Shining Industries v Shri Krishna Industries (1974)

Summary

"This appeal arises out of the judgment and decree dated 27th August, 1970 passed by a learned Single Judge in a suit under Section 29 of the Indian Patents and Designs Act." (para 1) "The suit out of which the appeal has arisen was filed by Messrs. Shri Krishna Industries, a registered partnership firm (hereafter to be called the respondent), doing business in the manufacture of locks." (para 2) "In 1965 a new type of lock was invented with improved key operated padlock; and on 1st of May, 1965 the respondent applied for and obtained Patent No. 99371 for the new lock as well." "It is alleged that the appellants started manufacturing locks by counterfeiting and imitating the lock invented by the respondent." (para 3) The appellants "pleaded that the respondent firm was not the first and true inventor of the lock of which it had obtained patent, nor was it the legal representative nor an assign of the first inventor" and "in their written statement also put in a counter-claim for the revocation of the patent." (para 4) Then "the learned Single Judge decreed the respondent's suit for permanent injunction and for delivery of finished and unfinished locks of the design, shape and mechanism similar to the appellants' lock for destruction." (para 6)

The Bench held that "An invention is not a property right unless it has been patented. The assignment of invention can, therefore, be made even by word of mouth." (para 10) Of the plea that a firm cannot hold a patent, "Since this point was not raised earlier, it should not be open to the appellants to agitate it now in appeal." (para 15) On "the third and the main point involved in the case" (para 18), the Bench concluded "that the mechanism of the lock (Exh. II) was not a new invention on the date its patent was applied for and that neither the respondent nor Bodhraj Anand was the first and true inventor thereof." (para 39) It held "that a counter-claim for revocation of patent can be made on any of the grounds specified in Sub-section (1) of Section 26 of the Act without the intervention of the Advocate-General." (para 47) "In the result, this appeal is allowed, the judgment and decree passed by the learned Single Judge are set aside and the suit filed by the respondent is dismissed. The counter-claim made by the appellants for revocation of Patent No. 99371 dated 5th of May, 1965 granted in favour of the respondent is allowed and the patent is revoked. The appellants shall get their costs of both the courts from the respondent." (para 49)

What the court decided

1. Assignment of an unpatented invention. Of the declaration required by "Sub-section (3) of Section 3 of the Patents and Designs Act" (para 9), the Bench held: "An invention is not a property right unless it has been patented. The assignment of invention can, therefore, be made even by word of mouth. Consequently, if it was stated in the application moved on behalf of the respondent firm, of which Bodhraj Anand was a partner, that the invention was assigned to the respondent firm, it was a valid assignment within the meaning of Sub-section (3) of Section 3." (paras 9–10)
2. Proof of the assignment. "The fact that there is a mention of the assignment in the patent indicates that while making the application an assignment was made by Bodhraj Anand in favour of the firm which constituted of himself and Raghubir Lal Anand as partners. There is a prescribed proforma (Form 1-A) for making application for obtaining patent. There is a specific column in that proforma for mentioning that the applicant is the assign or legal representative of the true and first inventor." (para 10) "Therefore the oral statement made by Bodhraj Anand, together with the recital of the fact of assignment in the patent, in our opinion, is sufficient proof of the fact that Bodhraj Anand assigned the invention in favour of the partnership." (paras 10–11)
3. Procedure. Assignment not pleaded in the plaint. "It is true that there is no clear pleading regarding assignment in the plaint. The fact, however, remains that Bodhraj was cross-examined on that point. The omission of the fact of assignment from the plaint is, therefore, immaterial. The omission on the part of the respondent to file copy of the application moved before the Controller of Patents is also in our opinion of no consequence, in view of the fact that no specific issue in that connection was framed." (para 12)
4. Procedure. A plea first raised in appeal. "On a perusal of the record, we find that no specific plea to the above effect was raised in the court below nor any issue on that point was framed. It was for the first time in appeal before us that this point was sought to be canvassed on behalf of the appellants. Since this point was not raised earlier, it should not be open to the appellants to agitate it now in appeal." (para 15)
5. Obiter. A patent granted to a firm. "That apart, we do not find much substance in that contention as well. Learned counsel for the appellants failed to cite before us any decision or authority lending support to the contention that patent cannot be granted to a firm. On the contrary, from the cases cited on other points it is apparent that patents have been granted in favour of firms." "In view, however, of Section 14 of the Partnership Act, the partners will be deemed to hold it for the business of the partnership", and the Bench reproduced Narayanappa v. Bhaskara Krishnappa, AIR 1966 SC 1300. (para 15) "Therefore, even accepting that the patent granted to the respondent firm did not vest Patent rights in the respondent, it must be held that the rights vested in the two partners and they held those rights for the purposes of the business of the firm. During the subsistence of the partnership none of the two partners could treat and deal with patent right as his individual property." (paras 15–16)
6. The definition of invention. The Bench set out "Sub-section (8) of Section 2 of the Act": "'invention' means any manner of new manufacture and includes an improvement and an alleged invention." (para 19) "Direct cases of the courts in India on the point as to what is an invention are few. In order, therefore, to understand 'what is an invention' help can be taker from other sources." (paras 19–20)
7. The skilful mechanic. From Hotchkiss v. Greenwood the Bench set out that "unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain than were possessed by an ordinary mechanic acquainted with the designs, there was an absence of that degree of skill and ingenuity which constitutes essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor." From Cuno Engineering Corporation v. Automatic Devices Corporation: "the new device however useful it may be must reveal the flash of creative genius, not merely the skill of the calling." and "A new application of old device may not be patentable if the result claimed as new is the same in character as the original result, even though the new result had not before been contemplated." (para 21)
8. Out of the track. From Rado v. John Tye & Sons Ltd.: "The material question to be considered in a case like this is whether the alleged discovery lies so much out of the track of what was known before as not naturally to suggest itself to a person thinking on the subject; it must not be the obvious or natural suggestion of what was obviously known." (para 22)
9. Combinations of old elements. From Great Atlantic & Pacific Tea Co. v. Super-market Equipment Corporation: "Courts should scrutinise combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of patent is to add to the sum of useful knowledge." "A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skilful men." (para 23)
10. Improvement and invention. From "Corpus Juris Secundum Vol. 29": "Not every improvement is invention. While superior utility is a circumstance to be considered in determining the question of invention (as discussed) the attainment of comparative superiority or greater excellence in that which is already known does not of itself amount to invention." "As frequently stated, perfection of workmanship, however much it may increase the convenience, extend the use, diminish expense, is not patentable. An advance step which would occur to one skilled in the art when investigating is not invention" and "An improvement of old device or method is not patentable merely because it permits a product to be produced more cheaply, or because it produces something which is more merchantable, or more compact or more efficient, or more attractive in appearance. While a greater degree of control may be an improvement, such a change, in the absence of a performance of a new function, generally is not regarded as invention." (para 24) "The question whether the mechanism used by the respondent in the instant case was or was not an invention should be considered keeping in view the abovementioned principles." (paras 24–25)
11. More grooves, the same system. "The mere fact that the shackle of the old lock contained one groove and the shackle of new lock contains three grooves, or that in the old lock one arm of the shackle remained attached to the lock with a pin on opening it, while in the new lock both the arms of the shackle come out, or that the old lock contained an inner housing only on two sides, while the new lock contains an inner housing on all the four sides does not bring about any new change in the lock. The system remains the same." Of the keys, "That obviously was so because of the increase in the grooves and this difference in the working of the two locks cannot amount to an improvement which may constitute an 'invention'." (para 33)
12. Earlier patents for locks. "The specification contained in the former patent of 1915 and diagrams contained therein show that the working of the lock for which that patent was granted was similar to the working of the lock claimed to have been invented by Bodhraj Anand." (para 34) "It will, therefore, appear that the mechanism used by Bodhraj Anand in the lock claimed to have been invented by him was known from before and that he adopted the same mechanism with slight changes and no appreciably different results." (paras 34–35)
13. A result not in the specification. "This characteristic will however be present in every lock in which both arms of the shackle have grooves which get engaged with the moving of the key." "It is worthy of notice that in the specifications mentioned in the patent obtained for the lock (Exh. II) it was not mentioned that one of the characteristics thereof was that even if the shackle was cut on the top, the shackle will not turn and the lock cannot be removed. Presumably, this was not mentioned because there was nothing new in it." (para 36) "Therefore the mere fact that if the shackle of the lock (Exh. II) is cut from the top, the two pieces thereof shall not turn appreciably, was by no means an improvement falling within the definition of 'invention'." (paras 36–37)
14. Not a new invention. "In view of all that has been said earlier, our conclusion on point No. 3 is that the mechanism of the lock (Exh. II) was not a new invention on the date its patent was applied for and that neither the respondent nor Bodhraj Anand was the first and true inventor thereof." (para 39) "In view of the conclusion reached by us on point No. 3, this appeal should succeed and the suit filed by the respondent should fail." (paras 39–40)
15. Petition and counter-claim compared. "It is apparent on a perusal of the two provisions that if a person files an application for revocation of a patent, he will have to confine himself to the grounds stated in Sub-section (2) (b) of Section 26 but if he appears as a defendant in a suit for infringement of patent, each of the grounds mentioned under Section 26 shall be available to him by way of defence to the suit." "if it were the intention of the Legislature that neither a petition nor a counter-claim for revocation of patent be made by any person without the consent of the Advocate-General, except on the ground stated in Sub-section (2) (b) of Section 26, they would not have inserted the word 'counter-claim' in Sub-section (1)" (para 46)
16. Counter-claim without the Advocate-General. "We, therefore, feel inclined to accept that if a person files an independent petition for revocation of patent without obtaining the sanction from the Advocate-General, he will have to confine himself to the three grounds mentioned in Clause (b) of Sub-section (2) of Section 26." "Normally limitations of the nature contained in Sub-section (2) of Section 26 are imposed so that, before the case is put in Court, it may be examined by some outside agency to find whether it contains any substance" "But once the Court is already seized of the matter, there can be no point in the matter being examined by any other agency outside the Court." "We accordingly hold that a counter-claim for revocation of patent can be made on any of the grounds specified in Sub-section (1) of Section 26 of the Act without the intervention of the Advocate-General." (para 47)
17. Revocation and disposition. "We have already recorded a finding earlier that the mechanism of the lock (Exh. II) was not a new invention on the date its patent was obtained and that the respondent is not the first and true inventor thereof. Clauses (b) and (c) of Sub-section (1) of Section 26 are clearly attracted on this finding and the counter-claim should therefore succeed." (para 48) "The counter-claim made by the appellants for revocation of Patent No. 99371 dated 5th of May, 1965 granted in favour of the respondent is allowed and the patent is revoked." (paras 48–49)

What the court did not decide

"A number of other pleas were also raised by the appellants, but in view of the contentions raised before us, it is not necessary to refer to them." (para 4) Of the other locks the appellants produced, "The learned Single Judge has, however, not considered that evidence to be worthy of reliance and he has given cogent reasons for the same. We also, therefore, do not propose to take that evidence into consideration." (para 38)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 26 September 2026.