Dhanpat Seth And Others Versus M/S Nilkamal Plastic Ltd.

Recently in 2018, the Himachal Pradesh High Court passed a judgement revoking a patent granted for a device used for manually hauling of agricultural produce. The judgement has been a landmark for subjects involving both infringements as well as revocation of patents.

Facts of the Case

The plaintiffs filed a suit against the defendants for infringing their patent no .195917, on, 11.07.2005. The patent was a device which allowed the manual hauling of agricultural produce. It was granted a patent for its specifications as well as design. The inventor of the device was Mr.Dhanpat Seth. The defendants, Nilkamal Plastic Ltd. are manufacturers of various plastic products and supplied its products in various states across India. The defendant started manufacturing and selling a device which was similar to the plaintiffs patent and hence this suit.

Contentions of The Plaintiffs

The plaintiff alleged and contended that the defendant was aware of the plaintiff conceptualization and development since 1999 and despite the same, the defendants obtained information about the plaintiff’s patent, manufactured it and sold it without any consent from the plaintiffs.  The plaintiff also contended that the device was one with a unique design and was invented in consultation with various farmers as well as doctors. The device was an innovation of the traditionally used Kilta (bamboo baskets) which were used to carry agriculture produce wood and other items. Kilta was really painful to carry because of its specifications and hence the inventor came up with this device and design after a survey of various designs in Himachal Pradesh. The inventor filed a patent application for the said device on 24th May 2002 and began the commercial production of the said invented device. Various costs were incurred by the plaintiffs until the commencement of commercial production began on 15th June 2002. The patent was granted on 19th September 2002.

The plaintiffs supplied various corporations through its distributors. Further, the plaintiffs alleged that they were under the mistaken impression that the suppliers of the invented device were required that they empanel with the National Horticulture Board, Govt. of India, Gurgaon before they could start taking orders. An application was submitted by them before the NHB board for the inclusion of their suppliers in the panel of parties. It was alleged by the plaintiffs that the board did not take any action on the said application deliberately and filed a suit in the Himachal Pradesh High Court which was disposed. The plaintiff’s alleged that they later came to know that the fact was deliberately concealed by the department before this court that the board had already placed supply orders with the defendant.

The plaintiff thus alleged that the orders violated the norms and procedures which were required to be adopted and that they supplied goods worth 72 lakhs INR was a massive fraud. Further, it was also admitted by the defendants that the supplied goods worth 40 Lakhs INR to various other parties. The plaintiffs thus allege that the defendants have infringed their patent after copying it and making cosmetic changes to the same. The plaintiffs urged that they faced huge loss and damage due to the acts of the defendants and claimed for damages worth Rs. 1 Lakh INR for every 1000 long baskets copied and sold by the defendants.

Contentions of The Defendant

A counterclaim for revocation of the patent granted to the plaintiffs was filed by the defendants. The defendants contended that the patent granted to the plaintiffs was wrongfully granted and is liable to be revoked under Sec. 64 of the Patents Act as it lacked novelty or inventiveness. The defendants argued that the device manufactured by the plaintiffs were neither new manufacture nor art and that the pith and substance of the traditionally used device Kilta were very identical and similar to the invented device in each respect. No new result is obtained by the invented device as compared to the traditional Kilta. It was further argued that the plaintiffs cannot claim a monopoly over a simple basket and that the plaintiff can only claim rights over a product if it is inventive, novel and industrious.

Main Issues Before The Court

1. Whether there exists a legal and a valid Patent of a ‘Kitla’ with the plaintiffs?

2. Whether the plaintiff is entitled to the grant of a decree for a permanent prohibitory injunction restraining the defendant from infringing Patent No.195917 in any manner whatsoever?

3. Whether the plaintiff is entitled to damages on account of profits and mesne profits as prayed for?

Whether the goods supplied by the defendant by infringement of the Patent are
liable to seizure, and destruction?

Decision of The Court

The court pointed out:

1. The court observed that the patented product was bearing resemblance and similarity to the traditionally used device Kilta and that it is a mere discovery of a new form of a known substance. Further, the plaintiffs could not establish that the invented device results in the enhancement of efficacies of the traditionally used device Kilta.

2. Any orthopaedic superiority could not be proved by the plaintiffs as no orthopaedic surgeon supported the same on evidence. It was further observed that Kilta has been used in agriculture since times immemorial and that the said invention could not be said to be novel.

3. The invention falls within the open coinage of Sec 3(p) of the Patents Act and is not an invention.

4. Being traditional knowledge, the factum that the invention is an inventive step is negated.

5. Even though the raw material used is plastic and the invention is merely a duplication of Kilta and reiterates its known properties.

Thus the court revoked the patent granted to the plaintiffs “A Device for Manually Hauling of Agricultural Produce”’ under Sec 64 r/w Sec. 13 of the Act.

Author: Maahi Mayuri, Student of New Law College, Bharati Vidyapeeth Deemed University, Pune, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com.

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