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Thomson Brandt Vs. the Controller of Patents and Designs - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtDelhi High Court
Decided On
Case NumberFirst Appeal No. 169 of 1984
Judge
Reported inAIR1989Delhi249; 1989(1)ARBLR339(Delhi); 38(1989)DLT78
ActsPatents Act, 1970 - Sections 3 and 48
AppellantThomson Brandt
RespondentThe Controller of Patents and Designs
Advocates: P.N. Sewak and; H.P. Sharma, Advs
Cases ReferredRaj Parkash v. Mangat Ram Choudhary
Excerpt:
.....116 against order passed by controller whereby application for grant of patent in respect of process of manufacture rejected - under section 5 there might be substances which may not admit of patent but method or process of their manufacture patentable - controller failed to examine fact relating to invention of process of 'pacification' of gaseous medium - controller further gone wrong in assuming that 'invention' of a process of manufacture results in production of substance which can be patented - held, controller misconstrued provisions of act. - - the said order does not proceed on the hypothesis that the claim of the appellant was hit by provisions of section 3 of the act which reads as under :section 3. what are not inventions-the following are not inventions within the..........and as such the learned/counsel for the appellant has limited his appeal to the rejection of patent claim in respect of the above reproduced statement of claims only. (2) learned counsel for the appellant has urged that the controller has misdirected himself and has ignored the provisions of section 5 of the patents act, 1970 (hereinafter referred to as 'the act') while rejecting the claim of the appellant. i have been taken through the order and various provisions of the act by him. section 6 of the act confers a right to apply for patents and reads as under : 'section 6. persons entitled to apply for patents-(1) subject to the provisions contained in section 14 an application for a patent for an invention may be made by any of the following persons, that is to say,- (a) by any.....
Judgment:

(1) This first appeal under Section 116 of the Patents Act. 1970 is directed against the order dated 8th March, 1984 of the Asstt. Controller of Patents & Designs, New Delhi (hereinafter called 'Controller') whereby application Patent No. 342/Del/SO of the appellant filed on 9th May, 1980 for grant of patent in respect of a process of manufacture was rejected. During the course of hearing before the Controller the statement of claims was amended and remanded and the final statement of claim reads as under:

'Statement of claims: 1. A process, for pacifying a gaseous medium, transparent to optical thermal radiation, the optical and infrared (IR) bands of electromagnetic waves spectrum comprising diffusing in the said medium a boron pacifying aerosol, at a delivery rate sufficient to attenuate electromagnetic radiations extending from 0 4 to 15 urn to an extent greater than 90% 2. The process as claimed in claim I wherein said aerosol is stored, in liquid form, in u receptacle comprising means for diffusing said aerosol. 3. The process as claimed in claim I, wherein said aerosol is stored, in a gaseous form, in a receptacle comprising means for diffusing said aerosol. 4. The process as claimed in claims I, wherein said gaseous medium is formed by the atmosphere. 5. The process as claimed in claim I wherein said gaseous medium is formed by the output flow from a propulsion system. 6. The process as claimed in claim I wherein said boron dichloride aerosol is diffused in the presence of sufficient water vapour to hydrolyze the boron pacifying. 7. The process as claimed in claim 6, wherein said aerosol and the water from which said water vapour is obtained stored separately in receptacle and are dispersed conjointly. 8. A process for pacifying a gaseous medium, transparent to optical and thermal radiation in the optical and infrared (IR) bands of the electromagnetic wave spectrum substantially as herein described'.

Page 7 of the impugned order shows that the attorney for the appellant had cancelled earlier statements of claims and as such the learned/counsel for the appellant has limited his appeal to the rejection of patent claim in respect of the above reproduced statement of claims only.

(2) Learned counsel for the appellant has urged that the Controller has misdirected himself and has ignored the provisions of Section 5 of the Patents Act, 1970 (hereinafter referred to as 'the Act') while rejecting the claim of the appellant. I have been taken through the order and various provisions of the Act by him. Section 6 of the Act confers a right to apply for Patents and reads as under :

'Section 6. Persons entitled to apply for patents-(1) Subject to the provisions contained in Section 14 an application for a patent for an invention may be made by any of the following persons, that is to say,- (a) by any person claiming to be the true and first inventor of the invention; (b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application; (e) by the legal representative of any deceased person who immediately before his death was entitled to make such an application. (2) An application under sub-section (1) may be made by any of the persons referred to there in either alone or jointly with any other person'.

This section shows that a true and first inventor, his assignee or legal representative can file an application for a patent for his invention. What is an invention has been defined in Section 2(i)(j) of the Act which reads as under:

'Section 2(i)(j) 'invention' means any new and useful :- (i) art, process, method or manner of manufacture ; (ii) machine, apparatus or other article ; (iii) Substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention';

Reading of Section 2(i&j;) confirms that even 'any new and useful, art, process, method or manner of manufacture' qualifies as an invention for the purposes of grant of patent. Such a 'process of manufacture' is independent of the substance produced by the manufacture. 'Process of manufacture' has a distinct identity of its own. Thus a patent can be claimed in respect only of a new process of manufacture. The principal requirement for a claim of patent in respect of a process of manufacture under the Act is that it must be new and useful It has been held in Mis. Bishwanath Prasad Radhey Shyam v. M;s. Hindustan Metal Industries, : [1979]2SCR757 that 'the fundamental principle uf Patent Law is that a patent is granted only for an invention which must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of a patent that it must be the inventor's own discovery as opposed to mere verification of what Was already known before the date of the patent; It was further observed therein that 'mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of apatent'. Whether a particular process of manufacture involves novelty and an inventive step so as to qualify as an invention would thus be a mixed question of law and fact and would depend mainly upon the circumstances of each case. No uniform tests can be laid down to determine it. nonetheless some of the tests can be whether the said process was previously known, used or practiced in any form or whether it was mentioned or described in any book or publication, in the country before the claim of patent. If not, it would be a novelty and thus an 'invention' under the Act.

(3) Considering the question what is an .'invention', it was held in Raj Parkash v. Mangat Ram Choudhary & Ors., : AIR1978Delhi1 as under:

'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 thereforee 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'.

Holding that 'the invention for which patent is claimed may be a product or an article or a process and in the case of an article the patent is in the end product or the article and 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', it was further observed in Raj Parkash (Supra) that 'whether a patent sets out an invention is to be determined by a true and fair construction of the specifications and the claims and 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 similarly is of no consequence and 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 and one should not get bogged down or involved in the detailed specifications and claims made by the parties who claim to be patentee or alleged violators'.

(4) It would be appropriate at this stage to refer to provisions of Section 5 of the Act which lays down :

Section 5. Inventions where only methods or processes of manufacture patentable. 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 the Chemical processes (including alloys, optical glass, semi-conductors and inter-metallic compounds), no patent shall be granted in respect of claims for the substances themselves, but claims for the methods of processes of manufacture shall be patentable'.

If there were any doubt, which to my mind there was none, this section sets the same at rest. According to this Section there might be substances which may not admit of a patent but the method or process of their manufacture shall be patentable. Thus the irresistible conclusion is that a process of manufacture is patentable.

(5) Let us examine the impugned order. From the perusal thereof, it would be found that the Controller has proceeded to reject the claim of the appellant on account of alleged non-definitiveness of the claim, non-production of main apparatus or other articles or goods or substance as a consequence of that process and for non-tangibility of cloud produced and con-tangibility of pacificator atmosphere. However, the impugned order does not show that the Controller has applied his mind to the provisions of Section 5 of the Act. Similarly it does not indicate if 'the process of pacifying' is in itself an invention within the meaning of the Act. The said order does not proceed on the hypothesis that the claim of the appellant was hit by provisions of section 3 of the Act which reads as under :

'Section 3. What are not inventions-The following are not inventions within the meaning of this Act- (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 of which would be contrary to law or morality or injurious to public health; (e) the mere discovery of a scientific principle or the formulation of an abstract theory. (d) 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; (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) a method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture; (h) a method of agriculture or horticulture; (i) any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products'.

If the claim of the appellant qualifies as an 'invention' and is not bit by provisions of Section 3 of the Act it was liable to be patented in accordance with the provisions of the Act. It would also be clear from the order of the Controller that the Controller has not gone into the correctness of the claim of the appellant as to whether in fact the appellant has at all devised a process of pacification of a gaseous medium in the optical and infrared bands of the electromagnetic spectrum. Thus the Controller has failed to examine one of the roost important fact relating to invention of the process of pacification of a gaseous medium etc. Though accepting that the cloud was created by the process for which patent was claimed, it has been held that nothing is produced on the plea that the cloud was not tangible or lacked definitiveness, more so, in the context of the atmosphere in which it is produced. The usefulness of the invention of the appellant in protecting an object from external attacks has also not been gone into by the Controller. The Controller has further gone wrong in assuming that it was only an 'invention' of a process of manufacture which results in production of a machine, apparatus or other 'articles, substance or goods which can be patented. He has observed that a process of manufacture unconnected with the product of manufacture cannot be patented. All this shows that the Controller has misconstrued the provisions of the Act. Learned counsel for the respondent has not been able to bring out anything from the impugned order which goes to suggest the Controller has considered the provisions of Section 5 of the Act while rejecting the application of the appellant which shows that a process may be patented while product may not be.

(6) Learned counsel for the respondent has drawn my attention to Section 48 of the Act which cannot be available for rejection of the claim of the appellant.lt was pointed out to the Controller that the process of 'removal of dust' and the 'process of purifying exhaust gases coming out of diesel engine' were registered as Patent No. 133673 and 147324 respectively but in the instant case the Controller has ignored the same on the plea of these being bad precedents. He has not otherwise given any grounds, much less cogent, for not following the principles behind the grant of Patents in those cases. Learned counsel for the respondent has submitted that claim for 'process for generation of power from solid carbonized fuels' was refused but this rejection could as well be a bad precedent. Learned counsel-for the appellant has drawn my attention to Elton and Leda Chemicals Lei's 1957 Rpc 267 wherein 'A process of dispersal of fog' was patented. The said ruling was quoted before the Controller but he has not followed it on the plea that it was under English Law. All these facts go to show that the Controller has failed to apply his mind to the 'entire case of the appellant and as such the impugned order cannot be sustained and is liable to be set aside.

(7) No other point has been urged before me.

(8) For my discussion and findings above, the appeal is allowed. The impugned order is set aside and the matter is remanded back to the Controller for being disposed of afresh in the light of the observations above after due notice to the appellant. There will be no order as to costs.


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