1. This is a reference made by the Controller of Patents under the provisions of Section 64(3), Patents and Designs Act, 1911. The history of the events that have led to the reference is as follows: One Hiralal Banjara, to whom I will henceforward refer as the ''applicant,' obtained a patent dated 12th July 1928, in respect of a machine for removing the huska and shells from mahsoor. No other person was registered as a proprietor of this patent until 9th October 1937, when one Babu Ram Jainy was so registered. The circumstances which enabled Babu Ram Jainy to obtain registration were as follows: A certain person named Radhakissen obtained a money decree in the Court of Small Causes against the applicant. In execution of this decree he purported to attach and bring to sale the applicant's rights under his patent, which were sold to Babu Ran Jainy on 20th September 1937. On 24th November 1937, Babu Ram Jainy assigned the patent to Bashiram Sharma, to whom I will refer as the 'respondent,' and who obtained registration on 15th January 1938. On the same day one Abdulla Miah got himself registered as a licensee under the respondent in virtue of an agreement dated 22nd November 1937.
2. There were various proceedings by the applicant in the Court of Small Causes for having the sale to Babu Ram Jainy of 20th September 1937 set aside. The Small Cause Court declined to set aside the sale, but this Court in exercise of its revisional powers under Section 115, Civil P.C., set it aside on 2nd June 1938. On 30th June 1938, the applicant wrote to the Controller of Patents calling upon him to exercise his powers under Section 64 of the Act, by expunging the entries which showed Babu Ram and the respondent as proprietors, and Abdullah Miah as licensee. This application has been referred to the High Court under Section 64(3). It has been argued that the Controller has no power to refer this application for rectification, The scheme of Section 64 is as follows. Under Sub-section (1) the Controller may on the application of any person aggrieved make such order for making, expunging or varying an entry as be thinks fit, and rectify the register accordingly. By Sub-section (3) an appeal shall lie to the High Court from any order of the Controller under this Section; and the Controller may refer any application under this Section to the High Court for decision, and the High Court shall dispose of any application as referred.
3. So far it is plain sailing. But a difficulty is certainly occasioned by Sub-section (5), which says that:
Nothing in this Section shall be deemed to empower the Controller (a) to rectify the register of patents or to decide any question relating to a patent, otherwise than for the purpose of correcting a mistake of fact apparent from a reference either to the patent itself, or to some order of a competent authority made under any other provision of this Act, or (b) to make any such order canceling the registration of a design as is provided for in Section 51-A.
4. Now, it is conceded that by reason of Sub-section (5) the Controller himself would have no power to rectify the register in the manner which the applicant desires, since there is no question of correcting a mistake of the fact apparent from a reference to the patent itself, nor is it a question of correcting a mistake of fact apparent from a reference to some order of a competent authority made under any other provision of the Act, because the order which is to be looked at is the order of the High Court setting aside the execution sale by the Small Cause Court, and that is an order made not under the provisions of the Patents and Designs Act, but under the Code of Civil Procedure. Accordingly it is plausibly argued that the present application is not an application made under the Section within the meaning of Sub-section (3) and therefore not one which the Controller can refer to the High Court. To construe the Section in this way is really to hold that the Legislature intended to confine the jurisdiction of the Controller to formal applications, and at the same time gave him the power to refer only those applications to Court, though ex hypothesi they were matters with which he was perfectly competent to deal, leaving the person concerned with correcting a substantial error in the register without any remedy whatever.
5. I have compared the language of the Section as originally enacted in 1911 with the language of it as it now stands after the amendment of 1930, and I find that the trouble has arisen from this. Section 64, Sub-section (1), on the face of it, transfers very wide powers, previously exercisable by the High Court, to the Controller. Sub-section (3), which is new, provides for an appeal from the Controller to the High Court and for the reference of applications by the Controller to the High Court. Sub-section (5) indicates that the Legislature had misgivings as to the wide powers which Section 64(1) conferred on the Controller, and accordingly proceeded to cut down those powers and leave the Controller with diminished powers, which are scarcely more than formal. It was undoubtedly the intention of the Legislature to limit the powers of the Controller, but I cannot presume that the Legislature desired entirely to deprive the subject of the remedies which he had hitherto enjoyed, by excluding from the applications 'made under the Section' those applications which the Section specifically removes from the decision of the Controller. I think Section 64(1) must be read as giving the subject a right to make an application to the Controller with which Sub-section (5) prevents him from dealing. If that is so, this application is certainly within the powers of reference given to the Controller under Sub-section (3).
6. I now turn to the more important aspect of the case. The main contention of the respondent is that this application is incompetent because the applicant is not a person aggrieved within the meaning of Section 64(1). The applicant's contention is that he comes within the Section as being a person aggrieved by an entry wrongly remaining on the register. There are two circumstances which, it is said, disqualify the applicant from being a person aggrieved within the meaning of the sub-section. The first of these circumstances is the fact that on 14th May 1929, the applicant executed a deed in favour of one Ghanshyam Das Jaganani whereby for consideration he assigned his invention and letters patent and the full and exclusive benefit thereof, and all rights, privileges and advantages appertaining thereto. Mr. P.C. Ghose has argued that under the deed of assignment the applicant still retained certain rights, which would entitle him to call himself a person aggrieved, even if he had ceased to be the patentee within the meaning of the Act by reason of the assignee having himself registered as proprietor. Inasmuch however as there has been no registration of the assignee as proprietor, I need not consider what the position would then have been. Section 2(12) defines 'patentee' as the person for the time being entered in the register of patents kept under this Act as the grantee or proprietor of the patent. Section 20 provides for the maintenance of the register, and Section 29 gives to the patentee the right to institute a suit for infringement of his patent. Section 63(1) provides:
Where a person becomes entitled by assignment...to a patent...he may make an application to the Controller to register his title, and the Controller shall, on receipt of such application and on proof of title to his satisfaction, register him as the proprietor of such patent or design, and shall cause an entry to be made in the prescribed manner in the register of the assignment.
7. Sub-section (3) provides:
The person registered as the proprietor of a patent...shall, subject to the provisions of this Act and to any rights appearing from the register to be vested in any other person, have power absolutely to assign, grant license as to, or otherwise deal with, the patent or design, and to give effectual receipts for any consideration for any such assignment, license or dealing.
8. It is plain from these provisions that until an assignee has had himself entered on the register, he is incapable of protecting the patent assigned to him by legal proceedings for infringement or of assigning it or granting license to it. Until registration these powers, subject to equities, remain vested in the assignor as long as he remains on the register. The assignor however loses these powers as soon as the assignee has himself registered as the proprietor. It follows from this that since the assignee under the assignment of 15th May 1929 has not had himself registered as proprietor the applicant is a person who may be aggrieved by subsequent registration.
9. The other ground on which it is urged the applicant is not a person aggrieved within the meaning of Section 64(1) concerns certain proceedings in which his patent has been held to be invalid. Apparently, the assignee under the deed of 15th May 1929 instituted a suit for infringement in the Patna District Court which was subsequently transferred to the High Court. The applicant was a party to those proceedings, but his name appears to have been removed from the cause title when the suit was transferred. As a result of these proceedings the assignee's suit was dismissed and in addition to dismissing it the Patna High Court went on to revoke the patent granted to the applicant. An appeal was taken to the Privy Council and it is said that the question of revocation was not argued before them, but only the question of infringement. As a result the appeal was dismissed. It is conceded by counsel that the Patna High Court had at that time no jurisdiction to entertain a claim for revocation by way of counterclaim in a suit for infringement. It appears that the order of the Patna High Court was sent to the Controller under the provisions of Section 33 of the Act and the Controller made the appropriate entry in the register. Upon this the present applicant successfully applied for the register to be rectified by expunging the entry to which I have referred. Those proceedings are reported in In re Hirala Banjara : AIR1937Cal365 . I do not see how I can treat a patent as invalid when this Court has ordered the entry of the declaration of invalidity to be expunged from the register, the more so as both the parties to this reference are in agreement in this, that each of them is asserting his rights to what he claims to be a valid patent.
10. In these circumstances I hold that the applicant is a person aggrieved within the meaning of Section 64(1). The Court having declared the execution sale to be a nullity the entry relating to that sale and the subsequent entries regarding the rights derived from the purchaser at such a sale clearly should not have appeared on the register. It appears to me that the proceedings before the Controller were perfectly in order as far as service of notices and the notification in the 'Gazette of India' are concerned. I accordingly direct that the register should be rectified by expunging therefrom the entries referred to in Sub-paras. 1, 2 and 3 of the applicant's application of 30th June 1938. The applicant is entitled to the costs of this application as against the respondent. The respondent must pay the Controller's costs up to the date of making the previous order. Costs as of a hearing. Certified for one counsel.