Prior use and prior publication as obstacles on patenting of inventions

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While there are many different grounds on which a patent can be invalidated, the most common one is that the invention is found to be not novel or obvious in the light of the prior art. As the claims are used to define the scope of protection granted by a patent, this can only occur if the patent's claims are not novel or obvious. So, to get a patent invalidated, the first step is to locate documents that can be considered "prior art" against the patent's claims. Prior art basically means any disclosure of the contents of a claim, prior to the application for patent. A patent cannot claim something that already exists, nor can it claim something obvious. To determine this, patent examination always involves looking for prior art, earlier publications that show the invention is not new or is obvious.

One of the reasons that a patent system exists is to reward inventors for disclosing their invention to the public. This implies that an invention should be new, because otherwise the inventor would get a reward for telling us something we already know. An important aspect of the patent system therefore is the determination of novelty (and obviousness) of an invention. If examination reveals that an invention is not novel, the patent application is rejected. And even if the patent is granted, it can still be annulled by a court if the court finds that the invention wasn't novel after all.

The concept of novelty in patent law embodies the principle that only truly new inventions deserve patent protection. Novelty means "new compared to prior art"; it states the requirement that, to be patentable, an invention must somehow be different from all published articles, known techniques, and marketed products. At the time of filing of the application for a patent the invention must not already have been made available to the public. An invention is finding out something which has not been found by others. A patent represents a quid pro quo. The patentee as a result obtains a monopoly over his invention.

Whether an invention is a "new invention" (possesses novelty) in India is determined against the definition assigned under s 2(1)(l) of the Indian Patents Act 1970 ("the Act"), which states that "new invention" means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of the filing of the application with complete specification, i.e. the subject matter has not fallen in the public domain or form part of the state of art.

This excludes matter contained in other patent applications having an earlier priority date. Therefore, novelty is in fact a question of whether the invention has been anticipated by a previous patent, or publication, or by use. The anticipation could have occurred anywhere in the world. A new invention may consist of a new combination of all integers so as to produce a new or important result or may consist of altogether new integers. In Bishwanath Prasad Radhe Shyam v. Hindustan Metal Industries , the Indian Supreme Court held:

• The object of patent law is to encourage scientific research, new technology and industrial progress. The price of the grant of monopoly is the disclosure of the invention at the Patent Office, which after the expiry of the fixed period of monopoly, passes into the public domain.

• The fundamental principle of patent law is that a patent is granted only for an invention which must have novelty and utility. It is essential for the validity of a patent that it must be the inventor's own discovery as opposed to mere verification of what was, already known before the date of the patent.

• In order to be patentable, an improvement on something known before or a combination of different matters already known, should be something more than mere workshop improvement, and must independently satisfy the test of invention or inventive step. It must produce a new result, or a new article or better or cheaper article than before. The new subject matter must involve "invention" over what is old. Mere collection of more than one, integers or things, not involving the exercise of any inventive faculty does not qualify for the grant of a patent.

• To decide whether an alleged invention involves novelty and an inventive step, certain broad criteria can be indicated. Firstly, if the "manner of manufacture patented, was publicly known, used or practiced in the before or at the date of patent, it will negate novelty or "subject matter". Prior public knowledge of the alleged invention can be by word of mouth or by publication through books or other media. Secondly, of the alleged invention discovery must not be the obvious or natural suggestion of what was previously known.

The patent system denies the issue of a patent to inventions that were disclosed prior to the time an application was filed at the Patent Office on the ground of lack of novelty or anticipation. One of the conditions of the regime is that a patent may be granted only for an invention which is new or having novelty. Lack of novelty is referred to as anticipation. Novelty and anticipation are determined by reference to the language of the claim of the patent application. The grounds for opposition of a patent grant are almost the same as the tests for revocation of a patent once granted. Under s 64 of the Patents Act a patent will be revoked "where it is not novel". Under s 25 of the Act, the grant of a patent may be opposed on the ground of a lack of novelty after an application for a patent has been published and before the grant of a patent.


Anticipation Test

A claim can be anticipated in two ways. First, if the prior art describes something falling within its scope, then, assuming that the description is enabling, the claim is anticipated. In such a case it is not necessary to carry out any experiments or give evidence of what would have happened if the prior art were put into practice, because it already describes what it achieves. Expert evidence may be needed to explain the terminology used, because the prior art may be written in technical language which is different to that used in the patent. The patentee may decide that the only way to avoid anticipation, other than by amendment of his claims, is to demonstrate that, notwithstanding its disclosure, the prior art is not enabling. He can do this by proving that what is described could not be achieved on the basis of the disclosure. Such proof would be secured by expert testimony, perhaps supported in some cases by experiments.

The second way of proving anticipation is by showing that the inevitable result of carrying out what is described in the prior art would be a product or process falling within the scope of the claim. A disclosure which is capable of being carried out in a manner which does not fall within the claim, does not anticipate, although it may be a basis for an obviousness attack.

The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency.

There are two ways of proving anticipation, the enabling disclosure and the inevitable result route. The "inevitable result" route is in essence about anticipation by happenstance. The earlier proposal when carried out "just happens" to fall within the later claim, even though the earlier inventor had some different idea. If it is an inevitable consequence of carrying out the earlier inventor's proposal into effect then the later claim is bad. Otherwise the later inventor will be able to obtain a monopoly in relation to the new invention to the exclusion of the earlier inventor from carrying out his invention exactly as he proposed it should be done.

Standard of Anticipation

Novelty involves a comparison between the invention, in any of its embodiments, and the thing that is revealed by (a) prior publication, or (b) publicly known/use.

Prior Publication

Section 29 of the Act refers to prior art as that which was published before the claim of a completed specification in: (i) any specification filed for obtaining a patent in India on or after January 1, 1912; (ii) in India or elsewhere and also in any other documents. The only exception is where the applicant can prove that the matter published was taken from him and published without his consent and that he had applied for the patent as soon as reasonably practicable after knowing about the publication. However, this exception will not be available where the invention has been commercially worked in India otherwise than for the purpose of reasonable trial. In the General Tire case, Sachs LJ summarized the law on anticipation by prior publication as follows: "To determine whether a patentee's claim has been anticipated by an earlier publication it is necessary to compare the earlier publication with the patentee's claim. The earlier publication must, for this purpose, be interpreted as at the date of its publication, having regard to the relevant surrounding circumstances which then existed, and without regard to subsequent events. The patentee's claim must similarly be construed as at its own date of publication having regard to the surrounding circumstances then existing. If the earlier publication, so construed, discloses the same device as the device which the patentee by his claim, so construed, asserts that he has invented, the patentee's claim has been anticipated, but not otherwise. In such circumstances the patentee is not the true and first inventor of the device and his claimed invention is not new within the terms of section 32(1)(e)" (this corresponds to s 64(1)(e) of the Indian Patents Act).

Publicly Known/Use

The "publicly known or publicly used" expression is not a ground for the opposition of a patent application. Under the explanation paragraph to s 25(1)(d), importation into India before the priority date of a product made by the patented process would amount to public knowledge or public use, except where such importation was for the purpose of reasonable trial or experiment. While one of the grounds for the revocation of the patent under s 64(1)(e) is that the invention is not new, regard needs to be had as to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere. There is a distinction in this section as to what is publicly known and what is merely published. Mere publication is not sufficient to establish public knowledge. On the other hand, a thing is publicly known, without being published in a document, if it has been publicly used. The issue of public use and knowledge was examined by the Calcutta High Court in the case of Poysha Industries Ltd v. Deputy Controller of Patents and Designs . The main contention of the appellants in support of their opposition was that the invention has been publicly used in a part of India or has been made publicly known in any part of India. In support of their contention it was alleged that the appellants have been manufacturing and selling tin containers with crimped diaphragms to M/s Zandu Pharmaceuticals and another company since February 1960. They contended that the method used by the applicant for crimping the top portion of the container was common and known to the industry and did not require any particular technique or skill. However, since the appellants failed to establish that the invention claimed was used and known publicly, the appeal failed.

In Monsanto Co v. Coramandal Indag Products (P) Ltd. , it was held that:

"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 [s 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 plaintiffs since there was no patent for Butachlor, as admitted by the plaintiffs. 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 plaintiffs. 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 plaintiffs were merely camouflaging a substance whose discovery was known throughout the world and trying to enfold it in their specification relating to Patent Number 125381. The patent is, therefore, liable to be revoked".