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Hiralal Banjara and anr. Vs. Union of India (Uoi) and anr. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtKolkata High Court
Decided On
Case NumberCivil Revn. Case No. 2355 of 1954
Judge
Reported inAIR1958Cal248
ActsPatents and Designs Act, 1911 - Sections 14(1), 15(1), 15(3), 15(5) and 15(6); ;Patents and Designs Rules, 1933 - Rule 25
AppellantHiralal Banjara and anr.
RespondentUnion of India (Uoi) and anr.
Appellant AdvocateSanat Kumar Mukherjee and ;Amiyalal Chatterjee, Advs.
Respondent AdvocateAmiya Kumar Mukherjee, Adv.
Excerpt:
- .....was due to expire on the 12th july, 1949, but ultimately in pursuance of clause (2) (b) of the patent (extension of term) ordinance, 1948, the term was further extended up to 12th july. 1954. it is alleged that owing to various litigations relating to the infringement of the said patent by various persons the patent had not been remunerative at all, as the petitioners had to prosecute the said litigations or to defend them for a period of 26 years during which the said litigations had been pending, on 12th january, 1954, the petitioners made an application for a further extension off the term of the patent under section 15 of the act and alternatively the petitioners prayed that under section 15 (3) the petitioner might get a chance to place their case before the hon'ble high court.....
Judgment:
ORDER

H.K. Bose, J.

1. This is an application under Article 226 of the Constitution for a writ in the nature of Mandamus directing the Respondents to act in terms of Sections 15(5) and 15(6) of the Indian Patents and Designs Act 1911 by extending the term of the patent for a further term not exceeding 10 years or by granting a new patent for the said term and to forbear from giving effect to the orders of rejection of the petitioners' application dated the 12th April, 1954, and also directing Respondent No. 2 to act in terms of Rules 25 (2) and 25 (14) of the Indian Patents and Designs Rules, 1933.

2. On 12th July, 1928, the petitioner Hiralal Banjara was granted a letters patent in respect of his invention of a machine entitled 'The improved machine for removing husks and shells from massor and the like'. The said patent was for a term of 16 years. The petitioner No. 2 having been assigned a share of the said patent by the petitioner No. 1 Hiralal, the petitioners are now joint holders of the said patent. On or about the 28th November, 1944, upon an application made by the petitioner under Section 15 of the Indian Patents and Designs Act 1911, a new patent was granted to the petitioners for a term of 5 years. The said period of 5 years was due to expire on the 12th July, 1949, but ultimately in pursuance of Clause (2) (b) of the Patent (Extension of Term) Ordinance, 1948, the term was further extended up to 12th July. 1954. It is alleged that owing to various litigations relating to the infringement of the said patent by various persons the patent had not been remunerative at all, as the petitioners had to prosecute the said litigations or to defend them for a period of 26 years during which the said litigations had been pending, On 12th January, 1954, the petitioners made an application for a further extension off the term of the patent under Section 15 of the Act and alternatively the petitioners prayed that under Section 15 (3) the petitioner might get a chance to place their case before the Hon'ble High Court for further extension. The case of the petitioner further is that although the second application for extension was made, the Controller, Respondent No. 2, did not act in terms of Rule 25 of the Indian Patents and Designs Rules. In violation of the said Rule the Controller failed to advertise the said petition in the Official Gazette nor did the Central Government consider the petition at all having regard to the merits and the invention nor did the Union give the petitioner any hearing or consider the fact whether the patent had or had not been sufficiently remunerative to the petitioner; but on the 12th April, 1954 the Union of India informed the petitioners that the second application for extension of the time did not lie under Section 15 of the Act and as such the Government was unable to consider the question of granting an extension. It is the validity of this order which has been challenged in this application.

3. Mr. Sanat Kumar Mukherjee the learned Advocate for the petitioner has argued that successive applications for ex-tension of the term of a patent are maintainable under the provisions of Section 15 of the Act and it was therefore incumbent upon the Controller of Patent to act in terms of Rule 25 of the Rules and to advertise the petition in the Official Gazette and to carry out the other obligations which are imposed upon him under the different clauses of the Patent and Designs Rules. The learned Advocate has drawn the attention of the Court to the expression 'a further patent' as appearing in Section 15A, of the Act and the expression 'a suit' as appearing in Section 29 of the Act and contends that as it is open to the patentee to institute more than one suit in respect of successive infringements of patents under Section 29 of the Act so it is open to the patentee to make successive applications for extension of the term of the patent under Section 15 and the expression 'a further term' does not restrict the power of the patentee to make only one application for such explanation. I do not think that this contention of Mr. S. K. Mukherjee can be accepted. Section 14(1) of the Indian-Patents and Designs Act 1911 provides that the term limited in every patent for the duration, thereof shall, save as otherwise expressly provided by this Act, be sixteen years from its date. So it is clear that the normal life of a patent is contemplated to be a period of 16 years under this section of the Act. Section 15 (1), (3) and (6) are as follows :

15 (1) 'A patentee may present a petition to the Central Government praying that his patent may be extended for further term : but such petition must be left at the Patent Office at least six months before the time limited for the expiration of the patent and must be accompanied by the prescribed fee and must be advertised by the patentee within the prescribed time and in the prescribed manner.

15 (3). When a petition is presented under Sub-section (1), the Central Government may, as it thinks fit, dispose of the petition itself or refer it to a High Court for decision.

15 (6). If it appears to the Central Government or to the High Court when the petition is referred to it, that the patent has not been sufficiently remunerative, the Central Government or the High Court, as the case may be, may by order extend the term of the patent for a further term not exceeding five or in exceptional cases ten years, or may order the grant of a new patent for such term not exceeding ten years as may be specified in the order and subject to any restriction, conditions and provisions which the Central Government or the High Court, as the case may be, may think fit.'

4. It appears from the aforesaid provisions to be reasonably clear that what the legislature had in contemplation was that a patentee should normally be given a period of 16 years for making profit out of his invention but if for some reason or other it appears that the normal period has not been sufficiently remunerative for the patentee then a further period not exceeding in any case an additional period of 10 years may be given to the patentee in order to compensate him for the loss that he has suffered during the period for which the patent was in force. Such being the object and scheme of the Act it is not unreasonable to construe that the Legislature in enacting Section 15(1) of the Act and in using the expression 'a further term' contemplated that only one application for extension of the term of the patent could be made and only one extension of the term of such patent could be granted having regard to the facts and circumstances mentioned in Sub-sections (5) and (6) of this Act.

5. Mr. Amiya Kumar Mukherjee, learned Advocate for the opposite parties, has drawn the attention of the Court to the similar provisions In the English Patents and Designs Act, 1907, (7 Edward 7, c. 29) which are of assistance in interpreting the relevant provisions of the Indian Act Section 17 (1) of the English Act provides that the term limited, in every patent for the duration thereof shall save as otherwise expressly provided by this Act be 16 years from its date. Section 18 (1) of the Act runs as follows:

'A patentee may, after advertising in manner provided by rules of the Supreme Court his intention to do so, present a petition to the Court praying that his patent may be extended for a further term, but such petition must be presented at least six months before the time limited for the expiration of the patent;

Provided that the Court may allow such a petition to be presented at such time, not being later than the time limited for the expiration of the patent, as the Court may in its discretion think fit.'

Sub-section (5) of Section 18 is worded as follows :

'If it appears to the Court that the patentee has been inadequately remunerated by his patent, the Court may by order extend the term of the patent for a further term not exceeding five years, or, in exceptional cases, ten years, or may order the grant of a new patent for such term as may be specified in the order and containing any restrictions, conditions, and provisions the Court may think fit.'

6. Then under Sub-section (6) of Section 18 provision is also made that an application for extension may be made by originating summons if by reason of hostilities between his Majesty and any foreign state, the patentee has suffered loss or damage including loss of opportunity of dealing in or developing his invention owing to his having been engaged in work of national importance connected with such hostilities.

7. There have been decisions of the English Courts construing the provisions and the schemes of the English Patents and Designs Act including the provisions in Section 16 of the Act. Reference may be made to the decision in re: Thompson's Patent, (1909) 2 Ch. 447(A). In this case it was held that when a patent has once been extended for a further term, the power given by Section 18 of the Patents and Designs Act 1907 is exhausted, and the Court has no jurisdiction to grant a second extension. Parker J. in the course of his judgment referred to the decision of the Privy Council in the case In re: Goucher's Patent, (1865) 2 Moo P. C. (N. S.) 532 (B) and observed as follows:

'That case decided that on the true construction of the older statutes the power of extending letters patent was exhausted when the letters patent had been once extended ..... I do not think, having carefully looked into Section 18 of the Act of 1907 that there is anything in it which justifies me in departing from the decision of the Privy Council'.

Referring to Sub-section 5 of Section 18 the learned Judge observed as follows:

'...... the intention of the Legislature was that when the original petition came before the authority dealing with the prolongation of patents, that authority should consider once for all whether the original term should be extended for seven years or for fourteen years -- for seven years or any less period, or for fourteen years or any less period -- and that when once they had exercised that discretionary power the case should be altogether taken out of the Act, and the power should be exhausted.'

Reference may also be made to the case of In the matter of Muir's Patent (1927) 43 RPC 352 (C). In this case in 1919 M presented a petition for, and obtained, an extension of a Patent granted to him in 1905 In 1926 M applied by originating summons for a further extension of the same Patent on the ground of loss due to hostilities, under Sub-section (6) of Section 18 of the Act. It was held that Sub-section (6) of Section 18 was a modification of the original section and conferred no separate or independent jurisdiction, but was an instruction as to procedure and as to how, under certain circumstances, the Court might arrive at its decision, and that no jurisdiction was given by it to the Court to entertain a second application for an extension of a Patent and so the application by way of originating summons must be dismissed. It is thus clear from the decision cited above that once an extension of a term of a patent is granted the power for granting extension becomes exhausted. In my view the same construction should be put upon Section 15 of the Indian Patents and Designs Act 1911 (Act II of 1911).

8. This being the true interpretation of the section, it follows there cannot be any question of non-compliance with the requirements of Rule 25 of the Rules, by the Controller in the present case. It is only when a valid petition as contemplated by Section 15 of the Act is presented before the Controller that the provisions of Rule 25 become operative and the Controller is under a duty to carry out the various obligations which are imposed upon him by the different clauses of Rule 25 of the Patent and Dosigns Rules. The arguments of Mr. S. K. Mukherjee to the effect that the Controller of Patents acted in violation of the terms of Rule 25 does not appear to have any force.

9. In my view therefore this petition mustfail. The Rule is accordingly discharged. Therewill be no order as to costs.


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