- Biological Inventions
- Brand Valuation
- Competition Law
- Constitutional Law
- Consumer Law
- Copyright Infringement
- Copyright Litigation
- Corporate Law
- Digital Right Management
- Educational Conferences/ Seminar
- Fashion Law
- Hi Tech Patent Commercialisation
- Hi Tech Patent Litigation
- Intellectual Property
- Intellectual Property Protection
- IP Commercialization
- IP Licensing
- IP Litigation
- IP Practice in India
- IPAB Decisions
- Legal Issues
- Media & Entertainment Law
- News & Updates
- Patent Act
- Patent Commercialisation
- Patent Filing
- patent infringement
- Patent Licensing
- Patent Litigation
- Patent Marketing
- Patent Opposition
- Patent Rule Amendment
- Pharma- biotech- Patent Commercialisation
- Pharma/Biotech Patent Litigations
- Section 3(D)
- Social Media
- Sports Law
- Telecom Law
- Trademark Litigation
Shogun Organics Ltd. V/S Gaur Hari Guchhait and Others is a case decided by the Hon’ble High Court at Delhi on 14th of August 2019. Shogun Organics Limited (Plaintiff) is a company engaged in the research, manufacture and sale of mosquito repellents. The plaintiff filed this suit for injunction in the year 2017 against Solex Chemicals Pvt. Ltd. (one of the Defendants) and other aiding parties. The plaintiff alleged that the defendants are using its patented technology and hence, should be granted injunction against them. Whereas, the defendants argued that the patented technology itself is not valid. The defendants submitted that the patented process was disclosed earlier in the year 1997 through an application made under the Insecticides Act, 1968, and is in public knowledge since then.
This article aims to highlight different prospects of the case dealing with novelty of a patent, prior publication, public use and public knowledge pertaining to a process patent. The author further elaborates upon the harmonious construction struck by the Hon’ble Court between the Patent Act, 1970 and the Insecticides Act, 1968. The controversy pertaining to information furnished about a patented process to a Government Authority was duly settled in this case. Whereas, the author is of the opinion that some aspects of such controversy remains unanswered.
This case was decided on the 14th of August 2019, by the Hon’ble High Court at Delhi. This case elucidates the concepts like novelty of a Patent destroyed through Public Use and whether information submitted to a Government Department would amount to Prior Publication or not? This article aims to elaborate upon the different facts and circumstances that this Hon’ble High Court took the aid of while deciding the matter.
Plaintiff (Shogun Organics Ltd.) is a company engaged in the research, manufacture, and sale of mosquito repellents. The Defendant (Manaksia Ltd.) is a competitor of the Plaintiff. The plaintiff filed patent application in the year 2007 and was granted the same in the year 2009. The Defendant filed a pre-grant opposition in the year 2007 which was dismissed. The Defendant further filed a post-grant opposition in the year 2013 which was considered by the patent office and the patent was revoked. IPAB in the year 2014 set aside the order of the patent office, declaring it as an order without application of mind and reinstated the patent.
After conducting an investigation the Plaintiff came to know that the Defendant is using its patented technology. To restrain the Defendant and other aiding parties from causing any further damage to the Plaintiff, a suit for grant of permanent injunction was filed against the Defendants.
Submissions made by the parties:
Plaintiff- The Plaintiff submitted that it has been granted registration under section 9(3) of the Insecticides Act, 1968 in the year 1997. The defendant has been granted registration under section 9(4) of the act in the year 2009. The plaintiff’s contention was that the Defendant’s registration is merely a follow-on registration. As, according to the letter dated 9th February 2011, issued by CIBRC, Shogun Organics Ltd. is the only applicant registered under section 9(3) of the Act, for indigenous manufacture of D-trans-allethrin technical in India. If an applicant files for registration under section 9(4) for the same insecticide, the applicant must have the same process of manufacturing as that of the registrant under section 9(3). Therefore, it is pretty obvious that the Defendant was using the same process as that of the Plaintiff and hence, infringement is established.
Further, HPLC test reports along with an expert’s affidavit were also submitted. The test results proved that the Defendant is using the same technology as that of the Plaintiff.
Defendant-Defendant submitted that the Plaintiff filed for grant of patent in the year 2007. Whereas, the defendant has filed an application for registration under section 9(4) of the Insecticides Act, 1968 in the year 2006. As the Defendants and the people employed under them already knew about the patented process, it is clear that the patented process was already within public knowledge.
Considering the contention of the Plaintiff, that the Defendant is using the same process of manufacturing as that of the Plaintiff, the registered patent becomes invalid on the ground of prior use and prior publication. Prior publication because the Plaintiff, as well as the Defendant, have mentioned their process of manufacturing in the application submitted under section 9.
Thirdly the Defendant submits a screenshot of the Plaintiff’s website showing that it was selling D-trans Allethrin since 2002. Which strengthens the Defendant’s argument for prior use and public domain even stronger.
Rebuttal by the Plaintiff
The Plaintiff submitted that the affidavit of PW-1 clearly mentions that there were various methods for producing D-trans Allethrin but they all had certain disadvantages attached to it. It was not until the Plaintiff developed a six-step synthesis process which was highly efficient and eliminated such disadvantages.
As long as prior use of D-trans Allethrin is concerned, it is not denied that it was not used before the patent was filed for, but the process employed before for its production was totally different from the patented process.
There were two primary issues.
- Registration under the Insecticides Act would constitute as prior publication or not?
- Whether the Defendants have infringed Plaintiff’s Patent or not?
Decision of Court
Under Section 104A, whenever the subject matter of a patent is a process, the Court can direct the Defendants to prove that the process used by the Defendants is different from the patented process. It is a well-settled principle that the Defendant cannot withhold its best evidence especially if the same is within its own knowledge. The Defendants failed to submit the process of manufacturing used by the Defendants after given constant reminders by the Court. Hence, there was no evidence on record that could rebut the plaintiff’s case of infringement.
As long as the Defendant’s argument pertaining to Prior/Public Use was concerned, the court dismissed it after relying on the reasoning mentioned in Lallubhai’s case. Lallubhai’s case held that “if you have an article manufactured under a secret process and that article is of such a character that nobody by examining it can find out the secret of that manufacture, then the sale of that article in public cannot amount to public user of the process”. Hence, although the Plaintiff was using and selling D-trans Allethrin prior to the grant of patent but since nobody can ascertain the process of manufacturing by mere examination of the product it does not amount to Public Use.
The Hon’ble High Court after analyzing section 30 of the Patent Act and perusal of certain relevant judgments held that “disclosure to a Government Department or to any other authority, not just of the patentee, but by any other person would not constitute prior publication”.
In case of Process Patents, to destroy the novelty of a patent all the significant steps of the process should have been disclosed prior to patent application. In the present case the Hon’ble High Court held that unless the six-step distinctive process of the Plaintiff is not disclosed prior to the patent application, it cannot be said that the patent lacks innovative step. The exception under section 30 of the Patent Act addresses a separate controversy altogether. Section 30 ensures protection against any disclosure made to Government Authorities.
Whereas, the question that “what would have happened if the complete six-step process was disclosed by the plaintiff under section 9(3) of the Insecticides Act? still remains unanswered. Would the exception under section 30 still protect such disclosure or would render the process unpatentable?
Author: Udit Tewari, 5th-year student of Vivekananda Institute Of Professional Studies (GGSIPU), an intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at email@example.com.
 CS (COMM) 201/2017: (14.08.2019 – DELHC):MANU/DE/2598/2019: 2019 SCC OnLine Del 9653:Delhi High Court
 ¶ 64,65 and 66 of Communications Component Antenna Inc. v ACE Technologies Corp. and Ors., CS (COMM) 1222/2018: Decided on 12th July, 2019: 2019 SCC OnLine Del 9123: MANU/DE/2202/2019:Delhi High Court
 ¶10 Lallubhai Chakubhai Jarivala v. Shamalda Sankalchand Shah: AIR 1934 Bom 407:MANU/MH/0203/1934: 1934 SCC OnLine Bom 80 : (1934) 36 Bom LR 881:Bombay High Court
¶104, 105, 106, 107 and 108: J. Mitra and Co. Pvt. Ltd. v. Kesar Medicaments and Ors: IA No. 11883/2006 (u/O 39 Rs 1 and 2 of CPC) in CS (OS) No. 2020 of 2006:2008 SCC OnLine Del 255 : (2008) 102 DRJ 106 : (2008) 148 DLT 198:MANU/DE/0306/2008: Delhi High Court