S.C. Katoch vs Union of India (UOI) and Others

H.S. Thakur, J.—This is a petition filed by the Petitioner, Shri Sarup Chand Katoch, u/s 103 of the Patents Act. 1970, praying for an order for payment of royalty or other remunerations to him for the use of the invention of 1-cyd (0-8m3) Pneumatic Concrete Placer, by Respondent No. 1 and to issue a direction u/s 100(5) of the Patents Act, to notify to the Petitioner the fact, and furnish him with information as to the extent of the use of the said invention in the past, and which may be used from time to time in future.

It is contended by the Petitioner that he has invented 1-cyd (0-m Pneumatic Concrete Placer and the Central Government granted a certificate of patent on 14-8-1970 for this invention known as "Pneumatic Concrete Placer" with effect from 27th August, 1968. It is further stated that the detailed specifications of Pneumatic Concrete Placer (hereinafter to be referred to as "the Pneumatic Placer") have been scaled in the Patent Office at Calcutta. The Petitioner also contends that the patent was sanctioned to him on the basis of two claims:

(i) Claim No. 1: pertains to design of the Pneumatic Concrete Placer.

(ii) Claim No. 2:is about the arrangement for fixing the concrete placer at the back end of the lowest deck of the drilling jumbo in a tunnel.

The Petitioner states that the Pneumatic Placer has been evolved by him by working on various models over a number of years and has been eliminating the various troubles in its working from one model to the other and finally it was perfected in the present form in 1966. According to the Petitioner, more than twenty-five Pneumatic Placer machines are now operating on Units Nos. I and II of the Beas Project. In the petition he has elaborated certain details about the usefulness of the Pneumatic Concrete Placer including the reduction in cost involved in the processing of the work of Beas Project. His further contention is that by this invention a good amount of foreign exchange has been saved. On account of the aforesaid invention and the use of the Concrete Placer, modeled by him it is claimed by the Petitioner that he is entitled to the royalty from the Respondents.

The claim of the Petitioner has been controverted by the Respondents, in their written statement. The replication to the written statement has also been filed by the Petitioner and he has reiterated his claim.

On the pleadings of the parties, the following issues were framed on 2nd January, 1973:

Issue No. 1:

Is the petition u/s 103 of the Patents Act, 1970 not maintainable for the preliminary objections raised by the Respondents in their written statement?

Issue No. 2:

Whether the Petitioner had originally invcntcd the ''1-cyd (0-8m3) Pneumatic Concrete Placer'' for which the Central Government granted him patent known as Pneumatic Concrete Placer?

Issue No. 3:

Whether the Pneumatic Concrete Placers manufactured in Sundernagar Workshop of the Beas-Sutlej Link during July, 1967 to October, 1969 were copied from the design and structure method of similar equipment already supplied by M/s Air Placement Equipment Co., U.S.A. on Yamuna Hydel Project during the year 1966?

Issue No. 4:

Whether the Petitioner is entitled to any royalty. If so, can the rate of royalty be fixed by this Court? And if so, at what rate?

Issue No. 5:

Whether the provisions of Section 103(6) of the Patents Act, 1970 are attracted? Ifso, with what effects?

Issue No. 6:

To what relief, if any, is the Petitioner entitled?

The following additional issues were also framed on 6th September, 1973:

Issue No. 7:

Whether the Petitioner has not exhausted any specific remedy provided u/s 102 of the Patents Act. If so, its effect?

Issue No. 8:

Has not a valid notice u/s 102(2) of the Patents Act been given. If so, its effect?

Issue No. 9:

Whether the Petitioner got the Patent by making a misrepresentation and as such he is not entitled to any compensation as alleged?

Before the evidence in respect of the aforesaid issues is discussed, it is relevant to point out that an application u/s 151 of the CPC read with Section 103(6) of the Patents Act, 1970, was filed on behalf of the Respondents on 2nd May, 1979, which was accompanied by an affidavit as also a certificate, issued by the General Manager, Beas Project, Taiwara. The object of filing the application and the certificate issued by the General Manager, Beas Project, Taiwara, was to meet the objection of the Petitioner that the Chicf Engineer, Beas-Sutlej Project, was not the principal officer but it was the General Manager of the Project who could be termed as a principal officer.

The Petitioner produced Sarvshri S.K. Gupta, Executive Engineer as (P.W.-l), Parcy H. Dass, Area Superintendent, B.S.L. Sundcrnagar (P.W.-2), T.C. Verma, Senior Technical Officer (P.W.-3) and S.C Katoch, the Petitioner, as (P.W.-4). The Respondents have also produced Sarvshri Kultar Singh Sharma, Assistant Design Engineer as (D.W.-1), A.P. Bhatt, Executive Engineer (D.W.-2), Amolak Singh, Area Superinten dent (Mechanical), B.S.L. Project (D.W.-3), Lal Chaud, Foreman (D.W.-4), B.K. Mukerjee, Superintending Engineer, Adminis trative and Accounts (D.W.-5) and R.S. Chawla, Area Superintendent, B.S.L. Project (D.W.-6).

The Petitioner is his statement, as P.W.-4 has stated his case. According to him, he was employed in Beas Project, Taiwara Township, as Chief Engineer and previous to that he was working as Director (Construction), Bhakra Dam at Nangal. While he was working as Chief Engineer of Beas Project he designed a Pneumatic Concrete Placer. He further says that he had inverted that placer for the construction of Baggi Tunnel of the aforesaid Project. According to him, the type of placer invented by him was never used Punjab or anywhere else to his knowledge. He started excavation of the tunnel in bad strata and found that concreting behind the steel ribs was very important, otherwise the weak strata would give trouble and tunnelling operation would not proceed. He further stated that the normal concreting procedure was with pumpcrete which he had extensively used on the construction of the diversion tunnel at Bhakra froth 1948 to 1952. This machine weighed about 8 tons and it was difficult to manipulate this machine inside a tunnel. He further states that the idea shuck to him that there should be some light machine which could be easily handled day by day. He has also stated that he started thinking and applied the principle of grout machine which was being used for grouting holes. Thereafter, he prepared a model of floor at his house and also wooden models. The Petitioner states that he went on manufacturing model of different dimensions and continued improvements therein. It was after such improvements that he evolved the Pneumatic Concrete Placer, in dispute, in its final shape in the beginning of 1967. He has further explained the devices and way of working of the said Pneumatic Placer. It is further contended by the Petitioner that previous to that a similar pattern of concrete placer was not used in the Project and that 15 to 20 such placers were working in the Project and two of such machines were taken by the Chief Engineer for Pong Dam in 1967. The Petitioner has also elaborated the advantages of the placer invented by him in its working as compared to a pumpcrete which was purchased from abroad costing about rupees four lacs per such machine. The Petitioner states that the Patent Office had accepted his two claims in respect of the alleged invention made by him. One is for the invention of the Pneumatic Concrete Placer and the second one for placing the Pneumatic Concrete Placer on the bottom deck of the drilling jumbo used in excavation of tunnel. The Petitioner claims royalty for the use of the placer in the Project. According to the Petitioner, he applied for the patent in August, 1968, when the placer Was widely used on the Project. The Petitioner was also awarded a National Award of Rs. 1,000/- for the invention of the said Pneumatic Placer. The Petitioner states that he approached the General Manager of the Beas Project in May, 1971, for giving royalty to him. According to the Petitioner, the patent was granted to him in August, 1970. A copy of the patent submitted by the Petitioner was marked as P.W.-4/1, (shown as Ex. P.W.-4/2) which gives the details of the specification of the Pneumatic Placer. Some other documents were also produced by the Petitioner. It is admitted by the Petitioner in his cross- examination that he was in trouble for placing concrete in the working of the Project and so he invented the Pneumatic Placer, in dispute, and used it. It is also admitted that no one asked him to use the same no the Project and that he did not obtain any permission from any authority for using the Pneumatic Placer on the Project. It is further admitted by the Petitioner that the Pneumatic Placer was also in use on Yarnuna Hydel Project in 1967 when he went there. It is, however, stated by the Petitioner that the Pneumatic Placer which was used on Yamuna Hydel Project or in Giri-Bata Project was of a different design and pattern than his own machine. When the Petitioner was asked by the learned Counsel for the Respondents to point out the difference between the two Pneumatic Placers, he replied that he saw the machine for only one minute on the Yamuna Hydel Project. The machine was so very heavy and its length was about 15 feet. In answer to another question the Petitioner admitted that the principle of working of the two machines, i.e., one model led by him and the other already working on Yamuna Hydel Project, is the same, but the designs are different. It is further admitted by him that there is no difference of principle between the machine modelled by him and the Air Placo or pres-welded of American model. The Petitioner, however, contends that the machine, modelled by him, is definitely superior than any American model. The Petitioner says that he does not know if the machine as designed by him Was already manufactured in France, U.S.A. or in U.K. The Petitioner denies that he copied the machine from the design and pattern of a machine manufactured in U.S.A. He, however, asserts that in all such types of machines, the basic principle is the same. Ultimately in answer to a question by the learned Advocate of the Respondents as to what was meant by saying that the principle in any type of the Pneumatic Placer is the same, the Petitioner stated that the principle was that compressed air was admitted into he pressure vessel and that pressure of the air was used in pushing the concrete out of the placer.

P.W.-1, who was posted as Executive Engineer, Work shop Division at Sundernagar, when the Petitioner Was the Chief Engineer of the Project, stated that the Petitioner gave him drawings of Pneumatic Concrete Placer and he maunfactured the Placer in accordance with that drawings. The witness further states that the Pneumatic Placer was manufactured cntirely at the Government cost.

P.W.-2, who was Incharge of Baggi Tunnel Division, Beas Project, from 1965 to the end of 1968, stated that the design of the Pneumatic Placer was given to him by the Petitioner for being manufactured in the workshop of the Project. It is also skated by the witness that in the first place it was not so useful, but later on the Petitioner suggested some modifications and it was after making such modifications that the final shape was given resulting into the making of the Pneumatic Concrete Placer which was found useful. In his cross-examination the witness states that he had not seen any American Model of a Concrete Placer. It is also admitted by this witness that the Concrete Placer was made entirely at the cost of the Government. It is also admitted by the Witness that the Petitioner was in service of the Project when the design was prepared by him and that he was the Incharge of the entire Project.

P.W.-3 is a formal witness, who produced the document which was marked as Ex. P.W,-3/A. This is the entire evidence produced by the Petitioner in support of his claim.

The Respondents have emphatically controverted the contention of the Petitioner that ce made any invention or improvement as contemplated under the Patents Act. According to the Respondents, the principle was already established and the Petitioner has, if at all made a mere workshop improvement in the Concrete Placer and has not evolved any in'' step. The Respondents have examined in support of their contention six witnesses, namely, Sarvshri Kultar Singh Sharma, Assistant Design Engineer as (D.W.-1), A.P. Bhatt, Executive Engineer (D.W.-2), Amolak Singh, Area Superintendent (Mechanical) (D.W.-3), Lal Chand, Foreman (D.W.-4), B.K. Mukerjee, Superintending Engineer, Administrative and Accounts (D.W.-5.) and R.S. Chawla, Area Superintendent (D.W. It is not necessary to reproduce tile statements of all these Witnesses in detail. It is, however, necessary to point out certain relevant facts as stated by them.

According to D.W.-1, there are so many makes of Pneumatic Concrete Placer, i.e., Air Placo of U.S.A. make, Placey type French make, etc. According to this witness, there is no substantial or major difference between the Air Placers used on the Project as detailed by him above and the other Air Placers. The witness states that the difference between the placers specified above and the one alleged to have been invented by the Petitioner is in respect of the sliding gate. According to this witness, the placer used on the Project is slightly modified one as com pared to the placers already in use in India and abroad. The witness further states that so far as the working principle is concerned, all Pneumatic Concrete Placers work on the same principle. The witness, however, admits that there may be some difference of shape in different placers. The Witness states that there are some structural difference between the different placers.

D.W.-2 has to a great extent corroborated the version of D.W.-1.

D.W.-3 has stated that the design of the concrete placer prepared at the workshop of the Project is almost the same as of the American Model called Air Placo. The witness has further stated that they had done further modification over it. It is also stated by this witness that one of his collegues Mr. Bithal Ram has got a number of patents approved of different items which are used on the Project. The witness has indicated the improvements made in the concrete placer, Fin dispute, and the same are reproduced as under:

3/4" diameter pipe-line which goes to the pneumatic ram from the 2" diameter main air pipe is provided separately from the main header;

The adjusting screw which is provided for the adjustment of pipe in couplings has been omitted;

The diameter of 8" has been reduced to 6 in the main pipe feeding concrete; and

The size of the concrete placer which is mentioned as 49-1/2" has been reduced to 42".

D.W.-4 is the Foreman in the workshop of the Project, who manufactured the Pneumatic Concrete Placer in the work shop. He has stated that he had manufactured the Pneumatic Concrete Placer at the workshop and he had manufactured as many as 50 such placers. The witness asserts that in the drawing, given by the Petitioner, marked as Ex. P-1, he made some improvements in the drawing as follows:

The connection to the ramp has been given to the mainline. It is not so in Ex. P-1.

The screw adjustments have been removed by us.

The height is also reduced by us.

The witness has also stated that he manufactured the Pneumatic Concrete Placer in 1966-67 without any drawing and the idea was given by the Executive Engineer.

D.W.-5 has stated that the Petitioner, no doubt, introduced certain modifications in the Pneumatic Concrete Placer but these modifications were made in the Project Workshop, and that the Pneumatic Concrete Placers were already used in India long before and it was difficult to say that the Petitioner was the inventor of any such machine. The learned Counsel for the Petitioner has subjected this witness to a lengthy cross examination, but he has affirmed that the principle of the working is the same as in other such placers before. In answer to a question put by the learned Counsel this witness asserted that he had mentioned in the written statement that it appeared that the Petitioner had practised deception on the Patent Office by declaring that he was the first inventor of the concrete placer or that the same was not in use in India to the best of his knowledge. It was further asserted by the witness that he supported this averment on the facts that the Pneumatic Concrete Placers were in use in India for the last 16 or 17 years and abroad for the last 30 or 40 years and that any senior officer of the calibre of the Petitioner must have known this fact.

D.W.-6 has also stated that there are three types of'' Concrete Placers working on the Project and the Pneumatic Concrete Placer of the type of which the model is Ex. P.-1, but of which the modification has been made by them are also used. He has, however, in answer to a question by the learned Counsel for the Petitioner asserted that the cost of an imported concrete placer may be about Rs. 50,000/-.

Mr. Justice D.B. Lal, who recorded the evidence in the case also visited Sundernagar and Pandoh, the site of the Project, on 12th and 13th July, 1975, in the Presence of the Petitioner and the learned Counsel for the Respondents to appreciate the evidence in the case. Besides other things, he noted in his report that he was shown a model of the Pneumatic Concrete Placer which was exactly of the design of model Ex. P.-1 placed in the Court. He also noted that he was informed by the Foreman Incharge of the Workshop that this was a new Pneumatic Concrete Placer manufactured in the Workshop.

It is contended by the learned Counsel for the Petitioner that the Pneumatic Concrete Placer of which Ex. P.-1 is the model is the result of the invention, made by the Petitioner. On this account it is contended on behalf of the Petitioner that he is entitled to receive the royalty or remunerations for the use of the Pneumatic Concrete Placer of this design at the Beas Project. It is further contended by the learned Counsel that he had got the patent of his invention registered under the Patents Act, 1970.

Before findings on the issues are separately recorded it seems desirable to decide whether the Petitioner has made the invention as contemplated under the Patents Act. u/s 2(1)(j) "invention" has been defined. The definition, for a ready reference, is reproduced:

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.

There are few direct cases of the Courts in India on the point as to what is an invention. A Division Bench of the Allahabad High Court in M/s Shining Industries and Anr. v. M/s Shri Krishna Industries, reported in AIR 1975 Alla. 231

In order, therefore, to understand ''what is an invention ''help can be taken from other sources.

In Hotchkiss v. Greenwood (1851) 13 LE 683 , col. 1 it was observed while considering the patent granted regarding the manufacture of a particular type of knob:

"It seems to be supposed on the argument that this mode of fastening the shank to the clay knob produced a flew and peculiar effect upon the article, beyond that produced when applied to the metallic knob, inasmuch as the fused metal by which the shank was fastened to the knob prevented the shank from acting immediately upon the knob, it being inclosed and firmly held by the metal; that for this reason the clay or porcelain knob was not so liable to crack or be broken, but was made firm and strong, and more durable.

This is doubtless true. But the peculiar effect thus referred to is not distinguishable from that which would exist in the case of wood knob, or one of bone or ivory or of other materials that might be mentioned.

Now if the foregoing view of the improvement claimed in this patent be correct, it is quite apparent that there was no error in the submission of the question presented at the trial to the jury: for 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.

The view expressed above was followed in the case of Cuno Engineering Corporation v. Automatic Devices Corporation (1941) 86 L.Ed. 58 and it was further observed therein:

That is to say, the new device however useful it may be must reveal the flash of creative genius, not merely the skill of the calling. II it fails, it has not established its right to a private grant on the public domain...

It was further observed in the above mentioned case:

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.

In the case of Rado v. John Tye and Sons Ltd. 1967 RPS 297

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.

In case Great Atlantic and Pacific Tea Co. v. Super-market Equipment Corporation (1850) 95 L.Ed. 162 the Supreme Court of the United States expressed itself on the point thus:

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. Patents cannot be sustained, when on the contrary, their effect is to substract from former resources freely available to skilled artisans. 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. This patentee has added nothing to the total stock of knowledge but has merely brought together segments of prior art and claims them in congregation as monopoly.

In CORPUS JURIS SECUNDUM Vol. 29. P. 268 (Para 54) the point has been summed up like this:

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. There must be something more than a mere carrying forward or more extended application of a known principle or an original idea of another, a better doing of that which has already been done, the attainment of a more perfect result by the same methods, or the correction of a more or less obvious defect or fault, such as might be expected of a skilled mechanic in the particular Article As frequently stated, perfection of workmanship, however much it may increase the convenience, extended the use, diminish expense, is not patentable. An advance step which would occur to one skilled in the art when investigating is not invention...

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 moer 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.

Following the aforesaid decisions the Hon''ble Judges came to the conclusion that the mere fact that if the shackle of the lock 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''.

Similarly, their Lordships of the Supreme Court in Bishwanath Prasad Radhey Shyam Vs. Hindustan Metal Industries,

The subject of Patent Law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates new inventions of commercial utility. The price of the grant of the monopoly 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. The fundamental principle of Patent Law is that a patent is granted only for an invention which must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of a patent that it must be the inventor''s own discovery as opposed to mere verification of what was already known before the date of the patent.

"Invention'' means any manner of new manufacture and includes an improvement and an allied invention". [ 2(8) of 1911 Act] . It is to be noted that unlike the Patents Act, 1970, the Act of 1911 does not specify the requirement of being useful in the definition of ''invention''. But Courts have always taken the view that a patentable invention, apart from being a new manufacture, must also be useful. The foundation for this judicial interpretation is to be found in the fact that Section 26(1)(f) of the 1911 Act recognises lack of utility as one of the grounds on which a patent can be revoked.

''Manufacture'' according to the definition of the term in Section 2(11) of the Act, includes not only "any art, process or manner of providing, preparing or making an article" but also "any article prepared or produced by the manufacture.

It is important to bear in mind 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 an ''inventive step''. 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. ''It is not enough'', said Lord Davey in Richmann v. Thierry (1896) 14 Pat. Ca. 105 ''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 v. Lathem (1888) 6 Pat Ca. 1841, "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 reality is a crucial test, has been one of the most difficult aspects of Patent Law, and has led to considerable conflict of judicial opinion.

This aspect of the law relating to patentable inventions, as prevailing in Britain, has been neatly summed up in Encyclopaedia Britannica, Vol. 17, page 453. Since in India, also, the law on the subject is substantially the same, it will be profitable to extract the same hereunder:

A patent can be granted only for ''manner of new manu facture'' and although an invention may be ''new'' and relate to a ''manner of manufacture'' it is not necessarily a ''manner of new manufacture''-it may be only a normal development of an existing manufacture, it is a necessary qualification of a craftsman that Fe should have the knowledge and ability to vary his methods to meet the task before hint-a tailor must cut his cloth to suit the fashion of the day-and any monopoly that would interfere with the caftsman''s use of his skill and knowledge would be tolerable.

A patentable invention, therefore, must involve something which is outside the probable capacity of a craftsman- which is expressed by saying it must have ''subject-matter'' or involve an ''inventive step''. ''Novelty'' and ''subjects- matter'' are obviously closely allied.... Although these issues must be pleaded separately, both arc inveriably raised by a Defendant, and in fact, ''subject-matter'' is the crucialtest, for which there may well be novelty not involving an ''inventive step'', it is hard to conceive how there can be an ''inventive step'' without novelty. Whether an alleged invention involves novelty and an ''inventive step, is a mixed question of law and fact, depending largely on the circumstances of the case. Although no absolute that is uniformly applicable in all ciumstances can be devised, certain broad criteria can be indicated. Whether the "manner of manu facture" patented, was publicly known used and practised in the country before or at the date of the patent? If the answer to this question is ''Yes'', it will negative novelty or ''subject-matter''. Prior public knowledge of the alleged invention which would disqualify the grant of a patent can be by word of mouth o by publication through books or other media; "If the public once becomes possessed of an invention", says Hindmarch on Patents (Quoted with approval by Fry, LJ. in Humpherson v. Syer 4 R.P.C., 407) "by any means whatsoever, no subsequent patent for it can be granted either to the true or first inventor himself or any other person; for the public cannot possessing every that lie could give.

The "does not involve any inventive step" used in Section 26(1)(e) of the Act and its equivalent word "obvious" have acquired special significance in the terminology of patent law. The ''obviousness'' has to be strictly and objectively judged. For this determination several forms of the question have been suggested. The one suggested by Salmond, L.J. in Rado v. John Two and Son Ltd. [ R.P.C. 297] is apposite. It 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 previously known.

It is contended by the learned Counsel for the Petitioner that since the authority concerned has registered the patent under the Act it has to be believed that the Petitioner had made the invention resulting into the manufacture of the Pneumatic Concrete Placer. The contention of the Petitioner cannot be accepted. It may be pointed out that the validity of a patent is not guaranteed by the grant in view of the expressed provisions containedin Section 13(4) of the Patents Act, 1970. As such, there is no presumption in favour of the validity of the patent the Otherwise also in a suit for infringement of the patent it is open to an Advocate to take any ground on which a patent may be revoked u/s 64 of the Patents Act. This provision is contained in Section 107 of the Patents Act.

From the evidence, as discussed above, the irresistible inference that can be drawn is that there has been no substance involving the exercise of any inventive faculty in the so-called invention claimed by the Petitioner. Applying the principle and the test, suggested by the cases mentioned above, it can safely be concluded that the patent, in question, lacks novelty and invention. At the most it is no more than a workshop imprlvement, a normal development an existing manner of manufacture not involving something novel which would be outside the probable capacity of a craftsman. The contention of the learned Counsel for the Petitioner that the Petitioner was only a Civil Engineer did not mean that he could not suggest workshop improvement which resulted into the manufacture of the Pneumatic Concrete Placer manufactured in the workshop of the Project. Therefore, Issue No. 2 is decided against the peitiner.

Issue No. 3:

In view of my finding on Issue No. 2, no finding is needed to be recorded on this issue as I have already held that no invention, as contemplated under the Patents Act, has been made by the Petitioner. It is conceded by the Petitioner himself that the principle of working of the two machines, i.e., one modeled by him and the other already working at the Yamuna Hydel Project is the same, but the designs arc different. As such, there is no clear element of invention involved so far as the Pneumatic Concrete Placer claimed to have been invented by the Petitioner is concerned. It is, in fact, merely an application of an old invention with a slight change in the mode of application. Such a mode may nave been taken from the Pneumatic Concrete Placer already working in the project or in any other Project, or from any other source. While arriving at such a conclusion, the possibility of the Petitioner taking the inventive idea from the Air Placo cannot be ruled out. Issue No. 3 is accordingly decided.

Issue No. 4:

Since I have already held that the alleged invention is not an invention as contemplated under the Act, no question of paying any royalty or remunerations arises. As such, Issue No. 4 is also decided against the Petitioner.

Issue No. 5:

Section 103 of the Patents Act is directly connected with Section 102 of the said Act. Sections 102 and 103 of the Act are reproduced as under for a ready reference:

Section 102: Acquisition of inventions and patents by the Central Government.-

(l) The Central Government may, if satisfied that it is necessary that an invention which is the subject of an application for a patent or a patent should be acquired from the applicant or the patentee for a public purpose, published a notification to that effect in the Official Gazette, and thereupon the invention or patent and all rights in respect of the invention or patent shall, by force of this section, stand transferred to and be vested in the Central Government.

(2) Notice of the acquisition shall be given to the applicant, and, where a patent has been granted, to the patentee and other persons, if any, appearing in the register as having an interest in the patent.

(3) The Central Government shall pay to the applicant, or, as the case may be, the patentee and other persons appearing on the register as having an interest in the patent such compensation as may be agreed upon between the Central Government and the applicant or the patentee and other persons; or as may, the default of agreement, be determined by the High Court on a reference u/s 103 to be just having regard to the expenditure incurred in connection with the invention and, in the case of a patent, the term thereof, the period during which and the manner in which it has already been worked (including the profits made during such period by the patentee or by his licensee whether exclusive or otherwise) and other relevant factors.

Section 103: Reference to High Court of disputes as to use for purposes of Government.- (1) Any dispute as to the exercise by the Central Government or a person authorised by it of the powers conferred by Section 100, or as to terms for the use of an invention for the purposes of Government there under or as to the right of any person to receive any part of a payment made in pursuance of Sub-section (3) of that section or as to the amount of compensation payable for the acquisition of an invention or a patent u/s 102, may be referred to the High Court by either party to the dispute in such manner as may be prescribed by the rules of the High Court.

(2) In any proceedings under this section to which tie Central Government is a party, the Central Government may,-

(a) if the patentee is a party to the proceedings, petition by way of counter-claim for revocation of the patent on any ground upon which a patent may be revoked u/s 64; and

(b) whether a patentee is or is not a party to the proceedings, put in- issue the validity of the patent without petitioning for its revocation.

(3) If in such proceedings as aforesaid any question arises whether an invention has been recorded, tested or tried as is mentioned in Section 100, and the disclosure of any document regarding the invention, or of any evidence of the test or trial thereof, would, in the opinion of the Central Government, be prejudicial to the public interest, the discolsure may be made confidentially to the advocate of the other party or to an independent expert mutually agreed upon.

(4) In determining under this section any dispute between the Central Government and any person as to terms for the use of an invention for the purpose of Government, the High Court shall have regard to any benefit or compensation which that person or any person from whom he derives title, may have received, or may be entitled to receive, directly or indirectly in respect of the use of the invention in question for the purposes of Government.

(5) In any proceedings under this section, the High Court may at any time order the whole proceedings or any question or issue of fact arising therein to be referred to an official referee, commissioner or an arbitrator on such terms as the High Court may direct, and references to the High Court in the foregoing provisions of this section shall be construed accordingly.

(6) Where the invention claimed in a patent was made by a person who at the time it was made was in the service of the Central Government or of a State Government or was an employee of a Government undertaking and the subject-matter of the invention is certified by the relevant Government or the principal officer of the Government undertaking to be connected with the work done in t course of the normal duties of the Government servant or employee of the Government undertaking, the not with standing anything contained in this section, any dispute of the nature referred to in Sub-section (1) relating to the invention shall be disposed of by the Central Government conformably to the provisions of this section so for as may be applicable, but before doing so the Central Government shall give an opportunity to the patentee and such other parties as it considers have an interest in the matter to be heard.

Section 102 deals with the acquisition of invention by the Central Government. The acquisition of the inventions pre-supposes that an invention has been recognized and accepted by the Government as such. If an alleged invention is not recognized no question of its acquisition arises. In the instant case, the Respondents have not accepted the contention of the Petitioner that it is an invention, either before the filing of this application or after the filing of the same. It is contended by the learned Counsel for the Petitioner that in the comments made by Shri B.R. Palta, General Manager, Beas Project, Talwara Township, as contained in Ex. P.W.-3/A, it has been admitted that the Pneumatic Concrete Placer, in question, was invented by the Petitioner. In the first place, the so-called invention does not constitute an invention u/s 102 of the Patents Act, and, secondly, such an admission is not binding on the Central Government. At the same time, Shri B.R. Pa1ta, the author of the contents as contained in Ex. P.W.-3/A, has not been produced as a witness. His comments, as such, could not be tested by a proper cross-examination. At the most, it may be his opinion which does not amount to a substantive evidence. Accordingly, this document is devoid of any evidentiary value. Since, I have already held that the alleged invention was not accepted as such, by the Central Government and no notice of its acquisition was given to the Petitioner, no question of any dispute regarding any payment to the Petitioner arises under Sub-section (3) of Section 102 of the Patents Act. If it is so, no occasion for agreeing to the payment of the compensation by the Central Government to the Petitioner could arise and consequently in default of agreement the matter could not be referred for determination by the High Court on a reference u/s 103 of the Patents Act.

Section 103(6) of the Patents Act is an exception to the other provisions contained in Section 103 of the Act.

It has been contended by the learned Counsel for the Respondents that even if it was an invention as envisaged under the Patents Act, the Petitioner being in the service of the Project and the subject-matter of the invention being connected with the work done by him, in the course of the normal duties, the dispute had to be to the Central Government. On this account, it is contended by the learned Counsel, that the dispute cannot be adjudicated upon by this Court. It is not necessary to record a finding whether the Petitioner Was an employee of a Government undertaking or not, and whether the principal officer of the Government undertaking had correctly certified that the alleged invention is connected with the work done by the Petitioner in the course of his normal duties as an employee of the Government undertaking. It is so, because it has already been found that the alleged invention is not such as is contemplated under the Patents Act. Accordingly, in the face of this finding, the provisions of Section 103(6) of the Patents Act are not attracted. This issue is decided accordingly.

Issues Nos. 1, 7 and 8:

Issues Nos. 1, 7 and 8 being inter-connected can be decided together and are so disposed of.

Assuming that the alleged invention is considered as an invention since a patent thereof has also been granted, the grant of such a patent is subject to certain conditions as contained u/s 47- of the Patents Act. It is not disputed that the Pneumatic Concrete Placer is manufactured in the workshop of the Project. It is also not disputed that the said Pneumatic Concrete Placer is used for the work of the Project. It is also not the case of the Petitioner that he at any time protested against the USC of such a Pneumatic Concrete Placer on the Project. In fact, the Petitioner himself, without obtaining the permission of the authority concerned, used the Pneumatic Concrete Placer at work of the Project. In fact, according to the Petitioner himself, he invented the Pneumatic Concrete Placer for use at the Government Project. As such, the Petitioner cannot be permitted to take a somersault so as to claim compensation for the use of the Pneumatic Concrete Placer at the work of the Project. It was much later that the Petitioner made a claim for the payment of compensation or remunerations to him for tie use of the Pneumatic Concrete Placer. No notice for the acquisition of the alleged invention was even given by the Central Government. In the absence of a notice of acquisition by the Central Government there was no specific remedy available to the Petitioner u/s 102 of the Patents Act. As such, Issue No. 7is decided accordingly.

On the contrary no notice was given by the Central Government u/s 102 of the Patents Act for the acquisition of the said invention. There was, in fact, no necessity to give such a notice by the Central Government, as it was not conceded by it that the alleged invention was recognised as such. When it is found that no acquisition was made by the Central Government of the alleged invention the requirement of any notice was not necessary. Issue No. 8 is accordingly decided.

Since Issue No. 1, as indicated above, is directly connected with Issues Nos. 7and 8 and it has already been found that Section 102 of the Patents Act is not applicable to the facts of the case, Section 103 is also not applicable. The issues are accordingly decided.

Issue No. 9:

No finding is needed on this issue in view of the findings already recorded above. There appears, however, a mistake on the part of the Petitioner that the alleged invention was in invention as contemplated under the Patents Act, 1970.

Issue No. 6:

In the face of the aforesaid findings, the Petitioner is not entitled to any relief.

For the reasons, recorded above, the petition is dismissed. However, in view of the peculiar circumstances of the case, the parties are left to bear their own costs.