BISWANATH PRASAD RADHEY SHYAM versus HINDUSTAN METAL INDUSTRIES

Citation: [1979] 2 S.C.R. 757 · Decided: 13-12-1978 · Supreme Court of India · Bench: R.S. SARKARIA · Disposal: Appeal(s) allowed

Judgment (excerpt)

• 
BISWANATII PRASAD RADHEY SHYAM 
v. 
HINDUSTAN METAL INDUSTRIES 
December 13, 1978 
7 57 I 
A 
(R. S. SARKARIA, V. D. T\JLZAPURKAR AND A. P. SEN, JJ.] 
B 
Indian Patent and Designs Act, 
1911-Patent law, object, 
fundamental 
pri1Jciple-Utility of invention, whether necessary-Patentable improvement, 
requirements-Novelty artd inventive step test of-Grant of patent, whether 
guarantees validity-Specification, how to be construed. 
Th~ appellant and the respondent, are both firms carrying on the busi-
ness of ra.anufacturing utensils at Mirzapur. In 1951 one of the partners of 
C 
the respondent firm claimed to have invented a device and method for manu~ 
facturing ulensils, intrcducing improvement, convenience, speed, safety and 
better finish, in !he old prevalent method which mw fraught with risk to the 
workers, inasmuch as the utensils used to fly off from the headstock, during 
the manufacturing process. The respondent filed the necessary specifications 
and claims, in the patent office, and got the alleged invention patented under 
the Indian Patent and Designs Act, 1911, with effect from December, 
13, 
D 
1951, as assignee of the patent, and acquired the sole and exclusive right of 
using this method and means for manufacturing utensils. In September 1952, 
the respondent learning that the appellant firm was using the patented method, 
5e1ved a notice upon it, asking for desistance from the infringement of its 
patent, but the appellant continued to use the patented method. The res· 
pendent then filed a suit for permanent injunction restraining 
the 
appellant 
adopting, imitating, employing or in any manner infringing the device of its 
E 
patemt. The appellant resisted the suit, filed a counter-cla.im and a separate 
petition under s. 26 of the Act, for revocation of the patent, contending that 
neither was the respondent's alleged invention a manner of new 1nanufacture 
or improvement, nor did it involve any inventive step or 
novelty, 
having 
regard to v,rhat was known or used prior to the patent. The respondent's suit 
and the appellant's counter-claim were transferred to the High Court under 
s. 29 (proviso). Both the suits were consolidated and tried together by a 
F 
single Judge who dismissed the suit for injuncti9n and allowed the 
petition 
for revoct:ition of the patent, issued to the respondent. In appeal, a Division 
Bench of the High Court reversed the earlier judgment, and set aside the 
decree. 
Allowing the appeals, the Court . 
HELD : 1. The object of patent Jaw is to encourage scientific research, 
G 
new technology and industrial progress. The price of the grant of the mono-
poly is the disclosure of the invention at the Patent Office, which, 
after the 
expiry of the fixed period of the monopoly, passes into the public domain. 
[763 C-D]. 
2. The fundamental principle of Patent law is that a patent is gra•.Jted only 
for an invention which must have novelty and utility. It is essential for the 
vaUdity of a patent that it must be the inventor's own discovery as 
opposed 
JI 
to mere verification of what was, 
already known before the date of the 
patent. [763 D-E]. 
10-40SCI/79 
l~ 
• 
17 58 
SUPREME COURT REPORTS 
[1979] 2 s.c.R. 
l\ 
3. The Act of 1911, does not specify the requirement of being, useful, in 
the definition of 'invention', but courts have e.lways taken the view that a 
patentable invention, apart from being a new manufacture, must 
also 
be 
useful. 
Thr. foundation for this judicial interpretation, is to be found in the 
fact that s. 26(1)(f) of the Act recognises lack of utility as one 
of 
tho 
grounds on which a patent cau be revoked. [763 E·Fl. 
B 
4. In order to be patentable, an improvement on something known before 
or a combination of different matters already known, should be something 
more than a mere workshop 'improvement, and must independently satisfy 
the test of invention or an inventive step. 
It must produce a new result, or 
a new article or a better or cheaper article than before. The new 
subject 
matter must involve "inv'ention" over what is old. 
Mere collocation of more 
than one, integers or things, not involving the exercise 
of 
any 
inventive 
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faculty does not qualify for the grant of a patent. [763 H, 764 A·B]. 
D 
E 
F 
Rickman v. Thierry, [1896) 14 Pat. Ca. 105; Blackey v. Latham, [1888] 
6 Pat. Ca. 184; and Encyclopaedia Britannica, Vol. 17 page 453; applied. 
5. To decide whether an alleged invention involves novelty and an inven· 

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