MONSANTO COMPANY v.

CORAMANDAL INDAG PRODUCTS (P) LTD

A. FACTS

• Two patents were granted to Monsanto Company under the repealed Patents and Designs Act,
1911.
• One patent was granted on March 1, 1966.
• The other patent was granted on February 20, 1970.
• The plaintiff originally filed the case with reference to both the patents.
• The suit was ultimately confined to the granted in February, 1970 as the period of the other patent
granted in March 1966 expired during the pendency of the suit.
• Plaintiff was the patentee of inventions entitled
“PHYTOTOXIC COMPOSITIONS” - patent number 104120 dated March 1, 1966
“GRASS SELECTIVE HERBICIDE COMPOSITIONS”- patent number 125381 dated February
20, 1970.
• Plaintiff said, and this is very important, “THE ACTIVE INGREDIENT MENTIONED IN THE
CLAIM IS CALLED “BUTACHLOR”. It suggested, without expressly saying it that the Plaintiff’s patents
covered Butachlor also.
• It came to the notice of the plaintiff that the defendant was attempting to market a formulation of
Butachlor covered by the said patents.
• The plaintiff wrote to the defendant drawing their attention to the existence of the patent in his
favor. Some correspondence ensued.
• Sample tins of “Butachlor- 50” manufactured by the defendant were purchased by the plaintiff and
were produced along with the plaint.
• According to the plaintiff, the legend on the tins containing the substance manufactured by the
defendants showed that what was sold by the defendants was nothing but a reproduction of the
plaintiff’s patented formulations.
• The formulations of the defendant were sent to Shri Ram Institute for analysis and they were said
to contain the chemical “Butachlor Chemical, formula for which is 2 Chloro 2’ 6’ -Diethyl -N-
(Butoxymethyl) Acatanilide.”
• Plaintiff alleged that the defendant had infringed their patents by selling formulations covered by
them.
• The plaintiff sued for an injunction to restrain the defendant from infringing their patents by
the manufacture or sale of the infringing formulations. The Plaintiff also asked for an account etc.
• The defendant made counter claim seeking revocation of the patents.

B. JUDGEMENT

• Weeds are a menace to food crops, particularly crops like rice which belong to the grass variety.
• Research has been going on for years to discover a weed killer which has no toxic effect on rice,
that is to say, a Herbicide which will destroy the weeds but allow rice to survive without any deleterious
effect. For long the research was futile.
• But in 1966-67 came a break through. A Scientist Dr. John Olin discovered CP53619 with the
formula ‘2-Chlore-2’,6’-Diethyl-N-(ButoxyHMethyl)- Acetanilide’ which satisfied the requirement of a weed
killer which had no toxic effect on rice.
• The annual report of the International Rice Research Institute for 1968 state, “Weed control
in rice was an important part of the Agronomy program. The first agronomic evidence of the
efficacy of granular - trichloroethyl styrene for the selective control of annual grasses in
transplanted rice was obtained at the Institute. Another new accession, CP53619, gave excellent
weed control in transplanted flooded and non-flooded, upland rice.” It was further stated “CP53619
at 2 and 4 k.g./ha a.i. appeared at least twice among the 20 best treatments” and “the most outstanding
new pre-emergence herbicide was 2-chloro-2’, 6’-diethyl-N- (butoxymethyl)-acetanilide (CP 53619).”
• The annual report of the International Rice Research Institute for 1969 shows that the
herbicide CP 53619 came to acquire the name of Butachlor.
• The learned counsel of the plaintiff has expressly admitted the fact that –
“THE ACTIVE INGREDIENT MENTIONED IN THE CLAIM IS CALLED ‘BUTACHLOR’” which
suggests that Butachlor was covered by the Plaintiff’s patents. But the circumstance now admitted that
no one, neither the plaintiff nor anyone else, has a patent for Butachlor.
• Dr. Dixon, Chemist of the plaintiff company, after explaining the use of an emulsifying agent, in
answer to a direct question, whether his company claimed any patent or special knowledge for the
use of any particular solvent or particular emulsifying agent, in the formulation in their patent, had
to admit that they had no such patent or special knowledge.
• He further admitted that the use of solvent and emulsifying agent on the active ingredient was
one of the well-known methods used in the pesticide industry to prepare a marketable product.
• He admitted that Butachlor was a common name and that the Weed Science Society of America
had allotted the common name. He stated that “Machete” was the brand name under which their
company manufactured Butachlor.
• He admitted that though his company did not claim a patent for Butachlor, they claimed a
patent for the process of making a Butachlor ‘emulsifiable concentrate’ to be used as a Herbicide
composition for rice.
• Pursued further in cross-examination, he was forced to admit that they used kerosene as a
solvent for Butachlor and an emulsifier manufactured by a local Indian company as an
emulsifying agent. He then proceeded to state that he claimed secrecy with regard to the manufacture
of their formulation. When he asked further whether the secrecy claimed was with regard to the solvent or
with regard to the stabilizer, he answered in the negative.
• He finally admitted that his secret was confined to the active ingredient Butachlor about which as
we know there is no secret
• We, therefore, see that Butachlor which was the common name for CP 53619 was discovered,
even prior to 1968 as an Herbicide possessing the property of nontoxic effect on rice.
• The formula for the Herbicide was published in the report of the International Rice Research
Institute for the year 1968 and its common name Butachlor was also mentioned in the report of the
International Rice Research Institute for the year 1969.
• No one patented the invention Butachlor and it was the property of the population of the world.
• Before Butachlor or for that matter any Herbicide could be used for killing weeds, it had to be
converted into an emulsion by dissolving it in a suitable solvent and by mixing the solution with an
emulsifying agent.
• Emulsification is a well-known process and is no one’s discovery.
• In the face of the now undisputable fact that there is no patent for or any secrecy attached
to Butachlor, the solvent or the emulsifying agent and the further fact that the process of
emulsification is no new discovery, the present suit based on the secrecy claimed in respect of
the active agent Butachlor and the claim for the process of emulsification must necessarily fail.
• Under Section 64 (1) (d), a patent may be revoked on the ground that the subject of any claim of
the complete specification is not an invention within the meaning of the Act.
• Under Section 64 (1) (e), a patent may be revoked if 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 date of the claim, etc.
• Under Section 64 (1) (f), a patent may be revoked if the invention so far as claimed in any claim
of the complete specification is obvious or does not involve any inventive step having regard to what was
publicly known or publicly used in India or what was published in India before the priority date of the claim
(the words “or elsewhere” are omitted by us as the patents in the present case were granted under the
Indian Patents and Designs Act, 1911, i.e., before the Patents Act 1970)
• It is clear from the facts narrated by us that the Herbicide CP 53619 (Butachlor) was publicly
known before Patent Number 125381 was granted. Its formula and use had already been made known to
the public by the report of the International Rice Research Institute for the year 1968. No one claimed any
patent or any other exclusive right in Butachlor.
• To satisfy the requirement of being publicly known as used in Clauses (e) and (f) of Section 64
(1), it is not necessary that it should be widely used to the knowledge of the consumer public. It is
sufficient if it is known to the persons who are engaged in the pursuit of knowledge of the patented
product or process either as men of science or men of commerce or consumers. The section of
the public who, as men of science or men of commerce, were interested in knowing about
Herbicides which would destroy weeds but not rice, must have been aware of the discovery of
Butachlor.
• There was no secret about the active agent Butachlor as claimed by the plaintiff since there was
no patent for Butachlor, as admitted by the plaintiff.
• Emulsification was the well-known and common process by which any Herbicide could be used.
• Neither Butachlor nor the process of Emulsification was capable of being claimed by the plaintiff
as their exclusive property.
• The solvent and the emulsifier were not secrets and they were admittedly not secrets and they
were ordinary market products.
• From the beginning to the end, there was no secret and there was no invention by the plaintiff.
• The ingredients, the active ingredient, the solvent and the emulsifier, were known; the process
was known, the product was known and the use was known.
• The plaintiff were merely camouflaging a substance whose discovery was known through out the
world and trying to enfold it in their specification relating to Patent Number 125381.
• The patent is, therefore, liable to be revoked.