Civil Appeal No 1490 of 1984
From the Judgment and Order dated 1621984 of the Madras High Court in OSA No 217 of 1982
section Chellaswamy NH Hingorani Mrs Kapila Hingorani Mrs Rekha Pandey and D Sadasivan for the Appellants
FS Nariman MK Rao PN Ramalingam and ATM Sampath for the Respondent
122 The Judgment of the Court was delivered by CHINNAPPA REDDY J
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
Though the suit as initially laid was with reference to two patents 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
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
We may first refer to a few preliminary facts
Weeds as is well known are a menace to food crops particularly crops like rice which belong to the grass variety
Research has been going on for years to discover a weed killer which has no toxic effect on rice that is to say a Herbicide which will destroy the weeds but allow rice to survive without any deleterious effect
For long the research was futile
But in 1966 67 came a break through
A Scientist Dr John Olin discovered CP53619 with the formula 2 Chlore 2 6  Diethyl N Butoxy Methyl Acetanilide  which satisfied the requirement of a weed killer which had no toxic effect on rice
The annual report of the International Rice Research Institute for 1968 state Weed control in rice was an important part of the Agronomy program
The first agronomic evidence of the efficacy of granular trichloroethyl styrene for the selective control of annual grasses in transplanted rice was obtained at the Institute
Another new accession CP53619 gave excellent weed control in transplanted flooded and non flooded upland rice
 It was further stated CP53619 at 2 and 4 kgha ai
appeard at least twice among the 20 best treatments and the most outstanding new pre emergence herbicide was 2 chloro 2  6  diethyl N butoxymethyl acetanilide CP 53619
 The 123 annual report of the International Rice Research Institute for 1969 shows that the herbicide CP 53619 came to acquire the name of Butachlor
It is now necessary to refer in some detail to the averments in the plaint as 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
The first plaintiff is the Monsanto Company and the second plaintiff is a subsidiary of the first plaintiff registered as a Company in India
It was stated in the plaint that the first plaintiff was the patentee of inventions entitled PHYTOTOXIC COMPOSITIONS and GRASS SELECTIVE HERBICIDE COMPOSITIONS duly patented under patent number 104120 dated March 1 1966 and 125381 dated February 20 1970
The claims and the particulars relating to the inventions were stated to be contained in the specifications of the two patents annexed to the plaint as annexure I and II
After stating so much the plaintiffs said and this is very important THE ACTIVE INGREDIENT MENTIONED IN THE CLAIM IS CALLED BUTACHLOR
It suggested without expressly saying it that the Plaintiffs  patents covered Butachlor also which in fact it did not as we shall presently see
It was next stated that the first plaintiff had permitted the second plaintiff to work the patents from 1971 onwards under an agreement dated September 3 1980
The second plaintiff had been manufacturing and marketing formulations according to the Patents Numbers 104120 and 125381 and a specimen tin containing formulations produced by the second plaintiff according to the said two patents and sold in the market by the second plaintiff  was produced along with the plaint as MOI It came to the notice of the plaintiffs it was averred that the defendant was attempting to market a formulation of Butachlor covered by the said patents
They therefore wrote to the defendant drawing their attention to the existence of the patents in their favour
Some correspondence ensued
In the second week of May 1981 the second plaintiff found that the defendant was marketing formulation of Butachlor covered by the patents of the first plaintiff
Sample tins of Butachlor 50 manufactured by the defendant were purchased by the plaintiffs and were produced along with the plaint as MOs 3 and 4
The legend on the tins was as follows  Delchor 50 Composition Butachlor 50EC Butachlor 50 WW Herbicide Solvents and Emulsifiers 50 WW 124 According to the plaintiffs the legend on the tins containing the substance manufactured by the defendants showed that what was sold by the defendants was nothing but a reproduction of the first plaintiff s patented formulations
The formulations of the defendant were sent to Shri Ram Institute for analysis and they were said to contain the chemical Butachlor Chemical formula for which is 2 Chloro 2  6  Diethyl N Butoxymethyl Acatanilide
 On these averments the plaintiffs alleged that the defendant had infringed their Patents Numbers 104120 and 125381 by selling formulations covered by them
The plaintiffs used for an injunction to restrain the defendant from infringing their Patents Numbers 104120 and 125371 by the manufacture or sale of the infringing formulations as contained in this marked as MONos 2 and 3
The Plaintiffs also asked for an account etc
Annexed to the plaint were the two specifications relating to Patent Numbers 104120 and 125381
In the specification relating to Phytotoxic Composition Specification No 104120 it was claimed  We Claim  1
A phytotoxic composition comprising as an active ingredient a compound of the formula shown in Figure 1 of the accompanying drawings wherein R1 and R2 are alkyl of alkoxy having from 1 to 10 carbon atoms R3 is halogen alkyl or alkoxy having from 1 to 10 carbon atoms n is an integer from 0 to 3 A is oxygen or sulfur X is chlorine bromine or iodine and ZZ1 and Z2 are hydrogen alkyl alkoxyalkenyl or alkynyl having from 1 to 18 carbon atoms aryl having from 6 to 24 carbon atoms heterocyclyl having a miximum of 24 carbon atoms and from 1 to 3 hetero atoms or two of Z groups are combined to form a bivalent alkylene radical having from 1 to 6 carbon atoms in admixture with an adjuvant such as herein described the active ingredient in the said composition being present in an amount of at least 01 per cent by weight
A phytotoxic composition as claimed in Claim 1 wherein the active ingredient is 2  tertbuty 1 2 chloro N 2 prophynyloxy methyl 6 methyl acetanilide
125 3
A phytotexic composition as claimed in Claim 1 wherein the active ingredient is 2  tertbutyl 2 chlore N 2 prophynyloxy methyl 6  methyl acetani lide
A phytotexic composition as claimed in Claim 1 wherein the active ingredient is 2  tertbutyl 2 chlore Nallyloxymethyl 6  methylacet anilide
A phytotoxic composition as claimed in Claim 1 wherein the active ingredient is 2 tertbutyl 2 brome N methexy methyl 6  methylacetanilide 6
A phytotoxic composition as claimed in Claim 1 wherein the active ingredient is 2  tertbutyl 2 broome N 2 prophynylexymethyl 6 methylacetani lide
A phytotoxic composition as claimed in Claim 1 wherein the active ingredient is 2 chloro 2  6 disthyl N methoxymethyl acetanilide
A phytotoxic composition as claimed in Claim 1 wherein the active ingredient is 2  tertbutyl 2 bromo N allyloxymethyl 6  methylacetanilide 9
A phytotoxic composition as claimed in Claim 1 wherein the active ingredient is 2  tertbutyl 2 choloro N 2 methoxyethoxymethyl 6  methylacetan ilide
A phytotoxic composition as claimed in Claim 1 wherein the active ingredient is 2  tertbutyl 2 bromo N 2 methoxyethoxymethyl 6 methylace tanilide
A phytotoxic composition as claimed in Claim 1 wherein the active ingredient is 2 bromoe 2  terbutyl N 23 dihydroxypropoxyomethyl 6 methylacetanilide
A phytotoxic composition as claimed in Claim 1 wherein the active ingredient is 2 chloro 2  6 dimethyl N isoproposymethyl acetanilide 13
A phytotoxic composition substantially as herein before described
 126 In the specification relating to Grass selective Herbicide Compositions Specification No 125381 it was claimed We claim 1
A herbicidal composition in the form of an emulsion suspension or dispersion comprising as active ingredient a compound selected from the group
a 2 6  diethyl N butoxymethyl alpha chloroaceta nilide and b 2  6  diethyl N 2 butoxyethyl alpha chloro acetanilide or a mixture of a and b in admixture with one or more diluents or carriers and surface active agents in which an emulsion is obtained by dissolving the active ingredient in an organic solvent and thereafter dispereing the solution in another liquid medium in the presence of an emulsifying agent such as herein described
A composition as claimed in claim 1 which further comprises one or more compounds selected from the following conventional pesticides fertilizers and extenders such as herein described
A composition as claimed in claim 2 wherein mineral extenders such as natural clays phyro phyllites and vermiculite having a perticle size of 2000 to 149 microns preferably of 1410 to 250 microns are used
A herbicidal composition in the form of an emulsion suspension or dispersion substantially as hereinbefore described
 We do not propose to set out in detail the contents of the written statement
It is sufficient to state that the Defendant claimed as he was entitled to do under section 107 of the  that the patents were liable to be revoked under section 641 abdefghijkl and m of the 
The defendant also made counter claim seeking revocation of the patents
127 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
We must begin with the statement in the plaint that THE ACTIVE INGREDIENT MENTIONED IN THE CLAIM IS CALLED BUTACHLOR  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
The admission was expressly made by PW 2 the power of attorney holder of the first plaintiff and Director of the second plaintiff company
The learned counsel for the plaintiffs also admitted the same before us
PW 1 Dr Dixon Chemist of the first plaintiff company after explaining the use of an emulsifying agent in answer to a direct question whether his company claimed any patent or special knowledge for the use of any particular solvent or particular emulsifying agent in the formulation in their patent 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
He also expressed his inability to say what diluents or emulsifying agents the defendant used in their process
PW 2 admitted that Butachlor was a common name and that the Weed Science Society of America had allotted the common name
He stated that Machete was the brand name under which their company manufactured Butachlor
He also stated that there could be a number of concerns all over the world manufacturing Butachlor but he was not aware of them
He admitted that they did not claim a patent for Butachlor
He stated that though his company did not claim a patent for Butachlor they claimed a patent for the process of making a Butachlor emulsifiable concentrate to be used as a Herbicide composition for rice
Pursued further in cross examination he 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 then proceeded to state that he claimed secrecy with regard to the manufacture of their formulation
When he asked further whether the secrecy claimed was with regard to the solvent or with regard to the stabilizer he answered in the negative
He finally admitted that his secret was confined to the active ingredient Butachlor about which as we know there is no secret
PW 3 Robert Galson Depenning the patent agent of the first plaintiff under a power of attorney from the first plaintiff stated that it was he that had verified the plaint and that it 128 was on his instructions that the plaint was drafted
He stated that according to him by selling his formulations the defendant had infringed Patents Numbers 104120 and 125381 though he was unable to explain which part of his claim in Patent Number 104120 was infringed as he was not a Chemist
He stated that he said so and was able to say so in consultation with the Managing Director of the second plaintiff company
He stated that it was explained to him by PW 2 that both the Patents Numbers 104120 and 125381 were infringed
He also admitted that it was he that had signed the specification of 104120 and while he was not sure whether he had signed the specification Number 125381 he saw that it had been signed by Depenning and Depenning
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
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
Under sec
611d 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
64e 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
641f 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 129 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  ie before the 
Invention has been defined by secc
2j as follows  Invention means any new and useful i art process method or manner of manufacture ii machine apparatus or other article iii substance produced by manufacture and includes any new and useful improvement of any of them and an alleged invention
 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
641 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
There was no secret about the active agent Butachlor as claimed by the plaintiffs since there was no patent for Butachlor as admitted by the plaintiffs
Emulsification was the well known and common process by which any Herbicide could be used
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 130 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
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
The appeal is dismissed with costs
MLA Appeal dismissed


Summary:
The plaintiff appellant instituted a suit against the respondent on the ground that its inventions entitled Phytotoxic Compositions and Grass Selective Herbicide Compositions duly patented containing the active ingredient Butachlor was infringed by the defendant respondent marketing Delchor 50 a formulation of Butachlor which was alleged to be covered by the plaintiff s Patent No 125381
In the written statement the defendant respondent claimed that the patents were liable to be revoked under s641a b d e f g h i j k l and m of the 
The suit was decreed by the trial Court but was dismissed by the appellate court
Dismissing the appeal  HELD  1i Under section 611d 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
64e 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
641f 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 date of the claim
128 G H 129 A 121 1ii To satisfy the requirement of being publicly known as used in clauses e and f of sec
641 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
129 D E 2
Butachlor which was the common name for CP 53619 was discovered even prior to 1968 as a Herbicide possessing the property of non toxic 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
Neither Butachlor nor the process of Emulsification was capable of being claimed by the plaintiffs as their exclusive property
128 C E In the instant case the solvent and the emulsifier 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 plaintiffs
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 throughout the world and trying to enfold it in their specification relating to Patent Number 125381
The patent is therefore liable to be revoked
129 F G 130 A