8/3/2019 Patent_10IP60011

1/22

Esheetaa Gupta10IP60011

8/3/2019 Patent_10IP60011

2/22

Chronology of EventsDate Incident

28-3- 1971 Noshir Edulji Pochkhanawalla made an applicationnumbered 1 306 20 for registration of a Patent for aninvention relating to "Improvement in or relating toMufflers or Exhaust Silencers for Internal Combustion

Engines" along with provisional specifications.14 -6-1971 Complete specifications were filed.

19 -8-197 2 The application was accepted by the Controller of Patents and the acceptance was notified in theGazette of India

197 2 The petitioners filed notice of opposition under S. 25 of the Patents Act, 1970.

10 -2-197 3 Applicant filed his reply to the Notice of Opposition

21st June 197 3 Noshir Edulji Pochkhanawalla died leaving a Willwhereby he appointed the 1st Respondent as Executor.

8/3/2019 Patent_10IP60011

3/22

The Controller rejected the grounds of opposition and dismissed theapplication of the Petitioners for extension of time to file their evidence.Against the said orders, the Petitioners preferred Petitions Nos. 25 0 and25 1 of 1977 in this Court.Pendse. J. set aside the impugned orders by order dated 21st Jan.

19 80 and remanded the proceedings to the Asstt. Controller of Patentsand Designs to determine the matter afresh after taking the affidavit of Shri G. K. Parekh affirmed on April 26, 1976 on record as evidence insupport of the opposition.

Date Incident

10 -12-197 5 Petitioner did not file their evidence in time andeven before the extended.

26-04 -1976 The petitioners filed affidavit and applied for extension of time for production of the evidence.

27-05-1976 Next date of hearing

8/3/2019 Patent_10IP60011

4/22

K ey Issues

Whether invention constitutes prior publication?

Whether the claims are obvious and donot contain inventive step?Whether the invention claimed is aninvention under Indian Patents Act?Whether the amendment of claims doneby the Controller was valid?

8/3/2019 Patent_10IP60011

5/22

D escription of InventionClaim 1 of the invention

" A muffler or exhaust silencer for internal combustionengines constituting of two pipe section of equal or unequal diameters, each carrying perforations of

equal of unequal dimensions of any geometricalpattern extending from its middle up to its closedend, said perforated portions being rigidly secured ina line within the muffler box with their respectiveclosed ends at short distance varying from 1" to 3 or more apart form each other and the un -perforated

portion of each of said and the pipe being projectingoutwardly from said muffler box and one of the saidpipes carrying smaller size perforations forming aninlet pipe and the other carrying larger perforationsfrom an outlet pipe".

8/3/2019 Patent_10IP60011

6/22

D escription of Prior ArtExhaust System in Motor Manuals Automobile engine

The best design of silencer enable the exhaust gases tocool down and expand into the atmosphere continuouslyand to emerge as a more or less uninterrupted stream.Usually a number of baffles are fixed in the silencingchamber, but careful proportioning of these is necessaryin order to avoid back pressure and overheating the of theengine. The internal diameter of the exhaust pipe shouldnot be less than one quarter to one -third of the cylinder diameter, whilst the ordinary design of silencer shouldhave a capacity of about 14 cubic inches for every B.High. P., at the maximum value.There were three types of exhaust silencers explained.The concept of Multiple Exhaust Pipe and BurgesSilencer was also explained.

8/3/2019 Patent_10IP60011

7/22

D escription of Prior ArtIn Automotive Encyclopedia at page 28 7 under theheading Exhaust system Muffler and Muffler Designwas explained.The design of the muffler varies with different

manufactures. One type is know as the straightthough type. In this design, a straight path isprovided for the gases which extends from the frontto the rear of the unit. A centrally located pipe withperforations is provided. Surrounding this pipe is asheet metal shell, approximately three times the

diameter of the pipe. In some instance. the spacebetween the outer shell and inner pipe is open and inother cases it is filled with steel wool or some other heat -resistant sound deadener and porous material.

8/3/2019 Patent_10IP60011

8/22

Issue 1Co ntenti o n of Appellants

Invention as claimed by the inventor in the claim of completespecification has been published before priority date of theclaim.The invention was publicly known and publicly used in Indiabefore the priority date of the claim.Invention has been published in Motor Manuals, AutomobileEngines and also in Motor Services AutomotiveEncyclopedia.Inventor Noshir R. Pochkhanawalla had given five differentmufflers to Premier Automobiles Ltd. for testing and thiswould constitute prior publication.Premier Automobiles Ltd. had submitted drawings to thepetitioners in 1964 for fabricating Exhaust Silencer. Figure 5of the drawings accompanying complete specification isidentical with the said drawings submitted by Premier

Automobiles Ltd. and therefore, it constitutes prior publication.

8/3/2019 Patent_10IP60011

9/22

Co ntenti o n of the Resp o ndentsNone of the different silencer shown in the Motor Manuals Automobile Engineers can give any idea toany person to manufacture applicant's muffler.

He also contended that the relevance of thedrawings in the books need to be considered. Hissubmission is that if a picture of a machine is drawnwithout describing it at all, it is not meant only for those who follow a similar or same vocation andunless there is evidence of the mechanic as to how

he understood drawings, it cannot be said that thereis prior publication.Section 25 of the Patents Act deals with the groundsof opposition. In regard to the prior publication, S.25( 1) (b) is the relevant section.

8/3/2019 Patent_10IP60011

10/22

S ection 25, Indian Patent Act"Section 25( 1)(b) that the invention so far as claimed inany claim of the complete specification has beenpublished before the priority date of the claim --(i) in any specification filed in pursuance of an

application for a patent made in India on or after the1st day of January. 19 21: or or (ii) in Indian or elsewhere, in any other documents:

Provided that the ground specified in sub -cl (ii) shall notbe available where such publication does not constitutean anticipation of the invention by virtue of sub -sec (2)of Section 29"

8/3/2019 Patent_10IP60011

11/22

S ection 29 Indian Patent ActSection 29 of the said Act states: --Section 29(1). An invention claimed in a complete specification shall not bedeemed to have been anticipated by reason only that the invention waspublished in a specification filed in pursuance of an application for a patentmade in India and dated before 1st day of January, 19 21.(2) Subject as hereinafter provided, an invention claimed in a complete

specification shall not be deemed to have been anticipated by reason onlythat the invention was published before the priority date of the relevantclaim of the specification, if the patentee or the applicant for the patentproves

(a) that the matter published was obtained form him, or (where he is nothimself the true and first inventor) from any person from whom he derives

title, and was published without his consent or the consent of any suchpersons: and

(b) where the patentee or the application for the patent or any person fromwhom he derives title learned of the publication before the date of theapplication for the patent, or, in the case of convention application, beforethe dated of the application for protection in a convention country, that the

application or the application in the convention country, as the case maybe, was made as soon as reasonably practicable thereafter

8/3/2019 Patent_10IP60011

12/22

Provided that this sub -section shall not apply if the invention was beforethe priority date of the claim commercially worked in India, otherwisethan for the purpose of reasonable trial , either by the patentee or theapplication for the patent or any person from whom he derives title or byany other person with the consent of the patentee or the application for the patent or any person from whom he derives title.

(3 ) Where a complete specification is filed in pursuance of an applicationfor a patent made by a person being the true and first inventor or deriving title from him, an invention claimed in that specification shallnot be deemed to have been anticipated by reason only of any other application for a patent in contravention of the rights of that person, or by reason only that after the date of filing of that other application theinvention was used or published. without the consent of that person, bythe applicant in respect of that other application, or by any other personinconsequence of any disclosure of any invention by that application".

8/3/2019 Patent_10IP60011

13/22

D ecision of Court

Invention claimed by the inventor Noshir EduljiPochkhanawalla has been already publishedin the two books.The description of the exhaust system and of the muffler as stated in Claim 1 is notmaterially different form the description of themuffler and of the exhaust system contained inthe said two books.What is claimed as an invention by theinventor in the present case is no more thanan individual design, a workshop modification.Use of muffler by Premier Automobiles wouldconstitute as public use.

8/3/2019 Patent_10IP60011

14/22

Issue 2"Section 25( 1) (e) provides that the invention so far asclaimed in any claim of the complete specification isobvious and clearly does not involve any inventive stephaving regard to the matter published as mentioned inclause (b) or having regard to what was used in India

before the priority date of the applicant's claim".The Court made reference to a case Allamana SvenskaElecktriska A/B v. Burntisland Shipbuilding Co. Ltd .,where the Court stated that"The matter of obviousness is to be judged by referenceto the state of the art in the light of all that the previously

known by persons versed in that art derived fromexperience of what was practically employed, as well asfrom the contents of previous writing, specifications, text books and other documents.

8/3/2019 Patent_10IP60011

15/22

In E. I. Due Pont Defendants Nemours and Co. (Holland) it was held that

(1) That if, in opposition proceedings, after reviewing the whole of the evidence

there was a genuine conflict on the question of obviousness, involving as it didmatter of opinion which could not satisfactorily be resolved without often lengthycross -examination, then Tribunal should in the normal case not try to resolve suchconflict.

(2 ) That it was sometimes different if the question to be resolved was one of purefact such as might. for example, arise in cases of prior user. Then, if satisfied thatthe evidence had dealt with the matter comprehensively, so that the Tribunal felt itwas in a position to come to a correct answer on the question of fact, there was noreason why it should not resolve the conflict. In a proper case it was under the dutyof doing so, and should act upon the normal principles of proof in civil actions.

(3 ) That if the Tribunal, when the question before it was one of obviousness, was of the opinion that there was really no genuine conflict and that, in view of thedisclosures of the prior art and the relevant evidence, the alleged invention wasobvious and clearly lacking in inventive step, then equally the Tribunal mustproceed to decide the case in accordance with the same rules of proof.

The Court held that in view of the disclosure of the prior art in the two booksreferred , the alleged invention was obvious and clearly lacking in inventive step.

8/3/2019 Patent_10IP60011

16/22

Issue 3Contention of Appellants

The alleged claim1 and the other claims of theinvention merely shows different types of perforations and assembly of pipes which arecommon in mufflers cannot be an invention withinthe meaning of the Patents Act, 1970.

Contention of RespondentsInvention lies in the manner of new manufactureIn the present case, inventor has produced a newmuffler by a new and ingenious application of knowncontrivance to the old muffler. It is the novelty andthe ingenious application of the known contrivancewhich entitles the inventor to a patent.

8/3/2019 Patent_10IP60011

17/22

Invention is defined in S. 2(1) (i) of the Patents Act, 1970 as:Section 2(1) (i) "invention" means any new and useful --

(i) art, process, method or manufacture;(ii) substance produced by manufacture and includes any new anduseful improvement of any of them, and an alleged invention".

Section 25( 1) (f) states:"that the subject or any claim of the complete specification is not an

invention within the meaning of this Act, or is not patentable under this Act".An attempt was made at defining the term 'manufacture' by AbbottC. J. in the following terms:"Something of a corporeal and substantial nature, something that can be made by man form the matter subjected to his art and skill,or at the least or some new mode of employing practically his art,

and skill, is requisite to satisfy this word".

The word 'manufacture' would include improvements inmanufacture and changes in the method by which an article ismanufactured.

8/3/2019 Patent_10IP60011

18/22

D ecision of CourtThe Court concluded that claim 1 appears to be ambiguous andis no more than workshop modification.The Court stated that

The complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed". It is the duty of a patents to state clearly and distinctly the nature and limits of what he claims, if the languageused by the patentee is obscure and ambiguous, no patent canbe granted and it is immaterial whether the obscurity in thelanguage is due to design or carelessness or want of skill. It isundoubtedly true that the language used in describing an

invention would depend upon the class of persons versed in theart and who intend to act upon the specification. In the present case as already stated above, the invention is described in anobscure and ambiguous language, and on the ground also the patent is liable to be refused.

8/3/2019 Patent_10IP60011

19/22

Issue 4The powers to amend a specification are to be found in Section 1 5, 1 8, 19, 57,59 and 7 8 of the Patents Act, 1970.

Section 1 5 empowers the Controller to requires the applicant's specification or drawing to be amended to this satisfaction before he proceeds with theapplication if he is satisfied that the application or specification does not complywith the requirements of the Act or the Rule made.Section 16 (3) empowers the Controller to require such amendment of thecomplete specification field in pursuance of either the original or a further application as may be necessary to ensure that neither of the said competespecification includes a claim for any matter claimed in the other.Under Section 1 8(1) the Controller is empowered to refuse to accept completespecification if it appear to the Controller that the claim is anticipated unless the

applicant amends his complete specification to the satisfaction of the Controller.Section 19 (1) empowers the Controller to direct the insertion of the other patentwhich is likely to be infringed,. unless the complete specification is amended tothe satisfaction of the Controller. So also Section 57(1) empowers thespecification of an application made by the appellant for the patent.

8/3/2019 Patent_10IP60011

20/22

Section 59: No amendment of an application for a patent or acomplete specification shall be made except by way of disclaimer, correction or explanation, and no amendmentthereof shall be allowed, except for the purpose of correcting anobvious mistake, and no amendment of a completespecification shall be allowed the effect of which would be thatthe specification as amended. would claim or describe matter not in substance disclosed in the specification before theamendment, or that any claim of the specification as amendedwould not fall wholly within the scope of a claim of thespecification before the amendment".

Section 7 8(1) empowers the Controller to correct clerical errorsetc.N one of these section empowers the Controller to make anamendment suo motu as has been done by the Controller in thesaid case.

8/3/2019 Patent_10IP60011

21/22

J udgment

Each of the grounds of opposition to the grantof patent is well founded.The opposition on the ground of prior publication, prior knowledge, prior user, that itis not an invention at all, that it is obvious, thatit does not contain any inventive step and thatthe complete specification suffer frominsufficiency are ground which mustnecessarily be sustained.

The Controller had committed error inoverruling the objections and granting thepatent with modification.

8/3/2019 Patent_10IP60011

22/22

TH ANK YOU