Anticipation by Prior Publication

1The fact that the invention claimed in a complete specification has been published before the priority date in any specification or any other document will be a ground for opposing the grant of a patent. (Patents Act 1970, ss 25(1)(b) and 25(2)(b)). But the ground that the invention was published before the priority date in any other document shall not be available where such publication does not constitute an anticipation under sub-ss (2) and (3) of s 29. The above grounds of opposition are similar in their content to s 64(1)(e) of the Patents Act. Under s 64(1)(e), a patent may be revoked on the ground that the invention so far as claimed in any claim of the complete specification is not new having regard ’to what was published in India or elsewhere in any of the documents referred to in s 13’. Sections 25(1)(b) and 25(2)(b) of the Patents Act provide for one of the four grounds on which an application or a patent can be opposed on the ground of lack of novelty. The other three grounds are contained in ss 25(1)(c) and 25(2)(c), 25(1)(d) and 25(2)(d), and 25(1)(k) and 25(2)(k).

2Any publication made before the date of priority of a claim in a complete specification may be opposed on the ground that the application or the patent lacked novelty. Sections 25(1)(b) and 25(2)(b) deal with two categories of prior publications. It contemplates publication:

…

(i) in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January, 1912; or (ii) in India or elsewhere, in any other document.

3The first category deals with specifications filed in the Indian Patent Office under the Indian Patents and Designs Act 1911 and the Patents Act 1970. This category deals with published Indian specifications. Thus any claim published in any specification filed in India since 1912 can be a reason for opposing an invention claimed in any claim of a complete specification. The second category is much broader and more inclusive. It deals with a publication made in ‘any other document’ in India or abroad. The expression ‘any other document’ must be read in the light of the matter disclosed in the first category. It encompasses any document published in any part of the world. Needless to say, it will include any published patent specification filed in any Patent Office anywhere in the world.

4First, the opponent has to satisfy that the relevant publication took place before the priority date claimed by the applicant or the patentee. Secondly, the opponent should show that the relevant publication relied upon by the opponent came under the two categories mentioned in ss 25(1)(b) and 25(2)(b). Thirdly, the subject matter of the claim should be covered in the prior publication.

5Sections 25(1)(b) and 25(2)(b) exclude two classes of publications for the purpose of determining anticipation. First, if the matter published earlier was obtained from the applicant or the patentee or his predecessor in title and published without his consent, such published matter cannot be used for determining anticipation in so far as the applicant or patentee is concerned, if it is shown that the applicant or the patentee learned about the publication before the priority date of his application and made the application as soon as reasonably practicable thereafter. (Patents Act 1970, s 29(2).) This will include applications made under the Patents Act as well as conventions applications. However, the above provisions shall not apply if the invention was commercially worked in India before the priority date of the claim, other than for the purpose of reasonable trial, either by the applicant or the patentee or any person who derives title from or with the consent of the applicant or the patentee. (Patents Act 1970, s 29(2).) Thus, if the prior publication was under the conditions mentioned in s 29(2), the applicant may be allowed to go ahead with the application in spite of the earlier publication. The applicant will have to satisfy the court that the above conditions exist. (See Monsanto Chemical Co’s Application (1942) 59 RPC 119, p 121.)

6Secondly, in the case of a complete specification filed in an application made by the true and first inventor or by a person deriving title under him, an invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of any other application for the same invention made in contravention of the rights of the true and first inventor or the person deriving title from him. Similarly, an invention will not be deemed to have been anticipated by reason only that the invention was used or published by another applicant after the date of filing of his application, without the consent of the true and first invention or the person deriving title under him, consequent to any disclosure of any invention by that applicant. The expression ‘by reason only’ implies that by that reason alone an invention shall not be deemed to have been anticipated. The expression necessitates some additional ground other than the reason mentioned in s 29(3), for an application or use or publication to amount to anticipation. (Patents Act 1970, s 29(3).)

7The documents mentioned in s 13, that may be looked into by an examiner to whom an application for a patent is referred to under s 12 for determining anticipation by prior publication, shall include the following:

(1) any specification filed in pursuance of an application for a patent made in India on or after 1 January 1912;
(2) any other complete specification made in India, other than the one mentioned in cl (1), published on or after the date of filing of the applicant’s complete specification and claiming a priority date earlier than that date; and
(3) any other document, other than the those mentioned in cll (1) and (2), published in India or elsewhere before the date of filing of the applicant’s complete specification.

8In Kudos Pharmaceuticals v Natco Pharma (2024) the Delhi High Court held at the interlocutory stage that “the priority date of the suit patent is prima facie irrelevant, while examining vulnerability on the ground of anticipation by prior publication and that, when Section 64(1)(e) is read with Section 13 of the Patents Act, what has to be seen is whether, prior to the date of filing of the complete specification of the suit patent, the asserted invention was published in India or elsewhere in any document.” (para 59)

9Kudos quoted Novartis that “The use of the expression ‘so far as claimed’, in Section 13(2) would, therefore, require identity in the extent of claim contained in the specification in the suit patent and in the specification of the prior art which is cited for the purpose of alleging anticipation by prior publication.” (para 58) It held that “It is obvious at a bare glance that the product compound 278 is not Olaparib” (para 61), that “there has been cherry picking of substituents” (para 63), and that “No case for anticipation by prior publication is also, therefore, made out.” (para 65)

10Publication implies that something that is published is ‘made available to the public’. As a prior publication includes a publication made in India or elsewhere, it would include documents in foreign language published in a foreign country. Thus, a foreign specification posted in a noticeable part of the Patent Office library where members’ search for information was held to be prior publication. (See Harris v Rothwell (1887) LR 35 Ch D 416, p 431, (1887) 4 RPC 225.) Even a document communicated to a single member will constitute prior publication to the public if there was no bar on that person to further disseminate the information contained in the document. (See Bristol-Myers Co’s Application [1968] FSR 407, p 414, (1969) RPC 146.) The courts have applied the test propounded by Bowen LJ in Humpherson v Syer, where he stated: ((1887) 4 RPC 407, p 413.)

I put aside questions of public use, and treat this as a question of whether there has been a prior publication; that is, in other words, had this information been communicated to any member of the public who was free in law or equity to use it as he pleased. Was Widmer a person to whom this communication had been made in a manner which left him free both in law and equity to do what he liked with the information? If so, the information of course, had been given to a member of the public, and there was nothing further to serve as consideration for any patent.

11In determining anticipation by prior publication, the nature of the document is immaterial. The information about the invention may be contained in a book which is not meant for sale. Display for sale in the bookshop or sending it to a bookseller to be sold will also amount to sufficient disclosure. “It is not at all necessary to establish the fact that one volume of that book (a foreign one sent to a bookseller to be published in the United Kingdom) has been sold, for I think that as soon as an inventor informs the public of what his invention consists, and prints it in a book which he sends to a publisher to sell, from the moment that the book is exposed for sale in the bookseller’s shop, there becomes, in point of law, a complete publication of the invention.” (Lang v Gisborne (1862) 31 Beav 133, p 135.) The definition of ’new invention’, removes any curb on the kinds of documents as it categorically refers to ‘publication in any document’. (Patents Act 1970, s 2(1)(l).) The documents will include those published anywhere in the world.

12Though the expression ‘published’ figures in the Patents Act, it has not been defined. Section 101 of the UK Patents Act 1949 defined the expression ‘published’ in the following manner:

‘Published’, except in relation to a 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 purpose of this Act to be published if it can be inspected, as of right at any place in the United Kingdom by the members of the public, whether upon payment of a fee or otherwise.

13The phrase ‘members of the public’ in the above definition has been understood to mean that an inspection could be made by an unrestricted group of people. This has given reasons to argue that if the right of inspection is restricted to persons who have to meet a particular qualification (technical staff of a particular company), it may be argued that the document was not made available to the public. (See Tecalemit Ltd’s Application [1967] FSR 387, p 390.) The expression ‘public’, however, does not require the inclusion of the whole world. (See Mooney’s Application (1927) 44 RPC 294 cited in Dalrymple’s Application (1957) RPC 449, p 450.) The above definition in the UK Patents Act 1949 restricts the availability of a document within the United Kingdom to the public. But the scope of the expression ‘published’ under s 64(1)(e) will be much broader, as it would include any document published anywhere in the world. If the matter is distributed with the object of spreading knowledge among interested parties, such dissemination will amount to a publication. (See Dalrymple’s Application (1957) RPC 449. See also Williams & Young’s Application (1943) 60 RPC 51, p 57, where it was held that certain reports of the British Cast Iron Research Association had been made available to the public. The reports were supplied to only 10 of about 350 manufacturing concerns who were members of the Association. Though the reports were marked ‘Private and Confidential’, they were intended and desired to be used by the members of the Association to whom they were sent.)