Prior Public Knowledge

1Public knowledge need not mean widespread use to the knowledge by the public. To satisfy the requirement of being publicly known as used in cll (e) and (f) of s 64(1), it is not necessary that it should be widely used to the knowledge of the consumer public. All that is required is that ‘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’." (Monsanto Company v Coromandal Indag Products (1986) 1986 SCR (1) 120) Applying the rule, the Supreme Court 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.” The Court further held that “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.” (p 129)

2A mere publication will not be sufficient to show that an invention is publicly known. A matter may be publicly known even if it is not published in a document, if, for instance, it is publicly used. An invention may be publicly known by oral disclosure, written disclosure by document or by public use. The date of knowledge or use by any person other than the patentee is the date before the invention and not the date before the grant of the patent. (Bombay Agarwal Co v Ramchand Diwanchand (1952) AIR 1953 Nag 154 (DB); the last sentence is from Canadian General Electric v Fada Radio (PC), whose observations the Bench said it would “with the utmost deference, adopt as our own” (para 41).) The Bench recalled Lord Abinger in Carpenter v Smith that “the public use and exercise of an invention means a use and exercise in public, not by’ the public’, that is to say, that it should become a knowledge not confined to the claimant but to others.” It further held that “We might add that the practice of it by others would also disclose that amount of knowledge which would inhibit its being characterised as new” (para 48). To what extent knowledge anticipates an invention is a question of fact which will depend upon the facts and circumstances of each case. (Lallubhai Chakubhai Jariwala v Chimanlal Chunilal & Co AIR 1936 Bom 99, p 108.)

3An invention may be published even by an oral description. An invention can become ‘publicly known’ by a prior oral disclosure if the information about the invention was communicated to any member of the public who was free in law and equity to use it as he pleased. (See Humpherson v Syer (1887) 4 RPC 407, p 413.) If the public comes to know about an invention by any means, no subsequent patent shall be granted either to the true or first inventor or to any other person. This is based on the principle of disclosure, according to which a patentee of an invention cannot give as consideration to the public for the grant what the public already possessed. (Ibid. See also Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries AIR 1982 SC 1444, (1979) 2 SCC 511.)

4In Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978) the Supreme Court held that “Prior public knowledge of the alleged invention which would disqualify the grant of a patent can be by word of mouth or by publication through books or other media”, quoting Hindmarch: “If the public once becomes possessed of an invention ... by any means whatsoever, no subsequent patent for it can be granted either to the true or first inventor himself or any other person” (para 23).

5Even the sale of a single unit of an invention will amount to disclosure if the purchaser was free in equity and law to use it as he liked. (See Strackan & Henshaw Ltd v Pakcel Ltd (1949) 66 RPC 49, p 68 (HL).) If the product is sold before the date of the patent and the constituents could be determined with reasonable care and skill, it would amount to anticipation even if the constituents of the product were not actually detected. (See Miller’s Patent (1898) 15 RPC 205, pp 211-12.) The fact that invention was publicly available for inspection will not mean that the information pertaining to the invention was made available to the public. The use of a product makes the invention part of the state of the art only so far as that use makes available the necessary information. (See Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd (1996) RPC 76, p 86 (HL).)

6In Yahoo v Assistant Controller of Patents and Designs (2011) the Intellectual Property Appellate Board held that “There is no mention in the impugned order of the specific documents or any other evidence to show this invention was used on the internet in India before the priority date. To hold that this was public working, there must be clear evidence of public knowledge. Without such evidence of public knowledge just by using a catch-all phrase like ‘frequently used tool’ the patent cannot be rejected on this ground.” (para 16)