In this work one can find a detailed case study of the case Press metal
corporation vs Noshir Sorabji Pochkhanawalla
, with my personal analysis on
the judgement of the case. This written work firstly explains about Patent, some
- What is Patent?
- Where does it find its root from?
- Which law
governs matter related to patent? Or
- Is Patent recognised globally?
Patent in today's world hold a greater
importance, as compared to early days when only handful of people were aware
about it. Nowadays, having Patent is not only a way to protect one's creation
but also a way to improve their CV for work places. Hence it can be safely
concluded that day by day the increasing competition has made it a necessity,
which one should have.
Patent becoming more and more popular these days, it is very obvious not only
for a law student but also for a common person to search about patents. And to
know more about patent one must refer to cases dealing with the different
aspects of patent. One such case is Press metal corporation vs Noshir Sorabji
Pochkhanawalla, which majorly deals with prior publication and vague description
of the invention.
This paper not only describes about this case, but also mentions about other
cases in which Press metal corporation vs Noshir Sorabji Pochkhanawalla was used
as a precedent. According to the Common Law System it common for the judges to
use past cases as a precedence, this case is also no exception to it.
So, to understand deeply about this case we must start understanding from the
After the arrival of the most awaited COVID vaccine, we all heard the cries for
patent from the inventors. Every day at least one news in a day used to come
about inventors asking for patent protection for their vaccine. Even though
everyone was denied patent, it made the common people curios about what exactly
is patent? Now to explain what is patent, section 2 (1) (m) of the Patents
Act of 1970 defines patent.
But to understand patent, one must know about where it originated from? The to
this question is IPR or Intellectual Property Rights, as the name suggest
property related to intellect. So, basically IPR protects properties which
formed due to intellect of the person. Its legality can be explained through the
laws provided in constitution related to property. Earlier, before 44th
amendment of Indian Constitution in 1978, the Right to Property mentioned under
Article 19 (1) (f) protected matters related to IPR.
Later on, right to property became constitution right given under Article
300A of the Indian Constitution 1950. WTO or World Trade Organisation has
also introduced an agreement named as TRIPS, Trade Related Aspects of
Intellectual Property Rights. This is a basic agreement which talks about all
the areas of IPR including patent, it gives the minimum standard that a country
should follow. Currently, India is following the standards set by TRIPS.
So, patent a part of IPR can also be treated as a property, being protected
under 300A of Indian Constitution 1950. This property (IPR) can be tangible as
well as intangible, meaning some IP can be touched and felt but some cannot be.
But still all of them are protected under the IP Laws, as long as they meet the
essentials as described in the section in their respective Act.
What is Patent?
It can be defined as a tool given to the inventors to protect their novel work,
from being copied or used for economic purpose.
For being a patent holder for one's invention, the invention must have following
The invented item must be new, meaning it should not be the result of
copying of some already existing thing. Otherwise, it would defy the sole
purpose of having Intellectual Property Laws, which is to promote
The product must be inventive in nature, meaning it should not
be a result of common thinking or knowledge from a layman's perspective.
The is provided to only those creators whose work has some
industrial value in the present world.
After fulfilling these criteria, the inventor can apply for a patent, and just
like any other IPR patent also has a tenure which is of 20 years. The tenure
starts from the date of the issue of the patent certificate from the Registrar,
till the completion of 20 years. While filing for a patent, the inventor has to
disclose about the invention in detail.
This step is required in order for the
rest of the world to benefit from the invention or, to commercialize it after
the completion of the tenure. As it can be derived from the procedure, receiving
a patent is a quid pro quo situation in which the inventor receives the
protection of law for its invention in exchange for the knowledge of the
Press metal corporation vs Noshir Sorabji Pochkhanawalla
This is a case related to the Patent section of the IPR, in this case Press
metal corporation is the petitioner whereas Noshir Sorabji Pochkhanawalla is the
Respondent. This case along with many other issues, deals with the vague
explanation of invention on the application of patent.
This case became one of
the prominently referred case due to the issue of vague explanation of
invention, court in this case has defined the purpose as well as importance of
the description of the invention. Now to begin with the facts of the case:
In this case the respondent Noshir Sorabji, filed an application for his
invention relating to a Muffler or Exhaust Silencer. The Controller accepted the
application and wrote down about it in the Gazette of India. The petitioner got
to know about the invention through the Gazette of India where it was published
by the Controller. Petitioner filed a case under Section 25 (1) (b) of the
Patents Act, 1970 in court of law.
Later on, Noshir Sorabji died, and as he
stated in his Will, the Executor became 1st Respondent. The final judgement of
this case came directly from the Bombay High Court, ruling in favour of the
Petitioner. The court held that Respondent cannot receive the Patent, because
the description Respondent gave in the application about his invention is vague.
- The first claim of the Petitioner is that the information related to the
invention in question, has already been published. According to the
Respondent the Muffler (invention in question) making technique has already
been published in a journal, before the Respondent filed for the Patent for
it. Section 29 (1) of Patent Act 1970, clearly states that if an
invention got published before the filing of the application of Patent, then
it will get rejected. This section ensures the novelty of the invention that
is being registered.
- The second claim of Petitioner is that, the invention was publicly known
to most of the people in related sector of
automobiles. Section 25 (1) (d) of the Patent Act 1970, states that if the
invention was publicly used before the filing of the Patent, then it is a ground
for refusal of the Patent. According to Section 64 (1) (e) of the Patent Act
1970, if the invention does not fall under the criteria of novelty, it will not
receive the Patent.
- The third claim by the Petitioner is that the invention was obvious in
nature, and there was no inventive step in it. Section 2 (ja) of the Patent
Act 1970, it states that the invention must be non-obvious in nature.
The purpose of Patent is to initiate creativity among the people, and to ensure
creativity among individual such a requirement is necessary. This section also
states about the invention to have some economic value in the market.
- The fourth claim of the Petitioner is that the Patent application of the
invention, does not clearly define about the invention. Proper disclosure of
the invention being filed for patent, is
essential under section 10 (4) of Patent Act 1970. This step is required in
acquiring the Patent, just to check if the invention is novel in nature or not.
The Controller publishes about the invention being filed on the Gazette of
India, where people can see and report in case of IPR infringement.
The case was decided in the Bombay High Court, the judges held that the
Respondent will not be granted the Patent. The judges sustained all the
above-mentioned grounds of refusal of Patent, given by the Petitioner.
Now, we will get to know about more such cases in which this case was used as a
precedent. This case was used in a lot of cases as a precedent, the Respondent
in this Noshir Sorabji, was unable to prove the novelty of the invention. The
court held in this case that the Controller was in error to allow the invention
for Patent. This case not only talks about the prior publication, but also about
the vague description of the invention.
Following are the names of such cases:
- Ravi Raj Gupta. V. Acme Glass Mosaic Industries
In the above-mentioned case, Plaintiff Ravi Raj Gupta filed a case against the
defendant Acme Glass Mosaic Industries. The plaintiff claimed Patent
Infringement, whereas the defendant questioned the legality of the Patent.
According to the Defendant the idea for which the plaintiff acquired the Patent
is a Well- Process, which is being followed by almost everyone in the same
industry. Hence not fulfilling the novel or non- obvious essentials for
receiving the patent. Press metal corporation vs Noshir Sorabji, this case was
used as precedent for not fulfilling the essential of non-obvious in an
- Alleppy Company LTD. V. Controller of Patent
In this case the Petitioner filed a case in court of law, against the Controller
of Patent. The case arose because, the Controller of Patent allowed the
application of the Coir industry field for the Patent of a mat. The mat was a
Coir mat having non-skid rubber backing but it was in use since1970. Press metal
corporation vs Noshir Sorabji was used in this as a precedent, for prior use of
the invention even before filing the application for Patent.
- Elite Equipment (India) PVT. LTD. V. Sampath Ramesh
The petitioner in this case is, Elite Equipment whereas the Respondent is
Sampath Ramesh. The filed the case against the Respondent because his invention
does not fulfil the essentials of Patent, described in the Patent Act 1970. The
Respondent invented a pizza screen (used in making pizza), the Petitioner
claimed this invention to be in use since 1992. After hearing this the
Respondent said it is different and a special pizza screen, to which the
Respondent replied it is not clear with the process described by the Petitioner.
The court held the precedence of Press metal corporation vs Noshir Sorabji in
this case and stated, it is the duty of the inventor to properly describe about
the invention. The inventions which are not being described clearly will be
subject to rejection for the Patent.
In the case of Press metal corporation vs Noshir Sorabji, the invention
submitted by the Respondent, Noshir Sorabji Pochkhanawalla has already been
published in two books. Also, the subject of Patent the invention, was in public
use for a long period of time. Since the "invention" as claimed by the
Respondent, was known to all. Not only this, the invention was obvious in nature
and also vaguely explained in the application.
The court asked again and again
the Respondent to provide with evidence, to show his invention was novel and
different from those shown by the Petitioner. But despite giving more time the
Respondent was unable to provide the court with the evidence. Keeping all these
points in mind, it is very accurate to not provide the Respondent with the
Patent. The main idea behind the Patent or any other IP law, is to promote
creativity among the individuals. If the sole purpose of the Patent is not being
fulfilled, then how can an individual claim the rights of Patent.
- AIR 1983 Bom 144, the citation for the above-mentioned case.
- Section 2(1)(m) "patent" means a patent for any invention granted under
this Act, which is Patent Act 1970
- Article 19 (1) (f)- Right to Property under the Indian Constitution
1950, later on omitted after the 44th amendment in 1978.
- Article 300A- No person shall be deprived of his property save by the
authority of law.
- Section 25 (1) (b) of the Patent Act 1970- that the invention so far as
claimed in any claim of the complete specification has been published before
the priority date of the claim:
- In any specification filed in pursuance of an application for a patent
made in India on or after the 1st day of January, 1912; or;
- In India or elsewhere, in any other document: Provided that the ground
specified in sub-clause (ii) shall not be available where such publication
does not constitute an anticipation of the invention by virtue of
sub-section (2) or sub-section (3) of section 29
- Section 29 (1)- An invention claimed in a complete specification shall
not be deemed to have been anticipated by reason only that the invention was
published in a specification filed in pursuance of an application for a
patent made in India and dated before the 1st day of January, 1912.
- Section 25 (1) (d) of the Patent Act 1970- that the invention so far as
claimed in any claim of the complete specification was publicly known or
publicly used in India before the priority date of that claim. Explanation.
-For the purposes of this clause, an invention relating to a process for
which a patent is claimed shall be deemed to have been publicly known or
publicly used in India before the priority date of the claim if a product
made by that process had already been imported into India before that date
except where such importation has been for the purpose of reasonable trial
or experiment only.
- Section 64 (1) (e) of the Patent Act 1970- that 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 priority
date of the claim or to what was published in India or elsewhere in any of
- Section 2 (ja) of Patent Act 1970- "inventive step" means a feature of an
invention that involves technical advance as compared to the existing knowledge
or having economic significance or both and that makes the invention not obvious
to a person skilled in the art
- Every complete specification shall:
- fully and particularly describe the invention and its operation or use and
the method by which it is to be performed;
- disclose the best method of performing the invention which is known to
the applicant and for which he is entitled to claim protection; and
- end with a claim or claims defining the scope of the invention for which
protection is claimed;
41 [(d) be accompanied by an abstract to provide technical information on the
Award Winning Article Is Written By: Ms.Kumari Manshi
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