Secret Trial and Secret Use Exceptions

1Section 64(2) provides for two categories of specific exceptions which shall not be taken into account in determining lack of novelty and lack of inventive step. It provides the exceptions to cll (e) and (f) of s 64(1).

2In considering the issue of lack of novelty or lack of inventive step, no account shall be taken of any personal document or secret trial or secret use involving the invention. This is similar to s 25(5) of the Patents Act which prohibits the Controller to take account of any personal document or secret trial or secret use for the purpose of determining novelty and obviousness in opposition proceedings. Secret use can be raised as a defence to lack of novelty to negate anticipation. If the invention is publicly known or made available to the public consequent to a secret use, such secret use shall not be taken into account for determining the state of the art. The test would be to see if the secret process was being carried out with the assistance of people who were not bound by a pledge of secrecy. (See Ganendro Nath Banerji v Dhanpal Das Gupta AIR 1945 Oudh 6, p 10, followed in Bombay Agarwal Co v Ramchand Diwanchand (1952) AIR 1953 Nag 154, p 164.) In Bombay Agarwal the Nagpur High Court held that “The test of publicity is whether or not the secret process was being carried out with the assistance of people who were not bound to secrecy.” (para 53)

3The expression ‘personal document’ was introduced into s 64(2) by the Patents (Amendment) Act 2002. A personal document would mean any document which is not disclosed to the public and any document which, even if disclosed, was meant to remain confidential. Thus, disclosure made in a book that was neither sold nor circulated could not be relied upon for the purpose of proving anticipation. (See Otto v Steel (1886) 3 RPC 109, 31 Ch D 241.)

4As stated earlier, 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 over the invention. The expressions ‘secret trial’ and ‘secret use’ in s 64(2) will be exclude research, experiments and trials from being considered for determining the state of the art. Clinical trials may not amount to anticipation by use in certain circumstances. (See Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd (1996) RPC 76 (HL).) Though ignorance of the fact of use may be irrelevant to prove prior use, it may be relevant to secret use. The test for secret use is subjective. (See R v Patents Appeal Tribunal, ex p Beecham Group Ltd [1973] 1 All ER 627, p 638 (CA).) Secret use before the priority date within India can however be a ground for revocation under the Patents Act. (Patents Act 1970, ss 64(1)(l) and 64(3).)

5In the case of a patent for a process or for a product as made by a process, the importation into India of the product made abroad by that process shall normally constitute knowledge or use in India of the invention. But an exception is made where the importation is for the purposes of reasonable trial or experiment.