This article is written by Deepshikha Sarkar.

Why is a prior art search conducted?

The rise in the number of patents in last decade in India may be attributed to the change in the Indian Patent System on 1st January 2005, which was the day India signed the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement and consequently Sec 25 of the Patents Act 1970 was amended in order to introduce an “integrated system” of both pre-grant and post-grant opposition.

Grounds of Pre-grant opposition

Any person any person, including a third party unrelated to the patent applicant may file an opposition before the grant of a patent (as per Sec 25 of Patents Act 1970).

The Opposing Party may file such an opposition on one or more of the following grounds as enlisted under section 25(1)(a) to (k) of the Patent Amendment Act, 2005:

• Wrongfully obtaining the invention

• Anticipation by prior publication

• Anticipation by prior date, Prior claiming in India

• Prior public knowledge or public use in India

• Obviousness and lack of inventive step

• Nonpatentable subject matter

• Insufficiency of description of the invention

• Non-disclosure of information as per the requirement or providing materially false information by an applicant

• Patent application not filed within 12 months of filing the first application in a convention country

• Non-disclosure/ wrong mention of the source of biological material

• Invention anticipated with regard to traditional knowledge of any community, anywhere in the world.

The grounds mentioned in Sec 25 (c) and (d) talk about the anticipation of prior publication, or prior date claiming in India or prior public knowledge in India. If these grounds are to contend in the Pre Grant Opposition then the Opposing party needs to do a “Prior Art Search” to substantiate his or her claim.

In the case, General Tire And Rubber Company V Firestone Tyre And Rubber Company Ltd Sachs LJ summarized the law in anticipation of prior publication as follows;

“To determine whether a patentee\’s claim has been anticipated by an earlier publication it is necessary to compare the earlier publication with the patentee\’s claim. The earlier publication must, for this purpose, be interpreted as at the date of its publication, having regard to the relevant surrounding circumstances which then existed, and without regard to subsequent events. The patentee\’s claim must similarly be construed as at its own date of publication having regard to the surrounding circumstances then existing. If the earlier publication, so construed, discloses the same device as the device which the patentee by his claim, so construed, asserts that he has invented, the patentee\’s claim has been anticipated, but not otherwise. In such circumstances the patentee is not the true and first inventor of the device and his claimed invention is not new within the terms of section 32(1)(e)\”. This corresponds to s 64(1)(e) of the Indian Patents Act.

For example, Companies may conduct prior art searches for prior art to invalidate intellectual property rights of competitors. The prior art search is also conducted by Patent examiners in the Patent Offices in the course of filings.

In patent opposition proceedings it is crucial to prove that the technology in question was a part of the prior art at the time of the patent application. It needs to be proved that a patented technology is not novel invention and documents proving the same are required.

Publicly Known/Use

Prior public knowledge is a ground for opposition to a patent in India. As the term “public knowledge” suggests, it means known by the public. If a product is already known by people patent cannot be granted for such a product. In Section 25(1)(d) even if a product is imported from outside and people in India do not know about the product but outside India, the product is known then in such a case it would be a ground for rejection of the application of a patent.

However, there is a difference between what is publicly known and what is published. While public knowledge can be a ground for rejection of the patent application, publication of the product without being publicly known cannot be a ground for rejection. Mere publication is not sufficient to establish public knowledge. On the other hand, public knowledge without publication can be a ground for rejection.

The \”publicly known or publicly used\” expression is a ground for the opposition of a patent application. Under the explanation paragraph to s 25(1)(d), importation into India before the priority date of a product made by the patented process would amount to public knowledge or public use, except where such importation was for the purpose of reasonable trial or experiment. While one of the grounds for the revocation of the patent under s 64(1)(e) is that the invention is not new, regard needs to be had as to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere.

There is a stark difference in this section pertaining to, what is ‘publicly known’ and just ‘published’. Just by plain publication, ‘public knowledge’ cannot be established. On the other hand, if something is known publicly it is automatically considered as publicly used even though it is not published in a document.

Prior Art Search

A patent application can be rejected if there exists, a patent of a product or there is a published patent application. Registered as well as published patents or any printed publication which potentially contains patentability of any claim in a patent application everything qualifies as “prior art”. It also needs to be explained as to how the prior art is pertinent. And this proof of pertinency is important not only for disproving lack of novelty or obviousness but also to substantiating other grounds like insufficient description in support of invention.

The filing Opposition may be used as a means to put before a controller printed publications or other information that might not be identified in a routine search during the examination.

The chance of success is dependent upon the strength of the written submissions and the particular matters raised. The Controller may or may not be persuaded that the matters raised affect the patentability of a patent claim.

If the Controller cites the prior art in the Opposition the Applicant has the option of arguing or even amending the specification, in response. As a result, the Controller may altogether refuse the patent claim or grant the patent with narrower claims. This has no concrete effect apart from elongation of the examination process.

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Optimizing Your Prior Art Search

STEP 1 – Identifying Keywords

It is important to know the proper keywords to find the relevant information. Common and obvious keywords should be avoided as they would produce a lot of irrelevant results which may render the search impossible.

For example, A search for “mosquito cream” may produce millions of hits. So instead ‘pest repellant’ (what else it is) or  ‘repelling insect’ (what it does) will produce considerably lesser results. Which are still not small numbers but they are likely to be more relevant, so one can usefully start searching here.

The search terms giving best results usually are technical in nature. For example, a search for external devices that pump blood around the human body required the crucial medical term ‘extracorporeal\’. If a person with zero medical knowledge conducted this research then, he would only be able to come across it when examining the results of other keyword searches. Hence it takes quite some number of preliminary searches to find apt keywords and do accurate searches.

STEP 2 –  Patent searching

Patent searching involves two skills

1. To come up with each and every patent document relevant to the Patent application after the patent search.

2. Interpreting these findings in the correct manner,

For many ideas, patent searching will be far more important than product searching.

STEP 3 –  Product searching

For many cases, patent searching will be far more important than product searching. This would be a relevant step as all the products which may be a part of Prior Art or a part of public knowledge may not necessarily be a patented. And hence it would not be found if only a patent search is run.  What are the present products available in the market, is a very important question to answer. Similar ideas and the products which solve the same problem are prior art. One should also of course search offline – in shops, books, periodicals, printed catalogues etc. Experts who have extensive knowledge in a particular field by, say, by having relevant long careers in the field can be the great source of information as their experience is invaluable.

Patent Public Search – Click here for the PDF

How is a prior art search relevant

Such searches may also be a means to prompt the controller to be more careful in considering the question of patentability or any other ground of non-compliance or identification of additional relevant documentation.

If the Opposition containing the prior art contention raises matters such that the Controller has reasonable grounds to believe that the application does not comply with the Patent Act or Patent Rules, the Patent may not be granted at all.

However, a third party\’s participation is limited. The third party\’s submission concerning prior art or protest is acknowledged by the Patent Office but no further information will be given as to action taken. Accordingly, the third party will be required to independently monitor the patent file to determine the outcome. The third party has no right of appeal if the patent is granted.

There might be disclosure of additional prior art, contraventions to Patent Rules and additional grounds for objection may arise because of the submissions. As a result of this mechanism, a third party may publicly dispute the patentability of a patent application.