The State of the Art

1The introduction of the expression ’the state of the art’ into the Patents Act imports a larger concept than the idea conveyed by anticipation that existed in the Act. The state of the art refers to all the information which is in the public domain. The provisions on anticipation under the Patents Act were similar to those that existed under the UK Patents Act 1949. But the UK Patents Act 1977 no longer relies on the concept of anticipation. Instead, it statutorily introduced the concept of ’the state of the art’. For all practical purposes, the subject-matter which is anticipated may be understood as that which forms a part of the state of the art. The notion behind anticipation is that ‘it would be wrong to prevent a man from doing something which is merely an obvious extension of what he has been doing or of what was known in the art before the priority date of the patent granted’. (See Windsurfing International Inc v Tabur Marine (Great Britain) Ltd (1985) RPC 59, p 77.) The fact that the public did not know how the process worked or what resulted as the final product is irrelevant for considering the state of the art. Thus, a person is entitled to do that which is old, namely that which has been described in a prior published document, and be confident that he would not be infringing the patent of another. (See Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd (1994) RPC 1, p 13 (Patents Ct).)

2To form a part of the state of the art there is no need for the information to be put to actual use. The mere fact that it was available and was capable of being used by the public is sufficient. The possibility of accessing the information by a person will determine whether it formed a part of the state of the art, even if ’the public has not recognised their potential or taken advantage of them’. (See Woven Plastics Products Ltd v British Ropes Ltd [1970] FSR 47, p 58.)

3Section 2(1)(l) states that the date at which the novelty is to be assessed is the date of filing of the patent application with the complete specification, ie the priority date. The same principle is followed by the UK Patents Act and the EPC. Section 11 of the Patents Act enumerates the principles for ascertaining the priority dates of claims of a complete specification. The state of the art includes information that is in the public domain before the priority date. Though the priority date is usually the date of filing the patent application, there are instances where the priority date is calculated from a previous date. (Patents Act 1970, s 11(2).) Under the Patents Act, a patent may be held to be invalid due to the applicant’s own acts and disclosures which destroy novelty. (Ibid, s 11(3A).) Thus priority date is relevant not only for assessing novelty but also for exploiting the invention without jeopardising any potential patent.

4The Patents Act neither defines the term ‘anticipation’ nor does it detail what would amount to anticipation of an invention. Rather, it explains a host of statutory exceptions to anticipation which are nothing but indicators of what will not form a part of the state of the art. (Ibid, ss 29 to 34.) The Patents Act also details a list of documents which may be searched by the examiner for determining anticipation by publication. (Ibid, s 13.) Thus, the idea of expressly mentioning the exceptions to anticipation negatively explains what would amount to the state of the art.

5In the absence of a statutory explanation of the expression ‘state of the art’, despite its introduction into the Patents Act by the Patents (Amendment) Act 2005, it would be beneficial to see how state of art has been understood in the United Kingdom. Section 2(2) of the UK Patents Act defines the constituents of the state of the art as:

... (2) The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way.

6This provision is more detailed compared to the definition in art 54(2) of the EPC which reads:

… (2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

7Both of the above definitions rely extensively on the explanation of the phrase ‘made available to the public’. It will be beneficial to study the expression ’the state of the art’ from the view point of the abovementioned English and European definitions, as it encompasses everything that is ‘made available to the public’ by ‘written or oral description, by use or in any other way’. It is submitted that the idea conveyed by the above definition will be sufficient to include the two broad headings of ‘publicly known or publicly used’ and ‘published in India or elsewhere’ which appear in ss 64(1)(e) and 64(1)(f) of the Patents Act.

8Under the Patents Act, the determinants of ’the state of the art’ include a variety of things. The state of the art includes every kind of information made available to the public. The UK Patents Act uses the expression ‘all matter’ and enumerates it to include ‘a product, a process, information about either, or anything else’. An invention is a piece of information and making the matter available to the public requires communication of the information. (See Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd (1996) RPC 76, p 86 (HL).)

9According to Terrell, three questions which revolve around the expression ‘made available to the public’ have to be considered in resolving the issue of lack of novelty: (Terrell on the Law of Patents, fifteenth edn, 2000, p 157.)

(1) to whom must the relevant ‘matter’ be made available?
(2) what ‘matter’ has been made available? and
(3) does that ‘matter’ make the invention available?

10Prior public knowledge is an all-encompassing concept which includes prior publication in any document and prior use. Section 64(1)(e) employs the expression ‘publicly known’ along with the expression ‘publicly used’ and limits the scope of what is publicly known to the territory of India. Thus, for the purpose of determining whether the invention claimed in the complete specification is new or not, s 64(1)(e) considers two concepts of ‘publicly known or publicly used’ (prior public knowledge or use) and ‘published…in any document’ (prior publication). Any matter or information which forms a part of the above two categories will be regarded as anticipated and will form a part of the state of the art. In other words, any matter or information so far as it pertains to the invention that is claimed in the complete specification will not be regarded as new if the same was publicly known or public used in India before the date of priority of the claim or if the same was published in any document anywhere in the world.

11The definition of ’new invention’, which can be regarded as a tool for determining novelty, would appear to limit the scope of testing lack of novelty by omitting prior public knowledge. (Patents Act 1970, s 2(1)(l).) ‘Prior public knowledge’ can also bring within its scope the existence of any oral evidence which may affect the novelty of an invention. This limitation introduced by s 2(1)(l) will exclude oral evidence for determining lack of novelty. Compare the ground of revocation for lack of novelty under s 64(1)(e) with the ground of revocation under s 64(1)(q), which is also based on the concept of lack of novelty. Section 64(1)(q) deals with anticipation by knowledge and allows for proving the same by oral evidence. The two concepts of ‘prior knowledge or use’ and ‘prior publication’ mentioned in s 64(1)(e) will however be subject to the exceptions contained in s 64(2) and ss 29 to 34 of the Patents Act.

12The phrase ‘what was publicly known or publicly used in India…or what was published in India or elsewhere’ appears in both ss 64(1)(e) and 64(1)(f). Prior knowledge or use and prior publication represent the two broad sources for determining ’the state of the art’. As stated above, the phrase ‘made available to the public by written or oral description, by use or in any other way’ in the UK Patents Act will include the two concepts of prior publication and prior use which are used to determine the lack of novelty under s 64(1)(e). But the expression is broader than the twin concepts of prior publication and prior use employed in s 2(1)(l). The concept ‘made available to the public’ also includes what is ‘publicly known’ which does not figure in s 2(1)(l).

13Any information which would come under the two broad headings of ‘published in India or elsewhere in any of the document referred to in s 13’ and ‘publicly known or publicly used’ will amount to ‘anticipation by disclosure’ and ‘anticipation by use’ respectively.

14In Merck Sharp and Dohme v Glenmark Pharmaceuticals (2015) the Division Bench of the Delhi High Court held that “prior art is judged with reference to material that is made, published or made public on the priority date of the suit patent.” (para 71)

15In F Hoffmann-La Roche v Cipla (2009) the Division Bench of the Delhi High Court held that “The phrase ‘public domain’ and ‘state-of-the-art’ have therefore to admit of a wide scope given the legislative intent in introducing the above definition by the Amendment Act, 2005”, and that “A statement made by the Applicant while prosecuting a patent application in any country would certainly be a relevant material to be considered.” (para 70)