References to Another Specification

1If it appears to the Controller that the invention is claimed in a claim of any other complete specification referred to in s 13(1)(b), the Controller may direct that a reference to that other specification shall be inserted by way of notice to the public in the applicant’s complete specification unless the applicant shows that the priority date of his claim is not later than the priority date of the claim of the other specification or amends the specification to the satisfaction of the Controller. (Patents Act 1970, s 18(2).

2The Controller need not look into the validity of the prior specification while directing the reference. In some cases, it may lead to a reference to an invalid specification. If the applicant makes a request or if the Controller is satisfied that the objection has not been removed within the period specified in r 29(2), a date shall be fixed for hearing and the applicant shall be given at least 10 days’ notice of the date so fixed. After the hearing or without a hearing where the applicant desires not to be heard, the Controller may specify or permit such amendment of the specification, as made to his satisfaction, and may direct that reference to such other application be inserted in the applicant’s specification unless the amendment is made or agreed to within such period as the Controller may fix. (Patents Rules 2003, r 30.)

3If the Controller directs that a reference to another specification shall be inserted in the applicant’s complete specification, such reference shall be in the following form: (Ibid, r 31.)

... Reference has been directed, in pursuance of section 18(2) of the Patents Act, 1970, to the specification filed in pursuance of application No…

4If the invention is anticipated by prior publication under s 13(1)(a) and the other complete specification was published on or after the priority date of the applicant’s claim, the provision detailed above shall apply in the same manner as they apply to a specification published on or after the date of filing of the applicant’s complete specification. (Patents Act 1970, s 18(3).)

5The real purpose of a reference ‘is to give the public such information as they ought to have about the general situation in a form as complete and as accurate as it can be’. (See Ford Motor Co Ltd’s Application (1971) RPC 269, p 272, [1971] FSR 261, p 264.) It need not be a disclaiming reference. Such reference shall not be of guidance in determining the issue of infringement. (See MEP Studdert’s Application (1952) 69 RPC 338.)

6A reference is made to earlier patents or specifications to overcome the objection of prior claim or prior publication. A reference restricts the scope of a claim and prevents the latter patentee from alleging a protection wider than what he is actually entitled to. The object of the reference, which is usually made in the interest of the public, is not to preserve or assist third party rights, but to protect the public from being misled in the absence of such a reference. If the Controller is satisfied that the governing idea or the basic principle of an invention for which an application is made, has already been claimed in an earlier patent, then a reference to that earlier patent should follow. (See Hopkin’s Patent (1910) 27 RPC 72.)

7The reference inserted in a specification may be general or specific in nature. The Controller may insert a general reference ‘for the purpose of preventing the later patentee from alleging his invention is wider that that which he is entitled to claim, both in his own interests in order that his specification may not be invalidated by excessive width of claim and in the interests of the public, on the ground that the public are entitled to know what the patentee is entitled to claim and to have a fair description of the existing state of knowledge’. (Daniel Adamson & Co Ltd and George Kerfoot’s Application (1933) 50 RPC 171, p 174.) A specific reference may be inserted ’to warn the public and to call attention to the relationship existing between the invention described and claimed in the specification in which such reference appears and the invention described and claimed in the letters patent the subject of such specific reference’. (Ibid.)

8A specific reference serves the purpose of bringing out the relationship between the inventions disclosed in two specifications. (Ibid.) Such a reference is made to make the specification clear and definite and to ensure safe use of the patents by the public by disclosing the existence of the prior patent. A specific reference should be inserted where ‘its absence would lead to confusion with regard to the real nature of the invention and would put to risk the person reading the specification into believing that the discovery included or involved the discovery already protected by an undisclosed patent’. (Wakfer and Peck’s Application (1915) 32 RPC 199, p 201.)

9Under s 18(2) of the Patents Act, the Controller may, if it appears that the invention is anticipated by prior claiming, direct that a reference to the other specification shall be inserted by way of notice to the public. The applicant will be able to avert such an insertion being made in his specification if:

(a) he can show that the priority date of his claim is not later than the priority date of the claim of the other specification; or (b) the complete specification is amended to the satisfaction of the Controller.

10Where the invention in the former specification reveals a new departure from the prior art and the latter specification follows it, it will be necessary to record the departure from the new art and a reference to the former specification must be made in the latter specification. (See George Baker’s Application (1934) 51 RPC 145, p 146.) However, it will not be necessary for the Controller to make references to accurately describe the state of the art in the applicant’s specification. (See British Celanese Ltd Application (1933) 50 RPC 247, pp 248-249.) A reference would be ordered if the real substance of the opponent’s invention as described and claimed in its prior patent has been incorporated in the applicant’s specification. (See Sir John Dewrance’s Application (1932) 49 RPC 424, p 425.) Specific references should generally be made ’not only to patents which prevent the user of the patent in question, but also to the patent which might imperil the monopoly rights of the owners of the patent in question by virtue of their casting doubts upon the sufficiency, the novelty or the subject matter of their invention’. (See Ucar’s Patent (1922) 39 RPC 269, p 276.)

11Under s 19(1), the Controller is empowered to make specific reference to another patent, where the applicant’s patent cannot be performed without substantial risk of infringement of a claim in another patent. Specific references are made by citing the patent number of the earlier patent. The applicant may avoid such a reference being made in his specification if:

(a) he is able to show to the satisfaction of the Controller that there are reasonable grounds for contesting the validity of the said claim of the other patent; or (b) the complete specification is amended to the satisfaction of the Controller.

12The fact that revocation proceedings are pending in respect of the prior patent will not bar a reference of the same in the applicant’s patent. But if such proceedings result in the revocation of the prior patent, the Controller may delete the reference to such a patent from the applicant’s application. (Patents Act 1970, s 19(2).) However, if the reference were inserted on the ground that the specification of the prior patent was a publication of closely related matter to which, in the public interest, attention ought to be directed, the revocation of the patent would have no bearing upon the necessity of the reference. (See Hickman’s Patent (1932) 49 RPC 443, p 444.) It is not proper to order a specific reference to a revoked patent for the express purpose of introducing a reference to an American specification. (See Rinfrett’s Application (1919) 36 RPC 21; British Celanese Ltd’s Patent (1932) 49 RPC 283, p 287.)

13References may also be made in the form of disclaimers. In one case, where the specification of the earlier patent to which reference was made in the latter patent and was disclaimed, was so vague as to leave the reader in genuine doubt as to what it disclosed, the effect of such a disclaimer would be to render the earlier patent in suit ambiguous and invalid on that ground. (See British Celanese Ltd v Courtaulds Ltd (1933) 50 RPC 259, p 284 (CA).) Where a specific reference is inserted in a specification followed by a disclaimer, the disclaimer should state as clearly as possible the precise matter disclaimed. (See Société des Usines Chimiques Rhône-Poulenc’s Application (1933) 50 RPC 230, pp 231, 232.)