Fallen in public domain in an industrial application of patent registration in India

Fallen in public domain in an industrial application

Section 64 and 107 of Patents Act, 1970 describes the technical advance which had not so far fallen in public domain in an industrial patent application and which was not obvious before its pronouncement, such technical advance though may be miniscule in nature could still be recognized as an invention. Validity of patent can always be challenged in the High Court on various grounds for revocation as provided under section 64 or the ground on which the allegation of infringement is to be established as provided under Section 104 and or could be defendant under Section 107.


In the case on hand, the alleged infringement is in respect of the improved internal combustion achieved by the Respondent in a four stroke engine of small bore with twin plugs operations of lean burn fuel. In the decision relied upon by the learned senior counsel for the Respondent reported in 1884 (6) RPC 49 (William Needham and James Kite v. Johnson and Co.) it has been held that there can be no infringement if one has produced the same results by a different combination of different elements, that is another and a different combination, and is not either an improvement or anything else of the other and that it should be wholly different. Applying the said principle as we have noted that the Appellant’s product is a four stroke internal combustion engine with two inlet valves and one exhaust valve which patent application had its own special effects in the operation of the internal combustion of the engine or in its improvement, such an operation when supported by another valid Indian Patent No. 196636 dated 25.05.2000, it will have to be necessarily held that the allegation of infringement based on the Respondent’s patent No. 195904 dated 16.07.2002 by itself cannot form the basis for the alleged infringement. In other words, we are convinced with the teachings of the Respondent’s invention of its Patent No.195904 dated 16.07.2002 has been distinctively distinguished by the teaching of the patent No. 196636 dated 25.05.2000, which supports the alleged infringed product of the Appellant and therefore the grant of injunction by the learned Single Judge cannot be sustained.

As far as the preposition that the patent specifications are intended to be read by persons skilled in the relevant art, we have found that there is at least one article by an enlightened student of Intellectual Property Law of I.I.T. Kharagpur, which we have referred in detail in the earlier paragraphs, where the Author was able to demarcate the distinctive features of the patented product of the Respondent as well as that of the Appellant and by making a reference to the descriptive distinction in the respective specifications of the Appellant as well as the Respondent, we are quite convinced that even going by the independent opinion of a person in the concerned field of art there is no scope to restrain the Appellant by way of grant of interim injunction. In the various other materials relied upon, we do not find a comparative analysis made with particular reference to the respective patents of the parties.


As far as the application of the concept of pith and marrow of the claim, what is stated is that novel feature which is claimed to be essential would constitute the pith and marrow. The novel feature in the invention of the Respondent based on patent No.195904 dated 16.07.2002, varies in very many respects in the novel feature of the Appellant’s product based on patent No.196636 dated 25.05.2000. While the acclaimed novel feature of the Respondent’s product is twin plug operation resulting in improved internal combustion, the acclaimed novel feature in the Appellant’s product is in the operation of two intake valves with one exhaust valve providing combination of swirl and tumble operation of lean and rich air fuel mixture in its internal combustion process of course with the aid of twin plugs. If the pith and marrow of the Respondent and the Appellant are distinctively identifiable there is absolutely no scope for grant of injunction as has been done by the learned Single Judge.

In fact in the decision reported in the Privy Council has held that slight alterations or improvements may produce important results and may disclose great ingenuity. When we apply the said law laid down in sustaining an invention, we are convinced that the “invention” consisting of an “inventive step” at the hands of the Appellant and the Respondent operate independently though in respect of four stroke internal combustion engine with twin plug operation of lean burn mixture. Therefore, while on the one hand the Respondent’s patent having been granted is to be accepted prima facie as a valid one, in the same breath, it will have to be held that merely because such a valid patent is existing in favor of the Respondent, that by itself, it cannot be held that the Respondent has made out a strong prima facie case of infringement as against the Appellant. We say so because we too find a distinctive feature of a different operation in the Appellant’s technology with three valve provision with twin plugs operation and the said three valves operation of the engine produce distinctively different result in its operation. To be more precise, while the twin plug operation in the Respondent’s internal combustion engine may have resulted in improved internal combustion, the three valve technology of the Appellant also with twin plug provision produce a distinctive product of its own, different from the claimed invention of the Respondent. Such a distinction as between the patented claim and the infringed product is well protected under the provisions of the Patents Act, as has been set out in the various decisions we have no hesitation in holding that in the case on hand, even while holding that the claim of valid patent at the instance of the Respondent can be prima facie accepted, the alleged infringement of patent as against the Appellant cannot be held to have been made out at the instance of the Respondent.

Therefore, there is no case made out for grant of interim injunction. However, taking into account of our observation that the controversy can well be decided in the Suit or in the Revocation Application, we only state that if the Respondent seeks for an early hearing of the Suit or the Revocation of patent Application, the learned Judge or the Tribunal, as the case may be, may decide the Suit or the Revocation Application on its own merits uninfluenced by whatever stated in this Judgment and may decide the case at early date.

Revocation of patents – Doctrine of election


It is worthwhile noticing at this stage that a patent, unlike other intellectual property rights, does not come with a presumption. Apparently there are public policy concerns which have been reflected by Parliament, which allow patents to be challenged, at various stages: firstly at the stage of grant (Section 25(1)); later, after grant, by a “person interested” (Section 25(2)); orders of the Controller, including one on a post grant opposition, are appealable, to the Board, under Section 117-A. There is an independent remedy for cancellation or revocation of patents, under Section 117-G, to the Board. In addition, in the event of a suit, the defendant can, besides contending non-infringement, also counter claim and seek revocation, under Section 107, though seemingly overlapping, the remedies may not be necessarily availed simultaneously. For instance, a post grant opposition applicant may not choose to carry the matter in appeal. A third party may be sued for infringement; either at that stage, or before, he may prefer an application before the Board for cancellation or revocation of patent. In the event of his being sued for infringement, if his application before the Board is held to be not maintainable, or alternatively, he is asked not to raise the ground of cancellation in his written statement, his defense would be seriously prejudiced. In these circumstances, it would be contrary to statute to hold that he cannot pursue his independent statutory remedy; that would be plainly against public policy.

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