'Made Available to the Public'

1The phrase ‘made available to the public’ is not defined under the Patents Act, but the phrase has been used and understood in the definition of ‘published’ under the UK Patents Act 1949. (But the phrase ‘made available to the public’ appears in s 90(1)(iii) of the Patents Act 1970 in a different context.) The phrase also appears in the speech of Lord Parker in Bristol-Myers Co’s Application, a case decided under the UK Patents Act 1949: (UK Patents Act 1949, s 101(1) reads: … ‘published’, except in relation to complete specification, means made available to the public; and without prejudice to the generality of the foregoing provision a document shall be deemed for the purposes of this Act to be published if it can be inspected, as of right at any place in the United Kingdom by members of the public, whether upon payment of a fee or otherwise.) ((1969) RPC 146, p 155. See also PLG Research Ltd v Ardon International Ltd [1993] FSR 197, p 226.)

…if the information, whether in documentary form on in the form of the invention itself, has been communicated to a single member of the public without inhibiting fetter that is enough to amount to making available to the public…

2Section 130(1) of the UK Patents Act defines published in a similar manner:

... ‘published’ means made available to the public (whether in the United Kingdom or elsewhere) and a document shall be taken to be published under any provision of this Act if it can be inspected as of right at any place in the United Kingdom by members of the public, whether on payment of a fee or not; and ‘republished’ shall be construed accordingly.

3The courts in United Kingdom have held that the expression ‘made available to the public’ should be given a like interpretation as the definition of ‘published’ under s 101 of the UK Patents Act 1949. Thus, what is ‘published’ will form a part of the state of the art. (See PLG Research Ltd v Ardon International Ltd [1993] FSR 197, p 226.) ‘Made available to the public’ neither requires the matter to be made available to a particular person nor any person to actually receive such matter. It also does not require the person receiving the same to understand it. In the case of a written description, what is made available to the public is the description; it is not relevant whether such description is read. In the case of a machine, it will be irrelevant whether the machine was operated in public. (See Lux Traffic Controls Ltd v Pike Signals Ltd (1993) RPC 107, pp 134-35.) To come within the ambit of the expression, even a book kept in a dark and dusty corner of a library would suffice. (Ibid, p 133.) The existence of German specifications in the library of the Patent Office, where they were unreservedly accessible to every one, will be conclusive evidence of a prior publication. (See Harris v Rothwell (1887) LR 35 Ch D 416, p 431, (1887) 4 RPC 225.)

4But the Patents Act excludes personal documents, secret trial or secret use for the purpose of s 64(1)(e). (Patents Act 1970, s 64(2)(a).) The accessibility of the matter will be crucial to determine whether it was made available to the public. (See G01/92 Availability to the Public [1993] EPOR 241, p 243. The above case was decided in the context of art 54(2) of the EPC which states that the state of the art shall be held to comprise everything made available to the public. It was held that it is the fact that direct and unambiguous access to some particular information is possible that makes the information available, whether or not there was any reason for looking for it.) If the matter published was obtained without, and published without, the patentee’s consent, or was contained in a personal document, it will not be considered as made available to the public. (Patents Act 1970, s 29(2)(a).) (Ibid, s 64(2)(a).) Thus, a French book kept in an inner room of the British Museum, though referred to in the catalogue under the name of the author in the public reading room, was held not to be sufficient publication of the material found in the book, to become a part of the public stock of common knowledge. (See Otto v Steel (1886) 3 RPC 109, p 113, 31 Ch D 241.) Secret use cannot be taken into consideration for determining novelty. But a separate ground of revocation is available for secret use in India. (Patents Act 1970, s 64(1)(l).) Though the status of a recipient of the information is not important, it will be relevant to determine whether such recipient was free in law and equity to use the knowledge which it obtained for any purpose for which the recipient wished to use it. (See Strix Ltd v Otter Controls Ltd (1995) RPC 607, p 629.)