Monsanto Company v Coromandal Indag Products (1986)

Summary

“The long and grasping hand of a Multi National Company, the Monsanto Company of St. Lous, Missouri, United States of America, has reached out to prevent alleged infringement of two of their patents (Numbers 104120 and 125381) by the defendant, an Indian Private Limited Company.” “the suit was ultimately confined to one patent only (Number 125381), the period for which the other patent (104120) was valid having expired during the pendency of the suit. The suit was decreed by the trial court, but was dismissed by the appellate court.” (p 122) The plaintiffs had averred that “the defendant was marketing formulation of Butachlor covered by the patents of the first plaintiff” (p 123), and the defendant “claimed as he was entitled to do under s. 107 of the Patents Act 1970, that the patents were liable to be revoked” ... “The defendant also made counter claim seeking revocation of the patents.” (p 126) Of the facts, the Court recorded that “in 1966-67 came a break through. A Scientist Dr. John Olin discovered CP53619” (p 122) and that “The annual report of the International Rice Research Institute for 1969 shows that the herbicide CP 53619 came to acquire the name of Butachlor.” (p 122–123)

The Court held that “A close scrutiny of the plaint and a reference to the evidence of the witnesses for the plaintiff atonce exposes the hollowness of the suit.” (p 127) It held that “No one patented the invention Butachlor and it was the property of the population of the world” and that “Emulsification is a well-known process and is no one’s discovery.” (p 128) “To satisfy the requirement of being publicly known as used in clauses (e) and (f) of sec. 64(1), it is not necessary that it should be widely used to the knowledge of the consumer public.” “From the beginning to the end, there was no secret and there was no invention by the palintiffs.” (p 129) “The patent is, therefore, liable to be revoked.” ... “The appeal is dismissed with costs.” (p 130)

What the court decided

1. Procedure. The certificate of appeal. “The appeal which is now before us has been filed pursuant to a certificate granted by the appellate bench of the High Court on the ground that substantial questions of law of great public importance were involved. The questions, however, were not specified in the certificate. As we see it, we are unable to find any substantial questions of law of great importance. We are afraid both the lower courts misdirected themselves and missed the real substance of the dispute and found themselves chasing the mirage of legal questions which did not strictly arise.” (p 122)
2. The plaintiffs’ own case. “the decision of the case, in the view that we are taking, turns very much on what the plaintiffs themselves had to say about their case.” Of the plaint’s statement “THE ACTIVE INGREDIENT MENTIONED IN THE CLAIM IS CALLED ‘BUTACHLOR’”, the Court held: “It suggested, without expressly saying it that the Plaintiffs’ patents covered Butachlor also which in fact it did not, as we shall presently see.” (p 123) “We must begin with the statement in the plaint” ... “which suggests that Butachlor was covered by the Plaintiffs’ patents and the circumstance now admitted that no one, neither the plaintiff nor any one else, has a patent for Butachlor.” (p 123, 127)
3. The witnesses’ admissions. PW-1 “had to admit that they had no such patent or special knowledge. He further admitted that the use of solvent and emulsifying agent on the active ingredient was one of the well-known methods used in the pesticide industry to prepare a marketable product.” PW-2 “was forced to admit that they used kerosene as a solvent for Butachlor and an emulsifier manufactured by a local Indian company as an emulsifying agent.” “He finally admitted that his secret was confined to the active ingredient Butachlor about which as we know there is no secret.” (p 127)
4. Butachlor and emulsification. “We, therefore, see that Butachlor which was the common name for CP 53619 was discovered, even prior to 1968 as a Herbicide possessing the property of nontoxic effect on rice. The formula for the Herbicide was published in the report of the International Rice Research Institute for the year 1968 and its common name Butachlor was also mentioned in the report of the International Rice Research Institute for the year 1969. No one patented the invention Butachlor and it was the property of the population of the world. Before Butachlor or for that matter any Herbicide could be used for killing weeds, it had to be converted into an emulsion by dissolving it in a suitable solvent and by mixing the solution with an emulsifying agent. Emulsification is a well-known process and is no one’s discovery.” (p 128)
5. The suit must fail. “In the face of the now undisputable fact that there is no patent for or any secrecy attached to Butachlor, the solvent or the emulsifying agent and the further fact that the process of emulsification is no new discovery, the present suit based on the secrecy claimed in respect of the active agent Butachlor and the claim for the process of emulsification must necessarily fail.” (p 128)
6. The grounds of revocation. “Under sec. 61(1)(d), a patent may be revoked on the ground that the subject of any claim of the complete specification is not an invention within the meaning of the Act. Under sec. 64(e), a patent may be revoked if the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the date of the claim, etc. Under sec. 64(1)(f), a patent may be revoked if the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step having regard to what was publicly known or publicly used in India or what was published in India before the priority” (p 128) “date of the claim (the words ‘or elsewhere’ are omitted by us as the patents in the present case were granted under the Indian Patents and Designs Act, 1911, i.e., before the Patents Act 1970).” (p 128–129)
7. Publicly known. “It is clear from the facts narrated by us that the Herbicide CP 53619 (Butachlor) was publicly known before Patent Number 125381 was granted. Its formula and use had already been made known to the public by the report of the International Rice Research Institute for the year 1968. No one claimed any patent or any other exclusive right in Butachlor. To satisfy the requirement of being publicly known as used in clauses (e) and (f) of sec. 64(1), it is not necessary that it should be widely used to the knowledge of the consumer public. It is sufficient if it is known to the persons who are engaged in the pursuit of knowledge of the patented product or process either as men of sciene or men of commerce or consumers. The section of the public who, as men of science or men of commerce, were interested in knowing about Herbicides which would destroy weeds but not rice, must have been aware of the discovery of Butachlor.” (p 129)
8. No secret and no invention. “Neither Butachlor nor the process of Emulsification was capable of being claimed by the plaintiff as their exclusive property. The solvent and the emulsifier were not secrets and they were admittedly not secrets and they were ordinary market products. From the beginning to the end, there was no secret and there was no invention by the palintiffs. The ingredients, the active ingredient, the solvent and the emulsifier, were known; the process was known, the product was known and the use was known. The plaintiffs were merely camouflaging a substance whose” (p 129) “discovery was known through out the world and trying to enfold it in their specification relating to Patent Number 125381. The patent is, therefore, liable to be revoked.” (p 129–130)
9. Procedure. Disposition. “The appeal is dismissed with costs.” (p 130)

What the court did not decide

“We do not think that it is necessary for us to go into the various questions of law so carefully and meticulously argued by Mr. Chellaswamy. The questions were no doubt interesting and arose for the first time. But we desire to keep our interest purely academic and within bounds. So we do not pronounce upon those questions.” (p 130)

Subsequent treatment

• Explained — In Franz Xaver Huemer v New Yash Engineers (1996) the Delhi High Court, considering a defence of prior public knowledge, recorded that the Supreme Court “had also occasion to consider Sections 64 and 107 in Monsanto Co. v Coramandel Indage Products (P) Ltd.” and reproduced its passage on publicly known (para 25).
• Explained — In Novartis AG v Union of India (2013) the Supreme Court, declining to read “known” in s.3(d) narrowly, recorded that “even the expression ‘publicly known’ received quite the opposite interpretation by this Court in Monsanto Company v. Coramandal Indag Products (P) Ltd.” and reproduced the passage on publicly known (para 159).