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Petitioner: MUHAMMAD QUADIR HUSSAIN VS Respondent: CONTROLLER OF PATENTS AND DESIGNS, JUDGMENT
Court Name: Sindh High Court Judge(s): Saleem Akhter, Imam Ali G. Kazi Title:MUHAMMAD QUADIR HUSSAIN vs CONTROLLER OF PATENTS AND DESIGNS,
JUDGMENT
Reported As: 1990 MLD 11 Result: Petition allowed Judgment JUDGMENT ' SALEEM AKHTAR, J.--The petitioner holding a degree of Master of Science in Physics from University of Karachi engaged himself independently in research for separation of uranium isotopes in the field of nuclear physics. Having carried out research and experiments he claims to hone developed an economical and viable method for the separation of uranium-235 from natural uranium. The petitioner requested respondent No, 3 to permit him to demonstrate the formula which he has invented. Although meeting with Dr. Riazuddin did not materialize, by letter dated 31st July 1976 he requested the petitioner to submit resume of the thesis developed by him. This followed a meeting between the petitioner and Dr. Riazuddin at Karachi on 19/20, November, 1976, and, the matter was discussed between the petitioner and experts of respondent No, 3. It is claimed by the petitioner that the opinion of all the experts was that the original process developed by the petitioner for separation of the uranium isotopes was a major break in the field of Nuclear Physics. Considering the strategic importance and economic feasibility of the process the specific details were kept secret till its actual application. It has been alleged that in 1978 Pakistan Institute of Nuclear Science and Technology discussed the matter with the petitioner and the thesis was subjected to scrutiny and confirmatory tests by its experts who decided that experimental project be inaugurated under the guidance of the petitioner for separating uranium-235 from natural uranium by the process developed by the petitioner. The petitioner submitted approximate cost required for the project. The petitioner submitted a copy of the scientific paper to the President of Pakistan requesting that the proposal made in the paper may be urgently examined. In pursuance with the directive respondent No, 3 by letter dated January 21, 1979 requested the petitioner to submit a technical
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proposal. The petitioner first wanted to submit it personally but he submitted to respondent No, 3 in absolute confidence and on the specific understanding that all the proprietary interests therein shall remain with the petitioner. ' The petitioner also submitted Patent Application to respondent No, 1 which was received on 25-3- 1978 and numbered as Patent Application No,123/78. The application was accompanied with provisional specifications and complete specifications were submitted on 25-1-1979 and numbered as 17/79. After a long delay and several reminders respondent No, 1 informed the petitioner that the matter has been referred to the Ministry. However, on 3-12-1980 the petitioner's application was accepted and was published in the Gazette which remained pending and the petitioner submitted an application for extension of time dated 6-8-1981. In exercise of his power under section 5 (1) of the Patents and Designs Act 1911 respondent No, 1 post-dated it to 29-11-1979 and respondent No,1 made a reference to the Federal Government. Due to strategic importance of the process, the petitioner intimated that if required he would be willing to assign the invention to the Federal Government under section 21-A of the Act in order to keep the invention secret. However, no reply was received in that regard. The new process invented by the petitioner was notified in the Gazette of Pakistan dated 16-9-1981 as required by section 6 of the Patents and Designs Act 1911 and objections were invited to the grant of the patent to the petitioner. No objections were received within the period of four months fixed by the Notification. Accordingly respondent No,1 by his letter dated 27-1-1981 required the petitioner to pay necessary sealing fee which was deposited on 27-3-1982. Notice in the Gazette of Pakistan dated 3-2-1982 was also published stating that application for grant of patent rights to the petitioner had been processed, accepted and was ripe for sealing and the application was assigned serial No, 127545. After the sealing fee was paid the petitioner was delivered the impugned order dated 27-3-1982 that the grant of patent to the petitioner has been withheld in exercise of powers granted under section 79 of the Patents and Designs Act 1911. The petitioner entered in correspondence with respondent No,1 and ultimately on 23-6-1982 the petitioner received acknowledgement from respondent No,1 dated 27-3-1982 dispatched on 19-6-1982 informing him that the patent would be sealed under section 10 of the Patents and Designs Act 1911. As the patent was not received from respondent No,1 an appeal was preferred on 1-8-1982 to respondent No, 2 but it was kept pending and representation to the President and Chief Martial Law Administrator was also forwarded to respondent No, 2 but without any action. It has been alleged that one Ghulam Dastgir Section Officer of Ministry of Industries dealing with the grant of patents informed the petitioner that he had asked respondent No, 3 not to utilize the process of the petitioner without giving him due credit and he had directed to accept the application for grant of Patent. It has been stated that Col. Sabir Ali Shah the Deputy Secretary of the Ministry of Industries had informed the petitioner that respondents Nos.2 and 3 desired that the process should be kept secret. It has also been alleged that on acceptance of the patent application on 29-8-1981 respondent No, 2 had endorsed on the file of the petitioner that "he had received no instructions from the Ministry under section 21-A and the application is therefore being accepted." It has further been alleged that Ghulam Dastgir informed the petitioner on 4-12-1982 that from the discussion with respondent No, 3 he was of the view that respondent No,3 desired to utilise the invention of the petitioner. On 4-12-1983 Tirmizi the Deputy ' Secretary of Ministry of Industries confirmed that respondent No,3 was utilising the patent specifications of the petitioner and utilising his invention. As no reply to the petitioner's letters was received he issued a legal notice to respondents dated 3-6-1984 asking respondent No, 3 to refrain from utilising the process invented by the petitioner. As no action was taken the petitioner filed a suit in the Court of District Judge at Karachi being Suit No, 76 of 1984 for declaration, mandatory injunction and for recovery of damages in the sum of Rs, 20,000. It has been alleged that
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respondent No,3 in its written statement admitted that it has been using the invention of the petitioner but denied that the petitioner has suffered any damages. ' The respondents have filed their counter-affidavits. Respondents Nos.1 and 2 have pleaded that petition is not maintainable as the Federal Government has power to withhold the grant of the letters patent on the petitioner's application under Section 79 of the Patents and Designs Act 1911. The prerogative vested was saved by the subsequent legislations and was adopted in Patents and Designs Act, 1911. It has been pleaded that there is no failure on the part of the Controller to do what is required of him by the Act. The extraordinary decision by Federal Government to withhold the grant was in national interest. The petition suffers from laches as the impugned order was passed on 27-3-1982 and petition has been filed in 1985. It has been admitted that the petitioner had submitted his application for patent in respect of invention alleged to have been made by him and all the procedures were completed according to law. It has been denied that any admission was made in the written statement that respondent No,3 is using the process invented by the petitioner. ' The only ground for refusal to grant patent to the petitioner is that respondent No,1 invoking section 79 of the Patents and Designes Act, 1911 has exercised the prerogative and withheld the grant in favour of the petitioner. Section 79 reads as follows: " S.79. Savings for prerogative.--Nothing in this Act shall take away, abridge or prejudicially affect the prerogative of the (Central Government) in relation to the granting of any letters patent or to the withholding of a grant thereof." The Patents and Designs Act, 1911 is a complete Code providing for procedure for granting patent to an applicant which includes registration, scrutiny by the Patent Office, publication of the application, inviting objections from public, and deciding them. After all the formalities required under law have been complied with, opposition if any, raised by any party has been disposed of in favour of applicant and necessary fee has been paid, patent is granted to the applicant under section 10 of the Act subject to such conditions if any, as the A Federal Government thinks expedient. Where an applicant applies for grant of patent rights for his invention he has to undergo the exercise stated above and if all the conditions laid down in the Act are satisfied respondent No,1 is bound to cause the patent to be sealed with the seal of the patent office. Section 21-A however provides that inventor of any improvement in instrument or munitions of war may assign to the Federal Government all the benefits of invention and any, patent obtained or to be obtained for the invention. Such assignment may be with or without consideration. On such assignment being made all the benefits of the invention shall effectually vest in the Federal Government. Section 21 provides that a patent for all intents and purposes binds the Government subject to the conditions laid down therein one of which is that the Government may after the application has been made after notice to the applicant or patentee, make, use or exercise the invention for the services of the Government on such terms and conditions as agreed upon. And any agreement between the applicant or patentee and the third party relating to the making, using or exercising the invention shall be in operative. Where dispute arises between the applicant patentee and the Government on this issue a procedure for its settlement has been provided under Section 21 (3) of the Act. The Government has been empowered to make, use or exercise the invention for the services of Government without obtaining previous licence, subject to payment of compensation. Another important condition in exercising such power is that the invention should be required for the "services of the Government". Such provisions are available in similar statutes of U.K. Where section 55 (1) of the Patents Act 1977 provides that the act performed must be for the "services of the Crown." Commenting upon it W.R. Cornish in his book Intellectual Property. Patent, Copyright, Trade Marks and Allied Rights observed at page 258 as follows: "The acts performed must be "for the services of the Crown." They do not have to be done by a government department. Anyone authorized to act on the Crown's behalf is included, but still the
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aim must be to fulfil a Crown service, whether the benefit goes to Crown or to members of the public. By the Crown is meant the executive government of the United kingdom and its services are those supplied by Crown servants under the direction of a minister. This excludes services provided by other agencies of government or supported by public finance; the nationalized industries, independent authorities such as the Post Office, local government, universities and so forth. It does, however, cover the supply of anything for foreign defence purposes (i,e, arms to foreign governments), the supply of scheduled drugs in the Health Service, and research into, and supply of atomic energy." Reference has been made to Pfizar v. Ministry of Health (1965) A.C. 512. In Pakistan such powers are exercised by the executive authority of the Federation which vests in the President, exercised by the President 'either directly or through officers subordinate to him, in accordance with the Constitution" (Art. 90). The power conferred by section 21 of the Act has its own limitations. One of them being that the invention is used for the services of the Government. This restricts the arbitrary use of the invention. It can be used for national security, defence purposes and similar services which if obtained and used by others is likely to adversely affect the safety and security of the country. A patent protects technological inventions and is considered an `Intellectual Property'. In spite of the protection afforded to the patentee under the Act the Government in supreme interest of the country can use the patent to the exclusion of others, This power can be exercised after the application for grant of patent is made or patent is granted. So far this power has not been exercised by the Government. However, exercise of such power even before the grant of patent does not debar the applicant from obtaining the patent. ' In the background of this legal position we have to examine whether the Federal Government can claim any prerogative and in exercise of such prerogative can grant be withheld. Respondents Nos.1 and 2 who have filed their affidavits have admitted that if prerogative under section 79 would not have been exercised patent right would have been granted to the petitioner. Relevant paragraph is reproduced as follows: "The patent would have been sealed under Section 10 of the Patents and Designs Act 1911 and would have been forwarded to the Petitioner if the Federal Government had not exercised the prerogative under section 79 of the Act." ' Mr. Khalid M. Ishaque the learned counsel for the petitioner has contended that respondent No, 1 has no prerogative right under law in force in Pakistan and therefore the question of exercising such right under any statute does not arise. ' In Britain prerogative is a privilege of the Crown attached to it and it was considered to be superior to the law in force. This was the state of affairs in the past when monarchs ruled the country but with the march of time when the concept of democracy and parliamentary legislation gained strength, prerogative though created by Common Law could not be equated above the Law. By such jurisprudential progress the concept of prerogative receded and gave way to the legislative enactments. The prerogative of the Crown thus started diminishing and was merged in or curtailed by the provisions of law. As pre-partition India was governed by British Crown the concept of prerogative crept in its jurisprudence and the administration of law. However after independence in 1947 the concept of prerogative could not be continued in the same fashion as exercised by the Crown earlier; The country came to be governed by the law made by the Parliament which is a sovereign body exercising all powers conferred on it by the Constitution and the law and no right, privilege of pre-eminence can be claimed by any individual, authority or functionary of the Government unless conferred by law. Mr. Khalid M. Ishaque the learned counsel has referred to Halsbury's Laws of England vol 8, IV Edition para 889 where meaning of royal prerogative has been given as follows:
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"889. Meaning of "royal prerogative".--The royal prerogative may be defined as being that pre- eminence which the Sovereign enjoys over and above all other persons by virtue of the common law, but out of its ordinary course, in right of her regal dignity, and comprehends all the special dignities, liberties, privileges, powers and royalties allowed by the common law to the. Crown of England." ' And further that: "The prerogative is thus created and limited' by the common law, and the Sovereign can claim no prerogatives except such as the law allows, not such as are contrary to Magna Carta or any other statute, or to the liberties of the subject." ' The learned Counsel for the petitioner has referred to Administrative Law by Sir William Wade, Sixth Edition in which at pages 240 and 241 it has been observed as follows: "In earlier times the Crown wielded extensive powers over its subjects under the royal prerogative, which was part of the common law. In the seventeenth century the Crown had power to imprison people and to impose taxation in its own discretion. But in the course of constitutional history the Crown's oppressive powers have been stripped away, and for administrative purposes the prerogative is now a much attenuated remnant. Numerous statutes have expressly restricted it, and even where statute merely overlaps it the doctrine is that the prerogative goes into abeyance. It is, in any case, defined by law, that is to say by judicial decisions. Prerogative powers may also, it seems, be atrophied by mere disuse. Thus the Crown used to employ the prerogative writ ne exeat regno to prevent a person leaving the country; but the courts have now held for many years that this remedy is granted only to a creditor for the restraint of an absconding debtor. Although the Crown had been deprived of its former powers of invading the rights and liberties of subjects, there are still a few prerogative powers which can have unwelcome legal effects on individuals. By declaring war the Crown can prevent trade with the enemy and can intern enemy aliens--though in wartime these matters are normally covered by legislation. The Crown has special powers in foreign affairs, e.g. Under the doctrine of act of state, which is discussed later. But there is no prerogative power to enforce treaties. The prerogative, in fact, has ceased to be a significant source of administrative power as against the citizen. It still comprises power to take action to preserve the peace, to grant legal favours such as corporate personality or peerage, and it comprises many constitutional powers, such as the power to summon and dissolve Parliament and to assent to bills. "Prerogative power" is, properly speaking, legal power which appertains to the Crown but not to its subjects. Blackstone explained the correct use of the term. ' It signifies, in its etymology (from prae and rogo) something that is required or demanded before, or in preference to, all others, And hence it follows, that it must be in it's nature singular and eccentrically; that it can only be applied to those rights and capacities which the king enjoys alone, in contradiction to others, and not to those which he enjoys in common with any of his subjects; for if once any one prerogative of the Crown could be held in common with the subject, it would cease to be prerogative any longer? ' In General Manager North Western Railway v. Sher Muhammad PLD 1966 Kar. 483 the question came up for consideration whether the salary of a Government Servant was a bounty of the Crown, Qadeeruddin, J. (as he then was) after referring to the cases of I.M. Lall's PLD 1948 PC150 and Mehrajuddin PLD 1959 SC 147 observed as follows: "Common Law is no longer the reservoir of our law and Article 130 of the present Constitution completes its disconnection as a source of our, law. It enjoins an important change in the administration of law, as follows: "No Court shall have any jurisdiction that is not conferred on it by this Constitution or by or under the law."
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' The principle of the bounty of prerogative of the Crown is now foreign to the concept of the Islamic Republic of Pakistan. The sovereignty of Pakistan does not belong to him--See the Preamble of the Constitution of 1962. The earlier judgments of the superior Courts now correctly reflect the outmoded law. It is, therefore, respectfully suggested that I.M. La11's case in so far as it seeks to enforce the Scottish or Common Law principle of the bounty or prerogative of the Crown, is no longer good law in Pakistan. ' In Pakistan v. MRs, A.V. Issacs PLD 1970 S.C. 415 at 436 it was observed that: ' The concept that it is in the prerogative of the Crown to dismiss its servants at its pleasure was never really asserted even in England, for, the Courts there preferred to base this claim on firmer grounds of public policy, but so far as the Indian sub-continent was concerned there was never any scope for invoking such a prerogative. The prerogative of the Crown in India was controlled by the various Government of India Acts and, at any rate, after the enactment of the Act of 1935 it was, by reason of section 2(1) thereof, to prevail "except in so far as may be otherwise provided by or under" the said Act. The prerogative of the Crown is only such as the law allows and if the law had curtailed that right then the law should prevail." ' In the present case the Crown does not exercise any authority in the territory of Pakistan. The Parliament created by the Constitution is the supreme law making authority. The concept of prerogative of the Crown as embodied in British Jurisprudence is now alien to our system. Where a particular situation is covered and governed by a definite law the prerogative powers even if existed before shall stand superseded or curtailed and law shall prevail. The law and prerogative cannot co-exist nor march side by side. The prerogative if it can be said to exist is subordinate to law. In Laker Airways, Ltd. v. Department of Trade, (1977) 2 All E.R. 182, Lord Roskill L.J. At page 206 observed as follows. "I do not think that the Attorney-General's argument that the prerogative power and the power under the municipal law can march side by side each operating in its own field is right. The two powers are inextricable interwoven. Where a right to fly is granted by the Authority under the Act by the grant of an air transport licence which has not been lawfully revoked and cannot be law-fully revoked in the manner thus far contemplated by the Secretary of State, I do not see why we should hold that Parliament in 1971 must be taken to have intended that a prerogative power to achieve what is in effect the same result as lawful revocation would achieve, should have survived the passing of the Act unfettered so as to enable the Crown to achieve by what I have called the back door that which cannot lawfully be achieved by entry through the front." ' However Lord Denning in a broader manner favored striking down of the prerogative and observed: "Seeing that the prerogative is a discretionary power to be exercised for the public good, it follows that its exercise can be examined by the Courts just as any other discretionary power which is vested in the executive." It is thus established that question of existence of prerogative can be investigated by the Court in the same manner as the question of existence of any power, authority, jurisdiction or function of the Government can be examined. Mainly so because the discretionary power as conferred by law is to be exercised for the public good. Considering the present case in the light of the above observations we find that firstly respondent No,2 does not have any prerogative of any nature as claimed by it. The Constitution and law are the source of power and jurisdiction to be exercised by respondent No,2. The Patents and Designs Act 1911 was framed when the Crown was the Supreme Head of the British Empire and the same terminology of prerogative has continued till today although neither Crown's pre-eminence nor its prerogative is attached to or inherited by Respondent No, 2. The Act provides a comprehensive procedure for grant of patent rights which governs the claim of an applicant and power to grant it or not. The Act further confers discretionary
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power on the Government to use the invention to the exclusion of everyone for the service of the Government. In these circumstances to take refuge under the prerogative powers would amount to using back door method to defeat the provisions of law. The law has supremacy over prerogative, and over-rides it. The historical background of legal evolution in our country confirms that the prerogative of the Government is nothing but its discretion conferred by law which has to be exercised in accordance with the recognized and well-settled principles. The exercise of discretion should not be arbitrary and where a particular situation is governed by clear and unambiguous provisions of law, the same cannot be frustrated or rendered in effective under the garb of exercise of discretion. The discretionary power cannot cross the boundaries of law which governs the field. In Manthar Ali Jatoi v, Government of H Sindh 1988 PLC 344 Naimuddin, C.J. (as he then was) after exhaustively reviewing various authorities and judgments of the Superior Courts observed: "The competent authority may have discretion in the matter still the discretion has to be exercised on well-settled principles, that is, it should be exercised in good faith having regard to all relevant considerations and for…
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