Kedarnath Mondal v. Gonesh Chandra Adak

Fletcher, J.:— This is a suit brought by the inventor against the Defendant to restrain the Infringement of an exclusive right of invention under the Inventions and Designs Act.

The Defendant in his defence has raised several defences as follows:—

(1) That the alleged Invention at the date of the specification was nob a new invention.

(2) That the Plaintiffs are not the inventors thereof.

(3) That the specification does not fulfil the requirements of part I of the Act.

(4) That the parts and materials are not new and that the new parts are distinguished from the old.

(5) That the invention was publicly used in British India.

(6) That the invention has been publicly sold and used in British India.

In opening his case, Mr. Chaudhuri raised an extremely novel point. That is, in my opinion, well founded. It arises in this way.

Sec. 4, sub-sec. 9, of the Inventions and Designs Act of 1888 says that a District Court has the meaning assigned to that expression by the Code of Civil Procedure. Now let us look at the interpretation in clause 2 of the Code of Civil Procedure. It Bays:— “District” means the local limits of the jurisdiction of the principal Civil Court of original jurisdiction (hereinafter called a District Court) and includes the local limits of the Ordinary Original Civil Jurisdiction of a High Court, and then it says that “every Court of a grade inferior to that of a District Court and every Court of Small Causes shall for the purposes of this Code be deemed to be Subordinate to the High Court and the District Court.” Now, a High Court as used in the Code of Civil Procedure means the highest civil court of appeal. In my opinion, when a High Court exercises its Ordinary Original Civil Jurisdiction, it comes within the definition of a District Court as contained in the Civil Procedure Code.

Then going back to the Inventions and Designs Act, sec. 4, sub-sec. 10, defines a High Court and gives it the same meaning as is assigned to it by the Criminal Procedure Code in reference to proceedings against European British subjects. That simply means the High Court of Judicature at Fort William in the present case.

Then, sec. 29 of the Act enacts that “an inventor may institute a suit in the District Court against any person who, during the continuance of an exclusive privilege acquired by him under this part in respect of an invention, makes, sells or uses the invention without his license, or counterfeits or imitates it.” Then it goes on to limit the defence in such a suit. Sub-sec. 2 says: “The suit shall not be defended upon the grounds of any defect or insufficiency of the specification of the invention, or upon the grounds that the original or any subsequent application relating to the invention or the original or any amended specification, contains a wilful or fraudulent misstatement, or upon the ground that the invention is of no utility.” Sub-sec. 3 provides that:— “Nor shall it be defended upon the ground that the Plaintiff was not the inventor, unless the Defendant shows that he him self is the actual inventor or has obtained from the actual inventor a right to make, sell or use the invention, or to counterfeit or mitate it, as the case may be.” Sub-sec. 4 provides that “nor shall it be defended upon the ground that the invention was not new, unless the Defendant or some person through whom he claims has, before the date of the delivery or receipt of the application for leave to file the specification, publicly or actually used in some parts of British India or of the United Kingdom the invention or that part of it with respect to which the exclusive privilege is alleged to have been infringed.”

Then, under sec. 30, it is provided that any person may apply to a High Court (that is, as defined in sub-sec. 10 of sec. 4) for a rule to show cause why the Court should not declare that an exclusive privilege in respect of an invention to be specified in the rule has not been acquired under Part I of the Act by reason of all or any of the defences that are shut out under sec. 29. The sections are not very skilfully or accurately drawn, but, I think, on the whole, that the legislature intended that these defences should not be raised in an action for infringement of an exclusive privilege but must be raised under seas. 30 and 31 when the various objections mentioned before fall. It follows that the Defendants cannot raise these defences in this suit. However, Mr. Knight applies for a rule under sec. 30. He is entitled to a rule in the matter and to raise therein all the defences specified in his written statement.

I adjourn the case* to come on with the rule which will raise the defences contained in the written statement and the suit will stand over till a fortnight after the Christmas vacation.

I will reserve the costs of to-day.

Messrs T.H Wilson & Co., Attorneys for the Plaintiff.

Messrs Pugh & Co., Attorneys for the Defendant.

P.R.C