Esheetaa Gupta 10IP60011

Chronology of Events
Date 28-3-1971 Incident Noshir Edulji Pochkhanawalla made an application numbered 130620 for registration of a Patent for an invention relating to "Improvement in or relating to Mufflers or Exhaust Silencers for Internal Combustion Engines" along with provisional specifications. Complete specifications were filed. The application was accepted by the Controller of Patents and the acceptance was notified in the Gazette of India The petitioners filed notice of opposition under S. 25 of the Patents Act, 1970. Applicant filed his reply to the Notice of Opposition Noshir Edulji Pochkhanawalla died leaving a Will whereby he appointed the 1st Respondent as Executor.

14-6-1971 19-8-1972

1972 10-2-1973 21st June 1973

Date 10-12-1975 26-04-1976

Incident Petitioner did not file their evidence in time and even before the extended. The petitioners filed affidavit and applied for extension of time for production of the evidence. Next date of hearing

27-05-1976

The Controller rejected the grounds of opposition and dismissed the application of the Petitioners for extension of time to file their evidence. Against the said orders, the Petitioners preferred Petitions Nos. 250 and 251 of 1977 in this Court. Pendse. J. set aside the impugned orders by order dated 21st Jan. 1980 and remanded the proceedings to the Asstt. Controller of Patents and Designs to determine the matter afresh after taking the affidavit of Shri G. K. Parekh affirmed on April 26, 1976 on record as evidence in support of the opposition.

Key Issues
Whether invention constitutes prior publication? Whether the claims are obvious and do not contain inventive step? Whether the invention claimed is an invention under Indian Patents Act? Whether the amendment of claims done by the Controller was valid?

Description of Invention
Claim 1 of the invention " A muffler or exhaust silencer for internal combustion engines constituting of two pipe section of equal or unequal diameters, each carrying perforations of equal of unequal dimensions of any geometrical pattern extending from its middle up to its closed end, said perforated portions being rigidly secured in a line within the muffler box with their respective closed 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 projecting outwardly from said muffler box and one of the said pipes carrying smaller size perforations forming an inlet pipe and the other carrying larger perforations from an outlet pipe".

Description of Prior Art

Exhaust System in Motor Manuals Automobile engine The best design of silencer enable the exhaust gases to cool down and expand into the atmosphere continuously and to emerge as a more or less uninterrupted stream. Usually a number of baffles are fixed in the silencing chamber, but careful proportioning of these is necessary in order to avoid back pressure and overheating the of the engine. The internal diameter of the exhaust pipe should not be less than one quarter to one-third of the cylinder diameter, whilst the ordinary design of silencer should have 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 Burges Silencer was also explained.

Description of Prior Art

In Automotive Encyclopedia at page 287 under the heading Exhaust system Muffler and Muffler Design was explained. The design of the muffler varies with different manufactures. One type is know as the straight though type. In this design, a straight path is provided for the gases which extends from the front to the rear of the unit. A centrally located pipe with perforations is provided. Surrounding this pipe is a sheet metal shell, approximately three times the diameter of the pipe. In some instance. the space between the outer shell and inner pipe is open and in other cases it is filled with steel wool or some other heat-resistant sound deadener and porous material.

Issue 1
Contention of Appellants Invention as claimed by the inventor in the claim of complete specification has been published before priority date of the claim. The invention was publicly known and publicly used in India before the priority date of the claim. Invention has been published in Motor Manuals, Automobile Engines and also in Motor Services Automotive Encyclopedia. Inventor Noshir R. Pochkhanawalla had given five different mufflers to Premier Automobiles Ltd. for testing and this would constitute prior publication. Premier Automobiles Ltd. had submitted drawings to the petitioners in 1964 for fabricating Exhaust Silencer. Figure 5 of the drawings accompanying complete specification is identical with the said drawings submitted by Premier Automobiles Ltd. and therefore, it constitutes prior publication.

Contention of the Respondents None of the different silencer shown in the Motor Manuals Automobile Engineers can give any idea to any person to manufacture applicant's muffler. He also contended that the relevance of the drawings in the books need to be considered. His submission is that if a picture of a machine is drawn without describing it at all, it is not meant only for those who follow a similar or same vocation and unless there is evidence of the mechanic as to how he understood drawings, it cannot be said that there is prior publication. Section 25 of the Patents Act deals with the grounds of opposition. In regard to the prior publication, S. 25(1)(b) is the relevant section.

Section 25, Indian Patent Act

"Section 25(1)(b) that the invention so far as claimed in any claim of the complete specification has been published 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 the 1st day of January. 1921: or or (ii) in Indian or elsewhere, in any other documents: Provided that the ground specified in sub-cl (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue of sub-sec (2) of Section 29"

Section 29 Indian Patent Act

Section 29 of the said Act states:-Section 29(1). An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published in a specification filed in pursuance of an application for a patent made in India and dated before 1st day of January, 1921. (2) Subject as hereinafter provided, an invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published before the priority date of the relevant claim of the specification, if the patentee or the applicant for the patent proves (a) that the matter published was obtained form him, or (where he is not himself the true and first inventor) from any person from whom he derives title, and was published without his consent or the consent of any such persons: and (b) where the patentee or the application for the patent or any person from whom he derives title learned of the publication before the date of the application for the patent, or, in the case of convention application, before the dated of the application for protection in a convention country, that the application or the application in the convention country, as the case may be, was made as soon as reasonably practicable thereafter

Provided that this sub-section shall not apply if the invention was before the priority date of the claim commercially worked in India, otherwise than for the purpose of reasonable trial, either by the patentee or the application for the patent or any person from whom he derives title or by any 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 application for a patent made by a person being the true and first inventor or deriving title from him, an invention claimed in that specification shall not 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 the invention was used or published. without the consent of that person, by the applicant in respect of that other application, or by any other person inconsequence of any disclosure of any invention by that application".

Decision of Court

Invention claimed by the inventor Noshir Edulji Pochkhanawalla has been already published in the two books. The description of the exhaust system and of the muffler as stated in Claim 1 is not materially different form the description of the muffler and of the exhaust system contained in the said two books. What is claimed as an invention by the inventor in the present case is no more than an individual design, a workshop modification. Use of muffler by Premier Automobiles would constitute as public use.

Issue 2
"Section 25(1)(e) provides that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step having regard to the matter published as mentioned in clause (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 Svenska Elecktriska A/B v. Burntisland Shipbuilding Co. Ltd., where the Court stated that "The matter of obviousness is to be judged by reference to the state of the art in the light of all that the previously known by persons versed in that art derived from experience of what was practically employed, as well as from the contents of previous writing, specifications, text books and other documents.

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 did matter of opinion which could not satisfactorily be resolved without often lengthy cross-examination, then Tribunal should in the normal case not try to resolve such conflict. (2) That it was sometimes different if the question to be resolved was one of pure fact such as might. for example, arise in cases of prior user. Then, if satisfied that the evidence had dealt with the matter comprehensively, so that the Tribunal felt it was in a position to come to a correct answer on the question of fact, there was no reason why it should not resolve the conflict. In a proper case it was under the duty of 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 the disclosures of the prior art and the relevant evidence, the alleged invention was obvious and clearly lacking in inventive step, then equally the Tribunal must proceed 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 books referred , the alleged invention was obvious and clearly lacking in inventive step.

Issue 3
Contention of Appellants The alleged claim1 and the other claims of the invention merely shows different types of perforations and assembly of pipes which are common in mufflers cannot be an invention within the meaning of the Patents Act, 1970. Contention of Respondents Invention lies in the manner of new manufacture In the present case, inventor has produced a new muffler by a new and ingenious application of known contrivance to the old muffler. It is the novelty and the ingenious application of the known contrivance which entitles the inventor to a patent.

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 and useful 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 Abbott C. 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 in manufacture and changes in the method by which an article is manufactured.

Decision of Court
The Court concluded that claim 1 appears to be ambiguous and is 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 language used by the patentee is obscure and ambiguous, no patent can be granted and it is immaterial whether the obscurity in the language is due to design or carelessness or want of skill. It is undoubtedly true that the language used in describing an invention would depend upon the class of persons versed in the art and who intend to act upon the specification. In the present case as already stated above, the invention is described in an obscure and ambiguous language, and on the ground also the patent is liable to be refused.

Issue 4

The powers to amend a specification are to be found in Section 15, 18, 19, 57, 59 and 78 of the Patents Act, 1970. Section 15 empowers the Controller to requires the applicant's specification or drawing to be amended to this satisfaction before he proceeds with the application if he is satisfied that the application or specification does not comply with the requirements of the Act or the Rule made. Section 16(3) empowers the Controller to require such amendment of the complete specification field in pursuance of either the original or a further application as may be necessary to ensure that neither of the said compete specification includes a claim for any matter claimed in the other. Under Section 18(1) the Controller is empowered to refuse to accept complete specification 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 patent which is likely to be infringed,. unless the complete specification is amended to the satisfaction of the Controller. So also Section 57(1) empowers the specification of an application made by the appellant for the patent.

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

Section 78(1) empowers the Controller to correct clerical errors etc. None of these section empowers the Controller to make an amendment suo motu as has been done by the Controller in the said case.

Judgment

Each of the grounds of opposition to the grant of patent is well founded. The opposition on the ground of prior publication, prior knowledge, prior user, that it is not an invention at all, that it is obvious, that it does not contain any inventive step and that the complete specification suffer from insufficiency are ground which must necessarily be sustained. The Controller had committed error in overruling the objections and granting the patent with modification.

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