Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries

Relevant Acts and provisions

Patents and Designs Act, 1911

Section 26(1)(d)Section 26(1)(e)Section 26(1)(f)

Provisions considered: Sections 26(1)(d), 26(1)(e) and 26(1)(f) of the Indian Patents and Designs Act, 1911.

Brief facts

Hindustan Metal Industries held a patent for a device and method of mounting utensils on a lathe using a headstock, adapter and pressure spindle, and sued Bishwanath Prasad Radhey Shyam for infringement, seeking an injunction and damages. The defendant denied infringement and filed a counter-claim contending the device lacked novelty and inventive step. The trial judge dismissed the infringement suit and revoked the patent, but a Division Bench of the Allahabad High Court reversed that decision on appeal.

Issues before the Court

1. Did the patented method of mounting utensils constitute a manner of new manufacture or improvement under the 1911 Act?
2. Did the invention involve any inventive step, or was it merely an obvious application of devices already known and used?

Court's findings

The Court held that the object of patent law is to encourage scientific research and industrial progress, and that a patent is granted only for an invention that is both new and useful, so a patentee's claim must reflect the inventor's own discovery and not a mere restatement of what was already known. The Court held that adapters, headstocks, tailstocks and brackets used for holding articles on a lathe were all well known in the trade before the relevant date, and that the only addition made by the patentee was a routine mechanical adaptation.

The Court observed that the Division Bench had contradicted its own findings by treating the pointed tailstock as novel although its findings recorded that such tailstocks had long been used for analogous purposes, and although the patentee's own specification stated the pressure spindle could be pointed or blunt.

The Court held that an improvement on something already known must be more than a mere workshop improvement and must independently satisfy the test of inventive step by producing a new result or a better article, and that the grant and sealing of a patent by the Controller does not guarantee its validity, which remains open to challenge.

Decision

Appeals allowed; the Division Bench judgment was set aside and the trial court's decree revoking the patent was restored.

Keywords

Inventive Step Novelty Obviousness Patent Revocation Prior Art Workshop Improvement