Biswanath Prasad Radhey Shyam Vs. Hindustan Metal Industries:Minor variation or modification of an existing method does not qualify as an invention
Case Title: Biswanath Prasad Radhey Shyam Vs. Hindustan Metal Industries
Date of Order: December 13, 1978
Case No.: Civil Appeal Nos. 1630-1631 of 1969
Neutral Citation: AIR 1982 SUPREME COURT 1444, 1979 ALL. L. J. 290, (1979) 2 SCR 757 (SC), 1979 (2) SCC 511, (1979) 1 SCWR 337
Name of Court: Supreme Court of India
Name of Judge: Hon'ble Justice Shri Sarkaria
Introduction:
This case deals with the fundamental principles of patent law, particularly the requirement of novelty and inventive step. The Supreme Court of India examined whether the method of manufacturing utensils patented by Hindustan Metal Industries was truly novel and involved an inventive step or was merely a modification of an existing method. The case serves as a significant precedent on the revocation of patents that lack originality and inventive merit.
Factual Background:
Both the appellant, Biswanath Prasad Radhey Shyam, and the respondent, Hindustan Metal Industries, were engaged in the business of manufacturing utensils in Mirzapur. In 1951, a partner of Hindustan Metal Industries claimed to have invented a method and device for manufacturing utensils that introduced improvements in safety, convenience, speed, and finish. The conventional method posed a risk as utensils would often fly off the headstock. The respondent filed for a patent, which was granted with effect from December 13, 1951. Subsequently, upon learning that the appellant was using the same method, Hindustan Metal Industries served a notice and later filed a suit for a permanent injunction against Biswanath Prasad Radhey Shyam to restrain them from infringing the patented method.
Detailed Description of Subject Matter of the Patent:
The patented invention related to "a method of mounting and holding metallic utensils on a lathe for turning before polishing" [It was a process Patent]. The primary components of the invention included a shaft or spindle carrying an adapter to hold the utensil, a pressure spindle that applied force to keep the utensil in place, and a bracket for support. The patent specifications described the method as a safer alternative to conventional techniques, which required using adhesives or direct chuck attachment that posed a risk of utensils detaching during the turning process.
Procedural Background:
Hindustan Metal Industries filed a suit for a permanent injunction and damages against the appellant for allegedly infringing its patented method. The appellant denied the claims and filed a counterclaim under Section 26 of the Indian Patent and Designs Act, 1911, seeking revocation of the patent on the grounds that the method lacked novelty and did not involve any inventive step. The case was transferred to the High Court, where a Single Judge dismissed the plaintiff’s suit and revoked the patent. On appeal, a Division Bench of the High Court reversed the decision and upheld the validity of the patent. The appellant then challenged the High Court’s decision before the Supreme Court.
Issues Involved in the Case:
The key issues before the Supreme Court were whether the patented method constituted a manner of new manufacture or improvement and whether it involved an inventive step in light of prior knowledge and practices?
Submission of Parties:
The appellant argued that the method patented by the respondent was neither a new manufacture nor an improvement but merely a minor modification of existing techniques. They contended that similar methods had been in use long before the patent date, and the respondent’s alleged invention did not involve any significant ingenuity or innovation.
The respondent countered that the method was novel as it introduced a safer and more efficient way of manufacturing utensils. They contended that the method was not publicly known before the date of the patent and involved an inventive step that justified the grant of the patent.
Discussion on Judgments and Citations:
The Supreme Court relied on several precedents to determine the validity of the patent. The Court referred to Rickman v. Thierry (1896) 14 Pat. Ca. 105, which emphasized that novelty in application alone is not sufficient; an invention must involve ingenuity in its mode of application. The Court also cited Blackey v. Latham (1888) 6 Pat. Ca. 184, where it was held that an invention must demonstrate a level of originality beyond common craftsmanship.
Additionally, the Court referred to Harwood v. Great Northern Railway Co. (1864-65) XI HLC 654, where it was established that a mere adaptation of an old contrivance without novelty or an inventive step does not warrant a patent. Another key case cited was Rado v. John Tye & Sons Ltd., 1967 RPC 297, which provided the test for obviousness—whether the alleged discovery lies outside the expected knowledge of a skilled craftsman.
The Detailed Analysis of Court:The Supreme Court held that "for an invention to be patentable, it must satisfy two key criteria: it must be new, and it must involve an inventive step". The Court found that the respondent’s method was merely an application of an old technique with minor modifications.
The Court observed that prior to the patent, the technique of using a lathe with a headstock and tailstock for shaping utensils was already in common use. The addition of a pressure spindle, which was claimed as an innovation, was found to be a minor improvement rather than an invention. The Court also noted that the respondent’s own claims did not assert any significant novelty, as they stated that the pressure spindle could be either pointed or blunt, which indicated that no substantial innovation had been made.examined the definition of manufacture and held that "for a process or method to qualify as a manner of new manufacture, it must lead to a distinct and substantial improvement over existing methods". The respondent’s method failed this test as it was merely an adaptation of pre-existing techniques.
Regarding novelty, the Court reiterated that prior public knowledge or use of the patented method before the filing date of the patent negates its novelty. The evidence presented showed that similar manufacturing processes had been in use before the respondent’s patent, making the invention unpatentable.
On the issue of inventive step, the Court applied the test of whether a person skilled in the relevant field would consider the invention an obvious extension of prior knowledge. Since the patented method did not demonstrate ingenuity beyond the common skill of a craftsman, it lacked an inventive step.
The Court also provided guidance on how a patent specification should be interpreted. It emphasized that the correct way to construe a patent is to first read the description of the invention to understand its scope and purpose, and then examine the claims to determine the extent of the exclusive right being claimed. The patentee cannot claim more than what has been specifically described in the complete specification.
Final Decision:
The Supreme Court allowed the appeal, set aside the judgment of the High Court, and restored the order of the Single Judge revoking the patent. The Court held that the patented method did not involve an inventive step and was merely a workshop improvement that did not warrant the grant of a patent. Consequently, the patent was invalidated.
Law Settled in the Case:
A patent is granted only for an invention that demonstrates novelty and an inventive step. Minor variation or modification of an existing method does not qualify as an invention. A combination of old elements must result in a new product or a significant improvement to be patentable. Grant of a patent does not guarantee its validity; it can be challenged and revoked if it lacks novelty or an inventive step. The test for obviousness requires determining whether a skilled craftsman, without knowledge of the patented invention, would have arrived at the same solution. If the alleged invention was publicly known or used before the date of the patent, it lacks novelty and cannot be patented.
Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
