCT application will begin with the international filing date.
Normally 4 copies are required to be filed. 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, 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, if the applicant opts for an international preliminary examination. Then the application enters the national phase. This means that the formal requirements of each state needs to be met and national fees need to be paid. Different countries also have different levels of accepting the PCT preliminary examination report. After this stage, the application proceeds into domestic laws.
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The most important issue in the PCT application is the fee. Fees become due and payable at two stages. One is at the receiving office. That is, for India these fees are payable at Calcutta or the regional offices at Madras, Bombay or New Delhi. These offices collect the following fees: 1. ee: This is retained by the office in India. These include Transmittal f fee: the fee for preparing certified copy of priority document and transmission of the same to the international bureau. Search F ee: This is transferred to the international searching Fee: authority. Depending on the searching authority the fee varies from USD 100 to USD 800. 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. International F ees: There are two kinds of international fees Fees: collected by the receiving office in India. These are called the Basic fees and Designation fees fees. Both these fees are transferred to the international bureau.. However, in case the patent application exceeds 30 pages, an additional fee is levied for each additional page that needs to be processed.
2.
3.
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. This is termed as a Demand and is optional. If such a preliminary examination is sought by designating a country, 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. That way there are more chances of getting the patent in the country or designated state. For example, if Europe as a whole is designated in the PCT-application, the International Preliminary Examination Report that is already available may favorably influence the granting procedure of the European patent application. The fees for these can be anywhere between USD 100 to 1000 depending on several factors like which country is being designated. These fees are known as handling fees and preliminary examination fee. These fees are also reduced by 75% for Indian nationals residing in India.
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The most important aspect to bear in a PCT application is the following: 1. A PCT-application as such will never mature into a patent, but it provides some extra time for making a commercially sound decision as to whether foreign patent protection should be sought. PCT application has the advantage of extension of the priority year by 8 to 18 months, so providing more time for the inventor to decide as to whether or not the inventor needs to file foreign patent applications. The International Preliminary Examination Report (optional and can be sought by filing a Demand), which may smoothen the granting procedure in most cases.
2.
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CHAPTER IV PATENT LICENSING

Licensing could very well be the most lucrative way to make a living today. At its basics, licensing is the selling of intellectual property to a person or business that wishes to produce it for a profit. The intellectual property could be a patent, copyright, or trademark. This chapter deals with patent licensing. Licensing started with Disneys creation of Mickey Mouse some 70 years ago. As the character took off in popularity a businessman who wanted to put the character on 10,000 wooden pencil boxes paid for permission to do so. Thus, licensing was born. This is an example of trademark and copyright licensing. Since then, there has been all sorts of products with the Disney characters on them, from shirts to lunch boxes. In all of these items Disney receives 15% of the wholesale price of anything depicting its characters. They dont need to manage all sorts of factories, worry about payroll to all of its employees, find distributors, nothing. After the manufacturer does all of the work, Disney receives the 15% royalty, which equates to more than 50% of the profit for each transaction. The biggest advantage of this is that the inventor can make more money from an invention without having to worry about business needs. This is an especially good feature of scientists. The need to run a factory successfully and acquiring financing, business management skills, an understanding of cash flow, strong marketing schemes, etc will be eliminated.
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When the patent is licensed, manufacturers will pay the inventor/owner. Businesses need to manufacture products that will sell, and since the market is changing so often, businesses always need new ideas. Hence when an inventor enhances their businesses, they can demand the manufacturer to provide a fair royalty percentage. 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. Some of these criteria are the inventions impact on society, profitability, competition, and potential market. These criteria are sometimes as high as 50 to 60 different aspects. 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, the specific competitive advantages or disadvantages, establishing Unique Selling Position etc. Indian companies and Indian licensees are not yet suave into this. Once the TRIPS agenda starts coming into play foreign competition will make us enter and excel in these aspects of inventions as well.
Elements of Patent Licensing

Licensing is an important aspect of getting the benefit from the patents. This generates significant revenue stream for many semiconductor and electronics firms in last two decades of the twentieth century. Foreign business and patents owners use this to their benefit very successfully. Indian companies typically lack the funding or the know how to start their own patent licensing campaign. 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. There are three elements to do successful patent licensing. These are: 1. 2. Licensing Management Technical Experts: They become important for getting the patent as well as for licensing the patent. A technical person first looks at the patent and then examines the prior art for the invention. They then detail the aspects that are different in technology from the prior art.
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Then they detail the use and advantage of the new feature. Once these issues are sorted and the patent is obtained, the technical people are necessary to write the technical details of the patent for the interested licensors. 3. Legal Experts: Along with the technical experts, the legal experts are also important for getting the patent as well as for licensing the patent. Before getting patent protection the legal experts discuss the technology with the technical expert to understand the development in technology. It is important for the legal expert to be clear where the new invention differs from the prior art in the technology. Then the legal expert adequately prepares the claim and limits the claim to the particularities of the invention. After the invention has been patented, during the stage of licensing the interaction between legal and technical experts become all the more important. One of the big issues that Indian companies do is undermining the importance of one or both experts. Similarly, it is also a common problem for lawyers to ignore the importance of technical experts and vice-versa. 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. The lawyer has to draft the agreement keeping in mind the technical contours of the patent. Technical people attempting to write the agreement are another common mistake in India. These are the agreements that foreign companies with well trained lawyers will infringe. While drafting licensing agreements, foreign companies hire legal experts. The drafter also knows the exact areas where the contract may be infringed and keeps his team ready for any consequences. Once a contract is drafted, the licensee will also allow his expert lawyers to see the agreement. The licensees lawyers tells them where the agreement is flawed enough to allow infringement, what are the consequences they may face if they over step the limit of the contract, the expenses they are likely to face if the case goes to the court and the gains that they are likely to receive. Thus both sides are aware and are ready to face every consequence. Indian companies typically are technologically strong but will tend to save money at the crucial juncture of drafting the
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agreements. The Indian agreements therefore are a big source of revenue for foreign companies, which use such loopholes to their maximum. Blaming them later will not lead us everywhere. Especially since we are technically strong, 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. Complementary factors of production include manufacturing and distribution facilities, workforces, and other items of intellectual property. The owner of intellectual property has to arrange for its combination with other necessary factors to realize its commercial value. Often, the owner finds it most efficient to contract with others for these factors, to sell rights to the intellectual property, or to enter into a joint venture arrangement for its development, rather than supplying these complementary factors itself. Licensing, cross-licensing, or otherwise transferring intellectual property can facilitate integration of the licensed property with complementary factors of production. This integration can lead to more efficient exploitation of the intellectual property, benefiting consumers through the reduction of costs and the introduction of new products. Such arrangements increase the value of intellectual property to consumers and to the developers of the technology. By potentially increasing the expected returns from intellectual property, licensing also can increase the incentive for its creation and thus promote greater investment in research and development. Sometimes the use of one item of intellectual property requires access to another. An item of intellectual property blocks another when the second cannot be practiced without using the first. For example, on improvement on a patented machine can be blocked by the patent on the machine. Licensing may promote the coordinated development of technologies that are in a blocking relationship. Field-of-use, territorial, 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. These various forms of
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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. The restrictions may do so, for example, by protecting the licensee against free riding on the licensees investments by other licensees or by the licensor. They may also increase the licensors incentive to license, for example, by protecting the licensor from competition in the licensors own technology in a market niche that it prefers to keep to itself. These benefits of licensing restrictions apply to patent, copyright, and trade secret licensees, and to know-how agreements.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, copyrighted software program for inventory management. The program has wide application in the health field. ComputerCo licenses the program in an arrangement that imposes both field of use an territorial limitations. Soime of ComputerCos licenses permit use only in hospitals; others permit use only in group medical practices. ComputerCo charges different royalties for the different uses. All of ComputerCoss licenses permit use only in specified portions of the United States and in specified foreign countries. The licenses contain no provisions that would prevent or discourage licensees from developing, using, or selling any other program, or from competing in any other good or service other than in the use of the licensed program. None of the licensees are actual for likely potential competitors of ComputerCo in the sale of inventory management programs.
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. Such harm could occur if, for example, the licenses anticompetitively foreclose access to competing technologies (in this case, most likely competing computer
72 see http://www.usdoj.gov/atr/public/guidelines/ipguide.htm
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programs), prevent licensees from developing their own competing technologies (again, in this case, most likely computer programs), or facilitate market allocation or price-fixing for any product or service supplied by the licensees. (See section 3.1.) If the license agreements contained such provision, the Agency evaluating the arrangement would analyze its likely competitive effects as described in parts 3-5 of these Guidelines. In this hypothetical, 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. The Agency therefore would be unlikely to object to this arrangement. Based on these facts, the result of the antitrust analysis would be the same whether the technology was protected by patent, copyright or trade secret. The Agencys conclusion as to likely competitive effects could differ if, for example, the license barred licensees from using any other inventory management program.73 There are at least 9 advantages for licensing that Nicholas Gikkas identifies in his paper on international licensing. The following are the nine advantages: 1. Licensing adds the resources of the licensee to those of the licensor. By granting the licensee the right to market and distribute the licensors product, the licensor can penetrate market it could not hope to serve. For example, in licensing Microsofts disk operating system software (MS-DOS) to IBM, Microsoft obtained the benefit of IBMs global sales, marketing, and distribution systems. This is especially true for Indian businesses. Second, licensing broadens geographic markets. Most product6s going into foreign countries require some form of adaptation: labels and instructions must be translated; goods may require modification to conform with local laws and regulations; and marketing may have to be adjusted. Third, licensing broadens product markets. A firm may have the resources to exploit its intellectual property through only one
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73 Id
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product, but the intellectual property may be applicable to other products or services. For example, producers of movies and television shows do not usually have the resources to mass produce and distribute video tapes. The producers will license their intellectual property, the copyright, to firms that can make master video tapes, manufacture the copies, and distribute the cassettes. 4. Fourth, if a firm has insufficient capital or personnel to enter a market quickly, delegating through licensing speeds up the process. For example, 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. Fifth, some products sell best when they are incorporated or sold for use with another product. For example, software is best supplied with the hardware rather than as an optional package. Microsofts MS-DOS became the industry standard operating system as the IBM-PC became the industry standard microcomputer. Third party software companies had to write for an MS-DOS environment to gather the greatest market share for their product, which further increased the market penetration of MS-DOS. Sixth, a company may license at the request of a firm in a noncompeting field. Licensing for this purpose works best when the licensor has no interest in exploiting the intellectual property in the noncompeting field. 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. If the licensees market is too close to the licensors market, undesired competition may be created. Seventh, licensing is one way for a firm to barter for technology it would otherwise have to pay for. A licensor may barter for the licensees improvements to the intellectual property. Improvements to the intellectual property are granted back to the licensor. Another technology barter scheme is cross-licensing. Cross65
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licensing occurs when two competing firms with different research and development strengths can take advantage of the others progress. Cross-licensing creates the same sort of synergy as a joint venture without the inconvenience and delay of setting up joint operations. 8. Eighth, when the licensors trademark is licensed for use in the market along with the intellectual property, then the licensees marketing efforts benefit the licensors reputation and goodwill (as long as the licensee maintains quality in product, service, and sales). For example, AT&T, new to the mass computer market, gained positive publicity for its UNIX operating system which it licensed it to computer makers. And finally, licensing may allow a firm to achieve some degree of control over its own innovations and also over the direction of the industry. For example, if Microsoft did not allow MS-DOS to be licensed, IBM would probably have developed an operating system on its own which might have been very different from MSDOS and taken away MS-DOSs place in the operating systems market.
9.
Modalities of the Agreement

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

Name Address of the inventor, Name of the owner of the patent (individual or company)
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Address of the owner of the patent (individual or company) Name of the company organization applying for the license. Address and registered office of the company or organization applying for the license. The interested partys citizenship or if it a company whether it is a foreign company and what is the status of the company. The companys place of incorporation
4. The name, address, and telephone number of the applicants representative with whom future correspondence should be exchanged. The representative should have authority to conduct licensing negotiations. 5. A description of the nature and the type of applicants business. 6. 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. 7. A commercialization plan showing the steps proposed to develop the technology into a viable product. This section should include, but not be limited to:
A statement indicating the applicants capability and commitment to fulfill this plan to achieve a successful commercial product. This statement shall include information pertaining to the applicants manufacturing, marketing, financial, and technical resources. The applicants latest annual report including a balance sheet, income statement, and an auditors note should be provided. A statement of the nature and amount of anticipated investment of capital, and other resources the applicant believes will be necessary to bring the invention to market. This statement should include identified targeted markets and their size, projected growth rates, and the applicants estimated market shares. A five-year projected income statement should also be provided. The projected income statement should include, as a minimum, expected sales, cost of goods sold, and operating costs.
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A timeline, description or chart of key steps or milestones the applicant believes will be required to bring the invention to practical application. 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. A statement of the field(s) of use in which the applicant intends to apply the technology. 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. Identification of the role of inventor and the owner of the patent. Will technical consultation, research, design, or other engineering assistance be required? A clear definition of anticipated facility and/or personnel requirements should be detailed.
8. A statement of previous licenses or agreements to be detailed. 9. A statement, containing the applicants best knowledge, describing the extent to which the invention is being practiced by private industry, the Government, or both, or is otherwise available commercially. 10. Any other information, such as project management approach, laboratory and manufacturing capabilities/facilities, and technical knowhow, which the applicant feels will support their selection as a commercial partner. 11. The other most important aspect to bear in mind is the royalty. Advance in royalty fees: This means that when negotiations are made, 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. If the product bearing the patent does not sell enough, still the inventor gets his money. 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.
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12. Normally, a Yearly minimum royalty is also given to the inventor from the licensee for usually the first 3-5 years of the license agreement. The sum gets larger every year to allow for the licensee to manufacture and distribute your invention. Also, it provides the inventor with insurance that the licensee will seek to develop the invention and not just let it sit dormant. In India letting the invention dormant may also result in compulsory licensing by the government. 13. Insurance covering the inventor: Normally the Indian companies do not follow this. But after liberalization if Indian inventors seek to license their products to foreign manufacturers this is strongly advised. This is an agreement that the licensee will, at their cost, buy an insurance policy covering the inventor for 1,000,000 rupees or dollars in damages and send the inventor a certificate which shows that they are on the policy. 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 sum can be lesser in India as Indian courts tend to award less damages. 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. 14. Litigation costs covered by the licensee: This means that if the licensee withholds any royalties from the inventor, the inventor has the right to acquire them through litigation at the licensees cost. Also, if there are defects in the products, 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.
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CHAPTER-V PATENT SEARCH

Patent Office in India
The manner of functioning of the Patent offices including the office procedure of the patent office, the staff, the lack of qualified examiners 74 (is controlled by the Central Government and function under the direction of the Controller).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. The delay in the Indian system is attributed to the backlog caused due to the examiners workload.76 Hence a two pronged strategy to: a) strengthen the Patent information system resources, and b) the patent Enforcement Mechanisms was sought to be implemented. The Government of India with WIPO and UNDP has provided 1.22 million for setting up of the Office of the Patent Information System in 1980. The issue of modernization of the patent office is included in the Ninth Five Year Plan. The new five year plan initiatives to include and improve a) Human Resources, b) Infrastructure, 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. 75 Section 74(2) of the Patents Act, 1970. 76 Memorandum from the Confederation of Indian Industry on First Interactive Session on Indian Patent law - Approaches: Enforcement Issues (June 28, 1999) (on file with the Confederation of Indian Industry).
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d) Elimination of the backlog. 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.
International Patent Classification

The International Patent Classification, which is most often referred to as the IPC, has now existed for 25 years and is the only truly worldwide classification system for technical information. The system was not developed from scratch but was based on an already existing classification system, the International Classification of Patents for Invention, which had been elaborated under the auspices of the Council of Europe, in Strasbourg, during the years 1954 to 1965. The Council of Europes Committee of Experts on Patents, which was entrusted with studies on the harmonization of national laws and formalities, in 1951 set up a Classification Working Party with the task of elaborating an international patent classification system. A system combining functionoriented principles (according to the intrinsic nature or function of a process, product or apparatus, independent of its field of application) and applicationoriented principles (according to the particular use or application of a process, product or apparatus) was contemplated. On account of several issue, 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. 1. 2. 3. 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, in establishing translations of the Classification into languages which were not official languages of the Council of Europe.
Finally, on March 24, 1971, the Strasbourg (IPC) Agreement Concerning the International Patent Classification, was adopted.
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Administration of the IPC:

The administration of the IPC, which mainly means the revision of the Classification and its further development, has over the years undergone substantial changes, as a result of both organizational alterations and modified working methods in the International Bureau of WIPO. Introduction of Indexing Schemes: In December 1979, the IPC Committee of Experts decided thatwhen a specific technical field of the IPC could not be further developed by using conventional classification techniquesin order to improve the effectiveness of the IPC as a search tool, the classifying entries of that field could be supplemented by indexing entries, which should be presented in an indexing scheme. A technical subject classified into such a field of the IPC could, if appropriate, also be indexed. The indexing entries permit indexing of aspects of the technical subject that cannot be classified, for example, a technical subject classified according to its intrinsic nature may be indexed according to its application. The IPC:CLASS CD-ROM: In May 1992, WIPO published the first edition of the IPC:CLASS CD-ROM. It was not merely the publication of the current version of the IPC on this new type of data carrier, but the publication of a complete search system for the IPC, intended mainly for the user who is not very familiar with the IPC. The second edition of IPC:CLASS, published in September 1994, contains all six IPC editions in English as well as catchword indexes and revision concordance data. 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. The indexing system of the IPC will be dealt with in the appropriate international conventions module.
Patent Search: Patent searching Importance:

Patent search is one of the important tools for information. This helps decide weather to see if the inventions made is already in the public domain
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or is patentable. Search can be made either manually or electronically. Each of these searches has it sown advantages and disadvantages. The main advantage of manual search is Confidentiality. However, in order to do a manual search, one needs a collection of foreign and other journals and manuals. To that extent this can be strenuous. 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. For example, if you are trying to search whether an ink pen is patented, even if a pen has already been patented, you can get a patent for the nib of the pen if it can write in a different manner (say lithographic writing, thinner writing, thicker writing, a nib that can adjust its writing.. and more). So never give up. 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. The European patent applications since 1978 European patents issued by the EPO since 1980; PCT patent applications since 1978; 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. It is easier to use and normally has either country wide or world wide information. For example, US patents issued from 1790 to the present are available in the USPTO Search Rooms in paper and in image microfilm. The following are available as CD- ROMS:

USPS: Bibliographic data of the United States patents since 1975; Espace-Access: Bibliographic data of the European patent applications since 1978; CASSIS CD-ROM products by the USPTO: Patents Bib, Patents Assist, Patents Class, Patents Snap and Patents Assign;
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PAJ: Bibliographic data of the Japanese patent applications Since 1976; GLOBALPAT: Patent family and bibliographic data of the patent since 1978 for several countries and treaties (PCT, EPO, GB, DE, FR, CH and US).
Note that even the Indian Government has a CD-ROM details of which can be obtained from NISSAT. Other than these are several web sites that provide the patent search. Each of these web sites have different features that are user friendly. Some are cost effective some are more equipped with prior art material etc. 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. Most of these sites can be accessed by typing in patent search, or something similar in the google site. The details and categories of search and indexing are dealt with while dealing with the Strasbourg Convention.
Patent Search
A patent search involves searching different databases to see if your idea has already been patented, to know if you can patent your idea. The results of a good patent search should reveal any identical, similar, or partially similar inventions to the one you might patent. As a bonus, 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. They may be in the market to license patents in your field of invention - more about this later. You have to do (or hire someone else to do) a patent search before investing in the cost of patenting. Even if you hire someone else to do the patent search for you and that is highly recommended for beginners - do a preliminary search yourself and bring that research to the intellectual property
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attorney or agent that you hire. Doing so will save you money, plus provide the other benefits mentioned above.77
How to search-Key points

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

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relevant to the search. They include important search notes and suggestions for further search. 10. Patents BIB (CD-ROM, WEST) - Check if you are on the right path; search Patents BIB (1969 - ) or WEST (1971- ) for a particular class/subclass; retrieve results and examine titles. 11. Try other relevant classes/subclasses. Revise your search by using applicable keywords; note the classes and subclasses and go back to step 8. 12. Patents CLASS (CD-ROM or WEST) - Once relevant class (Es)/ subclass (Es) are identified, obtain a list of all patent numbers (1790-present) granted for every class and subclass to be searched. 13. Official Gazette - 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. 14. Complete Patent Document (microfilm, paper, CD-ROM, WEST, or USPTO web; years of coverage vary) Search the complete text and drawing(s) of closely related patents to determine how different they are from the invention.
Dos and Donts of Search

1. Use an attorney, agent or independent research company when quality becomes more important. Keep your own search results and compare them to the professional search. Professional searches can come with a formal written opinion or simply be copies of the prior art found in the search. Ask how the search will be done, what databases will be used. Sign a non-disclosure agreement before hiring a professional. Watch out for invention scams. Not every reference librarian in each PTDL library will be skilled in patent searching. Ask before you make an appointment.
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Check classification numbers associated with each patent you examine. 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.78
Contents of Patent Documents

Patent documents are published in fairly standard format and structure by patent offices all over the world. In general, the format and information contents of patent documents are as follows:
Bibliographic data - providing bibliographic information on the granted patent or patent application, which includes the document number, filing and publication dates, name of the patentee(s) and addresses, etc. A description, in most cases including drawings - disclosing clearly the technical details of the invention concerned, normally illustrated by working examples showing how to carry out the invention into practice. A claim or claims-defining the scope of protection for the invention under consideration; hence satisfying the legal aspect of the patent document. An abstract (may be accompanied by a drawing) - giving a concise summary of the technology of the invention.
An example of patent document is shown in Annex I i.e. US-A 5,372,018. In the first or front page of the patent document, there are the bibliographic data about the patented invention i.e. the title of the invention, name of the inventor, name of the applicant, date of application, and date of grant and so on. There is also an abstract that contains an illustrative drawing of the invention. Take note that each element of the bibliographic data is associated with a 2-digit number or code, e.g. country of issue (19), patent number (11). These numbers are related to the Handbook on Industrial Property
78 ii Ibid
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Information published by WIPO. The above-mentioned handbook has many recommendations on the publication of patent documents, one of which concerns bibliographic data. 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. The recommendation on bibliographic data covers a list of approximately 60 distinct titles widely used on the front page of patent documents. They are identified through code numbers, known as the INID code or Internationally agreed Numbers for the Identification of Data. The INID code numbers, given in a small circle or between brackets are placed before the relevant bibliographic data element. After the front page, we can find the main body of the patent document, which is sometimes called the patent specification. Generally, 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.g. a device for preventing theft of a vehicle. An assessment on the prior art in the technical field or background of the invention. A technical discussion of the problem or problems which the invention intends to solve.
A description of the invention in sufficient detail with reference to one or more working embodiments, as required by the law for a skilled person to be able to practice the invention. Drawing(s) relating to the working embodiments to assist the understanding of the invention mentioned in the description.
In the example given, the patent document further includes the claims of the invention, which are placed after the above-mentioned specification of the same document. The claims of patent documents have an important legal function i.e. to define the scope of protection for the inventions
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concerned. They differentiate The prior art from the new technology as defined by the inventions and hence, constitute the legal aspect of patent documents.79
79 iii Extracted from WIPO regional training course on Intellectual property for developing countries of Asia and the pacific - Document prepared by Mr. Lee Yuke Chin, General Manager, Malaysian Technology Consultants, SDN. BHD, Malaysia
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List of Books
1. Conventions against super 301: Patents regime - Indian experience and options available / B. K. Keayle, New Delhi: National Working Groups on Patent Laws, 1990. Patent system and related issues at a glance / New Delhi: National Working Group on Patent Law, 1990. Third world patent convention / New Delhi: National Working Group on Patent Laws, 1990. Cases and materials on patent law / Martin J Adelman et al. New York: West Publishing Co., 1998. How to protect computer programs (A case history of the first pure software patent) / Pal Asija. Allahabad: Law Publishers (India) Pvt.Ltd., 1983. A treatise on the law of patentability, validity and infringement / Donald S Chisum. - Vol. I-XIV: New York: Lexis Publishing, 2000. Patent law review - 1976 / Ed. by Thomas E Costner - New York: Clark Boardman Co., 1976. Cases and materials on patent law including secrets, copyrights trademarks / William Francis. - 4th Ed. - New York: West Publishing Co., 1995. Protecting and exploiting new technology and designs /Keith Hodkinson. - London: E & F N Spon, 1987. Patent law / P Narayanan. - 2nd. Ed. - Calcutta: Eastern Law House, 1985.
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6.
7. 8.
9. 10.
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11. 12. 13.
Industrial design law in Australia and New Zealand / Kanwal K Puri. - Sydney: Butterworths, 1986. A practical guide to patent law / Brain C Reid. - 2nd Ed. - London: Sweet & Maxwell, 1993. The new world trade organization agreements: Globalizing law through services and intellectual property / Christopher Arup. - Cambridge: Cambridge University Press, 2000. World Trade Organisation: An Indian perspective / Jayunta Bagchi. - Calcutta: Eastern Law House, 2000. Intellectual property and international trade: The TRIPS agreements / Ed. by Carlos M Correa and Abdulqawi A Yusuf. - London: Kluwer Law International, 1998. International intellectual property law and policy. Vol. I / Hugh C Hansen. London: Sweet & Maxwell, 1996. A course book in international intellectual property / Doris Estelle Long and Anthony DAmato. - St.Paul, Minn.: West Publishing Co., 2000. International intellectual property and the common law world / Ed. by Charles E F Rickett and W Austin Graeme. - Oxford: Hart Publishing, 2000. Asian regional colloquium on the judiciary and intellectual property system / P M Bakshi. New Delhi: World Intellectual Property Organisation, 1992. Intellectual property and ethics. Vol.4 / Ed. By Lionel Bently and Spyros Maniatis . - London: Sweet & Maxwell, 1998. The patents and trademarks cases digest 1981-1997 / Sandeep Bhalla. Delhi: Patents & Trade Mark, 1997. Intellectual property aspects of ethno biology / Ed. by Michael Blakeney. London: Sweet & Maxwell, 1999. Guide to the application of the Paris convention for the protection of industrial property as revised at Stockholm in 1967 / G H C Bodenhausen . - Geneva: UNBIRPI, 1991. Dunkel proposals. Vol.II: Implications for India and the third world / N K Chowdhury and J C Aggarwal. - Delhi: Shipra Publications, 1994.
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14. 15.
16. 17. 18. 19. 20. 21. 22. 23.
24.
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25. 26. 27. 28. 29. 30.
Intellectual property / W R Cornish. - 2nd Ed. - London: Sweet & Maxwell, 1989. Intellectual property rights in agricultural biotechnology / Ed. by F H Erbisch and K M Maredia. - Hyderabad: Universities Press (India) Ltd., 1998. Intellectual property and criminal law / N S Gopalakrishnan. - Bangalore: National Law School of India University, 1994. Indian law of patents and designs / K K Gujral. - New Delhi, 1971. Intellectual property law of East Asia / Ed. by Alan S Gutterman and Robert Brown. - Hongkong: Sweet & Maxwell, 1997. 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. - New Delhi: Centre for Study of Global Trade System & Development, 1996. Harmonisation of intellectual property in Europe. Vol.3: A case study of patent procedure / Philip Leith Ed. by Candler Adrian. - London: Sweet & Maxwell, 1998. Intellectual property in the new technological age / Robert P Merges, Peter S Menell and Mark A Lemley. - 2nd Ed. - Gaithersburg: Aspen Law & Business, 2000. Commercial exploitation of intellectual property /Hilary E Pearson and Clifford G Miller - London: Blackstone Press Pvt. Ltd., 1990. European intellectual property law / Terence Prime.- England: Ashgate Publishing Co, Ltd., 2000. Recolonization GATT, the Uruguay round and the third world / Chakravarthi Raghavan. - Penang (Malaysia): Third World Network, 1990. Intellectual property rights under WTO: Tasks before India / T Ramappa. New Delhi: Wheeler Publishing, 2000. The enclosure and recovery of the commons: Biodiversity, indigenous knowledge and intellectual property rights / Vandana Shiva, Afsar H Jafri and Gitanjali Bedi et. al. . - New Delhi: Research Foundation For Science, Technology & Ecology, 1997.
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31.
32.
33. 34. 35. 36. 37.
REFERENCE MATERIALS
38. 39.
Law shop on intellectual property regime for pharma Industry / Ed. by V C Vivekanandan. - Bangalore: National Law School of India University, 1999. Licensing guide, 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, 1977. Supreme Court on trademarks, copyright, patents and designs 1950 - 1999 / P K Mittal and O P Chadha. - Delhi: Om Law Book House, 2000. Patenting software under the European patent convention / Keith Beresford. - London: Sweet & Maxwell, 2000. The law of patents in a nutshell with act 39 of 1970 and rules of 1972 / Rustom R Dadachanji. - Bombay: Rustom R Dadachanji, 1973. Gearing up for patents : The Indian scenario / Prabuddha Ganguli.Hyderabad: Universities Press (India ) Ltd., 1998. Indian patents law [ As Amended by Patents (amendement) act 1999] / D P Mittal - New Delhi: Taxmann Allied Services (P) Ltd., 1999. Indian patent system and Paris Convention: Legal perspectives / Ed. by P S Sangal and Kishore Singh - Allahabad: Wadhwa & Co., 1987. The seed keepers / Vandana Shiva - New Delhi: Navdanya, 1995. Captive minds, captive lives: Essay on ethical and sociological implications of patents on life / Vandana Shiva - Dehra Dun: Research Foundation for Science Technology, 1995. The encyclopedia of forms and precedents Vol. B 12-21: Consumer credit to intellectual property / Ed. By Peter Millett. - 5th Ed. - London: Butterworths, 1996. The encyclopedia of forms and precedents Vol. XXI (1): Intellectual property, patent, technology transfer and licensing, IP taxing / Ed. by Peter Millet. 5th Ed. - London: Butterworths, 1997.
40. 41. 42. 43. 44. 45. 46. 47.
48.
49.
List of Articles
1. Spranger, Tade Matthias - Ethical aspects of patenting human genotypes according to EC biotechnology directive. International Review of Industrial Property and Co. No., 0. p.373-379.
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Merwe, Andries Van Der - Experimental use and submission of data for regulatory approval. International Review of Industrial Property and Co. Vol.31, No.04, 2000. p.380-388. A rule-based war : Dr.Masheekars message, Patent, publish and prosper. Manushi. No.04, July-Aug, 2000. p.3-12. Khera, Harpal Kaur - Patents and sui generis system for protection of plant varieties: A threat to food security and health care. Central India Law Quarterly. Vol.13, No.02, April-June, 2000. p.182-196. Vasudeva, P K- Patenting biotech products: Complex issues. Economic and Political Weekly. Vol.35, No.42, 14th Oct 2000. p.3726-3728. Vasudeva, P K - EU-Canada patents row: How does it affect India? Economic and Political Weekly. Vol.35, No.19, 6th May, 2000. p.1616-1618. Iwasaka, Ryan M T - From Chakrabarthy to Chimeras: The growing need for evolutionary biology in patent law. Yale Law Journal. Vol.109, No.06, April 2000. p.1505-1515. Koshy, Shinoj - Patents and the pharmaceutical sector. Lawyers Collective. Vol.15, No.05, May, 2000. p.11-12. Polse, Jennifer-Holding the sovereign universities accountable for patent infringement after Florida prepaid and college savings Bank. California Law Review. Vol.89, No.02, March, 2001. p.507- 536. Cohen, Julie E and Lemley, Mark A - Patent scope and innovation in the software industry. California Law Review. Vol.89, No.01, Jan, 2001. p.1-58. Manoj, V - Patents on Life, India and the TRIPS Mandate. Economic and Political Weekly. Vol.33, No.4, 1998. p.152-154. Singh, Kavaljit - Patents versus patients : AIDS, TNCs and drug price wars. Mainstream. Vol.39, No.24, 2nd June, 2001. p.15-19. Smith, William C. - Patents this! ABA Journal. Vol.87, No.03, March, 2001. p.48-57. Suthersane, Uma - Incremental inventions in Europe : A legal and economic appraisal of second tier patents. Journal of Business Law. No.03, July, 2001. p.319-343. Wells, Matthew G - Internet business method patent policy. Virginia Law Review. Vol.87, No.04, June, 2001. p.729-780.
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5. 6. 7.
8. 9.
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11. 12. 13. 14.
15.
ANNEXURE I CASE 1:
M/S. BISHW ANT PRASAD RADHE Y BISHWANT RADHEY SHY AM V. 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, dated January 18, 1966, of a Division Bench of the High Court of Allahabad. The facts material to these appeals may be set out as under: M/s Hindustan Metal Industries respondent herein, (hereinafter called the plaintiff) is a registered partnership firm carrying on the business of manufacturing brass and German silver utensils at Mirzapur. M/s Biswanath Prasad Radhey Shyam, appellant herein, (hereinafter called the defendant) is a concern carrying on the business of manufacturing dishes and utensils in Mirzapur. On August 8, 1953, the plaintiff instituted a suit for injunction and damages, preceded by a notice served on the defendant on September 9, 1952, in the defendant on September 9, 1952 in the Court of the District Judge, Allahabad, within whose jurisdiction Mirzapur is situated, with these allegations. The old method of manufacturing utensils, particularly shallow dishes, was to turn scrap and polish them on some sort of headstock, a tailstock without the utensil either being
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fixed to the headstock by thermoplastic cement or held in the jaws of a chuck fixed to the headstock. This system was however fraught with risk to the workers inasmuch as the utensils used to fly off from the headstock. Consequently with a view to introduce improvement, convenience, speed, safety and better finish, Parsottam Dass, one of the partner of the plaintiff firm, invented a device and method for the manufacture of utensils, in 1951. The plaintiff after filing the necessary specifications and claims in the Patent Office, got the alleged invention patented under the Indian Patents and Designs Act, 1911 (hereinafter called the Act), at No.4636851 on May 6, 1953 with effect from December 13, 1951 as assignee of the said patent. By virtue of this patent the plaintiff acquired the sole and exclusive right of using this methods and means for the manufacture of utensils. In September 1952, the plaintiff learnt that the defendant was using and employing the device and method of manufacturing dishes under the formers patent. The plaintiff served a notice upon the defendant asking him to desist from infringing the plaintiffs patent, but the defendant continued to infringe the patent. On the preceding facts, the plaintiff prayed for a permanent injunction restraining the defendant from adopting, imitating, employing or in any manner infringing the device of the plaintiffs patent. The plaintiff further prayed for a mandatory injunction requiring the defendant to destroy the articles used for the infringement of its patent. The plaintiff further claimed a decree for Rs.3,000/ as damages. The defendant resisted the suit on various grounds, out of those which are material for the decision of these appeals are: that the defendants firm is an old concern carrying on the manufacture of metal wares since long: that the method covered by the plaintiffs patent namely, that of a lathe (headstock, adapter and tailstock) has been known and openly and commonly in use in the commercial world all over the country for several decades before the plaintiffs patent; that the alleged invention of the plaintiff was not on the date of the patent, a manner of new manufacture or improvement, nor did it involve any inventive step or ingenuity having regard to what was known or used prior to the date of the patent; and that the patent has no utility and therefore it was liable to be revoked.
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The defendant also filed a counterclaim, praying for revocation of the patent on the same grounds which he had set out in the written statement. On October 13, 1953, the defendant along with three other business concerns filed a petition under S. 26, of the Act for revocation of the patent that had been granted to M/s Hindustan Metal Industries, Mirzapur on the same grounds which were raised in his counterclaim in the suit for injunction and damages. The plaintiffs suit along with the counterclaim of the defendant was transferred to the High Court under S. 29 (Proviso) of the Act. Both the suits were consolidated and tried together by a learned Single Judge (V.G. Oak, J.). Issues were framed and evidence were led by the parties. The findings, material for our purpose, 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. The work of turning or scraping utensils of various designs has been going on at Mirzapur and other places for many years before 1951. The changes introduced by the patentee in En. CC are of a minor nature. The alleged invention was not on the date of the patent, a manner of new manufacture or improvement. It did not involve any novelty. The defendant had publicly manufactured goods before the date of the patent substantially according to the method claimed by the patentee as its invention. 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, the learned Judge dismissed the plaintiffs suit (No.3 of 1955), but allowed the petition for revocation (in suit No.2 of 1954) with costs and revoked the Patent (No. 4636851) that had been issued to the plaintiff. Aggrieved the plaintiff preferred two Special Appeals to a Division Bench of the High Court. The Appellate Bench held as under:
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(1)
That, formerly, 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, they used to fly off, causing injuries to the workmen. 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. That, in 1951, the plaintiff invented the method of mounting which has been patented. That, immediately after this the work of manufacturing plates and dishes restarted at Mirzapur and was carried on with success. 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, to which a tailstock has been put were centering the article, holding along work by a pointed tailstock by pivoting it and holding an article in metal spinning by the pressure of a pad attached to tailstock. That the method of holding an article by the pressure of a point of a pointed tailstock was neither used nor known.
(2)
(3) (4) (5)
(6)
(7)
On these findings the Appellate Bench concluded: In our opinion, the method of mounting patented by the appellant did involve an inventive step and was a manner of new manufacture and improvement. In the result, it allowed the appeals, set aside the judgment and decree of the learned trial Judge and decreed the plaintiff suit with costs. Mr. Asthana, learned counsel, for the appellant has canvassed these points: (i) (ii) The method and means claimed by the respondent in Patent No.4636851 did not involve any inventive step or novelty. The Appellate Bench of the High Court was in error in holding that the supporting of an article in a lathe by the pressure of the point of a pointed tailstock constituted the novelty of the invention, inasmuch as
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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. (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, contradicted itself in concluding that holding an article by the pressure of a pointed tailstock was neither used nor known. The High Court thus made out a new case for the plaintiff, which had not been alleged either in the specifications in the subject of the patent or in the pleading. The alleged inventor Purushottam Dass, though he attended the Court on some dates of hearing did not dare to appear in the witness box, nor was he called as a witness in the case by the plaintiff to explain in what way if at all the method and means patented by the plaintiff was a novelty or involved an incentive step. The failure to examine Purushottam Dass, who was a partner of the plaintiff firm, would give rise to an inference adverse to the plaintiff.
(iv)
As against this Mr. Mehta, appearing for the respondent submits that whether the process got patented by the respondent involves a method of new manufacture of improvement is one purely of fact, and should not, as a matter of practice, be disturbed by this Court. Even in cases of doubt proceeds the argument the Court should uphold the patent. It is submitted that a patent is granted by the Controller after due inquiry and publication and unless the contrary is proved, should be, presumed to have been duly granted. In the instant case, it is urged, that presumption is stronger because the trial Judge as well as the Appellate Bench of the High Court have concurrently held that the process patented had utility. Before dealing with these contentions let us have a general idea of the object the relevant provisions and the scheme of the Act. The object of Patent law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates
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new inventions of commercial utility. The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, after the expiry of the fixed period of the monopoly, passes into the public domain. The fundamental principle of Patent Law is that a patent is granted only for an invention which must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of a patent that it must be inventors own discovery as opposed to mere verification of what was already known before the date of the patent. Invention means any manner of new manufacture and includes an improvement and an allied invention. (S. 2(8) of 1911) Act). It is to be noted that unlike the Patents Act 1970 the Act of 1911 does not specify the requirement of being useful in the definition of invention. But Courts have always taken the view that a patentable invention, apart from being a new manufacture must also be useful. The foundation for this judicial interpretation is to be found in the fact that S. 26 (1) (f) of the 1911 Act recognised lack of utility as one of the grounds on which a patent can be revoked .... It is important to bear in mind that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an inventive step. To be patentable the improvement or the combination must produce a new result or a new article or a better or of old than before. The combination article known integers may be combined that by their working interrelation they produce a new process or improved result. Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent. It is not enough, said LORD DAVEY in Rickmann v. Thierry (189614 RPC 105 (HL), that the purpose is new or that there is novelty in the application so that the article produced is in that sense new, but there must be novelty in the mode of application. By that I understand that in adopting the old contrivance to the new purpose there must be difficulties to be overcome requiring what is called invention, or there may be some ingenuity in the mode of making the adoption. As Cotton L.J. put in Balkey and Co. v Lathe, and Co. (1889) 6 RPC 184 (CA) to be new in the patent sense the novelty must show invention. In other
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words in order to be patentable the new subject matter must involve invention over what is old. Determination of this question which in reality is a crucial test, has been one of the most difficult aspects of patent law, and has led to considerable conflict of judicial opinions .... Whether an alleged invention involves novelty and an inventive step is a mixed question of law and fact, depending largely on the circumstances of the case. Although no absolute test uniformly applicable in all circumstances can be devised, certain broad criteria can be indicated, whether the manner of manufacture patented, was publicly known, used and practiced in the country before or at the date of the patent. If the answer to this question is yes, it will negative novelty or subject matter. Prior public knowledge of the alleged invention which would disqualify the grant of a patent can be by word of mouth or by publication through books or other media. If the public once becomes possessed of an invention, says Hindmarch on Patents (quoted with approval by Fry L.J in Humpherson v. Syer (1887-4 RPC 407) by any means whatsoever, no subsequent patent for it can be granted either to the true or first inventor himself or any other person; for the public cannot be deprived of the right to use the invention ....the public already possessing everything that he could give. The expression does not involve any inventive step used in S.26 (1) (e) of the Act and its equivalent word obvious, have acquired special significance in the terminology of Patent Law. The obviousness has to be strictly and objectively judged. For the determination several forms of the question have been suggested. The one suggested by Salond L.J. in Rado v. John Tye and Son Ltd., (1967) RPC 297, is apposite. It is: Whether the alleged discovery lies so much out of the Track of what was known before as not naturally to suggest itself to a person thinking on the subject, it must not be the obvious or natural suggestion of what was previously known. Another test of whether a document is a publication which would negative existence of novelty or an inventive step is suggested, as under. Head the document been placed in the hands of a competent draftsman (or engineer as distinguished from a mere artisan), endowed with the common
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general knowledge at the priority date, who was faced with the problem solved by the patentee but without knowledge of the patent invention, would he have said, this gives me what I want (Encyclopedia Britanica; ibid). To put it in another form:was it for practical purposes obvious to a skilled worker in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned Halsbury 3rd Edn., Vol. 29, p.42 referred to by Vimadaial J. of Bombay High Court in Farbwerke Hoecinst and B. Corporation v. Unichem Laboratories (AIR 1969 Bom 255). After referring to the procedure to be followed the court added.... It is noteworthy that the grant and sealing of the patent, or the decision rendered by the Controller in the case of opposition does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in revocation or infringement proceedings. It is pertinent to note that this position viz., the validity of a patent is not guaranteed by the grant is now expressly provided in S. 13(4) of the Patents Act, 1970. In the light of this principle, Mr. Mehtas argument that there is a presumption in favour of the validity of the patent cannot be accepted.... Although the defendant had both in his defence and in the counterclaim for revocation of the patent pleaded six grounds mentioned in Clauses (d), (e), (f), (g), (i) and (b) of S. 26 (1), yet, in this appeal before us the controversy has narrowed down into two issues:(i) Whether the patent was not at the date of the patent, a manner of new manufacture or improvement; (ii) whether the invention does not involve any inventive step, having regard to what was known or used prior to the date of the patent. At the trial M/s. 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. On the other hand the patentee firm, M/s. Hindustan Metal Industries, examined 4 witnesses to prove that the work of scrapping and polishing of utensils formerly done at Mirzapur, was on crude machines and that the machine (Ex. CC) developed by the patentee is a distinct improvement over the machines of the old type.
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The learned trial Judge, after a careful appraisal of the evidence produced by the parties, found that the following facts have been established: I. II. III. IV. V. VI. The manufacture of utensils is an old industry at Mirzapur and at other places in U.P . and other parts of India; Lathe is a well-known mechanism used for spinning and a number of other processes; Adapters were in use for holding turnably articles () of suitable sizes for holding plates and dishes, also, were in use before 1951; The tailstock was probably used in this industry before 1951; No bracket or angle, as used in the defendants machine (Ex. CC) appears to have been used in this industry before 1951; Work on plates and dishes was suspended at Mirzapur for a few years before 1951.
The trial Judge then found that mere addition of a bracket did not amount to a novelty. He further observed that Circumstance VI was of a 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 might well be due to labour trouble as the witnesses examined by the appellant had deposed. From circumstance I, II, III and IV, inspection of the machines (Ex. CC and Ex. XVI), produced by the appellant and the other material on record, the trial court found both the issues, set out above, against the patentee firm. We have ourselves examined the evidence on record with the aid of the learned counsel for the parties, and have ourselves compared the machines (Ex. CC and Ex. XVI),which were produced before us. We do not want to rehash the evidence. Suffice it to say, we do not find that any piece of evidence has been misread, overlooked or omitted from consideration. The view taken by the trial Court was quite reasonable and entitled to, due weight. In our opinion, it did not suffer from any infirmity or serious flaw which would have warranted interference by the Appellate Bench. Be that as it may, from the discussion that follows, the conclusion is inescapable that the invention got patented by M/s. Hindustan Metal
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Industries respondent herein, was neither a manner of new manufacture nor a distinctive improvement on the old contrivance, involving any novelty or inventive step having regard to what was already known and 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. In the provisional specification, 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. The title of the patent mentioned in the complete specification is as under; Means for holding utensils for turning purposes. Then follows a description of the old method of manufacture, and it is stated: This invention relates to means for mounting metallic utensils for the purpose of turning the same before polishing and deals particularly, though not exclusively, with utensils of 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. Thereafter, the new method of manufacture is described with reference to three figures or sketches. The crucial part of this specification runs as below: According to a preferred feature of this invention the pressure end of the pressure spindle is rotatably mounted and for this purpose it comprises an independent piece engaged by a hollowed end in a spindle, said hollowed end being preferably fitted with ball bearings to enable the said independent piece to revolve with friction when it is in contactual relationship with the utensil. This independent piece may have a forward pointed end or said forward end may be a blunt end, the pointed end or the blunt end as the case may be, being firmly held against the utensil. The blunt end may, e.g. be of 1 cm in diameter. (Emphasis added)
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Then, at the foot of the complete specification 9 claims are set out which read as under: 1. 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. The utensil being maintained in held position by an independent pressure on the utensil when seated on the adapter. 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, the inner end of the spindle pressing against the utensil, means being provided to set and lock the pressure spindle in any desired position. Means as claimed in Claims 1 and 2 in which the pressure end of the pressure spindle is rotatably 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. Means as claimed in previous claims in which the pressing or inner end of the pressure spindle is pointed or blunt. 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. Means as claimed in Claims 1, 2 & 3 in which the pressing end of the spindle may be fixed end or a revolving end. Means as claimed in Claim 1 in which the adapter is shaped to suit the utensil. Means as claimed in Claim 1 in which the adapter is made of wood or any other material. Means for holding the utensil for the purpose herein set forth and substantially as described and illustrated and utensils so turned.
2.
3.
4. 5.
6. 7. 8. 9.
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As pointed out in Arnold v. Bradbury, (1871) 6 Ch A 706, the proper way to construe a specification is not to read the claims first and then see what the full description of the invention is but first to read the description of the invention, in order that the mind may be prepared for what it is, that the invention in order that mind may be prepared for what it is, that the invention is to be claimed, for the patentee cannot claim more than he desires to patent. In Parkinson v. Simon, (1894) 1) RPC 463 (CA), Lord Esher M.R. enumerated that as far as possible the claims must be construed as to give an effective meaning to each of them, but the specification and the claims must be looked at and construed together. The learned trial Judge precisely followed this method of construction. He first construed and considered the description of the invention in the provisional and complete specifications and then dealt with each of the claims, individually. Thereafter, he considered the claims and specifications as a whole, in the light of the evidence on record. With regard to Claim No. 1, the learned Judge commented: The pressure spindle in a lathe is a well known contrivance. Pressure spindle or a tailstock was in use in this industry much before 1951. So neither the means for mounting and holding metallic utensil nor the independent pressure spindle can be said to be an invention. In Claims 3, 4, 6 and 7 also, he found no novelty or inventive step having regard to the fact that these were well known and were in use long before 1951. Regarding Claim No.5 he found that the use of the bracket was new but the end bracket can hardly be said to be an invention. The learned trial Judge then noted that Purshottam who was stated to be the inventor, and as such was the best person to describe the invention, did not appear in the witness-box, though, as admitted by Sotam Singh (DW 3). Purshottam had attended on some dates of hearing. Sotam Singh tried to explain Purshottams disappearance from the Court without appearing in the witness box by saying that he had gone away due to illness. The learned Judge found this 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 Purshottams attendance. Apart
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from being the best informed person about the matter in issue, Purshottam was not a stranger. He was a partner of the patentee-firm and a brother of Sotam Singh (DW 3). 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, what research, if any, he made this alleged discovery. Being a partner of the respondent firm, and personally knowing all the circumstances of the case, it was his duty as well as of the respondent-firm, to examine him as a witness so that the story of the particular invention being a new manufacture or improvement involving novelty could, in all its aspects be subjected to cross-examination. By keeping Purshottam away from the witness-box, the respondent-firm, therefore, took the heavy risk of the trial Court accepting the charge of lack of novelty made by the appellant herein. The trial Judge further noted that the witnesses examined by the patentee firm had given a garbled account as to the patented invention. The witness were speaking with discordant voices as to the alleged inventive step involved in the patent. Mata Parshad (DW 2) stated the invention lies in fixing the Charhi on the pointer on the same iron base. In variance with it, Sotam Singh (DW 3) said that his patent covers three factors - the side supporting iron plate, the pointer with the nut, and the adapter. In this connection, we may add that Lakshmi Dass (DW 1) another witness examined by the patentee-firm, had admitted that machines like Ex. XVI (which was the machine produced by Bhagwati Prasad and was alleged by the patentee to be an imitation of the patented one) were in use even before 1951-52. After a critical appraisal of the evidence produced by the parties, the learned trial Judge found that manufacturers in the industry have been using adapters of various sizes and shapes to suit the article handled; that tailstock or pointer was also in use; that it was a common practice to fix the headstock and tailstock permanently to a single framework. In regard to the use of the bracket or angle in Ex-CC, the learned Judge held that although it was new, it was not a new idea, and tailstock to a common base (as the case in the machine Ex. XVI produced by Bhagwati Prasad) or fixing the tailstock in a bracket which is connected with the framework on which the headstock is fixed. Whether we consider Ex. CC as a whole or look at the invention in its separate parts, we do not find any novelty in the alleged invention.
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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, not does it involve any inventive step having regard to what was known or used prior to the date of patent, should not have been lightly disturbed by the Appellate Bench. These were, as already observed, largely findings of fact, based on appreciation of the evidence of witnesses and the trial Court had the initial advantage of observing their demeanour in the witness-box. Moreover, the approach adopted by the trial Court was quite in conformity with the basic principles on the subject, noticed in an earlier part of this judgment. The patented machine is merely an application of an old invention, known for decades before 1951, for the traditional purpose of scraping and turning utensils, with a slight change in the mode of application, which is no more than a workshop improvement, a normal development of an existing manner of manufacture not involving something novel which would be outside the probable capacity of a craftsman. The alleged discovery does not lie outside the Track of what was known before. It would have been obvious to any skilled worker in the field, in the state of knowledge existing at the date of patent, of what was publicly known or practiced before about this process, that the claim in question viz., mere addition of a lever and bracket did not make the invention the subject of the claim concerned. There has been no substantial exercise of the inventive power of innovative faculty. There is no evidence that the patented machine is the result of any research, independent thought, ingenuity and skill. Indeed, Sotam Singh frankly admitted that he did not know whether Purshottam had made any research or any experiments to produce this combination. Nor does this combination of old integers involve any novelty. Thus judged objectively, by the tests suggested by authorities, the patent in question lacked novelty and invention. We will close the discussion of trial Courts judgment by referring to a decision of the House of Lords in Harwood v. Great Northern Rly. Co. (186465) 11 HLC 654) as, in principle, that case is analogous to the one before us. In that case, a person took out a patent, which he thus described: My invention consists in forming a recess or groove in one or both sides of each fish (plate), so as to reduce the quantity of metal at that part, and to be adopted to receive the square heads of the bolts. which are thus prevented from turning round when the nuts are screwed on. His claim was for
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constructing fishes: and the application of such fishes for connecting the ends of railways in manner hereinbefore described. The constructing of fish joints for connecting the rails of railways with grooved fishes fitted to the sides of the rails, and screwed to them by bolts or nuts, or rivets, and having projecting wings firmly secured to and resting upon the sleepers or bearers, so as to support the rails by their sides and upper flanges. It was proved that before the date of his patent fish-joints had been used to connect and strengthen the rails of railways. In some cases, the fishes were flat pieces of iron with round holes for bolts, the heads of the bolts being held in their places by separate means. In others the extreme ends of the holes were made square and the bolt-heads square, to put into them, and, in some square recesses were made in the flat pieces of iron for the same purpose; but, till the time of the patent, fishes for connecting the railways had never been made with a groove in their lateral surfaces so as to receive the square heads of the bolts, and render the fish lighter for equal strength, or stronger for an equal strength, or stronger for an equal weight of metal. On these facts it was held that what was claimed as an invention was not a good ground to sustain a patent Blackburn L.J., succinctly summed up the rule of the decision, thus: In order to bring the subject-matter of a patent within this exception, there must be invention so applied as to produce a practical result. And we quite agree with the Court of Exchequer Chamber that a mere application of an old contrivance in the old way to an analogous subject, without any novelty or invention in the mode of applying such old contrivance to the new purpose, is not a valid subject-matter of a patent. The above enunciation squarely applies to the facts of the present case. We will now consider the judgment of the Appellate Bench, which it may be recalled, has found that the novelty and invention of the patent in the method of holding an article by the pressure of a point of a pointed tailstock (which) was neither used or known. This finding, if we may say so with respect, is inconsistent with the Appellate Benchs own Findings Nos. (5) and (6), the consolidated substance of which is to the effect, that lathe consisting of a headstock and a tailstock
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and its uses for centering the article, holding an article is metal spinning by the pressure of a pad attached to the tailstock, have been well known for a long time. Finding No. (7) of the Appellate Bench goes beyond the scope of the specifications and claims made by the patentee, himself, in the subject of the patent. From a perusal of the specifications and the claims, extracted earlier, it is evident that there is no assertion of novelty for the pointed tailstock; rather it is stated that the pressure spindle may be pointed or blunt. Furthermore, this finding of the Appellate Bench stands in contradiction to what Sotam Singh (DW 3) patentee himself has admitted in the witnessbox. In cross examination, Sotam Singh (DW 3) said: I am not using any other pointer than that of Ex. CC. I have not used any rotating pointer either at Benaras or at Mirzapur ..If anybody uses a wooden adapter in a chuck and does scraping work on a Katora in such a wooden chuck without a pointer, there would be no infringement of my patent .. I conducted no experiments before obtaining the patent. I do not know what kind of experiments Purshottam carried out. I have got no apparatus for scraping utensils except like Ex. CC. Sotam Singh further admitted that machines like Ex. XVI (the one which was produced by the appellant and is said to infringe the patent of the respondent firm) are sold in the market and one can purchase a pointer like Ex. XI in a lathe. In the face of the admissions of the representative of the patentee, it was not possible for the Court to work out Finding No. (7) on its own, without allowing itself to get into the unenviable position of appearing more Royalist than the King. We have ourselves examined and compared the machines (Ex. CC and Ex. XVI). We find that the tailstock in each of these machines has a blunt end of slightly above 1 cm. in diameter. It may be reemphasised that according to Sotam Singh himself, his patented machine has no other end of tailstock excepting of the (blunt) type in Ex. CC. For all the reasons aforesaid, we have no hesitation in holding that the learned Judges of the Appellate Bench were in error in reversing the findings of the trial Court on Issues I and 1-A. The learned trial Judge was right in holding that the patented machine was neither a manner of new manufacture or novel improvement nor did it involve any inventive step, having regard to what was publicly known or used prior to the date of the patent. The grant
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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.26 (1) of the Act. Before parting with this judgment we will like to dispose of another argument of Mr. Mehta. The argument is that since the Courts below have concurrently held that the invention had utility the patent should be sustained. We are unable to accept this contention. As pointed out already, the crucial test of the validity of a patent is whether it involves novelty and an inventive step. That test goes against the patentee. In the result, the appeals are allowed, the judgment of the Appellate Bench is set aside and that of the trial Court restored. In the peculiar circumstances of the case, the parties are left to bear their own costs throughout. Appeal Allowed
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CASE 2:
RAJ PRAKASH V. MANGAT RAM CHOUDHARY AND OTHERS

AIR 1978 Delhi 1 Justice Prakash Narain & Justice B. C. Misra:
This appeal is against the judgment of Learned Single Judge. The plaintiff/appellant produces and markets a toy called a viewer and patented. Defendants have infringed the patent. A counter claim for revocation of patent was put by defendants. Whether the appellant is the inventor and is it covered by patent Whether there can be counter claim by respondent. Is so can the patent be revoked According to Section 151 the plaintiffs has proved the breaches, whereas defendants have faced to prove their claim for revocation of the patents.
Held:
1. This first Appeal is directed against the Judgment of a learned Single Judge of this Court, who decided the Suit between the parties on the Original Sides of the High Court. The Appeal, preferred against the Judgment of the learned Single Judge delivered on December 15, 1972, was admitted on February 28, 1973. That Appeal came up for hearing before a Bench
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of this Court consisting of the Honourable Chief Justice Mr. Justice S. N. Andley and Justice Prakash Narayan. The Bench by its Order dated April 30, 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. The second Judgment in consequence of the remand Order was delivered on January 27, 1975. The matter thereafter came up before us. 2. The Plaintiff/Appellant produces and markets a toy called a viewer. This viewer uses a 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 Plaintiff obtained a patent bearing Number 111926 for what he calls his invention. We shall presently deal with the patent as granted to the Plaintiff in some detail. 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. It is the Plaintiffs 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. Cinematograph film in viewers in a manner which is identical viewers being manufactured and marketed by the Plaintiff. First Defendant is said to be the owner-proprietor of the Second Defendant Firm, and is alleged to be the main offender. The Third Defendant is stated to be agent of First Defendant and is only alleged to be selling and marketing the infringing viewers. The First and Second Defendants resisted the Suit but the Third Defendant did not put in appearance and was proceeded ex parte. 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. Cinematographic films. It was denied that the Defendants were manufacturers of the strip viewers. On the other hand it was contended that they were only sellers of film strip viewers and got, to quote from the Written Statement:
3.
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their film strips manufactured from different agencies for the last five years much before the alleged patent claim of the Plaintiff. 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. 4. 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. Similarly, 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, it was said, had been known as an ordinary process in photographic art for 50 years. In short, not only the invention claimed by the Plaintiff was disputed but also its worth or value. A counterclaim for revocation of the patent was put in by the First and Second Defendants. It was pleaded: that the Plaintiff was not the true and first inventor of the alleged invention; that the Defendants had been selling 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; that the alleged invention of no utility; that there were other producers of films strips claimed by the Plaintiff as his patent; that the patent was obtained by fraud etc.
5.
After the Plaintiff had filed a reply to the Written Statement, reiterating his case and statements before issues were recorded, a learned Single
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Judge of this Court, Justice V. D. Misra, settled the following issues: 1. Whether V. K. Singhal was the first inventor of the alleged invention covered by patent Number 111926 dated August 11, 1967 (O.P .D.) Is the invention covered by patent Number 111926 not a new manufacture in view of the sale by the Defendants (O.P .D.) Is the invention covered by patent Number 111926 of no utility (O.P .D.) Whether the invention was not at the date of the patent a manner of new manufacture and improvement (O.P .D.) Whether the Defendants have a locus standi to claim revocation of the patent by way of a counter-claim (O.P .D.) If Issue Number 5 is proved, whether the patent be revoked (O.P .D.)
2. 3. 4. 5. 6. 6.
The parties went to trial on the above issues. As noticed earlier, the Suit was disposed of by a learned Single Judge of this Court by his judgment dated December 15, 1972. The learned Single Judge partly upheld the patent of the Plaintiff but dismissed the Suit for infringement of the patent. 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, which is the essential feature of the Plaintiffs patent and the production of the film was done by the Plaintiff by masking. The Defendants, according to the learned Judge, did not use this process in manufacturing their films used in viewers marketed by them. The Suit for grant of injunction and claim of infringement was dismissed by the learned Single Judge because, according to him, there was no issue on that point. As noticed earlier, an additional issue was framed and the case remanded. This finding was recorded by the learned Single Judge by his judgment dated January 27, 1975. 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. Our learned brother once again went into the detailed specifications of the patent
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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. He did not claim any patent for a film strip viewer. He rejected an alleged claim made by the Plaintiff of patent in the viewers themselves. 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. 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. He again recorded a finding that there was no infringement by the Defendants. 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. 8. The patent that was granted to the Plaintiff on August 11, 1967 reads as under: Government of India THE PATENT OFFICE Number 111926 of 1967. WHEREAS Raj Prakash, of BI/154, Lajpat Nagar, New Delhi, 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, and that the same is not in use in India by any other person to the best of his knowledge, information and belief. And whereas he hath humbly prayed that a patent might be granted to him for the said invention; 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.
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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, subject to the provisions of the Indian Patents and Designs Act, 1911, as patentee(s) have the exclusive privilege of making, 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, 1967, 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. In witness whereof the Central Government has caused this patent to be sealed as of the 11th day of August, 1967. Sd/-S. Vedaraman Controller of Patents and Designs, Dated of sealing 14th March 1969/23 phn. 1890 (Saka) P & D 87. MGIPO-84-32 Patent/63-12-5-64-1,000 Renewal fees will be due on this patent, if it is to be maintained, on the 11th day of August 1971 and on the same day in each year thereafter. 9. 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. Raj Prakash, resident of B1/154, Lajpat Nagar, New Delhi, an Indian National. The following specifications particularly describe and ascertain the natureof 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. The film as generally used in film strip viewers is mostly obtained from imports. Due to the present import restrictions its cost has gone up so
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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. Same is also the case regarding the availability and price situation of the coloured films required for use in the film strip viewers. 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 17 mm. 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. Thereafter this negative film is printed on 35 mm positive film so that the two pictures come on the positive film. 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. 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 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, two film strips are obtained from a Single standard film of 35 mm size for use in the film strips viewers. This accordingly, reduces the cost of the film to be used in the film strip viewers to practically half. 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. In view of the increased cost and difficulty in the availability of the imported films particularly the coloured films, 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. This also effect a considerable saving in the foreign exchange.
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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. 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. 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 standard silent movie frame is shown at 3 in Figure 1. The same half frame obtained after cutting the film in two halves is shown at 4 (Figure 3) and 5 (Figure 4). 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. 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 would be appreciated that the half cut positive film strip to be used in the film strip viewer, have perforations only on one side of the strip. These perforations, 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. Thus, 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. Since each picture of the half cut film strip is of a reduced size, 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.
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10. On the basis of the above specifications, the claims made by the Plaintiff which were incorporated in the patent read as under: 1. 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, 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. 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. 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, which is of reduced size, 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. A process for picture film for use in film strip viewers as claimed in Claim 1 substantially as described and illustrated in the specification. 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.
2.
3.
4.
5.
11. After prolonged hearing, when called upon, 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. 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. The statements
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made by the Counsel for the parties were duly recorded in Court. Though Third Defendant (Third Respondent herein) was ultimately represented by Counsel, it did not enter into any arrangement with the Plaintiff/Appellant. Even First and Second Defendant entered into an agreement which is operative only for one year. Hence, 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. 12. Although First and Second Defendants have admitted the patent, as claimed by the Plaintiff, and have also admitted infringement of such patent, it would be necessary to clearly set out what is the invention that the Plaintiff claims and what has actually been patented. Invention, as is well known, is to find out something or discover something not found or discovered by anyone before. 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, which is to be patented. In order to properly construe the specifications, 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 grant of patent, no doubt, 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. Nearer home, the Patents and Designs Act was first passed in 1911. 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. Inasmuch as the patent claimed by the Plaintiff was granted in 1967, we are really concerned with the Act of 1911. 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. Section 2 clause 11 of defines patent to means one granted under the provisions of the Act. We shall presently deal with the other provisions of the law as we proceed to deliver our judgment. For the time being we shall restrict ourselves to the exposition of law and its application to the facts of the present case.
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13. As observed by us a little earlier, the first thing to do is to determine what the invention is. According to the learned Single Judge it means one thing, according to the Plaintiff quite another. A careful reading of the claims put in by the Plaintiff and understanding the same in their ordinary meaning would clarify the whole situation. Indeed one can get bogged down by the techniques of photography, the diverse frames used in a still camera or in a movie camera. We are, however, really not concerned with all that. As was said by Heald K.C. in Electrical and Musical Industries Limted v. Lissen Limited 1937 (54) RPC 307 and affirmed by Justice Romer, in the same case: As in all patent is put in which the validity of the patent is put in issue, the first thing to be determined is the proper construction of the specification; 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, for it is to those persons that it is addressed and it must be read with their eyes. 14. We have, therefore, to read the specifications and the claims from the point of view of the persons in the trade manufacturing film strip viewers. 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. (refer to Birmingham Sound Reproducers Limited v. Collaro Limited and Collaro Limited v. Birmingham Sound Reproducers Limited, 1956 RPC 232). It is not necessary that the invention should be anything complicated. The essential thing is that the inventor was the first one to adopt it. The principle, therefore is that every simple invention that is claimed, so long as it is something which is novel or new, it would be an invention and the claims and specifications have to be read in that light, . as was observed in the famous hair-pin case, reported as Hinde v v. Osborne, 1885 (2) RPC 45 (65) (65). To quote from another well-known . Photophone Limited v . decision of the Court of appeal in R. C. A A. v. Gaumont -British P icture Corporation Limited and British A coustic F ilms Gaumont-British Picture Acoustic Films Limited, 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;
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15. Sometimes people fall into error in construing specifications by relying too much on the title given to the specifications of the invention. It is settled law that the title of the specifications of an invention claimed does not control the actual claim. A misleading title similarly is of little consequence. 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. Rule 33 of the Indian Patents and Designs Rules, 1933, inter alia, lays down that the title should give a fair indication of the art or industry to which the invention relates. It should be brief, free from fancy expression, free from ambiguity and as precise and definite as possible but it need not go into the details of the invention itself. Thus, the rule itself indicates that the title of the specifications does not govern the specification or . Richardson, 1884 (1) RPC 165, Justice Field the claims. In Brereton v v. put the proposition rather succinctly and if we may be allowed the liberty to quote. Therefore, as I said just now, let us see what the Plaintiffs invention is. The title is certainly somewhat misleading. Mr. Macrory did not put it as anything serious, nor is it serious, because after all you must read the title by the means of the specification. The title is that it is for A new or improved tricycle, that is per se, as a machine. The complete specification and the provisional specification do not altogether agree with each other... 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; but, very fairly and very prudently, I think, the Defendant did not proceed upon that, because, after all, the great object to both parties must be to have their rights settled for the future, without reference to any question of that sort, that being a comparatively immaterial question amp W orks Limited v . P opes Electric L amp Company 16. In Osram L Lamp Works v. Popes Lamp Limited, 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, if novel, without getting mixed up in the unessential and the usual parts of processes, which are well known. Therefore, in the present case
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also it is the essential aspect, 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. 17. 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. The law in this behalf had long been settled. In orkshire R ailway Company , 1884 Westinghouse v . The L ancashire and Y v. Lancashire Yorkshire Railway Company, RPC 229 229. Justice Grove observed as under: It would seem to me that the better way of looking at a patentis to read the specification of the Plaintiffs patent, and see, without reference to any infringement at all, in the first instance, what the real claim of the patentee is. By the proviso in the letters patent a patentee is obliged to do two things. He is obliged to particularly ascertain and to describe the nature of the invention, and the means of performing the same. Now, these two requisites apply to different contingencies. The object of stating, or rather, I should say, particularly ascertaining and describing for the words are strong the nature of his invention, is in order to tell the public what inventions they are prohibited from using during the period of its monopoly, without his licence. The public ought to be properly and explicitly informed of that, otherwise nobody would know whether they were infringing a patent or not. It is, therefore, incumbent upon the patentee to let the public know in clear terms, or as clear as the nature of the case will permit, the nature of his invention 18. The above proposition is codified in India in the form of Rule 34 of the aforesaid Rules. Form Number 3-A, inter alia, 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. 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
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misdescription of the invention or any material part of it, or otherwise mislead the public. (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. (iii) (iv) The Complete Specification must describe the best method known to the patentee of performing the invention and all his knowledge relating thereto, including that which he may have acquired during the period of provisional protection prior to the date of filing the complete specification. 19. The invention for which patent is claimed may be a product or an article or a process. In the case of an article the patent is in the end product or the article; in the case of a process, the patent does not lie in the end product, but only in the process by which it is arrived at. Section 5 of the Patents Act, 1970, 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, as food or as medicine or drug which may also be patentable. 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, 1970, is patentable. Justice Vimadalal in Farwerke Hoechst Aktiengesellschaft V ormals Meister L ucius & Bruning Vormals Lucius a Corporation v . Unichem L aboratories, AIR 1969 Bom 255, 255 held v. Laboratories, 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. 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, 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. The onus as to the invalidity of a Plaintiffs
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patent and the grounds of insufficiency of description, want of novelty, absence of inventive steps and want of utility was rightly placed on the Defendants. 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, that the patent was invalid due to insufficiency of description, the claim in the specifications of the patent need only be as clear as the subject admits, and the patentee need not so simplify his claim as to make it easy for infringers to evade it. The patentees duty is not to prevent all possible argument as to whether there is or is not infringement in particular cases, but to enable the Court to formulate the questions of fact to be answered. 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, and the description must be fair i.e. it must not be unnecessarily difficult to follow. We are in respectful agreement with these observations. 20. It is in the light of the above law, that the patent in the present case has to be determined. 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, use of any particular type of camera or any type of technique including masking in exposing a film, in processing a film, in developing the negative film and printing the positive films. The patent that he claims as having been granted to him 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, so as to get a virtual image of the same size as the virtual image of normal 35 mm frame. The half strip thus used may also contain a plurality of picture and that is part and parcel of Appellants patent... 21. Though there was spirited contest put in any First and Second Defendants to the specifications and claims of the Plaintiff/Appellant, before us they admitted the patent, as claimed by the Plaintiff and set out above. In our view, the Plaintiff/Appellant has rightly construed
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the scope of his patent as in Claims 1 to 5. The learned Single Judge, and we say it with great respect, went wrong in holding that the patent lay in the process of filming by masking. To quote the words of the Judgment dated December 15, 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, therefore, cannot uphold the Plaintiffs case that he had a patent for making two pictures in a Single cine-frame... However, the third claim, which is the claim for a combination, 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. In the judgment dated January 27, 1975, after remand, 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 Defendants witness in making the same type of photograph. According to the Plaintiff, 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. According to the Defendant, 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. As the leica camera frame is twice the size of a cine camera frame, it means that each of these 1/4th sized pictures will be equal to half size pictures in a cine camera frame... I cannot see that the process described by the Defendants is at all the one which has been patented. In fact, a practical demonstration of the two methods was given in Court at the stage of the original Trial. I would like to describe the process used by the two parties . ...The masking is brought about by putting an object between the lens of the camera and the film. That object was metallic strip. It is possible that the masking may be done in other ways also. The essential part of the description given by the Plaintiff in his patent has the use of masking
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In fact, I have upheld the patent on the ground that the Plaintiff has used a new technique, in as much as he has connected previously well-known process in a combination. If all techniques are covered by this patent, then of course, there will be nothing inventive about it. 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, I must hold that Defendants, 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 Plaintiffs case. 22. Photography and its various techniques are known to those interested in and indulging in this art for a long time. The various developments are well-publicised in photographic magazines. Therefore, 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. The technique of masking, super-imposing etc. are also well-known. Therefore, the Trial Court fell in error in being confused by the Defendants who put up a case of cine-frames, leica frames, technique of photography etc. as defence to their infringement. The patent consisted, inter alia, in the novel idea mentioned in the statement of the Counsel for the Appellant recorded by us earlier. In the claims put forward by the Plaintiff in the Patents Office the entire process was described. 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, when we read his Counsels statement set out hereinabove. The patent in its entirety is, therefore, upheld as valid. 23. Having determined the nature of the invention and having upheld the validity of the patent, as set out above, the next aspect is to determine whether the invention is new with reference to (a) prior publication, and (b) prior use. The Defendants did not disclose any case of prior publication in the Written Statement. It was only in the statement before issues that Mangat Ram, First Defendant, said that the first inventor of the alleged invention
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was Shri V. K. Singhal, Medical Photographer in the Willingdon Hospital, New Delhi. Reading the statement of V. K. Singhal, who appeared as Defendants Witness 3, we have no hesitation in rejecting the contention of the Defendants. All that he deposed about was that he took plurality of pictures on a 24 mm x 35 mm frame, known as leica frame. 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. 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. In any case, Singhhals process is not claimed even by him to have been made public prior to the claim of patent filed by the Plaintiff. There is no evidence of prior to the claim of patent filed by the Plaintiff. There is no evidence of . prior user and the rule enunciated in Pope Appliance Corporation v v. Spanish River P ulp and P aper Mills Limited, 1929 (46) RPC 23 Pulp Paper 23, is clearly attracted. 24. 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. In the statement before issues Mangat Ram stated that he was getting half film-strips manufactured from M/s H. P . Films, Motion Picture Producers, Karol Bagh, New Delhi, since 1965. Prem Sharma, Plaintiffs Witness 3 of H. P . Films stated in Court that he used to get film strips with a full leica frame of 35mm prepared from Bombay Film Laboratories. He did not speak of any half-cut films. The Plaintiff also examined Gordhanbhai G. Patel of Bombay Film Laboratories on commission at Bombay. 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. Therefore, it is obvious that at no stage were filmstrips, as claimed by the Plaintiff to be his patent, produced or got produced by the Defendants prior to 1967. Therefore, on this point also, the Plaintiffs patent is valid. 25. It was urged on behalf of the Defendants that although full films were got produced by him, these could be medially cut and used. In other
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words, the Defendants has anticipated what has been claimed by the Plaintiff as his invention. 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. Mere possibility of such a thing being made is of no consequence. 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. The claim for anticipation has to be either by prior user or by prior publication. As was held in Martin and Biro Swan Limited v .H . Hilwood Limited 1956 RPC 125 by the House of v. H. Lords, 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. It is not enough, to use the familiar metaphor which has perhaps been run to death, to make a mosaic of prior publication and to say that thus the whole invention has been already disclosed. This is particularly the case where the invention is said to consist of a novel combination, or as is sometimes said, a new functional inter-relation of integers. 26. The process of photography mentioned in the specifications and the claims, in our view, unduly prolific, does not detract from the essential features of the Plaintiffs invention of which, as has already been held by us, there is neither anticipation nor prior user. 27. The effect of the grant of a patent is quid pro quo, quid is the knowledge disclosed to the public and quo is the monopoly granted for the term of the patent. Section 12 of the Patents and Designs Act, 1911 sets out that a patent once granted confers on the patentee the exclusive privilege of making, selling and using the invention throughout India and of authorising others so to do. This is the quo. The quid is compliance with the various provisions resulting in the grant of the ord Hinde v . Osborne patent. The very simple device upheld in John L Lord v. Garrett and Company , 1884 (1) RPC 221, 221 and an infringing hair-pin Company, was held as piracy of the Plaintiffs invention with the following observations:
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The inventor says, I ask you, the public, or rather I ask the Crown, to give me a monopoly for a certain number of years, and in consideration of their giving me that monopoly I will tell them in my specification the nature and manner of using the invention. I claim, 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. If a man obtains a patent, and thus obtains a monopoly, it makes no difference that somebody else who has not got a patent has thought of the same thing and has used it. He is not permitted to do that where the monopoly has been secured to an inventor. This law is codified in India by the provisions, already referred to. 28. The patented article or where there is a process, then the process, has to be compared with the infringing article or process to find out whether the patent has been infringed. This is the simplest way and indeed the only sure way to find out whether there is piracy. This is what was done in the hair-pin case, above-referred to, and is indeed, always done. Unessential features in an infringing article or process are of no infringing article or process are of no account. 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. A person is guilty of infringement if he makes what is in substance the equivalent of the patented article. Some trifling or unessential variation has to be ignored. There is a catena of authority in support of this view. We need not cite all those cases which were brought to our notice at the Bar. Suffice it to quote the words of M. R Lord Denning, in Beecham Group Limited v . Bristol L aboratories Limited 1967 RPC 406 v. 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. The importation and sale here is prima facie an infringement. There is a further point. A person is guilty of infringement if he makes what is in substance the equivalent of the patented article. He cannot get out of it by some trifling or unessential variation. . On the evidence as it stands, there is ground for saying that hetacillin is medically
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equivalent to ampicillin. As soon as it is put into the human body, it does, after an interval, by delayed action, have the same effect as ampicillin. In these circumstances, I think there is a prima facie case for saying there was an infringement. The process is so similar and the product so equivalent that it is in substance the same as ampicillin. 29. We have seen the viewers marketed by the Defendants and the viewers produced by the Plaintiff. The viewers marked and kept on the record as (1), (1-A), Mecorama, and a fourth viewer are definitely objects produced by piracy of the Plaintiffs patent. The Defendants have made certain variations in its viewers but theses are unessential; and what the Defendants market is substantially the same thing as was conceived by the Plaintiff. By trifle variations if the effect obtained by the Defendants is the same, and we hold that it is the same, then according to the rule enunciated in the Ampicillin case, referred to above, there is a clear piracy. The idea of the Plaintiff which is a novelty is clearly infringed. In any case, the infringement is admitted by First and Second Defendant. We have dealt with this matter in detail because Third Defendant has put in appearance at the last stage but does not admit infringement. Therefore, we hold that there is clear infringement of the Plaintiffs patent, which we have delineated above. 30. The infringement having been proved and admitted by First and Second Defendant, an Order of injunction and accounts must follow. The law on this point must first be noticed. 31. 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, notifications of assignments and of transmissions of patents, of licences under patents and of amendments, extensions and revocations of patents and such other matters affecting the validity or proprietorship of patents as may be prescribed. The Register of Patents shall be prima facie evidence of any matters by that Act directed or authorised to be inserted therein. Section 32 of the Act provided as under: 32. Certificate of validity questioned and costs thereon - In a Suit for infringement of a patent the Court may certify that the validity of the
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patent came in question and if the Court so certifies, then in any subsequent Suit in that Court for infringement of the same patent the Plaintiff, on obtaining a final Order or judgment in his favour, shall, unless the Court trying the Suit otherwise directs, have his full costs, charges and expenses of and incidental to the said Suit properly incurred. Section 33 reads as follows: Transmission of decrees and Orders to the Controller - 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, as the case may be, to the Controller, who shall cause an entry thereof and reference thereto to be made in the register of patents. 32. Section 151 of the Patents Act, 1970 reads as under: 151. Transmission of Orders of Courts to Controller (1) Every Order of the High Court on a petition for revocation, including Orders granting certificates of validity of any claim shall be transmitted by the High Court to the Controller, who shall cause an entry thereof and reference thereto to be made in the register. (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. 33. Thereafter, a proper Order has to be drawn up in the present case and transmitted to the Patent Office. 34. Apart from admitting the patent, 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
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injunction against the Defendants be passed prohibiting them from infringing such patent. With regard to the claim for accounts and damages the Plaintiff and First and Second Defendants agreed that out of the sum of Rupees 15,000/- deposited by First and Second Defendant by way of security in this Court a sum of Rupees 5000/- 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. We, accordingly, hold that the Plaintiff is entitled to the balance of the amount in deposit in this Court after payment of Rupees 5000/- 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. As against Third Defendant who has been proved to be a seller of infringing viewers a decree for accounts is passed. A preliminary decree for accounts is passed. The final decree will be made up after a Local Commissioner has gone into the accounts and submitted a report. Against all three Defendants a declaration is given about the validity of the patent of the Plaintiff, as claimed and set out by us hereinabove, 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. 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. 35. The patent law being rather technical, it will be but proper that we set out the formal final Order in our judgment itself. We can do not better then to refer to Dunlop Pneumatic Tyre Company Limited v. Clinton Rubber Company Limited, 1903 (20) RPC 393, for the correct form of the Order. This Order will be communicated to the Patent Office by the Registry of this Court, as required by section 151 of the Act of 1970, along with copies of the judgment and decree. Before we draw up the Order, we would like to clearly state that the case of revocation of the patent put up by the Defendants stands disproved, not only by the admissions but in view of the discussion of evidence hereinabove. 36. We might also notice that once First and Second Defendants admitted the validity of the patent of Plaintiff/Appellant and violation thereof at
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the hearing before us, 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, 1977, which was recorded by us. This agreement, however, 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. They have also agreed to purchase the viewers manufactured by Plaintiff/ Appellant. This aspect needs also to be recorded in the formal Order and communicated to the Patent Office. 37. We, therefore, draw up the formal Order as under: This Court does order that R.F.A. (Original Suit) 2 of 1973 is allowed, and the judgments of the Trial Court dated December 15, 1972 and January 27, 1975 are discharged. The Plaintiff having raised the question of the enforcement of his patent, the same being upheld, the Defendants by themselves or through their servants and agents are restrained during the continuances of patent Number 111926 dated August 11, 1967 or any extension thereof from infringing the said patent of which the Plaintiff is the owner. 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, so as to get a virtual image of the same size as the virtual image of normal 35 mm frame. The patent thus is also in a half cut 35 mm positive film and the viewers with such film fitted therein. It is further ordered have been sustained by the Plaintiff by marketing of the infringing viewers by Defendant Number 3, the claim of damages and accounts against First and Second Defendant having been satisfied in accordance with what is stated in our judgment hereinabove; 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, films, dyes are in their possession, custody or power; and it is
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ordered that the Defendants do within 10 days after filing of the said affidavit deliver up to the Plaintiff the infringing viewers, films and dyes in consonance with the Court proceedings and orders passed on January 24, 1977. Costs of the proceedings will be borne by the parties themselves. This Court hereby certifies, pursuant to Section 151 of the Patents Act, 1970, 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. And it is further ordered by this Court that the agreement between the Plaintiff and First and Second Defendant executed on January 17, 1977 has been recorded by Court, copy of which is Annexure A to the formal Order. Appeal allowed.
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CASE 3:
PRESS METAL CORPORATION LTD., V. NOSHIR SORABJI POCHKHANAWALLA & ANOTHER

AIR 1983 Bom 144 Justice Rele Order
1. The opponents have preferred this appeal against the order arid decision dated 5th July, 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 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. On 14-6-71 the applicant filed complete specifications. The application was accepted by the Controller of Patents and the acceptance was notified in the Gazette of India dated 19-8-1972. The petitioners filed notice of opposition under Section 25 of the Patents Act 1970. On 10-2-1973 the applicant filed his reply to the Notice of Opposition and on 26-2-1973 the applicant filed
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his reply Statement. On or about 21st June 1973 the said Noshir Edulji Pochkhanawalla died leaving a Will whereby he appointed the 1st Respondent as Executor. The 1st respondent obtained probate of the Will and the 1st Respondent was substituted as applicant. 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. 3. 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. The hearing was, therefore, fixed on the application of the 1st Respondent on April, 26, 1976. On that day the petitioners feed affidavit of Shri G. K. Parekh, Engineering Manager of the Petitioners, and relied upon the exhibits annexed to that affidavit in support of the opposition. The Petitioners also applied for extension of time for production of the evidence. The Controller fixed May 27, 1976 for the hearing of the said application. But curiously heard the main application of the 1st Respondent on 26th and 27th April, 1976 and the judgment was reserved. The Controller passed an order on May 27, 1976, rejecting the grounds of opposition and granting the application. It appears that the Controller also dismissed the application of the Petitioners for extension of time to file their evidence. Against the said orders, the Petitioners preferred Petitions Nos. 250 and 251 of 1977 in this Court. Pendse, J. set aside the impugned orders by order dated 21st Jan. 1980 and remanded the proceedings to the Asstt. Controller of Patents and Design to determine the matter afresh after taking the affidavit of Shri G. K. Parekh affirmed on April 26, 1976 on record as evidence in support of the opposition. Therefore, the matter was heard afresh and the said impugned order dated 5th July, 1980 was passed. Shri Daruwalla has submitted that the Controller was in error in rejecting the grounds of opposition. 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; secondly that the invention was publicly known and publicly used in India before the priority date of the claim;
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thirdly that the claim is not an invention at all and it does not contain any inventive step; fourthly that the alleged invention is obvious; fifthly that the claim is not a novelty; 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; and seventhly that it is incorrect to state that the first respondents invention is a combination. 5. Shri Daruwalla has also submitted that the order of the Controller passed on 5th July, 1980 amending claim 1 of the complete specification, 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, as illegal and without any jurisdiction and that, therefore on this around also the order deserves to be set aside. I shall take each of these grounds separately, but before I do so, it will be necessary to refer to the order passed by the learned Controller, before whom the very same grounds of opposition were canvassed on behalf of the petitioners. It appears to me that the entire approach of the learned Controller was an erroneous approach. 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, viz. (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; 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. Having set out the said two characterizing features, 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, and observing that:
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this construction produces some distinct advantages which have been supported by tests and has not been refuted by evidence from the opponents. 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. Further the size of the perforations is only one of the characterizing features of the invention. It was on these bases that the learned Controller overruled this objection. 7. Now, there is nothing on record to show what distinct advantages have been supported by tests and this observation of the learned Controller, is therefore, baseless and without any evidence. 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. It is on these baseless and imaginary grounds that the learned Controller has rejected this ground of opposition. The learned Controller has then stated that generally the principal claim, i. e. 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. He then proceeds to state: It is clearly evident that claims 1 to 7 do not form within the scope of the principal claim, 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. 8A. Similarly, the learned Controller has overruled the ground of objection viz. prior publication in the two books (1) Motor Manuals, Automobile Engines by Arthur W, Judge, 1969, 7th Ed. And (2) Motor Services Automotive Encyclopedia, 1970 Ed. 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 applicants invention. As stated above, the applicant has not given the size of perforation in the inlet and outlet pipe and, therefore, this objection
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has been overruled on purely untenable, baseless and imaginary grounds. 9. 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, 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. 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. This ground of rejection of the opposition is also baseless and imaginary.
10. The petitioners also opposed the application on the ground that in Para 7 of the affidavit of the Legal Representative Shri Noshir Sorabji Pochkhanawala, it is stated that shortly before March 5, 1971, the inventor submitted, in strict confidence, five different mufflers for testing to Dy. General Manager of the Premier Automobiles Ltd. as he had no facility to test attenuation between the back pressure and noise level. This ground of opposition was also rejected by the learned Controller on an altogether untenable ground. The learned Controller observed that the applicant i.e. inventor has not set up any secret use or any accidental or fortuitous use. He further observed albeit on an imaginary 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. This is also on a purely baseless ground. 11. The ground of obviousness was disposed of by the learned Controller on the ground that has not been proved before him. 12. 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, the learned Controller found that:the applicant has stated, 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
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the engine and volume of exhaust gases discharged by the muffler. Moreover the sine of the perforations is only one of the characterizing features of the invention. This finding also is baseless and imaginary. So also the finding that the invention falls within the scope of the invention defined in Section 2 (i) (j) of the Patents Act, 1970. 13. I shall now deal with each of the grounds of opposition. 14. Regarding the first ground of prior publication, Shri Daruwalla has contended that the invention has been published in Motor Manuals, Automobile Engines by Arthur W Judge, 1989, 7th Edition at pages 203 to 211 and also in Motor Services Automotive Encyclopaedia by William K. Toboldt and Larry Johnson, 2970 Ed. at pages 286 and 291. Shri Daruwalla has contended that the publication is found in the letters dated 5th March 1971 and 24th April, 1971 written by Shri C. J. Talnania, Dy. General Manager (Engg.) of the Premier Automobiles Ltd. Exs, A and B to the affidavit of Shri Noshir S. Pochkhanawala. Legal Representative of the inventor, affirmed on 15th April, 1975, and also to the fact that the said inventor Noshir S. Pochkhanawala had given five different mufflers to Premier Automobiles Ltd. for testing and he has contended that this would constitute prior publication and prior user. He has also referred to Ex. D to the affidavit of Shri G. K. Parikh, Engineering Manager of the petitioners affirmed on 26th April, 1976 and he has contended that this also constitutes prior publication. Ex. D are drawings submitted by Premier Automobiles Ltd, to the petitioners in or about the year 1964 for fabricating Exhaust Silencer. Shri Daruwalla has contended that Figure 5 of the drawings accompanying complete specification is identical with the said drawings submitted by Premier Automobiles Ltd. and that, therefore, it constitutes prior publication. 14A. Shri Shah, the learned Counsel appearing on behalf of respondent No. 1 has submitted that none of the different silencers shown in the Motor Manuals Automobile Engines, by Arthur W. Judge can give any idea to any person to manufacture applicants muffler. He has submitted that this is a question which has to be decided on evidence. He has
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referred to Para g of the affidavit of Shri G. K. 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 Judges Motor Manuals Automobile Engines at page 203. His submission is that Shri Parikh has not stated that he can manufacture muffler of the design given by the applicant which, according to Shri Shah, it was necessary to have been set out and, therefore, Ex. D to the affidavit of Shri Parikh cannot be taken as prior publication and as it does not constitute anticipation. In the same strain, Shri Shah has submitted that the question as to how far the drawings in the two books viz. Judges Motor Manuals Automobile Engine and Motor Services, Automotive Encyclopaedia are relevant, is necessary to be considered. His submission that if a picture of a machine is own without describing it at all, 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, it cannot be said that there is prior publication. In this connection, he has referred to the decision in the . Squire, (1889) 6 RPC 194 at case of Herrburger Schwander Etcie v v. page 198, 198 and also to the decision in the case of C. V an Der L ely N .V . Van Lely N.V .V. v. Bamfords Limited (1963) RPC 61 61. 15. In regard to the letters written by Premier Automobiles Ltd, to the inventor, relied upon by Shri Daruwalla to show publication, 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. He has, therefore, submitted trot this objection should be overruled. 16. Section 25 of the Patents Act deals with the grounds of opposition. In regard to the prior publication, 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, 1912; or
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(ii) in India or elsewhere, in any other document: Provided that the ground specified in sub-cl. (ii) shall not be available where such publication does not constitute anticipate of the invention by virtue of sub-sec. (2) of Section. 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, made in India and dated before 1st day of January, 1912. (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, 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; 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, or, in the cap of convention application, before the date of the application for protection in a convention country, that the application or the application in the convention country, as the case may be, 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, otherwise than for the purpose of reasonable trial, either by the patentee or the applicant for the patent or any person from whom he derives title or by any other person
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with the consent of the patentee or the applicant for the patent or any person from whom he derives title. (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, 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, 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, by the applicant in respect of that other application, or by any other person in consequence of any disclosure of any invention by that applicant. 17. In order to deprive an invention of patentability on the ground of anticipation by prior publication, it must be shown that the invention claimed was published in any document. In the present case, the invention is opposed on the ground of prior publication. Firstly, that it was published in the two books. Secondly, that the inventor had given different mufflers to Premier Automobiles for testing and thirdly, that the drawings marked Ex. D submitted by Premier Automobiles Ltd. to the Petitioners much prior to the priority date of the complete specification in the present case. The claims contained in the complete specifications filed by Noshir E. Pochkhanawala are as follows:1. A muffler or exhaust silencer for internal combustion engines constituting of two pipe sections of equal or unequal diameters, 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.
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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. Judges 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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continuous one, emitting little noise. 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. Usually a number of baffles are fixed in silencing chamber, but careful trop tinning of these is necessary in order to avoid back pressure and overheating of the engine. The internal diameter of the exhaust pipe should not be less than one quarter to one-third of the cyclinder diameter, whilst the ordinary design of silencer should have a capacity of about 14 cubic inches for every B. H. P . at the maximum value. It should not weigh more than about 0.1 lb. per B.H.P . (maximum) developed by the engine. 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. An indirect effect of back pressure is to leave more of the hot exhaust gases in the cylinder when the exhaust value closes. 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. 19. In order to illustrate, Arthur W. Judge has given diagram of three types of exhaust silencers. 20. Arthur W. Judge has also dealt with multiple exhaust pipes at page 204. He states: Multiple Exhaust pipes - When a multi-cylinder engine is fitted with a single exhaust manifold with one exhaust pipe outlet, 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. Further, the exhaust valves temperatures are higher, than when separate exhaust pipes are used for each cylinder or pairs of cylinders. It is, therefore, necessary, to modify the exhaust systems as indicated. Thus, a four-cylinder vertical engine would have four separate exhaust pipes leading into a common pipe of larger diameter and thence to the silencer.
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21. At page 210, Arthur W. Judge has dealt with the Burger Silencer as follows: The Burger Silencer - 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. The silencer consists of a central perforated tube, which is unobstructed throughout its whole length. It is surrounded by another cylinder of sheet metal, the intervening space being filled with a special sound absorbing material. 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. The fluctuations of pressure in the exhaust gases, which are the cause of the exhaust noise are appreciably reduced in the gases flowing out of the central tube, so that the noise must also be reduced in intensity. 22. In Automotive Encylopaedia at page 287 under the heading Exhaust System, it is stated: Mufflers in order to reduce the noise of the exhaust of an internal combustion engine, exhaust gases from the engine are passed through a muffler, Fig 28-3. The muffler is so good that the gases are expanded slowly, and are also cooled before they are discharged into the tail pipe and the atmosphere. In addition, the design must be such that there is a minimum of back pressure developed. Back pressure prevents free flow of the exhaust gases from the engine, and as a result, not all of the burned gases will be expelled, or exhausted from the cylinders. Such unexpelled gases dilute the incoming combustible gases, and as a result, the power of the engine is reduced. On an automotive vehicle, the engine first exhaust into the exhaust manifold, Fig. 28-2. The gas then passes through the exhaust pipe into the muffler. From the muffler it passes into the tail pipe and from there into the atmosphere at the reap of the vehicle. A certain amount, of expansion and cooling of the exhaust gas is provided for in the design of the exhaust manifold and exhaust pipe. Usually these are designed to provide by two to four times the volume
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of a single cylinder of the engine. The additional expansion is then provided for in the Muffler. Muffler Design: The design of the muffler varies with different manufacturers. One type is known as the straight through type, Fig. 28-4. In this design, a straight path is provided for the gases which extends from the front to the rear of the unit. A centrally located pipe with perforations is provided: Surrounding this pipe is a sheet metal shell, approximately three times the diameter of the pipe. In some instances, 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. Another type of muffler reverses the flow of the exhaust gases. Fig. 284, and has the advantage of conserving space. The double shell and two shell are still other forms of modern mufflers. In order to reduce the noise of the exhaust below that attained by a single muffler, many systems are equipped with two mufflers in each line, Fig. 28-1. Such construction is particularly necessary on cars with a long wheel based and powered with a high output engine. The additional unit is usually known as a resonator. Back Pressure: In Fig. 28-5, the loss in engine power due to back pressure from the exhaust system is shown. It will be noted that as the speed of the vehicle increases, back pressure also increases. Note also for a given car speed, the loss in power increases very rapidly with the increase in back pressure. For example: with 2 lbs. back pressure at 70 mph, the power loss is 4 hp and when the back pressure is 4 lbs. the power loss has increased to 8 hp. Similarly, fuel consumption is increased as muffler back pressure increases. This is shown graphically in Fig. 28-6. 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, as any obstruction would reduce power and fuel economy. 23. 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 description of the exhaust system and of the muffler as stated in Claim 1 is not materially different from the
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description of the muffler and of the exhaust system contained in the said two books. 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, 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. Further it is stated that The design must be such that there is a minimum of back pressure developed. Such unexpelled gases dilute the incoming combustible gases, and as a result, the power of the engine is reduced. 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, the back pressure also increases. The claim made by the inventor is no more than an individual design, a work-shop modification. The objection, therefore, that the invention as claimed in the claim of complete specification is published before the priority date, must necessarily be sustained. 24. In regard to the public knowledge and public use in India of the invention before the priority date of the claim, Section 25 (1) (d) provides as under: Section 25 (1) (d) - 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 - For the purposes of this clause, 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. 25. Shri Daruwalla has referred to the giving of five different mufflers to the Premier Automobile for testing and submitted that this would show
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prior publication by prior use. Shri C. J. Tahsania, Dy. General Manager (Engg.) of the Premier Automobile has addressed a letter date 5th Mar. 1971 wherein it is stated that they have received five different mufflers and in said letter, 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. 26. In regard to the giving of five different mufflers, an argument was advanced before me on the basis of the affidavit of the first respondent herein that these mufflers were given secretly. 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. This using of mufflers by Premier Automobiles Ltd would also constitute prior user and this ground of objection also must be sustained. 27. The third ground of objection made is that the claim is obvious and that it does not contain any inventive step. 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, having regard to the matter published as mentioned in cl. (b) or having regard to what was used in India before the priority date of the applicants claim. The first thing that is to be considered in this connection is how obviousness is to be fudged. A reference to the case of Allamana Svenska Elektriska A/B v. Burntisland Shipbuilding Co. Ltd. 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, as well as from the contents of previous writings, specifications, text books and other documents ...... The real question is: was it for all practical purposes obvious to any skilled mechanic .. . . . , . ....... The question must be answered
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objectively, for it is immaterial that,....... 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, on any view, be taken . Boots P ure into account by the court. (See Sharpe and Dohme Inc, v v. Pure Drug Co. Ltd.) (45 RPC 153 a page 173 173). 28. Shri Shah, however, 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. He has referred to the decision in the case of General T yre and R ubber Co. v .F irestone T yre and R ubber Co. Ltd. Tyre Rubber v. Firestone Tyre Rubber 1972 RPC 457. 457 Shri Shah has submitted that there is no evidence whatsoever to come to a conclusion that the invention is obvious. 29. In E. I. Due Pont De Nemours and Co. (Holland), 1971 RPC 7 it was held: (1) That if, in opposition proceedings, after reviewing the whole of the evidence there was a genuine conflict on the question of obviousness, involving as it did matters of opinion which could not satisfactorily be resolved without often lengthy cross-examination, then Tribunal should in the normal case not try to resolve such conflict. (2) That it was sometimes different if the question to be resolved was one of pure fact such as might, for example, arise in cases of prior user. Then, if satisfied that the evidence had dealt with the matter comprehensively, so that the Tribunal felt it was in a position to come to a correct answer on the question of fact, there was no reason why it should not resolve the conflict. In a proper case it was under the duty of doing so, and should act upon the normal principles of proof in civil actions. (3) That, if the Tribunal, when the question before it was one of obviousness, was of the opinion that there was really no genuine conflict and that, in view of the disclosures of the prior art and the relevant evidence, the alleged invention was obvious and clearly lacking in inventive step, then equally the Tribunal must proceed to decide the case in accordance with the same rules of proof.
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In view of the disclosure of the prior art in the two books referred to above, it must be held that the alleged invention was obvious and clearly lacking in inventive step. 30. The next point to be considered is whether the invention as claimed is at all invention. 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. 31. According to Shri Daruwalla no invention lies in such mufflers. 32. Shri Shah, on the other hand, has submitted that a patent for a new use of known contrivance is good. It is in the manner of new manufacture, that lies in the invention. The inventor in the present case, according to Shri Shah, has produced a new muffler by a new and ingenious application of a known contrivance to the old muffler. It is the novelty and the ingenious application of the known contrivance which entitles the inventor to a patent. He has relied upon the decision . Mayor and c. of Manchester (1892) in the case of Gadd and Mason v v. 9 RPC 516, at page 524) wherein it is held: 1. A patent for the mere new use of a known contrivance, without any additional ingenuity in overcoming fresh difficulties is bad, and cannot be supported. If the new use involves too ingenuity, but is in manner and purpose analogous to the old use, although not quite the same, there is no invention; no manner of new manufacture within the meaning of the Statute of James. On the other hand, 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. 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.
2.
33. Invention is defined in Section 2 (1) of the Patents Act, 1970 as under Section 2 (1) (i) invention means any new and useful (i)
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(ii) machine, apparatus or other article

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(iii) substance produced by manufacture and includes any new and useful improvement of any of them, and an alleged invention. Section 25 (1) states: that the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act. 34. Under the Patents Act, an invention to be patentable must be a new and useful method or manner of manufacture. It involves two separate conditions, viz. is it a method or manner of manufacture and secondly is it new and useful. In order to entitle an inventor to a grant of a patent, both these conditions must be present. Manufacture in its ordinary parlance generally conveys the idea of making tangible goods by hand or by machine. 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, the inducement which law intended to give to the inventor would be encompassed within very narrow rules. The word manufacture would, in my opinion, include improvements in manufacture and changes in the method by which an article is manufactured. The word manufacture, in my opinion, would also extend to a new process to be carried on by known implements. Manufacture is a term which is difficult to define. An attempt was made at defining the term manufacture by Abbott C. J. in the following terms: Something of a corporeal and substantial nature, something that can be made by man from the matters subjected to his art and skill, or at the least of some new mode of employing practically his art, and skill, is requisite to satisfy this word. (See Terrell on the Law of Patents, para 315, page 12). 35. According to Oxford Dictionary the word manufacture is defined as: (a) the action or process of making by hand; (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.
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There is no hard and fast rule to consider what is the new and useful method or manner of manufacture. New and useful method or manner of manufacture need not necessarily be any product i.e. it need not necessarily be a new article; it may be any physical phenomenon in which the effect, be it creation or merely alteration may be observed. (See N. R. D. C.s Application, 68 R. P . C. 25 at page 32). 36. In the present case, claim No. 1 ambiguous, as it appears to me, to be not more than a workshop modification. In explaining the hack pressure, 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. to 1.75 Lbs, per sq. inch and the noise level is 72 to 102 DB. Whereas mufflers or exhaust silencers generate a .back pressure from 1b. to 1 lb. per sq. inch and the noise level is from 68 to 102 DB. 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. 37. There is no evidence whatsoever that the known type of mufflers generated rated back pressure of 1 lb. to 1.75 Ibs. per sq. inch and the noise level is 72 to 102 DB. There is also nothing to show the economy in the fuel consumption. The objection, therefore, that the claim made by the inventor in the complete specification, is no invention at all and as already stated, appears to be no more than a workshop modification (sic). 38. In considering whether the claim as made by the inventor is an invention, it will have to be considered whether the subject matter is not obvious. Obviousness is to be judged by the standard of a man skilled in the art concerned. 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, 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 applicants claim.
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. v The Burntisland Shipbuilding In Allmanna Svenska Elecktriska A/B A/B. . C. 63) it was stated by the Court of appeal: Co. Ltd.(1951-69 R. 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, as well as from the contents of previous writings, specifications, textbooks and other documents, (See Terrell on the Law of Patents page 125 Para 307). 39. The test by which obviousness is to be judged is as laid down by Lord . V ickers & Seas Ltd, (1890-7 RFC 291 at p. Herschell in Siddell v v. Vickers 304). So obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end. . Harris & Sons (1896-13 RPC 364 at p. 370) By Lopes LJ in Savage v v. 370). 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. If the invention was obvious, there could be no inventive step whatsoever. For the same reason stated above in considering whether it was an invention, the objection to the patent must be upheld on the ground that it is obvious. 40. 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, the combination consists of three features in claim No. 1. This is stated here only to be dismissed. No such claim that the invention is a combination claim has been made before the Controller of Patents. 41. Sec. 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. It is the duty of a patentee to state clearly and distinctly the nature and limits of what he claims. If the language used by the patentee is obscure
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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. 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. In the present case, as already stated above, the invention is described in an obscure and ambiguous language, and on this ground also, the patent is liable to be refused. 42. This brings me to the last question viz. the amendment effected by the Controller in the order passed by him. 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. The modifications have been effected by the Controller without any jurisdiction whatsoever. The powers to amend a specification are to be found in Sections 15, 18, 19, 57, 59 and 78 of the Patents Act, 1970. Sec. 15 empowers the Controller to require the applicants 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. 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, he may refuse the application unless the specification is amended by insertion of such disclaimer in respect of that claim of the invention. 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. Under Sec. 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(1) empowers the Controller to direct the insertion of other patent which is likely to be infringed, unless the complete specifications is amended to the satisfaction of the Controller. So also Sec. 57 empowers the Controller to allow amendment of a specification of an application made by the applicant for the patent.
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Section 59 (1) provides as follows: Section 59 (1). No amendment of an application for a patent or a complete specification shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose correcting an obvious mistake, and amendment of a complete specification shall be allowed the effect of which would be that the specification as amended, would claim or describe matter not in substance disclosed in the specification before the amendment, 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. Section 78 (1) empowers the Controller to correct clerical errors etc. None of these sections empowers the Controller to make an amendment suo motu as has been done by the Controller in the present case. 43. Counsel were, therefore, right in their submissions that the modifications effected by the Controller cannot be justified. 44. In conclusion it may be stated that each of the grounds of opposition to the grant of patent is well founded. The opposition on the ground of prior publication, prior knowledge, prior uses that it is not an invention at all, that is obvious, 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, therefore in error in overruling the objections and granting the patent with modifications. Therefore, pass the following order: Appeal allowed. The order of the Controller is set aside and all the grounds of opposition are sustained. In the circumstances of the case there will be no order as to costs.
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CASE 4
ATLANTIC THERMOPLASTICS CO., Plaintiffs-Appellants, V. FAYTEX CORPORATION, Defendant/CrossAppellant.

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT 970 F .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.S.C.S. 102(b) (1988), by clear and convincing evidence. Patent Law : Statutory Bars : On Sale A single sale or offer to sell suffices to bar patentability. Patent Law : Statutory Bars : On Sale To invoke the on-sale bar under 35 U.S.C.S. 102(b) (1988), 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. The on-sale bar invalidates a patent for an invention offered for sale, even though not ready for satisfactory commercial marketing.
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Patent Law : Statutory Bars : On Sale If a patent owner seeks to avoid the on-sale bar under 35 U.S.C.S. 102(b) (1988), on the basis that a sale or offer was experimental, a trial court must determine whether the patent owner sought the sale primarily for profit rather than as part of a testing program. To determine whether profit motivated a transaction, a court must examine the claimed features, the offerors objective intent, and the totality of the circumstances. Patent Law : Statutory Bars : On Sale Mere offers to sell trigger the on-sale bar rule under 35 U.S.C.S. 102(b) (1988). Patent Law : Infringement : Claim Interpretation Patent claims are interpreted in light of the claim language, the specification, and the prosecution history proceeding from the vantage point of one skilled in the art. 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, or else nothing can be held to infringe the patent which is not made by that process. 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. A new process, although eligible for a process patent, cannot capture exclusive rights to a product already in the prior art. 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. In reviewing for infringement, the courts follow the rule that the process limits a product-by-process claim.
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Patent Law : Specification & Claims : Claim Language Although a product has definite characteristics by which it may be identified apart from the process, still, if in a claim for the product it is not so described, but is set forth in the terms of the process, nothing can be held to infringe the claim which is not made by the process. 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. Product-by-process claims are usually deemed infringed only by a product made by the same process. 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, useful, and nonobvious process, but cannot claim rights to a product already in the prior art by merely adding a process limitation. Patent Law : Specification & Claims : Claim Language Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. Patent Law : U.S. 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. Patent Law : Infringement : Claim Interpretation The courts must consult the specification, prosecution history, prior art, and other claims to determine the proper construction of the claim language.
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Patent Law : Infringement : Claim Interpretation Patent infringement requires the presence of every claim limitation or its equivalent. An accused infringer can avoid infringement by showing that the accused device lacks even a single claim limitation. Patent Law : Infringement : Claim Interpretation Patent infringement analysis compares the accused product with the patent claims, not an embodiment of the claims. Patent Law : Specification & Claims : Claim Language Process terms in product-by-process claims serve as limitations in determining infringement.
Opinion By:
Judge RADER Atlantic Thermoplastics owns U.S. Patent No. 4,674,204 ( 204 patent) entitled Shock Absorbing Innersole and Method of Preparing Same. Atlantic sued Faytex Corporation1 for infringing the 204 patented process with innersoles manufactured by two separate processes. 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, Inc. The court held, however, that Faytex did not infringe the 204 patent by selling innersoles manufactured [**2] by Sorbothane, Inc. Atlantic Thermoplastics Co. v. Faytex Corp., No. 88-0210-H (D. Mass. July 27, 1990). The trial court also determined that the 204 patent is not invalid under the on-sale bar of 35 U.S.C. 102(b) (1988). This court affirms the district courts infringement determination. Because unable to determine whether the district court applied the correct legal standards under section 102(b), this court vacates the district courts judgment
1
Faytex makes numerous requests for sanctions under Fed. Cir. R. 38 and under 35 U.S.C. 285 (1988). Section 285 does not permit sanctions except in exceptional cases. Faytex is the accused infringer and thus, cannot accuse Atlantic of willful infringement. Faytex does not allege that Atlantic brought or conducted its suit in bad faith. In any event, this court does not consider Atlantics appeal frivolous. Faytexs sanction requests lack merit. Unfounded requests for sanctions are themselves frivolous and sanctionable.
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as to validity and remands for findings [**3] on the on-sale issue. Because the trial court improperly determined damages, this court also remands for recalculation of lost profits, if liability is again established.
Background
The 204 patent contains both process claims and product-by-process claims for a shock absorbing shoe innersole. 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, and a polyurethane foam. The elastomeric heel insert enhances shock absorption. The polyurethane foam forms around the heel insert and supplies the rest of the innersole. Claim 1 of the 204 patent defines the process: In a method of manufacturing a shock-absorbing, molded innersole for insertion in footwear, which method comprises: (a) (b) introducing an expandable, polyurethane into a mold; 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, the insert material having greater shock-absorbing properties and [**4] being less resilient than the molded, open-celled polyurethane foam material, 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; 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.
Faytex distributes half-sole innersoles, or heel cups, with an elastomeric heel insert. Two different manufacturers Surge Products and Sorbothane
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make Faytexs innersoles. The Surge process for making innersoles differs from the Sorbothane process. Surge first manually places a solid elastomeric insert into the heel section of the innersole mold. Surge then injects polyurethane around the solid heel insert to form the innersole. Sorbothane, on the other hand, first injects a liquid elastomeric precursor into the mold, which solidifies to form the heel insert. While the heel insert is solidifying, Sorbothane injects polyurethane into the same mold to [**5] form the rest of the innersole. The parties agree that the Surge process infringes the 204 patent. The district court concluded that the Sorbothane process did not infringe the 204 patent. The district court read the claims to require placement of a solid elastomeric insert into the mold. This reading leaves injection of liquid elastomers outside the scope of the claims. Atlantic contests this construction. Because Faytex does not manufacture the innersoles, Atlantic cannot charge Faytex with infringement of the process claims. However, claim 24 of the 204 patent states: The molded innersole produced by the method of claim 1. Atlantic argues that Faytex, by distributing products allegedly made by the claimed process, is liable as an infringer. Faytex cross-appeals from the award of lost profit damages for the sale of Surge and Sorbothane innersoles. Faytex also appeals the district courts determination that the 204 patent is not invalid under the on-sale bar of 35 U.S.C. 102(b).
Discussion
I. 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. Faytex bears [**6] the burden of showing invalidity under section 102(b) by clear and convincing evidence. See Buildex Inc. v. Kason Indus., 849 F.2d 1461, 1462-63, 7 USPQ2d 1325, 1326-27 (Fed. Cir. 1988). To prevail, Faytex had to show that Atlantic sold or offered for sale the claimed innersole before October 9, 1984. A single sale or offer to sell suffices to bar patentability. In re Caveney, 761 F.2d 671, 676, 226 USPQ 1, 4 (Fed. Cir. 1985). This court must determine whether the district court erred in concluding that Faytex did not meet its burden.
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Appellate review of an on-sale bar proceeds as a question of law. U.S. Envtl. Prods. v. Westall, 911 F.2d 713, 715, 15 USPQ2d 1898, 1900 (Fed. Cir. 1990). Thus, this court reviews the trial courts conclusion de novo, with factual findings underlying that conclusion subject to review for clear error. To invoke the on-sale bar, 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. UMC Elecs. Co. v. United States, 816 F .2d 647, 656, 2 USPQ2d 1465, 1471 (Fed. Cir. 1987), cert. denied, 484 U.S. 1025 98 L. Ed. 2d 761, 108 S. Ct. 748 (1988). The on-sale bar invalidates a patent for an invention offered for sale, even though not ready for satisfactory commercial marketing. Barmag Barmer Maschinenfabrik AG v. Murata Mach., 731 F.2d 831, 838, 221 USPQ 561, 567 (Fed. Cir. 1984). If a patent owner seeks to avoid the on-sale bar on the basis that a sale or offer was experimental, UMC, 816 F.2d at 657, a trial court must determine whether the patent owner sought the sale primarily for profit rather than as part of a testing program. To determine whether profit motivated a transaction, a court must examine the claimed features, the offerors objective intent, and the totality of the circumstances, U.S. Environmental Products, 911 F.2d at 716. Despite the many issues affecting any application of the on-sale bar rule, the district courts sole finding in this case consists of a conclusory statement: [Atlantics] first offer to sell and a definite sale were made to Triangle Corporation after October 9, 1984 in January of 1985, as the invention was not commercially marketable before that time . . . . Atlantic Thermoplastics, slip op. at 26. The district court did not provide any findings of fact or analysis for its conclusion. Moreover, the district courts finding does not consider several offers to sell before October 1984. The district court apparently assumed, incorrectly, that mere offers do not trigger the on-sale bar rule. In any event, in the absence of findings, this court cannot determine whether the trial court properly considered those offers of sale and therefore applied the correct legal standard.
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After a bench trial, a trial court must put forth the findings of fact relied upon to justify its actions. Fed. R. Civ. P . 52(a). Without findings, this court has no basis to evaluate whether [**9] the district courts analysis uses the proper legal standard. Cf. Nutrition 21 v. United States, 930 F .2d 867, 869, 18 USPQ2d 1347, 1349 (Fed. Cir. 1991) (preliminary injunction). Because the absence of findings goes to the heart of the issue, any error cannot be harmless error. Therefore, this court vacates the district courts judgment on validity and remands for a proper on-sale analysis. II. 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. Atlantic Thermoplastics, slip op. at 14. According to the trial court, 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. Id. at 15. The court further held that the claim requires that the solid insert material be held in position by the inherent tack of the material. The trial court specifically rejected any interpretation which allowed injection of the heel insert as a liquid into the mold. This court interprets the 204 patent claims in light of the claim language, the specification, and the prosecution history. Hormone Research Found. v. Genentech, Inc., 904 F .2d 1558, 1562, 15 USPQ2d 1039, 1042-43 (Fed. Cir. 1990), cert. dismissed, 111 S. Ct. 1434 (1991). This interpretation proceeds from the vantage point of one skilled in the art. Smithkline Diagnostics v. Helena Labs., 859 F .2d 878, 882, 8 USPQ2d 1468, 1471 (Fed. Cir. 1988). The parties agree that the district court correctly determined that the Surge process includes each limitation of claim 1. Therefore, the Surge process infringes the 204 patent. The Sorbothane process is a two-pour process which first injects a liquid elastomer and then a liquid polyurethane into the mold. The Sorbothane mold includes a [**11] dam which outlines the heel placement of the insert.
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This dam captures and confines the liquid elastomer. The dam ensures that the elastomer solidifies in place to form the heel insert. Thus, upon injection of the liquid elastomeric material, the dam not the tack of the elastomeric material holds the insert in place during introduction of polyurethane foam. The district court found that the Sorbothane process did not literally infringe the 204 patent for two reasons. First, the injection of liquid elastomeric material did not fit within the placing limitation. As a liquid, the court determined that the insert lacked the elastomeric qualities specified in the claim. Second, the district court determined that the dam, rather than the tackiness, held the insert in place in the mold. Thus, according to the district court, the Sorbothane process did not satisfy the tackiness limitation of the claim. This court finds no clear error in the district courts findings that in situ molding of the liquid elastomeric insert material does not fit within the placing limitation. Placing an elastomeric insert material into the mold is a limitation in claim 1. The Sorbothane process introduces a liquid insert into a mold within the larger innersole mold. The specification repeatedly refers to the insert as a solid or cellular material not a liquid. Furthermore, upon introduction under the Sorbothane process, the liquid polyurethane lacks elastomeric properties. The district courts finding comports with the language used in the 204 claims. Substantial evidence from expert witnesses supports the district courts interpretation. This court also finds no clear error in the district courts finding that the Sorbothane process does not use tackiness to hold the elastomeric insert in place during injection of the polyurethane foam. The trial court specifically found that the tackiness of the chemical composition has no effect on the Sorbothane process, as an essential component of this process is the use of a teflon-coated mold, sprayed with mold release, designed to reduce any surface tack, thus facilitating release of the heel cup from the mold. Atlantic Thermoplastics, slip op. at 20. The record suggests no clear error in this finding. The teflon-coated mold and mold release of the Sorbothane process inhibit the tackiness of the solidified insert. Thus, tackiness does not hold the insert immobile during insertion and expansion of the polyurethane foam. Rather, as the district court found, the small dam in the heel section holds the elastomeric material in place during its liquid and solid states. The Sorbothane process thus does not meet the surface tack claim limitation. The district court also found no infringement under the doctrine of equivalents. The trial court determined that the way the Sorbothane process performed its
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function was substantially different from that claimed in the 204 patent. 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. This court discerns no clear error in this finding. This court finds no basis to reverse the district courts non-infringement finding on the Sorbothane process. Therefore, this court affirms the district courts determination that Sorbothane innersoles do not infringe claim 24 of the 204 patent. III. Product-by-Process Claims In the alternative, Atlantic argues that Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F .2d 1565, demands reversal of the non-infringement finding, even under the district courts present interpretation of the claims. In Scripps Clinic, 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. Id. at 1583. 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. Therefore, according to Atlantic, the Sorbothane innersoles though made by a different non-infringing process also infringe. In sum, Atlantic urges this court to ignore the process claim language in its product-by-process claim. A. Supreme Court and Regional Circuit History To construe and apply the product-by-process claim of the 204 patent, this court must examine the history of products claimed with process terms.2 This inquiry begins with several century-old Supreme Court cases.
2
This court in Scripps Clinic ruled without reference to the Supreme Courts previous cases involving product claims with process limitations. In the absence of responsive briefing of the issues by the Scripps Clinic parties, this court noted that it was reviewing an undeveloped record, and devoted one paragraph to resolving the jurisdictional issue and one paragraph to the merits. Scripps Clinic & Research Found. v. Genentech, Inc., 927 F .2d 1565, 1583-84, 18 USPQ2d 1001, 1015 (Fed. Cir. 1991). 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. See Tucker v. Phyfer, 819 F.2d 1030, 1035 n.7 (11th Cir. 1987). For the reasons set forth below, we necessarily so conclude.
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In Smith v. Goodyear Dental Vulcanite Co., 93 U.S. 486, 493, 23 L. Ed. 952 (1877), the Supreme Court construed a patent claiming a plate of hard rubber, or vulcanite, or its equivalent, for holding artificial teeth, or teeth and gums, substantially as described. This claim was not drafted in contemporary product-by-process terms, but instead incorporated the specification. The specification, in turn, described a process for embedding teeth in soft vulcanite which later hardened to hold the artificial teeth firmly in place.3 The Supreme Court stated that the product could not be separated from the process by which it was made: The invention, then, is a product or manufacture bade in a defined manner. It is not a product alone separated from the process by which it is created. . . . The process detailed is thereby made as much a part of the invention as are the materials of which the product is composed. Smith, 93 U.S. at 493. The Supreme Court concluded that both the process and the product of that process were patentable. Id. at 493, 494, 501. A few years later, the same patent was again before the Supreme Court this time in an infringement context. Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 26 L. Ed. 149 (1880). A district court had held that a celluloid plate for artificial teeth with its differing process did not infringe the patent. The Supreme Court first quoted from its Smith opinion to clarify that the patent claimed both product and process. On that basis, the Supreme Court concluded: Hence, to constitute an infringement of the patent, both the material of which the dental plate is made, or its equivalent, and the process of constructing the plate, or a process equivalent thereto, must be employed.
3
Incorporation of the specification into the claim is contrary to current claim practice. See, e.g., SRI Intl v. Matsushita Elec., 775 F.2d 1107, 1121, 227 USPQ 577, 585 (Fed.Cir. 1985) (in banc). Under the old practice for claims with the phrase substantially as described, the Supreme Court treated the specification as part of the claim. Thus, the specification added process limitations to the claimed product. Smith v. Goodyear Dental Vulcanite Co., 93 U.S. 486, 494, 23 L. Ed. 952 (1877) (If, then, the claim be read, as it should be, in connection with the preceding part of the specification, and construed in the light of the explanation which that gives, the invention claimed and patented is [the dental plate produced by the vulcanization process].).
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Id. at 224. After noting that the [celluloid] process is wholly unlike that employed in making hard rubber or vulcanite plates, id. at 229, the Court affirmed the district courts noninfringement decree. The Court also reasoned that the product of that process, a celluloid plate, is not substantially the same as one made of hard rubber. Id. Another Supreme Court case in this time frame illustrated the significance of claiming a product with process limitations. In Merrill v. Yeomans, 94 U.S. 568, 24 L. Ed. 235 (1877), the patentee of heavy hydrocarbon oils deodorized by an innovative process sued retailers. These retailers sold a product nearly identical to the patentees oil, though deodorized by a different process. As the Supreme Court noted, if the patent claimed a new oil, then the sellers of that product may be liable as infringers. Id. at 568. If, on the other hand, the patent claimed only the process, the retailers did not use that, or any other, process. Id. The Court again read the process language in Merrills specification as a limitation on the claims. Id. at 571. Merrill argued, for good reason, against this interpretation: The counsel for appellant disclaim this latter construction, and allege that the patent covers the oil described, by whatever mode it may be produced. It is necessary to insist on this view, 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. The Supreme Court noted that Merrills counsel had to make that argument because defendants sold oil made by a different process. In discussing the process limitations, the Court said by the well-settled rules of construing all instruments, some importance must be attached to them; and, if they are to be regarded at all, they must either refer to the process of making the oils for which the applicant is claiming a patent, or they are intended to limit his claim for a patent for the product to that product only, when produced by treating the oils in the manner before described. Id. (emphasis added). The Court concluded that Merrill claimed only a process.4 Therefore, the retailers were not proper parties.
4
This case suggests, however, that product-by-process claims may serve to bring retailers within the scope of an infringement action. Indeed in the case at bar, Atlantic Thermoplastics has sued Faytex, a retailer, under the product-by-process claims of the 204 patent.
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In Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293, 28 L. Ed. 433 , 4 S. Ct. 455 (1884) (BASF), the Supreme Court considered an infringement case. BASF involved alizarine, a dye. BASF obtained Reissue Patent No. 4,321 covering the product, artificial alizarine, as produced by a bromine reaction process. The claim stated: Artificial alizarine, produced from anthracine or its derivatives by either of the methods herein described, or by any other method which will produce a like result. Id. at 296. The Supreme Court noted, No. 4,321 furnishes no test by which to identify the product it covers, except that such product is to be the result of the process it describes. Id. at 305.5 Cochrane, the accused infringer, sold artificial alizarine made by a sulfuric acid reaction process. BASF sued Cochrane for infringing the 4,321 patent. The district court determined that Cochranes product made by a sulfuric process infringed the 4,321 patent. The circuit agreed. Before the Supreme Court, BASF contended that Cochrane infringed because it made artificial alizarine from anthracine or its derivatives by some method. Id. at 309 (emphasis added). BASF argued that Cochrane made artificial alizarine; therefore, the process did not matter. Id. at 310. The Supreme Court disagreed. Instead, 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, or else nothing can be held to infringe the patent which is not made by that process. Id. at 310. Based on this standard, the Supreme Court held the claim of the 4,321 patent not infringed because the defendants had used a different process.
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). Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293, 296, 305-06, 28 L. Ed. 433 , 4 S. Ct. 455 (1884) (emphasis added) (BASF).
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After stating this rule for claim construction, the Supreme Court offered an alternative view of the case. BASF , 111 U.S. at 311. BASFs artificial alizarine was an old article. Id. In the words of the Supreme Court, While a new process for producing it was patentable, the product itself could not be patented, even though it was a product made artificially for the first time. Id.; see also The Wood-Paper Patent, 90 U.S. 566, 596, 23 L. Ed. 31 (1874). In other words, a patent applicant could not obtain exclusive rights to a product in the prior art by adding a process limitation to the product claim. A new process, although eligible for a process [**22] patent, could not capture exclusive rights to a product already in the prior art. Therefore, BASF could have claimed a new process for making artificial alizarine, but it had no rights to claim the product. Thus, in BASF , the Supreme Court addressed both infringement and validity (in terms of patentability) of product claims containing process [**23] limitations. In judging infringement, the Court treated the process terms as limitations on the patentees exclusive rights. In assessing validity in terms of patentability, the Court forbade an applicant from claiming an old product by merely adding a new process. The infringement rule focused on the process as a limitation; the other rule focused on the product with less regard for the process limits. A decision from the Patent Office, for instance, cited BASF twice once for an infringement rule and once for a patentability rule. Ex parte Fesenmeier, 1922 C.D. 18, 302 Off. Gaz. Pat. Office 199 (1922). In Plummer v. Sargent, 120 U.S. 442, 30 L. Ed. 737 , 7 S. Ct. 640 (1887), the Supreme Court reviewed two patents. One claimed an improved process for bronzing or coloring iron; another claimed the product of that process. Id. at 443. After reviewing the prior art and descriptions of both patents, 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, and not one which may be produced in any other way. So that, whatever likeness [**24] may appear between the product of the process described in the patent and the article made by the defendants, their identity is not established unless it is shown that they are made by the same process.
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Id. at 448. After finding it difficult, if not impossible to discern differences between the accused product and the product claimed with process limitations, the Court concluded that the two processes differ. Id. at 449. Accordingly, the Court affirmed the circuit courts noninfringement ruling. Id. at 450. In General Electric v. Wabash Appliance, 304 U.S. 364, 82 L. Ed. 1402 , 58 S. Ct. 899 (1938), the Supreme Court considered a product claim for a filament in incandescent lamps. Under R.S. 4888 (the forerunner of the current 35 U.S.C. 112 (1988)), the Supreme Court determined that the claim did not adequately describe the invention. General Elec., 304 U.S. at 368. In reviewing the claim, the Court considered whether the process described in the specification made the claim more definite. In that context, the Court stated: Although in some instances a claim may validly describe a new product with some reference to the method of production, a patentee who does not distinguish his product from what is old except by reference, express or constructive, to the process by which he produced it, cannot secure a monopoly on the product by whatever means produced. General Elec., 304 U.S. at 373 (footnote omitted). At that point, the Court quoted from BASF: nothing can be held to infringe the patent which is not made by that process. Id. at 373-74. Thus, 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. In reviewing for infringement, the regional circuits followed the rule that the process limits a product-by-process claim. For instance, in Hide-Ite Leather v. Fiber Products, 226 F . 34 (1st Cir. 1915), the United States Court of Appeals for the First Circuit affirmed the trial courts noninfringement holding because the accused product was not made by the claimed process or its equivalent. The First Circuit stated: It is also a well-recognized rule that, although a product has definite characteristics by which it may be identified apart from the process, still, if in a claim for the product it is not so described, but is set forth
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in the terms of the process, nothing can be held to infringe the claim which is not made by the process. In Parke, Davis & Co. v. American Cyanamid Co., 207 F .2d 571, 572, 99 USPQ 237, 238 (6th Cir. 1953), the patentees product claim included a process limitation: said acid being the acid derived by autolysis of mammalian liver tissue. The Sixth Circuit determined that a synthetic folic [**27] acid process did not infringe the claimed extraction process. Id. Likewise, the Seventh Circuit in National Carbon Co. v. Western Shade Cloth Co., 93 F .2d 94, 97 (7th Cir. 1937), cert. denied, 304 U.S. 570, 82 L. Ed. 1535 , 58 S. Ct. 1039 (1938), 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. Indeed sister circuits that examined the standard for infringement of product-by-process claims uniformly followed the Supreme Courts lead. Commentators have generally read this line of cases to mean that, in infringement proceedings, the process in a product-by-process claim serves as a limitation. In his treatise, 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. Most decisions hold that such a claim is infringed only by a product made through a substantially identical process . . . . 2 D. Chisum, Patents 8.05 (1991) (footnotes omitted). Lipscombs 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. Lipscomb III, Lipscombs Walker on Patents 11:19 (3d ed. 1985). Another legal text states: Product-by-process claims are usually deemed infringed only by a product made by the same process. 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.
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[This precedent represents] a hundred years of prior law . . . . B. 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, not by reference to its manufacturing process. For instance, 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. In re Johnson, 55 C.C.P .A. 1463, 394 F.2d 591, 594, 157 USPQ 620, 623 (CCPA 1968); In re Lifton, 189 F .2d 261, 89 USPQ 641 (CCPA 1951); In re McKee, 95 F .2d 264, 266, 37 USPQ 209, 210 (CCPA 1938). Thus, the Patent and Trademark Offices Manual of Patent Examining Procedure (MPEP) still refers to product-by-process claims as peculiar in comparison to products claimed in the conventional fashion. MPEP 706.03(e) (5th ed. 1983, rev. 1989). Recognizing this rule, the CCPA contrasted productby-process claims with true product claims. In re Hughes, 496 F .2d 1216, 1219, 182 USPQ 106, 108 (CCPA 1974). As early as 1891, 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. . . . When the case arises that an article of manufacture is a new thing, a useful thing, and embodies invention, and that article cannot be properly defined and discriminated from the prior art otherwise than by reference to the process of producing it, a case is presented which constitutes a proper exception to the rule. In re Painter, 57 Off. Gaz. Pat. Office 999 (1891) (emphasis in original). For years, the PTO, with the approval of the CCPA, limited this exception to those instances where the applicant could describe an invention in no way other than in terms of its manufacturing process. See, e.g., In re Bridgeford, 53 C.C.P .A. 1182, 357 F.2d 679, 149 USPQ 55 (CCPA 1966);
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In re Moeller, 117 F.2d 565, 567, 48 USPQ 542 (CCPA 1941); Fesenmeier, 302 Off. Gaz. Pat. Office 199. 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 . . . . 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. Bridgeford, 357 F.2d at 682. Thus, where applicants could not adequately describe their inventions in terms of structural characteristics, whether due to language lagging behind innovations or existing technology lagging behind in the ability to determine those characteristics, the court permitted product-by-process claiming. -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 . . . . While it would in that case not be infringed by anything but the product of the machine or of the process, it might be an important protection . . . . Buono, 77 F .2d at 279. In particular, 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. Id. As noted, however, this claim format remained an exception to the general rule. As product-by-process claiming became more common, the CCPA moved toward accepting product-by-process claims without a showing of necessity. In 1969, the court reversed a Board of Appeals decision holding a product-by-process claim improper because the applicant could claim the invention without relying on the process. In re Pilkington, 56 C.C.P .A. 1237, 411 F.2d 1345, 162 USPQ 145 (CCPA 1969). The court instead determined [**33] that the applicant had adequately described the invention in accordance with the requirements of section 112. Id. Thus, the court
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shifted the emphasis away from the necessity for product-by-process claiming and toward determining whether the claim adequately defines the invention. Bridgeford, 357 F.2d at 682-83. In Hughes, the CCPA permitted product-by-process claims even though the applicant could describe the invention in structural terms. Hughes, 496 F .2d at 1219. 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. Therefore, 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. Id. The court, however, continued to regard product-by-process claims as an exception to the general rule. Id. at 1218. The overall effect of these cases made the product-by-process exception more available to applicants. 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. See, e.g., In re Avery, 518 F.2d 1228, 186 USPQ 161 (CCPA 1975); In re Fessmann, 489 F .2d 742, 180 USPQ 324 (CCPA 1974); In re Brown, 59 C.C.P .A. 1036, 459 F.2d 531, 173 USPQ 685 (CCPA 1972). The court uniformly followed the Supreme Courts rule. An applicant could obtain a process patent for a new, useful, and nonobvious process, but could not claim rights to a product already in the prior art by merely adding a process limitation. As the PTO confronted more product-by-process claims, it encountered a daunting administrative task. In weighing patent-ability, the PTO lacked facilities to replicate processes and compare the resultant product with prior art. The CCPA recognized this difficulty: As a practical matter, 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. Brown, 459 F .2d at 535. The PTOs administrative difficulty presented another reason that the CCPA continued to regard product-by-process claims as exceptions to the general rule. Hughes, 496 F.2d at 1218.
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- In assessing patentability, moreover, the PTO necessarily concentrated on discerning what product or products might result from the processes in the claim. To prevent an applicant from obtaining exclusive rights to an old product by merely claiming a new process, the PTO needed a practical administrative tool. This stress on the product was appropriate because the invention so defined is a product and not a process. Bridgeford, 357 F.2d at 682 (emphasis in original). This point of emphasis, however, did not deny that the process language in the claim was a defining limit of the product claim. Rather, the process limitation defined a product, not a process. Indeed, the court in Bridgeford called the process a claim limitation. See also Brown, 459 F .2d at 535; Hughes, 496 F .2d at 1218. The CCPA, even in reviewing only for patentability, treated the claimed process as a limitation. In Hughes, for instance, the court clarified that the process defines and limits the scope of the claim. Hughes, 496 F .2d at 1218-19 (product claim was of a broader scope than product-by-process claims). In fact, if the process limitations of a product-by-process claim did not adequately define the invention, an applicant would fail to satisfy section 112. See id.; Brown, 459 F.2d at 535. In other words, the process is a defining limit. The CCPA also explicitly acknowledged that the process operates as a limitation in infringement actions. In Bridgeford, the court stated: The policy of the Patent Office in permitting product-by-process [**37] type claims . . . 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 . . . . 357 F.2d at 682 n.5 (emphasis in original); see also In re Hirao, 535 F.2d 67, 69 n.3, 190 USPQ 15, 17 n.3 (CCPA 1976). In Moeller, 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, 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, he is permitted to so claim his article, but is limited in his protection to articles produced by his method referred to in the claims. 117 F.2d at 568.
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In sum, 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. This exception, however, permitted an applicant to claim a product in process terms, not to acquire exclusive rights to a product already in the prior art. Though using only process terms, a product-by-process applicant sought rights to a product, not a process. Therefore, the applicant had to show that no prior art product anticipated or rendered obvious the product defined in process terms. The PTO and the CCPA did not reason that the process was not a defining limit of the product. To the contrary, the process was the only way to define and limit in sum, to claim the product. Hughes, 496 F.2d at 1218. Thus, in both patentability actions before the CCPA and infringement actions before the Supreme Court or the regional circuits, the courts regarded the process language in product-by-process claims as limiting the claim. Indeed by definition in most cases, the product could not be claimed in any other terms. This court, in its initial consideration of a product-by-process claim for patentability, acknowledged that process claim limitations define the product: Product-by-process claims are not specifically discussed in the patent statute. 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. For this reason, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. This court already distinguishes treatment of claims for patentability before the PTO from treatment of claims for validity before the courts. In re Zletz, 893 F .2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). This court permits the PTO to give claims their broadest reasonable meaning when determining patentability. Id.; see also J.P . Stevens & Co. v. Lex Tex Ltd., 747 F .2d 1553, 1566, 223 USPQ 1089, 1098 (Fed. Cir. 1984), cert. denied, 474 U.S. 822, 88 L. Ed. 2d 60 , 106 S. Ct. 73 (1985). During litigation
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determining validity or infringement, however, this approach is inapplicable. Zletz, 893 F .2d at 321; [**40] DeGeorge v. Bernier, 768 F .2d 1318, 1322 n.2, 226 USPQ 758, 761 n.2 (Fed. Cir. 1985). Rather the courts must consult the specification, prosecution history, prior art, and other claims to determine the proper construction of the claim language. See, e.g., Tandon Corp. v. United States Intl Trade Commn, 831 F .2d 1017, 1021, 4 USPQ2d 1283, 1286, 5 Fed. Cir. (T) 129 (1987). Thus, accommodating the demands of the administrative process and recognizing the capabilities of the trial courts, this court treats claims differently for patent-ability as opposed to validity and infringement. The PTOs treatment of product-by-process claims as a product claim for patentability is consistent with policies giving claims their broadest reasonable interpretation. The same rule, however, does not apply in validity and infringement litigation. In any event, claims mean the same for infringement and validity. See, e.g., Senmed, Inc. v. Richard-Allan Medical Indus., 888 F .2d 815, 818 n.7, 12 USPQ2d 1508, 1511 n.7 (Fed. Cir. 1989); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F .2d 1437, 223 USPQ 603 (Fed. Cir. 1984). Moreover, accepting Atlantics invitation to ignore the process limitations in the 204 patents product-by-process claims would require this court to disregard several other mainstay patent doctrines. For instance, Atlantic in effect invites this court to discount the significance of excluding claim limitations from infringement analysis. See, e.g., Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419, 52 L. Ed. 1122 , 28 S. Ct. 748 (1908) (The claims measure the invention.). This court has repeatedly stated that infringement requires the presence of every claim limitation or its equivalent. An accused infringer can avoid infringement by showing that the accused device lacks even a single claim limitation. Thus, 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. In addition, Atlantics 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, not the claims themselves. This court has repeatedly emphasized that infringement analysis compares the accused product with the patent claims, not an embodiment of the claims. Thus, Atlantics invitation would require this court to directly ignore basic patent principles.
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In light of Supreme Court caselaw and the history of product-by-process claims, this court acknowledges that infringement analysis proceeds with reference to the patent claims. Thus, process terms in product-by-process claims serve as limitations in determining infringement. In so holding, this court acknowledges that it has in effect recognized another reason to regard product-by-process claims as exceptional. This court recognizes that product-by-process claims will receive different treatment for administrative patentability determinations than for judicial infringement determinations. This difference originated with the Supreme Courts BASF rules a difference this court endorsed as recently as 1985. See Thorpe, 777 F .2d at 697. This court, therefore, rejects Atlantics invitation to ignore the process limitations in its product-by-process claims. This courts infringement rules do not require reversal of the district courts non-infringement finding regarding the Sorbothane process. Neither does this court disturb the PTOs present practice for assessing patentability of product-by-process claims. IV. Lost Profits: The district court determined that Faytexs sale of Surge innersoles did not constitute willful infringement of the patent. The court thus declined to award enhanced damages. The court assessed damages at $ 68,000 based on a lost profits valuation. The district court erred in calculating lost profits. While a market share approach may be appropriate here, the district court did not properly apply this approach. It merely assumed that Faytex was the only other supplier of innersoles and that Atlantic would have made all of Faytexs sales. However, the district court also held, and this court agrees, that Sorbothane innersoles did not infringe. Faytex also sold non-infringing Sorbothane innersoles. Atlantic is not entitled to lost profits on Faytexs sales of Sorbothane innersoles. Moreover the record contains no evidence that Atlantic would have made both Surge and Sorbothane sales. Thus, this case does not involve a two-supplier market which would justify the assumption that the patent owner would have made all the infringers sales. The district court, on remand, will recalculate appropriate damages
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using a permissible market share approach, assuming market share analysis is appropriate, if the patent is determined to be valid. As a sanction for casting unsupported and unsupportable allegations that Atlantic filed a frivolous appeal, this court charges costs to Faytex. VACATED-IN-PART, AFFIRMED-IN-PART, and REMANDED ATLANTIC THERMOPLASTICS CO., INC., JAMES B. SULLIVAN and RICHARD B. FOX, Plaintiffs-Appellants, v. FAYTEX CORPORATION, Defendant/Cross-Appellant. UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT 974 F.2d 1279 August 14, 1992, Decided JUDGES: NIES, RICH, NEWMAN, LOURIE OPINION: ON REQUEST FOR REHEARING IN BANC DISSENT BY: NIES; RICH; NEWMAN; LOURIE DISSENT:
RICH, Circuit Judge. dissenting from the denial of rehearing in banc.

I join the Chief Judges request for and the opinions of Judges Lourie and Newman in support of in banc rehearing. The panel opinion herein was not handed down without objection. I was one of the objectors for three principal reasons. The panel has misapprehended its function as an arm of this court. It has violated a rule of this court which has existed since its creation. It has misconstrued the early Supreme Court opinions on which it relies to justify violation of the rule. I wish to point out to the other members of this court and to the bar, if need be, just what the Atlantic panel, as Judge Newman calls it, has done. This is no casual slip in an opinion. The panel has gone on an unnecessary excursion beyond the needs of this case, to review, as it sees it, the entire field of product-by-process claims and lay down a universal rule applicable to all such claims in these words:
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Thus [summarizing its view of case law], in both patentability actions before the CCPA and infringement actions before the Supreme Court or the regional circuits, the courts regarded the process language in product-by-process claims as limiting the claim. [Slip opin. p. 27.] In light of Supreme Court caselaw and the history of product-by-process claims, this court acknowledges that infringement analysis proceeds with reference to the patent claims. Thus, process terms in product-by-process claims serve as limitations in determining infringement. [Slip opin. p. 30.] No exceptions. As Judge Lourie has succinctly pointed out, this whole excursion was unnecessary because the patentee admitted that claim 24, the product-byprocess claim, was limited to the process. The claim read: The molded innersole produced by the method of claim 1. There was, therefore, no occasion to review the law to determine how the claim should be construed. It was not an issue in the case. Nevertheless, for unexplained reasons, 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, which is its proper function. We are not here to provide restatements of the law. Such restatements should not be made without an opportunity for all affected parties to be heard from. The affected parties here are not the vendors of inner soles but largely the entire chemical industry, particularly the pharmaceutical manufacturers. Judge Newmans opinion refers to the cost of producing a new drug. To this I would add a recent statement by Roger A. Brooks, an Assistant Vice President of the Pharmaceutical Manufacturers Association [**4] (PMA) made at the May 14, 1992, meeting of AIPLA (Bulletin, April-June 1992 p. 475). 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. Brooks said: In the pharmaceutical industry, innovation comes at a premium cost. And R&D productivity is measured generally in terms of an individuals or nations ability to develop what we call new chemical entities, or NCEs. The cost of developing an NCE continues to rise each year. For example in 1976, the cost of moving an NCE from laboratory to market was $ 54 million. By 1990, this figure has risen nearly fivefold to over $ 230 million per NCE. He then pointed out that only one out of 5,000 or 10,000 compounds discovered ever make it to the market. This kind of innovative R&D is not going to be encouraged by the rule just laid down by the Atlantic panel.
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The most egregious act of the Atlantic panel, however, is its defiant disregard, for the first time in this courts nearly ten-year history, of its rule that no precedent can be disregarded or overruled save by an in banc court, on the stated [**5] but feeble ground that the authors of the precedential opinion ruled without reference to the Supreme Courts previous cases involving product claims with process limitations. The Atlantic panel continued: A decision that fails to consider Supreme Court precedent does not control if the court [i.e. the Atlantic panel] determines that the prior panel [in the Scripps case] would have reached a different conclusion if it had considered controlling precedent. This is not only insulting to the Scripps panel (Chief Judge Markey, Judge Newman and a visiting judge), it is mutiny. It is heresy. It is illegal. It is interesting, indeed, 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. Two of these judges had earlier careers as research chemists. Their patent work involved, beyond anything else, the writing, interpreting, and arguing about claims, around which the whole law of infringement revolves. It is more than a little bit possible that we have considered the Supreme Court [**6] cases on which the Atlantic panel relies, and more than once, which accounts for the fact that we do not agree with the Atlantic panels interpretation of them. The extensive efforts of Judge Newman to explain what they are all about speak for all of us and I need not say more. In concluding, I quote from the BNA PTC Journal report on this case their editorial comment (Vol. 44, p. 286): PTCJ COMMENT: One might fairly inquire about the vitality of the Federal Circuits prior panel rule in light of this ruling. The rationale in footnote 2 for not following Scripps cited another footnote from an Eleventh Circuit juvenile incarceration case (see Tucker v. Phyfer, 819 F.2d 1030, 1037, n.7 CA 11 1987) which in turn cited no authority: The precedential status of the Scripps ruling appears to have been clouded, but future panels may still be entitled to cite it since it is not expressly repudiated here. While the correction in this case involved overlooked Supreme Court precedent, the logic would seem to permit the invocation of other CCPA and CAFC precedent as well. Res ipsa loquitur. Fortunately, this court has another rule as yet to be ignored by a panel, I believe that where there are conflicting precedents, the earlier precedent controls. But the conflict should have been eliminated in banc to avoid confusion in the law.
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ANNEXURE II - PATENT OFFICES IN INDIA

Sl No Office Name Office Address
Office Phone/ Fax/Email/
Name of Contact Person Shri S. Chandrasekaran Controller General of Patents, Designs & Trade Marks Dr. S.K. Pal Assistant Controller of Patents & Designs
Telegram and Trade Marks Office of the Controller General of Patents,Designs
Office of the Controller General of Patents, Designs & Trade Marks
C.G.O. Building, 101, Maharshi Karve Road, Mumbai-400 020. India
(91)(22) 2207 0146 (91)(22) 2201 3646 (91)(22) 2203 9050 Fax: (91)(22) 2205 3372 (91)(22) 2201 7368 (91)(33) 2247 4401 (91)(33) 2247 4402 (91)(33) 2247 4403 (91)(33) 2247 3851 (91)(33) 2240 1353 Fax (91)(33) 2247 3851 (91)(11)25871255 (91)(11)25871256 (91)(11) 25871257 (91)(11) 25871258 (91)(11) 25877245 Fax : (91) (11)25876209 (91) (11)25872532 (91)(22)24925092 (91)(22)24924058 Fax (91)(22)24920622
Patent Office and its Branches

1 Patent Office Kolkata (Head Office) The Patent Office, Nizam Place, 2nd M.S. O. Building, (5-7) floors, 234/4 Acharya Jagdish Bose Road, Kolkata. Pin 700 020, India Government of India Patent Office Branch, W-5, West Patel Nagar, New Delhi, Pin 110 008, India E_mail : delhipatent@vsnl.com Patent Office Branch Todi Estate, IIIrd Floor, Sun Mill Compound, Lower Parrel, West Mumbai - Pin 400013 India Patent Office Branch, Rajaji Bhavan, IIIrd Floor, 'C' Wing, Besant Nagar, ChennaiPin 600090 India
Patent Office Branch Delhi (New Address with effect from 25th July 2001)
Shri K.S. Kardam Asstt. Controller of Patents & Designs
Patent Office Branch Mumbai
Shri N. K. Garg Asstt. Controller of Patents & Designs
Patent Office Branch Chennai
(91)(44)24901495 (91)(44)24901496 (91)(44)24903686 Fax (91)(44)24901492 (91)(44)24900931 E-Mail: chpatent@tn.nic.in
Shri K Venugopal Asstt. Controller of Patents & Designs
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Sl No 5
Office Name
Office Address Patent Office Chennai Branch Guna Complex, Annexure-II Sixth Floor, No. 443 Annasalai,Teynampet Chennai - 600018
Office Phone/Fax/ Name of Contact Email/Telegram
Person Shri (Dr.) W.S. Dhumane Deputy Controller of Patents & Designs
(91)(44)24314324 (91)(44)24314325 (91)(44)24314326 Fax (91)(44)24314750
Design Registration
1 Patent Office Kolkata Patent Office, Nizam Place, 2nd M.S. O. Building, (5-7) floors, 234/4 Acharya Jagdish Bose Road,Kolkata. Pin 700 020, India (91)(33) 2247 4401 (91)(33) 2247 4402 (91)(33) 2247 4403 (91)(33) 2247 3851 (91)(33) 2240 1353 Fax (91)(33) 2247 3851 Assistant Controller of Patents & Designs
Offices and its E-mail Addresses
Patent Office Patent Office, Calcutta Patent Office Branch, New Delhi Patent Office Branch, Mumbai Patent Office Branch, Chennai Trade Mark Registry Trade Mark Registry, Mumbai Trade Mark Registry Branch, Ahmedabad Trade Mark Registry Branch, Delhi Trade Mark Registry Branch, Chennai Trade Mark Registry Branch, Calcutta Patent InformationSystem Patent Information System, Nagpur
E-mail Addresses 1. patentin@vsnl.com 2. patindia@giascl01.vsnl.net.in 1. delhipatent@vsnl.com 1. patmum@vsnl.net 1. chpatent@tn.nic.in 2. patentchennai@vsnl.net E-mail Addresses 1. tmrmum@bom5.vsnl.net.in 1. tmrahm@ad1.vsnl.net.in 1. tmrdel@ndf.vsnl.net.in 1. tmrchebr@md3.vsnl.net.in 1. tmrcalbr@cal2.vsnl.net.in E-mail Addresses 1. pisnagp@nag.mah.nic.in 2. pisnagpur@satyam.net.in
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PATENTING IN INDIA

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

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

P.G. Diploma in Patents Law

P.G. Diploma in Patents Law

P.G. Diploma in Patents Law

Importance of Patent Policy

The Patent Terms General Terms

P.G. Diploma in Patents Law

P.G. Diploma in Patents Law

CHAPTER II LEGISLATION SALIENT FEATURE

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

Patent Act, 1970:

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

Patent Amendment Act, 1999

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

PATENT LEGISLATION SALIENT FEATURES

Patent First Amendment Act of 1999:

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

Patent First Amendment Rules, 1999:

PATENT LEGISLATION SALIENT FEATURES

Patent Second Amendment Bill Legislative action for Second Amendment:

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law

PATENT LEGISLATION SALIENT FEATURES

P.G. Diploma in Patents Law