Case Laws in Novelty and Inventive Step – Patents

Points to be considered while considering Novelty and Inventive Steps:

 The invention was not kept confidential.
 The inventor has not kept abreast with developments in the area of interest.
 It may be a coincidence that two inventors had hit upon the same thing in succession.

Case of Prout vs. British Gas (1992)

An employee of British Gas had an idea for a vandal proof bracket for fixing warning lamps to
barriers placed around excavations in the highway. He submitted his idea to the company through
the suggestion scheme. British Gas carried out field trials on the public highway but decided not
to proceed with a patent application. The employee then applied for a patent in his own name
(British Gas did not object to this). Sometime later, British Gas made use of the patent without
permission. The employee sued the British Gas for an infringement. The latter argued that the
patent was not valid as the invention was known at the time of filing of the patent application. The
court held that the prior use was not sufficient to anticipate the patent. Something more than mere
trials in public was needed. The patent was declared valid and infringed by British Gas which was
also liable for breach of confidence.

Mariappan Vs. A.R.Safiullah Madras High Court

Status : Dismissed 30th June, 2008
Important Paras –

Para – 14 –

The patent which is subject matter of the present dispute is not a novel or patentable invention.
The learned senior counsel appearing for the appellant in O.S.A.No.263 of 2006/4th
respondent/4th defendant has submitted that as per the patent certificate issued in favour of the
applicant/plaintiff, the patent is for food-grade laminated paper, method apparatus for
manufacture of laminated paper and it is not for a laminated banana leaf. The learned senior
counsel further submitted that the patent obtained is only for process and not for the product if
'artificial banana leaf' and the applicant/plaintiff has miserably failed to establish as to how the
patent for process is new, novelty or involves an invention or how the process is economically
beneficial. Further, according to the learned senior counsel for the appellant in O.S.A.No.263 of
2006, the process of manufacture of food-grade laminated paper are well known and used in
India for several decades and nothing new was involved in manufacturing a laminated paper in
the shape of banana leaf. It is also submitted by the learned senior counsel that even the design
of the banana leaf cannot be termed as original or the intellectual property of the
applicant/plaintiff as it is a product of nature and no person including the applicant/plaintiff can
hold proprietary right over such shape or even claim that he designed a banana leaf and that
plastic, steel and even ceramic plates have been made in the shape and design of banana leaf for
the past several years. The machineries which are used for making the paper with laminated
quoting, the artificial banana leaf are made by Jailaxmi Engineering Corporation and such
machineries manufactured by them have been sold all over India and therefore the manufacture
of laminated paper does not involve any invention or novelty also.

Para – 30 –

In AIR 1929 Privy Council 38 - Pop Appliance Corporation v. Spanish River Pulp and Paper
Mills Ltd. a test for patent infringement has been stated and the same is extracted below:-
"Test is would a man who was grappling with the problem solved by the patent attacked and
having no knowledge of that patent if he had the alleged anticipation in his hand, have said, "that
gives me what I wish"? British Thompson Houston Co. v. Metropolitan Cickers Electrical Co.
45 R.P.C. at p.23, Otto v. Linford, (1882) 46 L.T.N.S.35; Flour Oxidising Co. v. Car & Co., 25
R.P.C. at p.457; and Armstrong Whitworth & Co. v. Hard Castle, 42 R.P.. 543; Foll. It cannot
be too carefully kept in mind in patent law that in order to render a document a prior publication
of an invention it must be shown that it publishes to the world the whole invention, i.e., all that
is material to instruct the public how to put the invention in practice. It is not enough that there
should be suggestions which, taken with suggestions derived from other and independent
documents, may be shown to foreshadow the invention or important steps in it. British Ore
Concentration Syndicate Ltd. v. Minerals Separation Ltd: 26 R.P.C. 147 Foll. In almost every
patent for mechanical combinations the elements are old. It must also be considered that there
may be inventions in what, after all, is only simplification. After all, invention is finding out
something which has not been found by other people. The quid to the patentee is the monopoly;
the qua is that it presents to the public the knowledge which they have not got. The real invention
often may be and is just the last element of the combination. In every case arises a question of
fact, whether the contrivance before in use was so similar to that which the patentee claims that
there is no invention in the difference. The contrivance must be a contrivance in use, not one
merely described but the analogous use is not one merely described but the application of well
known things to an analogous use is not the proper subject for a patent. Harwood v. Great
Northern Ry. Co., 11 H.L.C. 654 and Margan & Coov. Win Dover & Co., the C.Spring case, 7
R.P.C. 131, Foll."

Para – 57–

It was ultimately held in the said decision that the product developed should be a totally new
product and a mere grant of patent in favour of the plaintiff by itself does not mean that the
plaintiffs are entitled to any injunction. It was further held in the said decision that the device
developed by the plaintiffs is in fact, the result of traditional knowledge and
aggregation/duplication of known products such as polymers and, therefore, is not an invention.

Para – 59–

We also perused the typed set of documents filed in these appeals. A comparison in US patent
Nos. (document Nos. 1 to 5) in O.S.A.No.263 of 2006 and the application filed for patent by the
applicant/plaintiff would reveal that the process involved in the manufacture of food-grade
laminated paper the contents are almost verbatim similar to that of the manufacture of layers of
plastic film laminated but one and another has found in US patent. Though the applicant/plaintiff
claims that it is a product as well as process patent, materials available on record in the form of
process patent and the applicant/plaintiff's application for patent would clearly establish that the
patent granted in his favour on 20.01.2006 is only a process patent. The art of making laminated
food-grade paper is very well known in India as well as in other parts of the world and therefore,
it is prima facie opinion of the Court that no invention is involved. But at the same time,
innovation in the form of making banana leaf with artificial structure of food-grade quality and
artificial scented smell of banana leaf is found in the said product and therefore, it could be
termed as innovation and some novelty is also involved in the said product.

Para – 60 –

Therefore, an "inventive step" which is a necessary ingredient of invention in order to make an

Applicant eligible for grant of patent under the Act, must be relating to an invention involving
technical advance or having economic significance or both along with a necessary factor that
such invention should make it not obvious to a person skilled in the art. Therefore, a patent must
have characters of novelty, non-obviousness and enablement, out of which, enablement being
the concept of putting the novelty into action and all the above said ingredients must
consecutively be present to have a valid patent. Admittedly, in the case on hand, pre and post
grant oppositions had been raised in respect of the patent granted to the applicant/plaintiff and
under Section 43 of the Patents Act 1970, it is open to a party who is opposing the patent to
prove that there are no inventive steps in the invention of the patent and therefore, the patent
granted need not be taken into consideration at least at the time of granting order of interim
injunction.

Para – 66 –

Now, the patent life is very short in view of new innovations and inventions which are frequently
taking place, wherein a new product is using its significance and market very quickly. We are
not dealing with the question of invention or novelty involved in respect of the product namely
the artificial banana leaf for which patent was given in favour of the plaintiff, as pre and post
grant oppositions to the said patent are pending adjudication before the concerned authority at
the behest of the 4th respondent/4th defendant and it is for the concerned authority to take a
decision on that aspect and if any party aggrieved by such decision, may invoke appropriate
remedy before the appropriate forum in terms of the Patents Act. Therefore, applying the
principles laid down in the above cited decisions, we hold that even though the banana leaf is a
natural product, the invention on the part of the applicant/plaintiff to use artificial laminated
food-grade shape in the form of banana leaf with its colour with artificial scented smell is prima
facie innovative and that in view of the Patent granted in his favour for the said product, he is
entitled for protection pending disposal of the suit.
V.Manioka Thevar vs Star Plough Works Madras High Court
Status : Dismissed 1st December, 1964
Important Paras –

Para – 5 –

If from the objections raised by the defendant it is clear that that a serious controversy exists as
to whether or not the invention claimed by the plaintiff is a new one or a new manufacture of
whether or not the invention involves any new inventive skill having regard to what was known
or used prior to the date of the patent, courts will not grant an nterim injunction restraining the
defendant from pursuing his normal business activity. An interim injunction will not be granted
if the defendant disputes the validity of the grant. The facts of the instant case disclose a bona
fide tribal issue as regards the inventive genius claimed by the plaintiff.

Lallubhai Chakubhai vs Chimanlal Chunilal Bombay High Court

Status : Dismissed 3rd April, 1935
Important Paras –

Para – 8 –

whether the plaintiff claims his patent for a new combination made up of its component parts,
sometimes called the subordinate integers, or whether the first claim in the specification is a
separate invention by itself which has also been patented and therefore entitled to protection. To
use the language of the Lord Chancellor in Clark v. Adie (1877) 2 App. Cas. 315, 321, is the
first claim " an invention which is a subordinate integer in the larger invention " ? It is incumbent
on the patentee to particularly describe and ascertain the nature of his invention in the
specification, as the ambit of his invention is circumscribed by the claims. The construction of
a specification is a matter of law and is for the Court. It must be construed as a whole. The
claiming clauses are an important part of the specification and they must be fairly -construed in
reference not only to the specification but also to the title. The proper way to read specification
is, as was pointed out in Arnold v. Bradbury (1871) L.R. 6 Ch. App. 706, 712, not to read the
claims first and then see what the full description of the invention is, but first to read the
description of the invention, in order that the mind may be prepared for what it is that the
invention is to be claimed, for the patentee cannot claim more than he desires; to patent.

There is not, in my opinion, sufficient and cogent evidence to establish that before the
application plaintiff had made his process ^ publicly known, nor any reason for doubting the
plaintiff's word that secrecy was observed. Nor has it been shown that betel-nuts were treated
"by other merchants according to the plaintiff's process before the date of the application.
Para – 9-

The two features necessary to the validity of a patent are novelty and utility, but the real test is
the novelty of the invention. Novelty is essential, for otherwise there would be no benefit given
to the public and consequently no consideration moving from the patentee.

The prior public user of the invention for the purposes of trade may, in certain cases defeat a
patent for want of novelty quite apart from the question of publication.

There is not, in my opinion, sufficient and cogent evidence to establish that before the
application plaintiff had made his process ^ publicly known, nor any reason for doubting the
plaintiff's word that secrecy was observed. Nor has it been shown that betel-nuts were treated
"by other merchants according to the plaintiff's process before the date of the application.

Para – 12 –

In my opinion, therefore, the defendants cannot rely upon these earlier publications as an
anticipation. We have it in evidence that the plaintiff laboured long and almost continuously in
his laboratory first in the Fort and then at Mazagaon. He performed sixty-five experiments on
almonds and sixteen on betel-nuts, and kept a note of each of them in two note books written in
German. The notes were made after completing each particular experiment. An attempt was
made to discredit the notes by suggesting that they were subsequently made up for the suit, but
there is no foundation for that suggestion.

Para – 13 –

If the invention is being put into practice before and at the date of the grant, the grant will not
be for a new invention or manufacture, and this applies equally whether the invention is being
practised by the patentee himself or by others. A use of the invention for the purposes of trade
may constitute a prior user which invalidates the patent, and it has been held that the prior public
sale of goods or articles treated according to the invention is a public user of the invention, for
the sale is strong evidence that the user was really commercial and not experimental.

Para – 19 –

A patent may sometimes be infringed by taking a part only of the invention, but that depends on
whether the part for which protection is asked is a new and material part, especially in the case
of a combination. If it is not new and material, the Court must consider what is the substance of
the invention, and to do so it has to consider the relative importance of all the parts of the
invention. The essential part or the substance of the plaintiff's invention is, in his own words,
the use of pressure, and therefore there could be no infringement unless the use of pressure by
the defendants in their process was proved.
Dhanpat Seth vs Nil Kamal Crates Ltd., Himachal Pradesh High Court
Status : Disposed 20th September, 2007
Important Paras –

Para – 11 –

A bare perusal of the definition of invention clearly shows that even a process involving an
inventive step is an invention within the meaning of the Act. It is, therefore, not necessary that
the product developed should be a totally new product. Even if a product is substantially
improved by an inventive step, it would be termed to be an Invention. The definition of
'inventive step' provides that when technical advances as compared to existing knowledge take
place in an existing product or there is improved economic significance in the development of
the already existing device and theinvention is not obvious to people skilled in the art, it would
amount to an inventive step.

Para – 16 –

To be patentable the improvement or the combination must produce a new result or a new article
or a better or cheaper article than before. The combination of old known integers may be so
combined that by their working inter-relation they produce a new process or improved result.
Mere collection of more than one integers or things, not involving the exercise of any inventive
faculty, does not qualify for the grant of a patent.

Para – 26 –

Keeping in view the aforesaid discussion, we are clearly of the view that the device developed
by the plaintiffs is in fact the result of traditional knowledge and aggregation /duplication of
known products such as polymers and, therefore, cannot be said to be an invention. The plaintiffs
are, therefore, not entitled to any injunction.

Glaverbal S.A. vs Dave Rose Delhi High Court

Status : Disposed 27th January, 2010
Important Paras –

Para – 67 –

The another thing which requires discussion at this juncture is that novelty, inventive step and
industrial application are the three trinity tests of patentability and the same are to be satisfied
independently of each other although it is separate issue that they may be interdependent upon
each other as novelty promotes invention which enhances its applicability in the industry. Thus,
the challenge which in the present case is raised has to be looked into from the perspective of
novelty or newness as well as inventive step or obviousness wherein the criterion is that the
same invention cannot be known to the person skilled in the art.
Para – 71 –

The challenge to the patent made by the defendants is not unfounded and rather it raises a serious
credible challenge to the patent and the same is discernible from the fact that the German Federal
court rejected the claims closest to those of the Indian patent on the grounds of lack of novelty
and inventive step. Incidentally, the German court while rejecting the claims of the patent of the
present plaintiff relied upon the same prior arts which have been relied upon by the defendants
in the present proceeding. Thus, as a matter of proprietary and also international comity which
warrants that the judicial decision of the foreign tribunal/court may be respected in the same
manner as that of the national court, this court is not inclined to take a different view atleast at
an interlocutory stage.

Garware Wall Ropes Ltd., vs Mr.Anant kanoi Gujarat High Court

Status : Dismissed 13th July, 2006
Important Paras –

Para – 9 –

It is not in dispute that the gabions were manufactured, were used and its object was known to
the world for long time. It is also not in dispute that gabions were made out of various raw
materials and were being used all over the world including India even prior to the application
for patent.

Para – 22 –

The plaintiff is further required to show that there is an infringement of his patented rights. When
the validity of the patent is challenged on the ground that the patent has been obtained by fraud,
there is no new invention or new product, but, it is simply an extension of what was earlier used
or was known to the world, then, the burden extra weighs upon the plaintiffs to show to the
Court that their work or the invention or the product is not simply an extension, but, is the result
of inventive process and innovation. When the defendants come out with a case that the patent
is illegal and deserves to be revoked, then, obviously, there would be a triable issue in favour of
the defendants and not in favour of the plaintiffs.

Para – 24 –

It is also to be seen that the plaintiffs submit that they have invented a new product. I have
already observed that it is not in dispute before me that the gabions were used and are known to
the people for thousand of years. If the gabions made of different materials were used to avoid
or protect soil erosion for more than 7000 years, then, invention of a gabion cannot be said to
be a new or inventive invention, no research was required to be made into something which was
publicly known. The gabions of different materials are being used in the world looking to the
requirement. The rope gabions and polymer gabions are being used in Maharashtra and Bihar
since 1991 and 1987 respectively. These rope gabions are made of polymer and synthetic ropes,
that is, nylone or so. It cannot be said that any other synthetic material would not include nylone.
If nylone crates and gabions are used by these Governments for long many years and are being
manufactured by M/s.Netlon and other Companies looking to the requirement, then, the
plaintiffs would not be entitled to say that they have brought into existence a new product, which
was not known to the world.

Para – 25 –

True it is, that a new invention may be a new process or a new product. In the present matter,
the plaintiffs submit that the gabions though are known to the world, but, the rope gabions made
after weaving cords were not known to the world, therefore, after a great research and
undergoing huge experiments, they have brought into existence a new product, which was
unknown to the world. In my considered opinion, the submission of the plaintiffs is bad in law
and untenable on facts.

Para – 33 -

After considering the totality of the circumstances, I am unable to hold that the product of the
plaintiffs can satisfy the test of the invention or an inventive step. The product is neither new
nor a result of the research, nor it is cheaper, nor it is something, which, for the first time, came
into existence and was not known in the field. Taking into consideration the totality of the
circumstances, I am of the opinion that no prima facie case exists in favour of the plaintiffs.

Asian Electricals vs Havells India Ltd., Delhi High Court

Status : Dismissed 19th April, 2010
Important Paras –

Para – 8 –

Asian claims to have sent a legal notice dated 4th March, 2009 to Havells, asking it to cease and
desist from infringement of the subject patent, which was replied to on 14th March, 2009.
Besides reiterating the contentions made in their application and the suit, Mr. Gaurav Barti, for
Asian argued that the novel and unique features of the Asian products are the two adaptors based
on 2 sides which assist in the process of conversion to electronic current from induction and thus
minimize flickering which is normally associated with fluorescent lights. It is argued that the
patent application having been made in 1999 and having been processed through an exhaustive
procedure whereby an opportunity was afforded to all interested to oppose, after the
investigation of which it was granted. Havells cannot contend that Asian's products are not
unique or novel. Learned counsel relied upon the decisions reported as K. Ramu Vs. Adyar
Ananda Bhavan & Muthulakshmi Bhavan, 2007 (34) PTC 689 for the submission that grant of
patent is sufficient for the Court to infer novelty, uniqueness and IA No. 8205/2009 in CS (OS)
No. 1168/2009 Page 4 presence of inventive steps and that having regard to the principles
enunciated in American Cyanamid Co. Vs. Ethicon Ltd., (1975) 1 All E.R. 504, the Court should
injunct Havell's from infringing Asian's patents.

Para – 9 –

It is argued that Havell's submissions about obviousness of the product based on an earlier US
Patent alleging the latter to be a "Prior Art" is untenable. In support of this submission, learned
counsel argued that lack of novelty implies that the invention is discernible to the public prior
to the relevant time and in support of this puts reliance on Beloit Canada Ltd. Vs. Valment Oy
(1986) 8 C.P.R. (3d) 289. It was contended that the Court should be able to look at a prior single
publication to discover in it all information which for practical purposes is necessary to produce
the claimed invention without the exercise of any inventive skill. Asian argued that material
sought here and relied, do not measure up to the standard and at this prima facie stage the Court
cannot due to lack of technical expertise hold against the patent and conclude that it was either
anticipated or obvious based on alleged prior art.

Para – 12 –

According to Havells, Asian's patent is a mere workshop result or minor trade variant of the US
Patent, lacking the essential inventive step as to warrant patent grant, under the Act. It is
contended that Asian's patent is a mere re-arrangement of known devices, each functioning
independently of one another in a known way by virtue of being in the public domain.

Para – 13 –

It is contended that the plaintiff's claim for novelty and inventive step is not genuine, and that
the inventive step claimed, for the purpose of the patent, in fact is no inventive step, but an
obvious innovation that could have been discerned by a person reasonably acquainted with the
prior art.

Para – 15 -

Asian is not claiming that any of the components are inventions, or involve a new or inventive
step; the patent is claimed for the kit, which incorporates the two sleeve like ends, one or both
of which contain the ballast. In other words the claim is in respect of the design or particular
assembly.