D.A. Desai, J.
1. Somabhai Ishwarbhai Bhagat filed Regular Civil Suit No. 2348 of 1971 in the City Civil Court at Ahmedabad complaining of infringement of patent No. 124131 which, according to the evidence was sealed on 26th October 1971 but which, according to Mr. P.M. Raval, learned Advocate now tells me, was sealed on 15th October 1971.
2. The patent was in respect of a roasting apparatus and complete specification briefly describes the invention as providing a vertical rotating shaft, the vertical rotating shaft being provided on its upper portion with a bevel gear wheel somewhere near the middle of the shaft, with a lever latch for raising or lowering the vertical shaft as required. At the lower end of the vertical rotating shaft a bent bracket would be fixed to it by a bolt and nut, the other end of the bent bracket being connected to a bent semi-circular and angular shovel. The invention further claims that the centre of the semi-circular and angular shovel will be co-axial to the centre of the vertical rotating shaft, Another bevel wheel would be mashed with the bevel wheel of the rotating shaft; and this another bevel wheel will be fixed with a horizontal rotatable shaft. The other end of this horizontal shaft would be provided with a pulley for belt drive or may be directly coupled with the driving element. A pan or an open vessel would be provided below the showed fitted with vertical shaft and the pan or open vessel would be placed on a heating apparatus. This invention was to be used in preparation of roasting corriender seeds popularly known as Dhana-Ni-Dal. The plaintiff applied for registration of this patent as per his application dated 24th November 1969. The application was accepted on 5th March 1971 and as stated earlier, patent according to the plaintiff's evidence was sealed on 26th October 1971 but Mr. P.M. Raval, learned Advocate now informs me that the date of sealing is 15th October 1971. The plaintiff complained in the suit that the defendant has put in its factory roasting apparatus, similar to the plaintiff's apparatus in respect of which patent is granted and thus the defendant is infringing and continuously threatening to infringe the said patent granted to the plaintiff. The plaintiff prayed for a permanent injunction restraining the defendant from infringing the patent and Rs. 1000 as and by way of damages or compensation and for accounts of profits made by the defendants by using the apparatus in respect of which the plaintiff's patent is registered. The plaintiff also took out notice of motion for appointment of a Commissioner to make inventory of the machines or apparatus which were being used by the defendant and also to take photographs thereof from different angles.
3. In response to the notice served by the City Civil Court, the defendant, appeared and filed its written Statement Exh. 6 on 11th October 1971 inter alia putting forth a counter claim for revocation of the plaintiff's patent.
4. On the same day on which the defendant put forth a counterclaim by its written statement, the learned Judge of the City Civil Court passed an order that as the defendant has put forth a counter-claim for revocation of the patent, the suit stood transferred to the High Court in view of the provisions contained in the proviso to Sub-section (1) of Section 29 of the Indian Patents and Designs Act, 1911. Pursuant to this order, the suit stood transferred to this Court.
5. Plaintiff had simultaneously filed two other suits being Regular Civil Suits Nos. 2347 of 1971 and 2349 of 1971 against two other defendants complaining infringement of the patent and the defendants in each suit put forth a counter-claim for revocation of the patent. Therefore, when the Suit No. 2348 of 1971 stood transferred to this Court, simultaneously two cognate suits herein mentioned also stood transferred to this Court. These three suits were numbered as Suits Nos. 3, 4 and 5 of 1971 and they were consolidated as per the order of the Court dated 24th December, 1971 and it was directed that evidence be recorded in Suit No. 4 of 1971.
6. When the suit along with the consolidated suits reached a stage of recording evidence after framing the issues on 16th December 1971, I made an order on 24th December 1971 that all the three suits with the entire record be sent to the City Civil Court Ahmedabad for recording oral evidence and to certify the evidence to this Court within the time granted by the order.
7. It appears that when the suits came up before the learned Judge of the City Civil Court for recording evidence, application Exh. 28 was given on behalf of the plaintiff. The plaintiff urged that the defendant will have to begin leading its evidence in all the three suits. This application was opposed on behalf of the defendants and the learned Judge of the City Civil Court by his order dated 26th June 1972 directed the defendants to begin leading their evidence. This order was challenged by an application being Civil Application No. 12 of 1971 in this Court and my learned brother J.B. Mehta, J. rejected the application by his order dated 17th August 1972. Thereafter, the learned Judge of the City Civil Court recorded evidence and certified the evidence to this Court. As soon as recording of the evidence was closed as per statement Ex. 85 dated 19th August 1972, application Ex. 86 was given on behalf of the defendant in the City Civil Court requesting the Court to permit it to amend the written statement so as to raise a contention that as the plaintiffs' alleged patent was sealed on 26th October 1971, the suit filed by the plaintiff on 24th September 1971 complaining of infringement would be premature in view of the proviso to Section 7 of the Act. No order appears to have been made on Exh. 86 and record was transmitted to this Court simultaneously certifying the evidence recorded by the City Civil Court.
8. When the matter was set down for hearing arguments Application Exh. 86 was pressed on behalf of the defendant. Plaintiff filed his affidavit-in-reply and also filed an affidavit of one Mr. J.T. Trivedi who was attending to the proceedings for registration of the patent on behalf of the plaintiff. The Court granted the amendment and issue 8A was added to the issues already framed by the Court on 16th December 1971.
9. As the newly added issue 8A went to the root of the matter, it was heard as a preliminary issue. The issue is as under:
8A. Whether the suit is premature for the reasons stated in para 1A of the Written Statement?
10. After some discussion took place in the Court, the plaintiff, apprehending that his suit complaining of infringement may fail on account of technical defect in the suit, it having been filed prior to the date of the sealing of the patent, gave Civil Application Nos. 9, 10 and 11 all of 1973 in each of the three suits requesting the Court that the plaintiff may be permitted to withdraw the suit with liberty to institute a fresh suit in respect of the subject matter of the suit and or on the same cause of action. That application is also now being disposed of.
11. Learned Advocate General, who appeared for the defendant in each suit contended that as the defendant has put forth counter-claim, for revocation of the patent as per its written Statement in each suit, even if the plaintiff seeks the permission to withdraw the, suit, if the Court is inclined to grant it, it would be necessary for the Court to proceed further with the examination of the counter-claim for revocation and if the defendant makes good its counter-claim, the Court should grant the necessary relief. Where in a suit, counter claim is made, even if the suit fails, or is withdrawn, the Court will have to examine the counterclaim on its own merits, unless of course, the counter-claim is not pressed. Not only, learned Advocate General was not willing or inclined to give up the counter claim, but in fact insisted that counter-claim may be examined or merits.
12. Mr. P.M. Raval, learned Advocate for the plaintiff at this stage contended that the preliminary objection raised on behalf of the defendant would rebound and the counter-claim must also fail for the same reason for which the suit must fail. Having gone through the entire gamut of the suit, at the final hearing when the Court was inclined to examine some serious contentions as to when patent can be sealed and in what circumstances, it can be revoked, simultaneously examining the question as to whether there was any inventive step taken by an inventive genius and there was some novelty and some utility and all incidental aspects, the whole affair boils down to a storm in a teacup, because learned Advocate General is right in his preliminary objection and Mr. Raval is equally right in his preliminary objection to the Court examining the claim for revocation of the patent.
13. The suits are governed by the Patents & Designs Act 1911. 'Patent' is defined in Section 2(11) to mean a patent granted under the provisions of the Act. 'Patentee' is defined in Section 2(12) to mean the person for the time being entered on the register of patents kept under the Act as the grantee or proprietor of the patent. Section 3 provides for making application for a patent by any person, in the prescribed form and to be left at the Patent Office in the prescribed manner. The application must contain a declaration as provided in Sub-section (3) of Section 3. Section 4 provides for submitting provisional specifications and complete specifications in respect of the invention for which a patent is claimed. Section 4A prescribed time for submitting complete specifications and Section 4B grants provisional protection to a person who has made the application in respect of his invented patent. Section 5 provides for proceeding to be taken by the Controller for acceptance of the application and Section 6 provides for advertisement of acceptance of the application. Then comes Section 7 which is material and which reads as under:
7. Effect of acceptance of application-
After the acceptance of an application and until the date of sealing a patent in respect thereof or the expiration of the times for sealing, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the application:Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed.
Section 9 provides for opposition to grant of patent. Section 10 provides for grant by sealing of the patent. Looking to the provisions contained in Section 10, a patent can be said to have been granted when it is sealed. But by the provision contained in Section 10, a fiction is created whereby once a patent is sealed, it shall be deemed to have been granted as on the date of application. Section 11 is material for some purpose. It reads as under:
11. Date of patent: Except as otherwise expressly provided by this Act, a patent shall be dated and sealed as of the date of application:Provided that no proceedings shall be taken in respect of an infringement committed before the advertisement of the acceptance of the application.
Section 26 sets out the grounds on which application for revocation of the patent can be made and entertained by the High Court. Section 29 confers jurisdiction on the District Court to entertain a suit at the instance of patentee complaining of infringement of a patent or making, selling or using the invention without the licence of the patentee or against any who counterfeits it or imitates it. Proviso to Sub-section (1) of Section 29 provides that where in such a suit the defendant puts forth a counter-claim for revocation of the patent, the suit along with the counter-claim shall stand transferred to the High Court for decision. These are the only relevant Sections for the purpose of disposing of the question raised at this stage.
14. Now, a few facts may be noticed. Plaintiff made an application for sealing his patent on 24th November 1969. Application was accepted on 5th March 1971 and was advertised. Suit is filed on 24th September 1971. Plaintiff stated in the first line of his cross-examination that his patent was sealed on 26th October 1971. Mr. P.M. Raval, learned Advocate for the plaintiff now tells me that actually the patent was sealed on 15th October 1971, but change in date does not make any difference in the outcome of the matter. Suffice it to say that the patent was sealed much after the date of the suit as well as after the date of the counterclaim put forth in the Written Statement. It is in the background of these facts that learned Advocate General contended that the suit is premature in the circumstances set out by him in paragraph 1A of the Amended Written Statement. In para 1A defendant states that as the plaintiff's patent was sealed after the plaintiff instituted the present suit against the defendant for infringement of his patent the suit is premature. Undoubtedly, the suit is premature. Patentee is a registered owner of a patent and patent is one which is granted under the Act. Patent is granted when it is sealed under Section 10. Section 11 enacts a fiction by which once patent is sealed, granting of the patent relates back to the date on which application was made. But this fiction is limited in its application and the fiction ordinarily cannot be extended beyond the purpose for which it is enacted. Now, Section 7 confers a kind of limited protection on an intending patentee. It provides that after application for patent is accepted, as envisaged by Section 6, the Controller has to give notice thereof to the applicant and shall advertise the acceptance stating therein that specification with drawing if any shall be open to public inspection. Purpose behind advertisement is to give an opportunity to anyone interested in the subject matter of a patent to contest the claim for patent. But some time is bound to be spent between the date on which the application is made and it is accepted, and also between the date of the acceptance and advertisement of the application, and the date on which it is sealed, and for the interugnum some limited protection is sought to be given both by Section 7 and Section 11 to intending patentee. Section 7 grants protection between the period after acceptance of the application and until the date of sealing the patent. Protection is that during this period, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the application. In other words, intending patentee to al intents and purposes and subject to the exception carved out in the proviso, will enjoy the rights and privileges as if patent is sealed and that he is a patentee meaning thereby proprietor of the patent. But by the proviso an exception is carved out that even though to all intents and purposes the intending patentee will have all rights and privileges of patent between the period of acceptance of the application and sealing of the patent, he is precluded from going to the Court by filing a suit complaining of infringement of his patent until the patent is sealed. Now, the present case is exactly covered by the proviso. Application for patent was advertised on 5th March 1971. It is sealed either on 15th October 1971 or 26th October 1971 but the suit is filed after the date of the acceptance of the patent and before the patent is sealed i.e. on 24th September 1971. Obviously on the date on which the suit was instituted, patent was not sealed and even though patentee had rights and privileges of a patentee as if the patent had been sealed yet he had no right to institute a suit complaining of infringement of his patent. Undoubtedly, subsequently the patent is sealed and fiction enacted in Section 11 will come into play in that the patent has to be dated and sealed as of the date of the application. Therefore, the patent would be deemed to have been sealed on 24th November 1969 when the application was made. This fiction is again limited in that it grants protection during the intervening period, except the right to complain of infringement by any proceeding, during the period after the date of the application and before the advertisement of the acceptance of the application. And Section 11 starts with a non-obstante Clause : 'notwithstanding etc' which would take Section 7 with its proviso out of the fiction enacted in Section 11. Therefore, undoubtedly it is true that when a patent is scaled, grant of the patent relates back to the date on which application is made, with this exception that no action for infringement of the patent can be instituted before the date on which patent is actually sealed. This becomes crystal clear by reading Section 7 with its proviso along with Section 11 with its proviso. The suit is admittedly filed before the date on which patent was actually sealed. Suit is a suit of infringement by a patentee of his patent. No suit can be instituted by the patentee on any date prior to the grant to him of his patent. This seems clearly to follow from the essence of his position and of his cause of action, since he sues as a patentee, and cannot be patentee before the grant of the patent is made. Therefore, conclusion is inescapable that suit is premature, and is liable to be dismissed on this technical ground only.
15. Mr. Raval, apprehending this position has given Civil Applications Nos. 9 of 1973, 10 of 1973 and 11 of 1973 requesting the Court to permit the plaintiffs to withdraw the said suits with liberty to institute a fresh suit in respect of the subject matter of the said suit or cause of action in the suit. This application purports to be under Order XXIII Rule 1 of the Code of Civil Procedure. Sub-rule (2)(a) of Rule 1 of Order XXIII provides that where the Court is satisfied that the suit must fail by reason of some formal defect, it may, on such terms as it thinks fit, grant the plaintiff permission to withdraw from such suit or abandon' such part of a claim with liberty to institute a fresh suit in respect of the subject-matter of such suit or such part of a claim. It is indisputably true that the suit is likely to fail on the ground of formal defect, namely, it is premature. There is no reason why the plaintiff should not be given permission to withdraw the suit with 'liberty to institute a fresh suit in respect of the subject matter of this suit or cause of action. Accordingly the plaintiff is granted permission in each of these three suits to withdraw each of these three suits with liberty to institute each suit as a fresh suit in respect of the subject matter of the suit and/or cause of action of the suit. All the three suits would accordingly stand disposed of as herein indicated.
16. That brings me to the question of counter-claim. As stated earlier, even if the suit fails or is withdrawn if there is a counter-claim and if it is pressed, the Court has to examine the counter-claim on its own merits and adjudicate upon the same. But at this stage, Mr. Raval contended that counterclaim in each suit is for revocation of the patent granted to the plaintiff and counter claim is put forth at a time when the patent was not sealed. Counterclaim in each suit was put forth through written statement Exh. 6 in each suit and written statement is filed in each suit on 11th October 1971. If the patent is sealed either on 15th October 1971 or on 26th October 1971, the Court could not have entertained the counter-claim for revocation of a patent which is not sealed. The patent could be deemed to have been granted to the patentee when the patent is sealed but as from the date of making application for patent. Till patent is sealed time is spent in proceedings for grant of patent. Even if the patent by fiction enacted in Section 11 is deemed to have been granted on the date of the application, none-the-less fiction cannot come into existence unless the patent is sealed. Application for revocation of 'a patent can be entertained only when patent is sealed and, therefore, could be said to have been granted and in respect of which proprietory right could have been claimed. The Court cannot revoke something which is not granted. This position is not seriously disputed. Section 26 clearly envisages a substantive application for revocation of patent. If the defendant in each case was to make such an application on the date when the patent was not sealed, application was liable to be dismissed on the ground that it is premature.
17. If such a counter-claim is put forth in written statement filed in an answer to a suit by the patentee complaining of infringement of his patent, and the counterclaim is put forth at the time when the patent is still not sealed and the plaintiff had committed error in rushing to the Court before he could complain of infringement of its patent, same consequence in law must follow and the plaintiff and the defendant would have to b visited with the same consequence, namely, that counter-claim for revocation of the patent must also be rejected on the sole ground that counter-claim is premature. There was no patent on the date of the application which could have been revoked. Therefore, the counter-claim must also fail not on merits but on the sole ground that counter-claim for revocation of the patent on the date on which it was made was premature.
18. Accordingly all the three suits, namely, suits Nos. 3, 4 and 5 of 1971 stand withdrawn with a permission to the plaintiff to institute fresh suit in respect of the same subject matter of the suit and/or on the same cause of action; and the counter-claim in each suit fails as being premature. As both the parties fail, the proper order of costs would be : parties to bear their respective costs. All interim reliefs granted till today stand vacated. Order accordingly.