Biswanath Prasad Radhey Shyam Vs.

Hindustan Metal Industries (1979)

Introduction:
This case deals with the fundamental principles of patent law, particularly the requirement of
novelty and inventive step. The Supreme Court of India examined whether the method of
manufacturing utensils patented by Hindustan Metal Industries was truly novel and
involved an inventive step or was merely a modification of an existing method. The case
serves as a significant precedent on the revocation of patents that lack originality and inventive
merit.

Factual Background:
Both the appellant, Biswanath Prasad Radhey Shyam, and the respondent, Hindustan Metal
Industries, were engaged in the business of manufacturing utensils in Mirzapur. In 1951, a
partner of Hindustan Metal Industries claimed to have invented a method and device for
manufacturing utensils that introduced improvements in safety, convenience, speed, and finish.
The conventional method posed a risk as utensils would often fly off the headstock. The
respondent filed for a patent, which was granted with effect from December 13, 1951.
Subsequently, upon learning that the appellant was using the same method, Hindustan Metal
Industries served a notice and later filed a suit for a permanent injunction against Biswanath
Prasad Radhey Shyam to restrain them from infringing the patented method.

Detailed Description of Subject Matter of the Patent:

The patented invention related to "a method of mounting and holding metallic utensils on a
lathe for turning before polishing" [It was a process Patent]. The primary components of the
invention included a shaft or spindle carrying an adapter to hold the utensil, a pressure spindle
that applied force to keep the utensil in place, and a bracket for support. The patent
specifications described the method as a safer alternative to conventional techniques, which
required using adhesives or direct chuck attachment that posed a risk of utensils detaching
during the turning process.
Procedural Background:
Hindustan Metal Industries filed a suit for a permanent injunction and damages against the
appellant for allegedly infringing its patented method. The appellant denied the claims and filed
a counterclaim under Section 26 of the Indian Patent and Designs Act, 1911, seeking revocation
of the patent on the grounds that the method lacked novelty and did not involve any inventive
step. The case was transferred to the High Court, where a Single Judge dismissed the plaintiff’s
suit and revoked the patent. On appeal, a Division Bench of the High Court reversed the
decision and upheld the validity of the patent. The appellant then challenged the High Court’s
decision before the Supreme Court.

Issues Involved in the Case:

The key issues before the Supreme Court were whether the patented method constituted a
manner of new manufacture or improvement and whether it involved an inventive step in light
of prior knowledge and practices?

Submission of Parties:
The appellant argued that the method patented by the respondent was neither a new
manufacture nor an improvement but merely a minor modification of existing techniques. They
contended that similar methods had been in use long before the patent date, and the
respondent’s alleged invention did not involve any significant ingenuity or innovation.

The respondent countered that the method was novel as it introduced a safer and more efficient
way of manufacturing utensils. They contended that the method was not publicly known before
the date of the patent and involved an inventive step that justified the grant of the patent.

Discussion on Judgments and Citations:

The Supreme Court relied on several precedents to determine the validity of the patent. The
Court referred to Rickman v. Thierry (1896) 14 Pat. Ca. 105, which emphasized that novelty
in application alone is not sufficient; an invention must involve ingenuity in its mode of
application. The Court also cited Blackey v. Latham (1888) 6 Pat. Ca. 184, where it was held
that an invention must demonstrate a level of originality beyond common craftsmanship.
Additionally, the Court referred to Harwood v. Great Northern Railway Co. (1864-65) XI
HLC 654, where it was established that a mere adaptation of an old contrivance without novelty
or an inventive step does not warrant a patent. Another key case cited was Rado v. John Tye
& Sons Ltd., 1967 RPC 297, which provided the test for obviousness—whether the alleged
discovery lies outside the expected knowledge of a skilled craftsman.

The Detailed Analysis of Court:

The Supreme Court held that "for an invention to be patentable, it must satisfy two key
criteria: it must be new, and it must involve an inventive step". The Court found that the
respondent’s method was merely an application of an old technique with minor modifications.
The Court observed that prior to the patent, the technique of using a lathe with a headstock and
tailstock for shaping utensils was already in common use. The addition of a pressure spindle,
which was claimed as an innovation, was found to be a minor improvement rather than an
invention. The Court also noted that the respondent’s own claims did not assert any significant
novelty, as they stated that the pressure spindle could be either pointed or blunt, which indicated
that no substantial innovation had been made.examined the definition of manufacture and held
that "for a process or method to qualify as a manner of new manufacture, it must lead to a
distinct and substantial improvement over existing methods". The respondent’s method failed
this test as it was merely an adaptation of pre-existing techniques.
Regarding novelty, the Court reiterated that prior public knowledge or use of the patented
method before the filing date of the patent negates its novelty. The evidence presented showed
that similar manufacturing processes had been in use before the respondent’s patent,
making the invention unpatentable.
On the issue of inventive step, the Court applied the test of whether a person skilled in the
relevant field would consider the invention an obvious extension of prior knowledge. Since the
patented method did not demonstrate ingenuity beyond the common skill of a craftsman, it
lacked an inventive step.
The Court also provided guidance on how a patent specification should be interpreted. It
emphasized that the correct way to construe a patent is to first read the description of the
invention to understand its scope and purpose, and then examine the claims to determine the
extent of the exclusive right being claimed. The patentee cannot claim more than what has been
specifically described in the complete specification.
Final Decision:
The Supreme Court allowed the appeal, set aside the judgment of the High Court, and restored
the order of the Single Judge revoking the patent. The Court held that the patented method did
not involve an inventive step and was merely a workshop improvement that did not warrant
the grant of a patent. Consequently, the patent was invalidated.