Patent case laws on Novelty

Novartis vs Union of India and ors Supreme court

1st April, 2013
Important Paras –

Para – 17 –

Since India is having a requirement of higher standard of inventive step by introducing the
amended section 3(d) of the Act, what is patentable in other countries will not be patentable in
India. As we see, the object of amended section 3(d) of the Act is nothing but a requirement of
higher standard of inventive step in the law particularly for the drug/pharmaceutical substances.

Para -18 –

The IPAB also referred to the judgment of the Madras High Court, dismissing the appellants
writ petitions challenging the constitutional validity of section 3(d) where the High Court had
observed:

We have borne in mind the object which the amending Act wanted to achieve namely, to prevent
evergreening; to provide easy access to the citizens of the country to life saving drugs and to
discharge their constitutional obligation of providing good health care to its citizens.

Para – 19-

In light of the High Courts observation, the IPAB also referred to the pricing of the drug Gleevec
by the appellant while it enjoyed EMR over it, and held that the patentability of the subject
product would also be barred by section 3(b) of the Act and in this regard observed as follows:
We are fully conscious of the Appellants benevolent GIPAP program for free distribution of
GLEEVEC to certain cancer patients. But as per information furnished in its written
counterargument by R 3 that when the Appellant was holding the right as EMR on GLEEVEC
it used to charge Rs.1,20,000/- per month for a required dose of the drug from a cancer patient,
not disputed by the Appellant, which in our view is too unaffordable to the poor cancer patients
in India. Thus, we also observe that a grant of product patent on this application can create a
havoc to the lives of poor people and their families affected with the cancer for which this drug
is effective. This will have disastrous effect on the society as well. Considering all the
circumstances of the appeals before us, we observe that the Appellants alleged invention wont
be worthy of a reward of any product patent on the basis of its impugned application for not
only for not satisfying the requirement of section 3(d) of the Act, but also for its possible
disastrous consequences on such grant as stated above, which also is being attracted by the
provisions of section 3(b) of the Act which prohibits grant of patent on inventions, exploitation
of which could create public disorder among other things (Sic .) We, therefore, uphold the
decision of R 8 on section 3(d) of the Act to the extent that product patent cannot be made
available to the Appellant.
Para – 36 –

Patent systems are not created in the interest of the inventor but in the interest of national
economy. The rules and regulations of the patent systems are not governed by civil or common
law but by political economy.

Para – 144 –

Chisum on Patents: A Treatise on the Law of Patentability, Validity, and Infringement (Vol. 3,
June 2007) in Chapter: Adequate Disclosure notes: § 7.03 The Enablement Requirement Since
1790, the patent laws have required that the inventor set forth in a patent specification sufficient
information to enable a person skilled in the relevant art to make and use the invention. The
invention that must be enabled is that defined by the particular claim or claims of the patent or
patent application. This is consistent with the general principle of patent law that the claim
defines the invention for purposes of both patentability and infringement.

Para – 152 –

The use of a subsequently-existing improvement to show lack of enablement in an earlier-filed

application on the basic invention would preclude issuance of a patent to the inventor of the
thing improved, and in the case of issued patents, would invalidate all claims (even some picture
claims) therein. Patents are and should be granted to later inventors upon unobvious
improvements. Indeed, encouragement of improvements on prior inventions is a major
contribution of the patent system and the vast majority of patents are issued on improvements.
It is quite another thing, however, to utilize the patenting or publication of later existing
improvements to reach back and preclude or invalidate a patent on the underlying invention.

Para – 159 –

From the beginning to the end, there was no secret and there was no invention by the laintiffs.
The ingredients, the active ingredients 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 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.

Para – 191 –

We have held that the subject product, the beta crystalline form of Imatinib Mesylate, does not
qualify the test of Section 3(d) of the Act but that is not to say that Section 3(d) bars patent
protection for all incremental inventions of chemical and pharmaceutical substances. It will be
a grave mistake to read this judgment to mean that section 3(d) was amended with the intent to
undo the fundamental change brought in the patent regime by deletion of section 5 from the
Parent Act. That is not said in this judgment.
Para – 192 –

Section 2(1)(j) defines invention to mean, a new product or , but the new product in chemicals
and especially pharmaceuticals may not necessarily mean something altogether new or
completely unfamiliar or strange or not existing before. It may mean something different from
a recent previous or one regarded as better than what went before or in addition to another or
others of the same kind.

Note: This Judgement gives the essence of novelty in Patent.

StandPick Pvt. Ltd. Vs Oswal Trading Pvt. High court

Ltd. (AIR) 2000 Delhi 23 26th May, 1999
Important Paras –

9,10,12
“ In the said decision the Supreme Court held that 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 'inventive step'. It was further held that 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 13
Despite all the safeguards and circumspection contemplated in various provisions of the Act
against grant of patent in respect of a spurious, purloined or fake invention, the Legislature
minced no words in clarifying its intendment that no presumption of validity would attach to a
patent granted by the Controller under the Act, notwithstanding examination and investigation
made under Sections 12 & 13 thereof.

Bishwanath Prasad Vs. Hindustan Metal Supreme court

Industries 13th December, 1978
Important Paras –

Para – 5 –

To decide whether an alleged invention involves novelty and an inventive step, certain broad
criteria can be indicated. Firstly if the "manner of manufacture" patented, was publicly known,
used or practised in the country before or at the date of the patent, it will negative novelty or
`subject matter'. Prior public knowledge of the alleged invention can be by word of mouth or
by publication through books or other media. Secondly, the alleged discovery must not be the
obvious or natural suggestion of what was previously known.

Para – 8 -

The invention got patented by M/s. Hindustan Metal Industries, was neither a manner of new
manufacture, nor a distinctive improvement on the old contrivance involving any novelty or
inventive step having regard to what was already known and practised in the country for a long
time before 1951. It is merely an application of an old invention, with a slight change in the
mode of application, which is no more than a `workshop improvement'.

“In order to bring the subject-matter of a patent within this exception, there must be invention
so applied as to produce a practical result. And we quite agree with the Court of Exchequer
Chamber that a mere application of an old contrivance in the old way to an analogous subject,
without any novelty or invention in the mode of applying such old contrivance to the new
purpose, is not a valid subject-matter of a patent."

Hindustan Level Ltd. Vs Godrej Soaps Ltd. High Court

11th April, 1996
Important Paras –

Para – 30 –

Mr. Chakraborty, learned counsel has cited Biswanath Prasad Radhey Shyam v. H.M. Industries
. He has drawn the attention of this court to para 15 at p. 1447 which runs as follows :

"15. As against this, Mr. Mehta, appearing for the respondent, submits that whether the process
got patented by the respondent involves a method of near manufacture or improvement, is one
purely of fact and should not as a matter of practice, be disturbed by this court. Even in cases of
doubt -- proceeds the argument -- the court should uphold the patent. It is submitted that a patent
is granted by the controller after due inquiry and publication and unless the contrary is proved,
should be presumed to have been duly granted. In the instant case, it is urged, that presumption
is wronger because the trial Judge as well as the Appellate Bench of the High Court have
concurrently held that the process patented had utility."

Para – 46 –
Mr. Mukherjee has also cited Monsanto Company v. Coramandal Indag Products (P) Ltd. . That
was a case for revocation of a patent. Mr. Mukherjee has presumably referred to the principles
laid down in this case, as in our case, a point has been raised by Godrej Co. that the plaintiff's
patent suffers from lack of novelty and from anticipation. In Monasanto's case, it has been held
that to satisfy the requirement of being publicly known as used in clauses (e) and (f) of S.
64(1) of the Patents Act, 1970, 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 the knowledge of the patented product or process either as men of science or men of
commerce or consumers. The section of the public who are men of science or men of commerce
were interested in knowing about herbicides which could destroy weeds but not rice must have
been aware of the discovery of the active agent. There was no secret about the active agent as
claimed by the plaintiffs since there was no patent for the agent. The process was known, the
product was known, the use was known and then there was no invention.

Para – 58-

The learned Court of Appeal upheld the view of the learned Trial Judge and explained the
nature of "Gillette" defence at page 12 as follows :--

"I think I should refer, not to the whole speech, but to certain passages in it, before I add a
few words of my own on the same line as Roxburgh, J's judgment. The case, as may be
judged from its title, was a case in which the Gillette Razor Co. were alleging against the
Anglo-American Trading Co. that the latter had infringed the former's Latters Patent for a
razor. It appears that one of the matters discussed during the hearing was this, that there had
previously been a razor handle, invented by a gentleman called Burler; and as Lord Moulton
points out, if you put a blade into Butler's handle the article was indistinguishable for all
practical purposes from the defendants' allegedly infringing article. The noble Lord, having
stated that, goes on : "It follows, therefore, that no patent of date subsequent" to the
publication of Butler's specification could possibly interfere with the right of the public to
make the defendants' razor. If the claims of such a patent were so wide as to include in it,
the patent would be had, because it would include something which differed by no patentable
difference from that which was already in the possession of the public. Such a patent would
be bad for want of novelty. If the claims were not sufficiently wide to include the defendants'
razor, the patentee could riot complain of the public making it. In other words, the defendants
must succeed either on invalidity or on non-infringement".
Surendra Lal Mahendra Vs Jain Glazers High Court
25th August, 1980
Important Paras –

Para – 12 –

Another improvement claimed on behalf of the plaintiff is that traverse of the film from the
loading roller is from the bottom in the patented contrivance while it is from the top in Morane
machine. I wonder if that would make any difference whatsoever and would constitute a distinct
improvement. The learned counsel for the plaintiff, however, frankly conceded that the art of
applying adhesive to one side of the film is almost the same in both the. apparatuses. He also
admitted that the liquid based adhesive is used in both these machines. However, he has pointed
out that the base in the case of Morane apparatus is a solvent which does not dissolve in water
without the help of a Chemical and not water as in the case of plaintiff's machine. I again fail to
see what difference would it make. In this context I may also add that Morane machine appears
to be much more advanced in technology inasmuch as it has many sophisticated appliances and
its mechanism is somewhat intricate. For this instance it has an automatic hot air blower for
drying process .which does 'not exist in plaintiff's patent. Further, Morane has an electrically
heated oil filled roller at the laminating point but the same does not exist in the plaintiff's
machine. Still further Morane has got all speed variable drive motor for operating automatic
feeder and speed adjustment. On the other hand the plaintiff has used a U-belt pulley for
reducing the speed of the motor i.e. by using one big and one small pulley. Thus it would appear
that the plaintiff's patent is nothing more than an indigenous combination of certain integers
which form part of Morane machine designed to be a less expensive and cheaper apparatus. No
doubt it may be termed as simplification of the apparatus to some extent but it is difficult ex
facie to say that it involves an exercise of inventive step or inventive faculty. No doubt, he has
produced a workable machine but it incorporates almost all the integers and components of
Morane machine. So it cannot be said that .he has added a scintilla of invention, to produce the
same. On his own showing, the plaintiff had to handle a couple of Morane machines which were
not found to be workable in India and therefore, his services had to be secured by the parties
concerned as a skilled technician to put the same in working order. It is thus no wonder that
having tried his hand on Morane machines, he was able to devise an apparatus of his own by
virtually copying the same process and making some alterations and adjustments here and there
so as to obviate the necessity of sophisticated and costly integers used by Morane.

Para – 13 -

As observed by the Supreme Court in M/s. Biswanath Prasad Radhey Shyam's case (Supra) :
"IT is important to bear in mind that in order to be patentabic an improvement on something
known before or a combination of different matters already known, should be something more
than a mere workshop improvement; ana must independently satisfy the test of invention or an
'inventive step'. To be patentable the improvement or the combiniation 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. It is not enough, said Lord
Davey in Rickmann vs Thierry that the purpose is new or that there is novelty in the application,
so that the article produced is in that sense, new but there must be novelty in the mode of
application. By that, I understand that in adopting the old contrivance to the new purpose, there
must be difficulties to be overcome, requiring what is called invention, or there must be some
ingenuity in the mode of making the adoption. As Cotton, L. J. put it in Blackey vs. Lathem, 'to
be new in the- patent sense, the novelty must show invention'. In other words, in order to be
patentable, the new subject-matter must involve 'invention' over what is old. Determination of
this question, which in realty is a crucial test, has been one or the most difiicult aspects of Patent
Law, and has led to considerable conflict of judicial opinion.'

Para – 14-

From a conspectus of foregoing facts, it cannot bo held by any stretch of reasoning at this stage
that the invention claimed by the plaintiff involves something which is outside the probable
capacity of skilled craftsman having regard to what was already known in the country. Certainly,
it cannot be said to be either anew manner of manufacture or a distinctive improvement on the
old contrivance involving novelty or inventive step, having regard to what was already known
and practiced in the country.

Monsato Company by their Patent vs Supreme court

Coramandal Indag Products Pvt. Ltd. 14th January, 1986
Important Paras –

Last Para –

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.
Farbewerke Hoechst ... vs Unichem Bombay High Court
Laboratories And Ors. 11th July, 1968
Important Paras –

Para – 14 –

Insufficiency of description has two branches, (1) the complete specification must describe "an
embodiment" of the invention claimed in each of the claims and that the description must be
sufficient to enable those in the industry concerned to carry it into effect "without their making
further inventions"; and (2) that the description must be fair i.e. it must not be unnecessarily
difficult to follow.

Para – 15 –

To anticipate a patent, a prior publication or activity must contain the whole of the invention
impugned; i.e., all the features by which the particular claim attacked is limited. In other words,
the anticipation must be such as to describe, or be an infringement of the claim attacked.

Para – 16 –

Before referring to this evidence, I should, I think, endeavour to state the principles on which,
and limits within which, an invention consisting of the production of new substances by known
methods from known materials can be supported from the point of view of subject-matter. I
understand them to be these:-

(i) An invention consisting of the production of new substance from known materials by known
methods cannot be held to possess subject-matter, merely on the ground that the substances
produced are new, for the substances produced may serve no useful purpose, in which case the
inventor will have contributed nothing to the common stock of useful knowledge (the methods
and materials employed being already known) or of useful materials (the substances produced
being ex hypothesis, useless).

(ii) Such an invention may, however be held to possess subject-matter provided the substances
produced are not only new but useful, though this is subject to the qualification that the
substances produced must be truly new, as opposed to being merely additional members of a
known series (such as the homologues) and that their useful qualities must be the inventor's own
discovery as opposed to mere verification by him of previous predictions.

(iii) Even where an invention consists of the production of further members of a known series
whose useful attributes have already been described or predicted, it may possess sufficient
subject-matter to support a valid patent provided the somewhat stringent conditions prescribed
by Maugham J., as he then was, in I. G. Farbenindustrie A. G.'s Patents, (1930) 47 RPC 289 as
essential to the validity of a selection patent are satisfied, i. e. the patent must be based upon on
some substantial advantage to be gained form the use of the selected members of the known
series or family of substances, the whole) of the selected members must possess this advantage,
and this advantage must be peculiar (or substantially peculiar) to the selected group."

If the useful qualities of the new substances produced are the inventor's own discovery, that
would be sufficient to repel the objection that there is no inventive step.

It is further stated in Halsbury (p. 43 para 96) that an invention usually involves three stages, (1)
the definition of the problem to be solved, or the difficulty to be overcome, (2) the choice of the
general principle to be applied in solving the problem overcoming the difficulty; and (3) the
choice of the particular means to be used. It is further stated in the said paragraphs that merit in
any one of these stages, or in the whole combined, may support the invention, and it is, therefore,
probably more important to consider the advance in knowledge due to the inventor rather than
to examine in detail the variations from the former product.