Prior Public Use

1An invention may not be considered as new if it was put to prior public use. Though the Patents Act makes prior secret use in India a separate ground for revocation, it excludes secret use for the purpose of determining lack of novelty. (Patents Act 1970, s 64(1)(l).) The purpose of s 64(1)(e) is to protect prior users. (Ibid, s 64(2)(a).) A person who is already manufacturing an article or has previously manufactured it, or had put it into use, should not be stopped from doing what he had done before. The grant of a patent should be curtailed where it can result in prohibiting prior users of the article from continuing to use such an article. This would be the case even if the prior user did so in complete ignorance of the scientific technology involved in the invention. The protection will be available to him even if he had manufactured the article by chance and later found out that it had particular advantages or was useful for particular purposes. If another person invents a process for manufacturing the same thing, the latter person will not be entitled to stop the prior user from doing what he was doing before. In the words of Lord Denning, the test would be: ‘If this patent were granted, would it stop the prior user from doing what he was doing before?’ (R v Patents Appeal Tribunal, ex p Beecham Group Ltd [1973] QB 318, p 327, (1973) RPC 157, [1972] FSR 604 (CA).)

2Where the invention claimed was a new product, dealing with that product by way of trade, whether by buying it or selling it with a view to profit or making it for the purposes of sale, will constitute ‘public use’ as stated by the House of Lords in Bristol-Myers Co (Johnson’s) Application: ([1974] FSR 43, p 65, (1975) RPC 127 (HL).)

The right of a trader to go on dealing by way of trade in any man-made substance in which he had dealt before, without impediment by a monopoly in that substance granted to any other person, was not dependent upon his knowledge of its composition or how it could be made. If he had in fact dealt in that substance he had ‘used’ it; his ignorance of these matters was irrelevant to the question of his use. Nor was his right to go on dealing in it dependent upon his disclosure to the public the composition of the product or the means of making it, or giving to the public the means of finding that out for themselves.

3In the case of an article which is manufactured and sold, if it is possible for the purchaser, upon an inspection of it, to ascertain its components or the main principles of construction, such disclosure will amount to publication by prior user. (See Stahlwerk Becker AG’s Patent (1919) 36 RPC 13 (HL), per Lord Shaw of Dunfermline, cited in Monsanto Co’s Application [1971] FSR 170, p 183, (1971) RPC 153.) If the members of the public are able to obtain information about the invention by analysis, say in the case of pharmaceuticals by reverse engineering, it will be sufficient to amount to prior use. Thus, anything that is used or has been used by the public cannot be the subject matter of a monopoly. No patent shall be granted for inventions taken out of public use, processes and products already made available to the public. (See Merrell Dow Pharmaceuticals v HN Norton & Co Ltd (1995) RPC 233, p 238 (CA).) Public use, in other words, is use by which an invention is made available to the public. A matter that is publicly used does not mean actual use by the public. It refers to ‘use in a public manner and not secretly’. (Lallubhai Chakubhai Jarivala v Shamaldas Sankalchand Shah AIR 1934 Bom 407, p 417. See also Monsanto Co’s Application [1971] FSR 171, (1971) RPC 153.)

4If the manufacturing or selling of any article gives the public knowledge about the article, it will amount to prior use of the article. It is not required to show that through such use the public has acquired knowledge of the invention. In the context of infringement, it would amount to use of an invention even if it is used badly. (See Union Carbide Corpn v BP Chemicals Ltd (1999) RPC 409, p 419 (CA), where the use of an invention was in the context of infringement.) The intention of the user is irrelevant. Thus, fortuitous use of a product, without any deliberate intention, would still amount to prior use. (See also Bristol Myers Co (Johnson’s) Application [1974] FSR 43, p 50, (1975) RPC 127 (HL).) Even non-commercial use for the private purpose of the user, where the user derives a practical benefit, is sufficient to found an objection based on prior user, so long as the user is overt, in the sense of being exposed to public view. (See Windsurfing International Inc v Tabur Marine (Great Britain) Ltd (1985) RPC 59, p 78.) Prior use which defeats a patent need not be habitual; even a single use will suffice. (See Bristol-Myers Co (Johnson’s) Application [1974] FSR 43, p 68, (1975) RPC 127, p 159.)

5In Lallubhai Chakubhai Jariwala v Chimanlal Chunilal (1935) the Bombay High Court recorded that “A use of the invention for the purposes of trade may constitute a prior user which invalidates the patent” and that “In order, however, for the sale to constitute sufficient evidence of public user it should be open and in the ordinary way of business”, and continued: “That is the English law, and, with due respect, I do not agree with the Appeal Court that on this point there is a difference between the law in England and Section 38 of our Act. But as that is the view of the Appeal Court, I am bound to follow it; and I must, therefore, hold that the sales of the betel-nuts in public did’ not amount to a public user of the invention on account of the nature of the article treated by it.” It recorded that according to the view of the Appeal Court “the quantity of the goods sold may be immaterial, as the secret of the process cannot be detected, whatever may be the quantity of the goods sold.” (para 13)

6Samples sent to prospective customers, the disclosure of which was not made a subject of confidence, before the date of the patent with a view to obtain orders for the goods when they become patented will amount to a prior use. (See Laguerre’s Patent [1971] FSR 320, p 335, (1971) RPC 384, 399 (CA). See also Lallubhai Chakubhai Jariwala v Chimanlal Chunilal & Co AIR 1936 Bom 99, p 111.) Free distribution of an article before the date of patent can also amount to a prior use. Even the gift of a single unit can constitute anticipation of the invention. (See Fomento Industrial SA Biro Swan Ltd v Mentmore Manufacturing Co Ltd (1956) RPC 87.) Public distribution of samples of the product (produced by a particular process) in the course of trade before the priority date will amount to prior use of the process claim irrespective of whether it would have been possible to ascertain the process was from the product. (See Gore & Associates Inc v Kimal Scientific Products Ltd (1998) RPC 137, p 147.)

7The provision deals with commercial dealing and will not affect demonstration of an invention for the purpose of obtaining finance or for seeking licences. (See Vax Appliances Ltd v Hoover Plc [1991] FSR 307, p 317. See also Bristol Myers Co (Johnson’s) Application [1974] FSR 43, (1975) RPC 127 (HL), a case decided under s 32 of the UK Patents Act 1949 which had a similar provision for public use.) If the manufacture was followed by immediate sale outside the country, it would not amount to prior use. (See Wikmanshytte Bruks AB’s Application (1961) RPC 180, p 182. Section 64(1)(e) requires prior use only in India.) However, where the patent is for a process or for a product as made by a process described or claimed, the importation into India of the product made abroad by that process shall constitute knowledge or use in India of the invention on the date of the importation. (Patents Act 1970, s 64(2)(b).)

8The Patents Act excludes secret trials for the purpose of determining the state of the art. Experiment, research and trial of an invention must be done under the veil of secrecy as disclosure of information about the invention can jeopardise the rights in the invention. To this extent, the use of the words ‘secret trial’ and ‘secret use’ in s 64(2) will be sufficient to cover research, experiments and trials. Experiments should be interpreted to mean experiments with a view to discovering something not disclosed and not the ordinary method of trial and error which involve no inventive step and generally are necessary in applying any discovery to produce a practical result. The use of a patented invention solely for uses reasonably relating to the development and submission of information required under any law will not amount to infringement. Moreover, the working of an invention for the purposes of reasonable trial will not amount to anticipation under certain circumstances. (Patents Act 1970, s 32.) Thus, the use of terfenadine by volunteers in clinical trials, and the fact that the volunteers had made the acid metabolite in their livers and experienced its anti-histamine effects was not entertained as instances of its prior use. (See Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd (1996) RPC 76 (HL).)

9In Standipack v Oswal Trading Co (1999), on an application for an interim injunction, the Delhi High Court held that “The documentary evidence on record proves and establishes that construction of the said pouch was publicly known and used in India before the date when the patent was granted in favour of the plaintiff on 11.10.1990 and even before the application filed by the plaintiff on 11.4.1989 alongwith provisional specifications.” It held that “The said report further indicates that the sale of the pouches was not in small quantity but pouches with similar construction and layers were available and sold in the market in lakhs prior to the date of patent. Thus it is crystal clear that the patent was pre-published, publicly known and used in India before the priority date of claim.” (para 9)