Adaptations, Improvements and Analogous Use

1An adaptation or an improvement of a known process of making an article can be the subject matter of a new patent. It is not enough to show that the purpose is new or that there is novelty in the application, so that the article produced is in that sense new, but there must be 'some novelty in the mode of application'. Two of the early cases on this point, Indian Vacuum Brake Co Ltd v ES Luard AIR 1926 Cal 152, p 153 and Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978), both rely on the words of Lord Davey, "novelty in the mode of application" in Rickmann v Thierry (1896) 14 Pat Ca 105. In Indian Vacuum Brake Co v E S Luard (1925) (p 4 and 7) the Calcutta High Court recorded that in citing the rule in Rickmann v. Thierry, Lord Davey said: "It is not enough that the purpose is new or that there is novelty in the application, so that the article produced is in that sense new, but there must be some novelty in the mode of application". Applying the principles laid down in the cases cited the Court held that the patent ought to be revoked.

2In Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978) (para 52) the Supreme Court recorded the rule in Harwood v. Great Northern Rly. Co. that "a mere application of an old contrivance in the old way to an analogous subject, without any novelty or invention in the mode of applying such old contrivance to the new purpose, is not a valid subject-matter of a patent", and applied the rule to the case at hand.

3The British courts have held that novelty can exist in the adaptation of a known process to the making of an article which is different from that contemplated by the inventor of the process. Lindley, L.J. had observed in Gadd & Mason v. Mayor of Manchester (1892) 9 R.P.C. 516 at 525: (quoted in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd (1969) RPC 395, p 415 (CA) and upheld by the House of Lords in Mills & Rockley (Electronics) Ltd v Technograph Printed Circuits Ltd [1971] FSR 188 (HL).)

A specification which discloses a principle and applies it to one thing will not necessarily invalidate a subsequent patent for the application of the same principle to another thing. It may or may not do so, and the question in each case must be decided on the same principles as those applicable to the question of subject-matter. In considering subject-matter, novelty is assumed; the question is whether, assuming the invention to be new, it is one for which a patent can be granted. In considering novelty, the invention is assumed to be one for which a patent can be granted if new, and the question is whether on that assumption it is new. Has it been disclosed before? If there is an earlier specification for that very same thing, the second invention is not new; but if the two things are different, the nature and extent of the difference have to be considered. The question then becomes one of degree.