Month: April 2013

Doctor is not a workman.

Legal status of an employed Doctor:

Termination of a Doctor from the position of Junior Surgeon in a private hospital without being tendered the retrenchment compensation and notice pay under section 25-F of Industrial Disputes Act, 1947, which is required to be paid to a workman. This makes termination illegal. But the question is:

Is doctor a workman?

The term workman has been defined in Section 2(s) of the Act, which reads:-

“workman” means any person (including an apprentice) employed in any industry to do any manual, unskilled, skilled, technical, operational, clerical or supervisory work for hire or reward, whether the terms of employment be express or implied, and for the purposes of any proceeding under this Act in relation to an industrial dispute, includes any such person who has been dismissed, discharged or retrenched in connection with, or as a consequence of, that dispute, or whose dismissal, discharge or retrenchment has led to that dispute, but does not include any such person—
(i) who is subject to the Air Force Act, 1950 (45 of 1950), or the Army Act, 1950 (46 of 1950), or the Navy Act, 1957 (62 of 1957); or
(ii) who is employed in the police service or as an officer or other employee
of a prison; or
(iii) who is employed mainly in a managerial or administrative capacity; or
(iv) who, being employed in a supervisory capacity, draws wages exceeding ten thousand rupees per mensem or exercises, either by the nature of the duties attached to the office or by reason of the powers vested in him, functions mainly of a managerial nature.”

There is a distinction between a person employed in a hospital and a person employed in an industry and that not every time that a doctor was employed in an institution; he/she became a workman. Nature and character of the relationship between the employee and the employer had to be examined and ascertained to decide whether a doctor was a workman or not. Further, whereas ‘occupation’ was a principal activity that earned a regular wage or salary for a person, a ‘profession’ was an occupation that required extensive training and the study and mastery of specialised knowledge and usually had a professional association, ethical code and process of certification or licensing.

[Claimant Doctor] was a professional and it could not be said that he was engaged/employed for doing technical work. He did use his professional skills and knowledge for diagnosing the diseases and treating the patients but this could not be said to fall within the ambit and scope of Section 2(s) of the Industrial Disputes Act, 1947.

[Management of Multan Sewa Samiti Charitable Eye Hospital v. P.O. Labour Court -II.(Delhi High Court)]

Honour and reputation of author and copyright.

Rights of an author beyond copyright:

Should right to assert authorship in a work, include a right to object to distortion, mutilation or modification in a work? 

Why not, if it is prejudicial to the honour or reputation of the author. The contours, the hue and the colours of the original work, if tinkered, may distort the ethos of the work. Distorted and displayed, the viewer may form a poor impression of the author.

A good name is worth more than good riches.
(Shakespeare’s Othello, Act-II, Scene III):
Good name in man and woman, dear my Lord
Is the immediate jewel of their souls;
Who steals my purse, steals trash;
Its something nothing;
T’was mine, t’is, and has been slave to thousands;
But he that filches from me my good name,
Robs me of that which not enriches him
And makes me poor indeed.

Under Article 6 of the Berne Convention, the moral right of integrity enables the author to seek appropriate legal remedies if the moral right of attribution and integrity in his work is violated. The moral rights set out in the Berne Convention are significant because they continue to be vested in the author even after he has parted with his economic rights in his work.

Authorship is a matter of fact. It is history. Knowledge about authorship not only identifies the creator, it also identifies his contribution to national culture. It also makes possible to understand the course of cultural development in a country. Linked to each other, one flowing out from the other, right of integrity ultimately contributes to the overall integrity of the cultural domain of a nation. Language of Section 57 of Copyright Act does not exclude the right of integrity in relation to cultural heritage. The cultural heritage would include the artist whose creativity and ingenuity is amongst the valuable cultural resources of a nation. Through the telescope of section 57 of Copyright Act, it is possible to legally protect the cultural heritage of India through the moral rights of the artist.

[Source: Amar Nath Sehgal vs Union Of India, 117 (2005) DLT 717, 2005 (30) PTC 253. (Delhi High Court)]

 

Reputation is independent of work:

The principle underlying section 57 (of Copyright Act, 1957) is that damage to the reputation of an author is something apart from infringement of work itself. Section 57 provides an exception to the rule that after an author has parted with his rights in favour of a publisher or other person, the latter alone is entitled to sue in respect of infringements. The publisher or other assignee of copyright can no doubt bring action but thus section provides that the author can approach the court for protecting the plaintiff from serious injury even in cases where there is assignment of copyright. Thus in the case of hand after perusal of the  documents produced and the testimony of the witnesses, this court is of the considered view that the plaintiff is the author of the impugned work and that the defendants have modified the said work of the plaintiff without permission.

[Source: Arun Chadha v Oca Productions Private Limited. (Delhi High Court)]

Definition of Bill of Entry, Lading and Delivery Order

Bill of Entry, Bill of Lading and Delivery Order:

The terms like Bill of Entry, Bill of Lading and Delivery Order create confusion. Often these terms are used as if these are synonyms. But they are not. Each term has its precise definition and legal connotation.

Bill of Lading:

Bill of Lading was defined as: “any instrument signed by the owner of a vessel or his agent, acknowledging receipt of the goods described therein and undertaking to deliver the same at a place and to a person mentioned or indicated therein” in Indian Stamp Act, 1879 but that Act was repealed by Stamp Act of 1899 which contained no definition of Bill of Entry.
A cargo at sea while in the hands of the carrier is necessarily in-capable of physical delivery. During this period of transit and voyage, the bill of lading by the law merchant is universally recognized as its symbol, and the endorsement and delivery of the bill of lading operates as a symbolical delivery o cargo. Property in the goods passes by endorsement and delivery of the bill of lading, whenever it is the intention of the parties that the property should pass just as under similar circumstances the property would pass by an actual delivery of the goods. And for the purpose of passing such property in the goods and complete the title of the endorse to full possession thereof, the bill of lading until complete delivery of the cargo has been made on shore to some one rightfully claiming under it, remains in force as a symbol, and carries with it not only the full ownership of the goods, but also all rights created by the contract of carriage between the shipper and the shipowner. It is a key which in the hands of a rightful owner is intended to unlock the door of the warehouse, floating or fixed,in which the goods may chance to be. ( See Sanders Bros. v. Maclean & Co, (1883) 11 QBD 327, at Pg. 341)
A bill of lading is “a writing signed on behalf of the owner of the ship in which goods are embarked, acknowledging the receipt of the goods and undertaking to deliver them at the end of the voyage subject to such conditions as may be mentioned in the bill of lading”. It is well-settled in commercial world that a bill of lading represents the goods and the transfer of it operates as a transfer of the goods. (See J.V.Gokal & Co. (P) Ltd. v. Asst. Collector of Sales Tax, AIR 1960 SC 595)

Bill of Entry:

‘Bill of entry’ is distinct and different from the ‘bill of lading’ or delivery order, copies of which are to be enclosed with the ‘bill of entry’.

According to Bombay High Court “bill of entry is an innocuous matter and it does not create any obligation or liability on the maker thereof and no civil consequences flow from a mere filing of bill of entry. Upon filing of such bill of entry, the Customs authorities proceed to decide the question about the necessity or otherwise of payment of customs duty and in this fashion, bill of entry merely starts the ball rolling for customs duty.” (See  Union of India v. Chowgule & Co. P.Ltd., [1985] 20 ELT 57) But this does not define the Bill of Entry.

Gujarat High Court considered following question:

Whether ‘bill of entry’ for that purpose can be said to be a deliver order in respect of goods i.e. an instrument entitling any person to the delivery of any goods?

Presentation of ‘bill of entry’ merely on clearance of goods is given for home consumption or for warehousing, and is distinct and different from that of delivery of goods…. The function of the State requires creation or generation of documents such as:

[i] Intimation of arrival of ship issued/signed by Customs House Agent of the importer;
[ii] Import General Manifest signed by the person in charge of the vessel declaring, inter alia, cargo and goods carried by the vessel;
[iii] ‘Bill of entry’ signed by the importer/consignee declaring particulars in respect of goods, namely, the quantity, numbers of packages, value, vessel’s name, country of origin relevant heading of the Customs Tariff under which the goods are classifiable etc. and
[iv] ‘Bill of lading’ or delivery order etc. But all of such documents will not be an instrument of delivery order for the purpose of Entry 24

Delivery Order:

Post amendment, with effect from 1.4.2006, Entry 24 of Stamp Act (of India) was as under:

“Delivery order in respect of goods, that is to say, any instrument entitling any person therein named or his assigns or the holder thereof, to the delivery of any goods lying in any dock or port, in any warehouse in which goods are stored, or deposited on rent or hire, or upon any wharf, [when such goods exceed in value one hundred rupees]”

Gujarat High Court has held that a Bill of Entry is not an order of delivery, therefore, it cannot be held that ‘bill of entry’ is an instrument entitling a person named therein or assigns or holder thereof to get delivery of any goods lying in any dock or port or in any warehouse. It is one of the documents, which is required to be produced before the Customs authorities for clearance of goods for home consumption under Sec. 47 of the Customs Act. For the purpose of clearance, entry of goods of importation is required under Sec. 46 enabling the importer of goods to present to the proper officer a bill of entry for home consumption or warehousing. But it does not automatically become delivery order as distinct and different from the clearance of the goods.

 

Summoning of witness in Civil Suit

Considerations for court while summoning a witness:

Discretion of court:

Once such an application is filed, it is for the Court to use its discretion and to decide whether summons are to be issued to those witnesses. It has to be pointed out that the issue of summons is not automatic and in appropriate cases or in cases where objections are raised, the bona fides of the request has to be looked into and appropriate orders passed.

Suit for recovery of attorney/lawyer fee:

The controversy between the parties was that the plaintiff, who is an advocate/lawyer, was engaged for services to be rendered to defendant No. 1. The case of the plaintiff is that his dues on account of professional fees have not been cleared by the defendants. Apart from this, the plaintiff has also claimed damages from the defendants. The case of the defendants is that the defendant No. 6, which is an international firm of trade mark attorneys and had been looking after the interests of Defendant No. 1, had dealt with the plaintiff for the purposes of filing oppositions in respect of certain trade mark applications in India. The said oppositions were to be filed by the plaintiff in respect of the trade marks of the defendant No. 1. It is also pertinent to note that initially the plaintiffs’ services had been engaged on behalf of Dunlop Slazenger Group Limited. The latter company was acquired by the defendant No. 1 in 2001. Mr Mike Ashley, who is sought to be summoned as one of the witnesses, is the sole shareholder of the said defendant No. 1 company.

Summoning other party as witness:

While there is no bar to a party seeking the summoning of another party in the same suit as his witness, it is also clear that such an act is unusual and that it should only be permitted if the application for summoning the opposite party is bona fide and is not vexatious or an abuse of the process of the Court. Apart from this, there is the standard question which the Court has to consider in the case of summoning any witness as to whether it is necessary to summon the witness for which the application has been moved. Order 16 Rule 1 (2) CPC clearly stipulates that the party desirous of obtaining any summons for the attendance of any person shall file in Court an application stating therein the purpose for which the witness is proposed to be summoned. This in itself indicates that it is not as if the Court has to allow every application for summoning of a witness. The party seeking the summoning of a person as a witness has to specifically indicate the purpose for which he or she is proposed to be summoned. It is obvious that the Court has to apply its mind and exercise discretion in a judicial manner.

[Source: Dr. Amitabh Sen v. Sports World International. (Delhi High Court)]

Thus a party who seeks for a prayer to the Court to issue summons to a witness, must reveal to the Court the purpose for which the witness is proposed to be summoned.

Comment: It appears, the witness can be summoned by a party to prove a specific point in case but not to make a fishing or roving inquiry to establish a fact not specifically pleaded or fact nor specified in the application to summon the witness.

Custody of court: Meaning of.

Scope and meaning of expression ‘court custody’:

Custodia legis: Meaning of:

In custodia legis is a Latin phrase which means “in the custody of the law”. This phrase is used in reference to property taken into the court’s custody during the pendency of a dispute or lis before the court of law. When a thing or property is in custodia legis, it cannot be distrained, transferred, sold or otherwise interfered with by a private person, without the prior permission of the court.

Court custody if means physical possession:

(Section 561 of Cr.P.C. 1898 and Section 451 of Cr.P.C. 1973)

A production before the Court does not mean physical custody or possession by the Court but includes even control exercised by the Court by passing an order regarding the custody of the articles. In the instant case when once the Magistrate, after having been informed that the articles were produced before the Court, directed the Sub-Inspector to keep them with him in safe custody, to get them verified and valued by a goldsmith, the articles were undoubtedly produced before the Court and became custodia legis.

[Source: Basava Kom Dyamogouda Patil v. State of Mysore, AIR 1977 SC 1749.]

Duty to handover property to rightful owner:

When the rightful claimant applied to the Court for possession of the buses the Court could Act simply shrug its shoulders and direct him to go to a Civil Court because both the Official Receivers disclaimed that they were in possession of the buses. In such a situation it was the duty of the Court to probe into the matter, make a full enquiry, and trace the whereabouts of the buses. If the buses could not be so traced or if the buses could not be delivered to the owner for any reason the duty of the Court work direct the culpable party to pay the value of the vehicles to the appellant. It is elementary that no one shall be prejudiced for the acts of the Court ‘actus curiae neminem gravabit‘ (the act of the Court harms no one).

[Source: Inter Continental, Agencies Pvt. Ltd. v. Amin Chand Khanna, AIR 1980 SC 951, 1980 CriLJ 689, (1980) 3 SCC 103.(Supreme Court of India)

 

 

 

 

Democracy: Meaning of.

Democracy is government by the people:

Democracy is a continual participative operation, not a cataclysmic, periodic exercise. The little man, in his multitude,marking his vote at the poll does a social audit of his Parliament plus political choice of his proxy. Although the full flower of participative Government rarely blossoms, the minimum credential of popular government is appeal to the people after every term for a renewal of confidence. So we have adult franchise and general elections as constitutional compulsions. “the right of election is the very essence of the constitution” (Junius). It needs little argument to hold that the heart of the Parliamentary system is free and fair election periodically held, based on adult franchise, although social and economic democracy may demand much more.

[Source: Mohinder Singh Gill v. Chief Election Commissioner, AIR 1978 SC 85: 1978 SCR (3) 272: 1978 SCC (1) 405. (Supreme Court of India)]

Participatory Democracy:

Participatory democracy means the participation of residents of this State in the development of public policy and in the improvement of the operation of government at all levels.

[Source: Nevada Revised Statutes Chapter 225.220 or NV Rev Stat § 225.220 (2013) ]

Challenging task of conducting elections in India:

Conducting free and fair elections in a country like India, 73 crores people of which country constitute electoral bank, is by no means an easy task. India is the largest democracy in the world. Because of number of factors i.e. different culture, different languages, diverse territories with different ecology and climatic conditions, the high rate of illiteracy and poverty as well as different societal norms, the challenges faced by the Election Commission of India in this country are unique and unparallel.
[Source: Dr. Subramanian Swamy vs Election Commission Of India (Supreme Court of India)]

Right to campaign for election:

There is no right more basic in our democracy than the right to participate in electing our political leaders. Citizens can exercise that right in a variety of ways: They can run for office themselves, vote, urge others to vote for a particular candidate, volunteer to work on a campaign, and contribute to a candidate’s campaign. This case is about the last of those options.
The right to participate in democracy through political contributions is protected by the First Amendment, but that right is not absolute. Our cases have held that Congress may regulate campaign contributions to protect
against corruption or the appearance of corruption.
At the same time, we have made clear that Congress may not regulate contributions simply to reduce the amount of money in politics, or to restrict the political participation of some in order to enhance the relative influence of others.

Many people might find those latter objectives attractive: They would be delighted to see fewer television commercials touting a candidate’s accomplishments or disparaging an opponent’s character. Money in politics may at times seem repugnant to some, but so too does much of what the First Amendment vigorously protects. If the First Amendment protects flag burning, funeral protests, and Nazi parades—despite the profound offense such
spectacles cause—it surely protects political campaign speech despite popular opposition.

Indeed, as we have emphasized, the First Amendment “has its fullest and most urgent application precisely to the conduct of campaigns for political office.

[Source: ROBERTS, C. J in McCutcheon v. Federal Election Commission, (Supreme Court of USA) relying upon Buckley v. Valeo, 424 U. S. 1, 26–27 (1976) (per curiam); Arizona Free Enterprise Club’s Freedom Club PAC v. Bennett, 564 U. S. ___, ___ (2011) (slip op., at 24–25); Texas v. Johnson, 491 U. S. 397 (1989); Snyder v. Phelps, 562 U. S. ___(2011); National Socialist Party of America v. Skokie, 432 U. S. 43 (1977) (per curiam) and Monitor Patriot Co. v. Roy, 401 U. S. 265, 272 (1971).]

Right of speedy justice in India

Justice delivery system in India:

Delay in justice:

Justice delivery system in India is notorious for delay. Presently no procedural changes are seen in action to change that except a little strict attitude of Supreme Court. But with very large number of pending litigation, it appears to be only nostalgic. These are observations of Supreme Court:

In a democratic body polity which is governed by a written Constitution and where Rule of Law is paramount, judiciary is regarded as sentinel on the qui vive not only to protect the Fundamental Rights of the citizens but also to see that the democratic values as enshrined in the Constitution are respected and the faith and hope of the people in the constitutional system are not atrophied. Sacrosanctity of rule of law neither recognizes a master and a slave nor does it conceive of a ruler and a subject but, in quintessentially, encapsulates and sings in glory of the values of liberty, equality and justice In accordance with law requiring the present generation to have the responsibility to sustain them with all fairness for the posterity ostracising all affectations. To maintain the sacredness of democracy, sacrifice in continuum by every member of the collective is a categorical imperative. The fundamental conception of democracy can only be preserved as a colossal and priceless treasure where virtue and values of justice rule supreme and intellectual anaemia is kept at bay by constant patience, consistent perseverance, and argus-eyed vigilance. The foundation of justice, apart from other things, rests on the speedy delineation of the lis pending in courts. It would not be an exaggeration to state that it is the primary morality of justice and ethical fulcrum of the judiciary. Its profundity lies in not allowing anything to cripple the same or to do any act which would freeze it or make it suffer from impotency. Delayed delineation of a controversy in a court of law creates a dent in the normative dispensation of justice and in the ultimate eventuate, the Bench and the Bar gradually lose their reverence, for the sense of divinity and nobility really flows from institutional serviceability. Therefore, historically, emphasis has been laid on individual institutionalism and collective institutionalism of an adjudicator while administering justice. It can be stated without any fear of contradiction that the collective collegiality can never be regarded as an alien concept to speedy dispensation of justice. That is the hallmark of duty, and that is the real measure.
…..it is clear as day that everyone involved in the system of dispensation of justice has to inspire the confidence of the common man in the effectiveness of the judicial system. Sustenance of faith has to be treated as spinal sans sympathy or indulgence. If someone considers the task to be herculean, the same has to be performed with solemnity, for faith is the ‘elan vital’ of our system.
…..Coming to the proceedings before the High Court from the date of presentation of the second appeal till the date of admission, the manner in which it has progressed is not only perplexing but also shocking. We are inclined to think that the Court should not have shown indulgence of such magnitude by adjourning the matter when the counsel for the appellant was not present. It is difficult to envision why the Court directed fresh notice to the appellant when there was nothing suggestive for passing of such an order. The matter should have been dealt with taking a recourse to the provisions in the Code of Civil Procedure. It is also astonishing that the lawyers sought adjournments in a routine manner and the court also acceded to such prayers. When the matter stood dismissed, though an application for restoration was filed, yet it was listed after a long lapse of time. Adding to the misery, the concerned official took his own time to put the file in order. From the Registrar General’s communication it is perceptible that some disciplinary action has been initiated against the erring official. That is another matter and we do not intend to say anything in that regard. But the fact that cannot be brushed aside is that there is enormous delay in dealing with the case. Had timely effort been made and due concern bestowed, it could have been avoided. There may be cases where delay may be unavoidable. We do not intend to give illustrations, for facts in the said cases shall speak for themselves. In the case at hand, as we perceive, the learned counsel sought adjournment after adjournment in a nonchalant manner and the same were granted in a routine fashion. It is the duty of the counsel as the officer of the court to assist the court in a properly prepared manner and not to seek unnecessary adjournments. Getting an adjournment is neither an art nor science. It has never been appreciated by the courts. All who are involved in the justice dispensation system, which includes the Judges, the lawyers, the judicial officers who work in courts, the law officers of the State, the Registry and the litigants, have to show dedicated diligence so that a controversy is put to rest. Shifting the blame is not the cure. Acceptance of responsibility and dealing with it like a captain in the frontier is the necessity of the time. It is worthy to state that diligence brings satisfaction. There has to be strong resolve in the mind to carry out the responsibility with devotion. A time has come when all concerned are required to abandon idleness and arouse oneself and see to it that the syndrome of delay does not erode the concept of dispensation of expeditious justice which is the constitutional command. Sagacious acceptance of the deviation and necessitous steps taken for the redressal of the same would be a bright lamp which would gradually become a laser beam. This is the expectation of the collective, and the said expectation has to become a reality. Expectations are not to remain at the stage of hope. They have to be metamorphosed to actuality. Long back, Francis Bacon, in his aphoristic style, had said:

“Hope is good breakfast, but it is bad supper”. 

[Source: Noor Mohammed vs Jetha Nand (Supreme Court of India)]

Patent claim of Novratis in Supreme Court of India

Patent: definition of new product:

Questions before the Court:

  1. What is the true import of section 3(d) of the Patents Act, 1970? 
  2. How does it interplay with clauses (j) and (ja) of section 2(1)? 
  3. Does the product for which the appellant claims patent qualify as a “new product”which comes by through an invention that has a feature that involves technical advance over the existing knowledge and that makes the invention “not obvious” to a person skilled in the art?
  4. In case the appellant’s product satisfies the tests and thus qualifies as “invention” within the meaning of clauses (j) and (ja) of section 2(1), can its patentability still be questioned and denied on the ground that section 3(d) puts it out of the category of “invention”?

Section 3(d) of Patent Act, 1970:

(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;

Patent claim over imatnib3:

Facts of the case:
The appellant claims that beginning with Imatinib3 in free base form (as the ‘educt’), in a two-stage invention they first produced its methanesulfonic acid addition salt, Imatinib Mesylate, and then proceeded to develop the beta crystalline form of the salt of Imatinib. According to the appellant, starting from Imatinib free base they could reach to the beta crystal form of Imatinib Mesylate in two ways: one “by digesting another crystal form, especially the alpha crystal form, or an amorphous starting material of the methanesulfonic acid addition salt of compound of formula I …”; and second “by dissolving another crystal form, especially the alpha crystal form, or an amorphous starting material of the methanesulfonic acid addition salt of compound of formula I…”.
The appellant filed the application (Application No.1602/MAS/1998)1 for grant of patent for Imatinib Mesylate in beta crystalline form at the Chennai Patent Office on July 17, 1998. In the application it claimed that the invented product, the beta crystal form of Imatinib Mesylate, has (i) more beneficial flow properties: (ii) better thermodynamic stability; and (iii) lower hygroscopicity than the alpha crystal form of Imatinib Mesylate. It further claimed that the aforesaid properties makes the invented product “new”(and superior!) as it “stores better and is easier to process”; has “better processability of the methanesulfonic acid addition salt of a compound of formula I”, and has a “further advantage for processing and storing”.

It is significant to note that the comparison of the aforesaid properties of the beta crystal form of Imatinib Mesylate was made with its alpha crystal form. In the patent application, there is no claim of superiority of the beta crystal form of Imatinib Mesylate in regard to the aforesaid three properties, or any other property, over the starting material Imatinib, or even over Imatinib Mesylate in amorphous form or any form other than the alpha crystal form. On the contrary, insofar as Imatinib in free base form is concerned, it was unambiguously stated in the patent application as under:
“It goes without saying that all the indicated inhibitory and pharmacological effects are also found with the free base, 4-(4-methylpiperazin-1-ylmethyl)-N-[4-methyl-3-(4-pyridin-3-yl) pyrimidin-2-ylamino)phenyl] benzamide, or other cells thereof. The present invention relates especially to the crystal form of the methanesulfonic acid addition salt of a compound of formula I in the treatment of one of the said diseases or in the preparation of a pharmacological agent for the treatment thereto.”
After the application was made and before it was taken up for consideration, a number of amendments were introduced in the Indian Patents Act, 1970, which brought about fundamental changes in the patent law of the country. The appellant was, however, fully aware of these changes in the law ……..
The Assistant Controller held that the invention claimed by the appellant was anticipated by prior publication, i.e., the Zimmermann patent; that the invention claimed by the appellant was obvious to a person skilled in the art in view of the disclosure provided in the Zimmermann patent specifications; and further that the patentability of the alleged invention was disallowed by section 3(d) of the Act; and also that July 18, 1997, the Swiss priority date, was wrongly claimed as the priority date for the application in India and hence, the alleged invention was also anticipated by the specification made in the application submitted in Switzerland.
Patent application was made on July 17, 1998, giving July 18, 1997, the date on which the appellant had applied for grant of patent for the subject product in Switzerland, as the “priority date”. On July 18, 1997, Switzerland was not one of the “Convention Countries” as defined under section 2 (1)(d) read with section 133 of the Act and it was notified as a convention country as per section 133 of the Act on November 30, 1998.
The Assistant Controller held that the invention claimed by the appellant was anticipated by prior publication, i.e., the Zimmermann patent; that the invention claimed by the appellant was obvious to a person skilled in the art in view of the disclosure provided in the Zimmermann patent specifications; and further that the patentability of the alleged invention was disallowed by section 3(d) of the Act; and also that July 18, 1997, the Swiss priority date, was wrongly claimed as the priority date for the application in India and hence, the alleged invention was also anticipated by the specification made in the application submitted in Switzerland.
The IPAB (Intellectual Property Appellate Board) reversed the findings of the Assistant Controller on the issues of anticipation and obviousness. It held that the appellant’s invention satisfied the tests of novelty and non-obviousness, and further that in view of the amended section 133, the appellant was fully entitled to get July 18, 1997, the date on which the patent application was made in Switzerland, as the priority date for his application in India. The IPAB, however, held that the patentability of the subject product was hit by section 3(d) of the Act. Referring to section 3(d) the IPAB observed:
“Since India is having a requirement of higher standard of inventive step by introducing the amended section 3(d) of the Act, what is patentable in other countries will not be patentable in India. As we see, the object of amended section 3(d) of the Act is nothing but a requirement of higher standard of inventive step in the law particularly for the drug/pharmaceutical substances.”
Against the order of the IPAB the appellant came directly to Supreme Court in a petition under Article 136 of the Constitution.

Patent be determined on intrinsic worth of invention:

The subject product admittedly emerges from the Zimmermann patent. Hence, in order to test the correctness of the claim made on behalf of the appellant, that the subject product is brought into being through inventive research, we need to examine in some detail the Zimmermann patent and certain developments that took place on that basis

We are completely unable to see how Imatinib Mesylate can be said to be a new product, having come into being through an “invention” that has a feature that involves technical advance over the existing knowledge and that would make the invention not obvious to a person skilled in the art. Imatinib Mesylate is all there in the Zimmermann patent. It is a known substance from the Zimmermann patent.

 

That Imatinib Mesylate is fully part of the Zimmermann patent is also borne out from another circumstance. It may be noted that after the Zimmermann patent, the appellant applied for, and in several cases obtained, patent in the US not only for the beta and alpha crystalline forms of Imatinib Mesylate, but also for Imatinib in a number of different forms. The appellant, however, never asked for any patent for Imatinib Mesylate in non-crystalline form, for the simple reason that it had always maintained that Imatinib Mesylate is fully a part of the Zimmermann patent and does not call for any separate patent.

 

We thus find no force in the submission that the development of Imatinib Mesylate from Imatinib is outside the Zimmermann patent and constitutes an invention as understood in the law of patent in India.

The subject product admittedly emerges from the Zimmermann patent. Hence, in order to test the correctness of the claim made on behalf of the appellant, that the subject product is brought into being through inventive research, we need to examine in some detail the Zimmermann patent and certain developments that took place on that basis

 

We would like to say that in this country the law of patent, after the introduction of product patent for all kinds of substances in the patent regime, is in its infancy. We certainly do not wish the law of patent in this country to develop on lines where there may be a vast gap between the coverage and the disclosure under the patent; where the scope of the patent is determined not on the intrinsic worth of the invention but by the artful drafting of its claims by skilful lawyers, and where patents are traded as a commodity not for production and marketing of the patented products but to search for someone who may be sued for infringement of the patent.

In light of the discussions made above, we firmly reject the appellant’s case that Imatinib Mesylate is a new product and the outcome of an invention beyond the Zimmermann patent. We hold and find that Imatinib Mesylate is a known substance from the Zimmermann patent itself. Not only is Imatinib Mesylate known as a substance in the Zimmermann patent, but its pharmacological properties are also known in the Zimmermann patent and in the article published in the Cancer Research journal referred to above. The consequential finding, therefore, is that Imatinib Mesylate does not qualify the test of “invention”as laid down in section 2(1)(j) and section 2(1)(ja) of the Patents Act, 1970.

On facts also we are unable to accept that Imatinib Mesylate or even Imatinib was not a known substance with known efficacy. It is seen above that Imatinib Mesylate was a known substance from the Zimmermann patent.

It further needs to be noted that, on the issue of section 3(d), there appears to be a major weakness in the case of the appellant. There is no clarity at all as to what is the substance immediately preceding the subject product, the beta crystalline form of Imatinib Mesylate. In course of the hearing, the counsel appearing for the appellant greatly stressed that, in terms of invention, the beta crystalline form of Imatinib Mesylate is two stages removed from Imatinib in free base form. The same is said in the written notes of submissions filed on behalf of the appellant. But this position is not reflected in the subject application, in which all the references are only to Imatinib in free base form (or to the alpha crystalline form of Imatinib Mesylate in respect of flow properties, thermodynamic stability and lower hygroscopicity).

It is to be noted that the higher solubility of the beta crystalline form of Imatinib Mesylate is being compared not to Imatinib Mesylate but, once again, to Imatinib in free base form. The whole case of the appellant, as made out in the subject application and the affidavits, is that the subject product, the beta crystalline form of Imatinib Mesylate, is derived from Imatinib, and that the substance immediately preceding the beta crystalline form is not Imatinib Mesylate but Imatinib in free base form. This position is sought to be canvassed in the subject application and the affidavits on the premise that the Zimmermann patent ended at Imatinib in free base and did not go beyond to Imatinib Mesylate. Not only is this premise unfounded as shown earlier, but the appellant itself appears to take a somewhat different stand, as before this Court it was contended that the subject product, in terms of invention, is two stages removed from Imatinib in free base, and the substance immediately preceding the subject product is Imatinib Mesylate (non-crystalline).

One does not have to be an expert in chemistry to know that salts normally have much better solubility than compounds in free base form. If that be so, the additional properties that may be attributed to the beta crystalline form of Imatinib Mesylate would be limited to the following:

i. More beneficial flow properties,

ii. Better thermodynamic stability, and

iii. Lower hygroscopicity

It is seen above that all the pharmacological effects of Imatinib Mesylate in beta crystalline form are equally possessed by Imatinib in free base form. The position is not only admitted but repeatedly reiterated in the patent application.

Mere change of form with properties inherent to that form would not qualify as “enhancement of efficacy” of a known substance. In other words, the explanation is meant to indicate what is not to be considered as therapeutic efficacy.

In whatever way therapeutic efficacy may be interpreted, this much is absolutely clear: that the physico-chemical properties of beta crystalline form of Imatinib Mesylate, namely (i) more beneficial flow properties, (ii) better thermodynamic stability, and (iii) lower hygroscopicity, may be otherwise beneficial but these properties cannot even be taken into account for the purpose of the test of section 3(d) of the Act, since these properties have nothing to do with therapeutic efficacy.

No material has been offered to indicate that the beta crystalline form of Imatinib Mesylate will produce an enhanced or superior efficacy (therapeutic) on molecular basis than what could be achieved with Imatinib free base in vivo animal model.

Thus, in whichever way section 3(d) may be viewed, whether as setting up the standards of “patentability” or as an extension of the definition of “invention”, it must be held that on the basis of the materials brought before this Court, the subject product, that is, the beta crystalline form of Imatinib Mesylate, fails the test of section 3(d), too, of the Act.

(Emphasis added)

[Source: Novratis AG v. Union of India (Supreme Court of India)]