Construing the Prior Document

1The courts have devised various steps to determine what constitutes a prior document. The disclosure made in a prior document should be of such nature that it destroys the novelty claimed in the specification in issue. (See PLG Research Ltd v Ardon International Ltd [1993] FSR 197, p 218.) The document will be interpreted in a manner in which it would be understood by a notional skilled addressee. If the prior invention’s publication contains a clear description of, or clear instructions to do or make something that would infringe the patentee’s claim, it will be a case where the patentee’s invention lacks novelty and can be said to have been anticipated.

2If carrying out the directions contained in the prior inventor’s publication would inevitably result in something being made or done which, if the patentee’s patent were valid, constituted an infringement of the patentee’s claim, it is clear indication that the patentee’s claim has in fact been anticipated. If the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim cannot be said to have been anticipated, though it may fail on the ground of obviousness. (See General Tire and Rubber Co v Firestone Tyre and Rubber Co (1972) RPC 457, p 485 (CA).) Thus, to anticipate the patentee’s claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented. (See Flour Oxidizing Co Ltd v Carr Ltd (1908) 25 RPC 428, p 457; BTH Co Ltd v Metropolitan Vickers Electrical Co Ltd (1928) 45 RPC 1, p 24.)

3The antecedent statement must, in order to invalidate the subsequent patent, be such ’that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity for making further experiments’. In other words, the information given by the prior publication must be the same as that given in the subsequent patent. (See Hills v Evans (1862) 31 LJ Ch 457, p 463.) In the case of prior disclosure, the opponent should be able to point out a clear and specific disclosure in which the invention is fairly stated. There should also be a description of the use of the invention in such disclosure. A prior disclosure should be clear and evident. It should not be the case that the opponent is required to rely on a group of prior documents and put them together like a mosaic to ascertain the disclosure made in those documents. Where there is a substantial doubt as to whether there is anticipation on the evidence produced, the patent application should be allowed to proceed and the case should be left for a full hearing. (See Du Pont (EI) de Nemours (Dahlstorm and Bunting’s) Patent [1975] FSR 559, p 563, (1976) RPC 177, p 194 (CA).)

4In Lallubhai Chakubhai Jariwala v Chimanlal Chunilal (1935) the Court asked, “Was there in the first place sufficient publication, and did the document or documents so published and relied upon furnish sufficient knowledge ?” It held that “it is enough if the publication is accessible to the public without much trouble” and that “With regard to the sufficiency of the knowledge, the earlier publication must give the requisite knowledge clearly, and it is not enough that it merely gives the means of attaining such knowledge.” (para 10) The Court recorded that “It has been held in Hills v. Evans (1862) 31 L.J. Ch. 457, 468 that whatever is essential to the new invention must ... be read out of the prior publication. If further information and further discovery are required and difficulties have to be overcome before the desired result is finally arrived at and embodied in a form which would serve the uses of mankind, it cannot be said that the prior publication is an anticipation of the new invention.” (para 11) The Court concluded that “There was sufficient invention in the combination, and the combination has not been anticipated by prior publication.” (para 12)

5Prior publication can also be shown if the working of a prior specification, ie, carrying out the directions mentioned in a specification, would inevitably result in the claimed product. (See Bristol-Myers Company (Johnson’s) Application (1971) RPC 137, [1971] FSR 150, p 165.) In cases involving disclosure by a prior publication of a specification, the finding of the court must be based on what that disclosure as published in that specification would have suggested to the instructed reader and not on what would have been found to have happened if the process of that specification were carried out. A later process claim would be ‘anticipated in the strict sense if the result of carrying out a process described in a prior document in fact inevitably results in something fairly falling within that claim even if the description itself may not be sufficient to act as an anticipation alone’. (See Goodyear Tire & Rubber Co (Rinehart’s) Application (1970) RPC 127, p 133.) But where carrying out the directions in a prior publication for the production of a monohydrate salt resulted in the occasional production of a trihydrate salt, it will not be a case where prior publication is said to have been established. (Ibid.)

6It would amount to anticipation if it can be shown that the carrying out of the claim in an earlier document would result in the infringement of the claim alleged to have been anticipated. If the claim covers a number of alternatives, the alleged anticipation may not anticipate all those possibilities. However, if the alleged anticipation contains a direction to carry out at least one process which would result in infringement, then a case of anticipation may be said to have been established.

7The first step in deciding a case of anticipation would be for the court to construe the claim of the application without referring to the document which anticipates the claim. A claim of this nature must be construed ‘in the light of the disclosure made in the document as a whole and at no time should anyone construing the claims have an eye on the possible effect a particular construction may have in relation to prior art documents’. (See Coin Sales Corpn’s Application (1970) RPC 260, p 264.) The construction of a patent is the function of the court and is decided as a question of law. The court will have to construct an earlier document to see whether the subject matter of the specification is covered in the earlier document. The earlier document and the patentee’s claim must each be construed as they would be at the respective relevant dates by a reader skilled in the art to which they relate having regard to the state of art at the relevant date. But since the construction of an earlier document will inevitably involve technical material, the court must, by evidence adduced by the parties, put itself in the position of a person to whom the document is addressed ie, the person skilled in the relevant art at the relevant date. (See General Tire & Rubber Co Ltd v Firestone Tyre & Rubber Co Ltd [1971] FSR 417, p 443, (1972) RPC 457, p 485.) Once the earlier document and the patentee’s claim have been construed by the court in the light of technical evidence advanced, the meaning of the words and expressions used in the art and the question whether the patentee’s clam is new will be decided as a question of fact. (Ibid.)

8The publication must have been made before the priority date of the claim. The priority date will be the date assigned by the Patent Office. Once a priority date is assigned to a complete specification, it will be difficult for a court to alter it. There is no specific provision in s 25 by which the opponent may claim an alteration of the priority date. Even if a wrong date is assigned, the patent may be refused on the ground that it was obtained through misrepresentation in revocation proceedings. The opponent cannot raise this ground in an opposition proceeding but may bring the same to the attention of the Controller, who may in exercise of his powers enquire into the matter. However, if the priority of a convention application is not claimed in accordance with the Patents Act, it could be a ground for opposition under ss 25(1)(i) and 25(2)(i) of the Patents Act.

9Any written thing which is capable of being admitted as evidence will amount to a document within the meaning of s 64(1)(e), regardless of the material or substance on which the writing may be inscribed. An article without any writing on it, eg a box or a carton, will not be considered as a document. (See Wood & Co Ltd’s Application (1926) 43 RPC 377.) A document would include something in the nature of a description of the invention and not merely an example or model of the invention. (See Cyril Eustace Nicholas Alderton’s Application (1942) 59 RPC 56, p 60, per Morton J.) To qualify as a document, the subject matter should convey ‘information to anybody in the condition in which they were said to be when they were published’. (Ibid.) The important factor is the availability of the information and not the manner, time, place or language in which it is available. In deciding whether a document has been published, the nomenclature ascribed to the document will not in itself determine the nature of the document. Thus, if the document is disclosed by an association to a wide-range of non-members so as to nullify the effect of the injunction, ‘Not to be disclosed to non-members’, inscribed on them, such a disclosure cannot be regarded as ‘confidential’. (See Dalrymple’s Application (1957) RPC 449, p 451.)

10If the document amounting to prior publication was sent from one partner to another for the purpose of a design project which they had agreed to take up as a joint venture, such a transmission will not make the document ‘available to the public’. (See Gallay Ltd’s Application (1959) RPC 141, p 147.) A partner will be deemed to be under a duty of confidence not to disclose the information to others. (See James Industries Ltd’s Patent (1987) RPC 235. See also Gallay Ltd’s Application (1959) RPC 141, p 147.)

11An invention may be disclosed in books or documents published prior to the date of the patent. A disclosure of an invention in a document is sufficient by itself to constitute anticipation, without the need for actual use of the invention so disclosed by the public. (See Patterson v Gas Light & Coke Co (1877) 2 AC 239, p 244 followed in Bombay Agarwal Co v Ramchand Diwanchand (1952) AIR 1953 Nag 154, p 163-64.) In the case of disclosure of an invention in books, it will not be necessary for the book to be read or referred. Even a book accumulating dust in a remote library will be a part of the state of the art. (See Lux Traffic Controls Ltd v Pike Signals Ltd (1993) RPC 107, p 133.) But if it is proved that the book was not sold or circulated, a publication in such a book may not be fatal to the patent. (See Neiveli Ceramics and Refractories Ltd v Hindustan Sanitaryware and Industries Ltd (1976) IPLR 66, p 81, where a book made available in India in 1959 was held to kill the novelty of an invention.)

12Photographs may not follow the same rule as that of a written description, as it may need experts with the appropriate technical skills in a particular field to interpret them. (See Van der Lely NV v Bamfords Ltd (1963) RPC 61, p 71.) The same principle will apply in the case of catalogues and diagrams. (See Neiveli Ceramics and Refractories Ltd v Hindustan Sanitaryware and Industries Ltd (1976) IPLR 66, p 81.)

13The documents must be read on their own merit and it would not be appropriate to join together a number of documents, the combined reading of which will produce the effect of anticipation of an invention. Proving anticipation is not like solving a jigsaw puzzle where a person may collect a variety of information and try them out in different possibilities to make sense. Rather, the disclosure should be clear, specific and unambiguous. (See Lux Traffic Controls Ltd v Pike Signals Ltd (1993) RPC 107, p 134.)

14A mosaic of extracts taken from various annuals and treatises spread over a number of years cannot be used for proving anticipation. (See Pope Appliance Corpn v Spanish River Pulp and Paper Mills Ltd [1929] AC 269, pp 278-79, 281, (1929) 46 RPC 23.) But a group of papers, containing cross-references to each other, making a series of disclosure, will not be regarded as a mosaic of extracts and may be used for proving anticipation. (Sharpe & Dohme Inc v Boots Pure Drug Co Ltd (1927) 44 RPC 367, (1928) 45 RPC 153.) However, in the case of determining obviousness, unlike novelty, it is permissible to make a ‘mosaic’ out of the relevant documents, if such a mosaic can be put together by an unimaginative man with no inventive capacity. (See Mills & Rockley (Electronics) Ltd v Technograph Printed Circuits Ltd [1971] FSR 188, 193, (1972) RPC 346 (HL).

15As a general rule, the courts will construct the document as if the court had to construe it at the date of publication, excluding the information subsequently discovered. (See Ore Concentration Co v Sulphide Corpn Ltd (1914) 31 RPC 206, p 223. See also General Tire & Rubber Co v The Firestone Tyre and Rubber Co Ltd (1972) RPC 457, p 482, [1971] FSR 417, p 443 (CA).) In constructing the documents, the court may admit evidence for the purpose of explaining words or symbols of art for informing the court of relevant surrounding circumstances. Such construction will be done from the viewpoint of a person skilled in the art.

16Identifying the information conveyed by the document will be as important as identifying the document itself. The document will be seen through the eyes of a notional skilled addressee who has common general knowledge of a particular art. The notional skilled addressee is a person who represents the public. Being a notional entity, the skilled addressee may also be a team of men who possess technical knowledge and all the relevant arts to fully understand the import of the document. (See Tetra Molectric Ltd v Japan Imports Ltd (1976) RPC 547, p 583, [1974] FSR 439.) The skilled reader may require the language of the publication to be translated to him. He may also require the meaning of technical terms or unfamiliar ideas to be ascertained from a scientist. But once he has got this, he must be able to make the product from what is disclosed by the prior publication. (See Van der Lely NV v Bamfords Ltd (1963) RPC 61, p 71.)