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This article is written by Samyukta Shankar who is pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

While it is true that with development in innovation and technology patents seem to be a rather new affair, its roots can be traced back to ancient Greek and Roman colonies. A patent, in essence, refers to an exclusive right granted to the owner of the patent who is also known as the inventor. It allows the inventor to ensure that nobody exploits their intellectual property arbitrarily or gains an unauthorised advantage from the same. In simple words, a patent grants monopoly to the inventor over their invention. Almost every famous or novel invention that we see today would most definitely have a patent attached to it.

However, a question that arises is whether every invention or everything thats created can be patented? The answer to the question is no. Only those inventions that have a useful purpose, that are novel and are non-obvious can be patented. To give a very simple example a ballpoint pen when first created could be patented and in fact, it was patented by John J Loud. But when the same was modified by changing the ink colour and creating a red ballpoint pen, the same could not be patented as it wasnt a novel or non-obvious invention.

It is in this context that the concept of anticipation becomes relevant as it ensures that inventions that are new and innovative are only protected. Think of it this way, Patents come under the larger umbrella of Intellectual Property. The reason its accorded that kind of protection/importance is because of the fact that some person used his/her effort, time and money to create it. If those works/technologies/innovations are protected without ascertaining the novelty/non-obviousness of the same they not only would be devoid of any value but would also infringe upon the rights of those who have put in there time and effort. 

Novelty in patents 

The reason that novelty is given so much importance is to ensure that only those inventions that are an actual product of intellect rather than a mere copy are encouraged. This means that in order to be patentable an invention should be different from the already existing and known inventions or methods, it must bring something new and non-obvious. In the case of Blackey vs. Lathem it was held that To be new in patent sense, the novelty must show invention. The subject mater must involve invention over what is old. The Indian Patents Act, 1976, on the same lines under Section 2(l), addresses and defines new inventionas an invention that has not been anticipated in any country or document before the date of filing, i.e., the subject matter has not fallen into public domain or that it does not form part of the state of the art.

In furtherance of the same in the case of Bishwanath Prasad Radhey Shyam vs. Hindustan Metal Industries the Supreme Court held that:
To decide whether an alleged invention involves novelty and an inventive step, certain broad criteria can be indicated. Firstly, if the “manner of manufacture patented, was publicly known, used or practiced in the before or at the date of patent, it will negate novelty or “subject matter”. Prior public knowledge of the alleged invention can be by word of mouth or by publication through books or other media. Secondly, the alleged invention discovery must not be the obvious or natural suggestion of what was previously known.  

Prior art and anticipation 

Section 2 (l) of the Indian Patents Act, 1976 is a rather interesting section as it encompasses a lot of patent law concepts though the same havent been defined expressly in the said act. Despite patent being a territorial right, which is to say that merely because an invention is patented in country X the same does not de facto mean that it will be patented in country Y, the said section acknowledges inventions made across the world by including the concept of prior art or  state of the art.

These concepts have not been defined in the Patent Act, 1976. Prior art refers to existence of the invention or the work before the invention having already been filed for a patent. It serves as an evidence that the invention was already known to the public. The concept of anticipation gains importance here as it serves to ensure that patent claims of an invention that lacks novelty must be rejected. Anticipation refers to the disclosure regarding the invention made by another or the Inventors disclosure. 

The Indian Patents Act, 1976 again does not define what anticipation is or what constitutes  anticipation, but it does, under Section 13, place an obligation upon those claiming a patent to ensure that the work that they are claiming for patent has not;

  • Been anticipated by publication in India (Section 13 (a)).
  • Been claimed in India previously before the filing of the application (Section 13 (b)).
  • Been anticipated by publication elsewhere (Section 13 (2)).

Furthermore, the Indian Patent Act, 1976 under Chapter VI deals with anticipation by laying down certain exceptions. 

  1. Section 29 address anticipation by a previous publication. It refers to prior art that was published before the claim of specification and states that:

– When by reason that the application was filed on or after 1st of January 1912, the claim will not be considered to be anticipated.

– When the invention has been published prior to the priority date the claim will not be considered to be anticipated.

The publication will not be considered prior art if, the applicant proves that the matter published was obtained from him, or (where he is not himself the true and first inventor) from any person from whom he derives title and was published without his consent. Another situation could be when consent of any such person and the application in the convention country, as the case may be, was made as soon as reasonably practicable thereafter. This exception will not be applicable if the invention has already been used commercially in India. In the case of The General Tire & Rubber Company v. The Firestone Tyre And Rubber Company Limited And Others it was held that:

 If the prior publication contained a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after grant of the patentee’s patent, the claim would be anticipated. If, on the other hand, the prior publication contained a direction which was capable of being carried out in a manner which would infringe but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim would not be anticipated, although it might fail on the ground of obviousness. To anticipate the claim, the prior publication had to contain clear and unmistakable direction to do what the patentee claimed to have invented.

2. Section 30- As per Section 30, a claim shall not be considered to be anticipated if the same has been communicated to any authorised member of the government or to the government for the purpose of investigation.

3. Section 31 addresses anticipation by public display which states that an invention shall not be claimed to be anticipated if:

– The invention has been displayed with the consent of the inventor or;

– If the description of the invention has been published in any manner, or;

– The invention has been used without the consent of the first and true inventor after the same has been displayed or published or;

– Certain information/ description regarding the invention has been read/published  by the first inventor in front a learned society. 

4. Section 32 states that an invention claimed will not be considered to be anticipated if within one year before the priority date of the said claim the invention has been used for public work. The invention shall be considered to be publicly used for work-

– by the patentee or applicant for the patent or any person from whom he derives title; or 

– by any other person with the consent of the patentee or applicant for the patent or any person from whom he derives title.

5. Section 33 addresses anticipation by use and publication after provincial specification. As per this section if a complete specification is filed after the provincial specification then, the complete specification shall not be considered to be anticipated. In the event that a patent application has been filed through a convention application, the same will not be considered to be anticipated if say any information disclosed in the application is used in India or any other country. 

6. Section 34 states that the patent controller shall not refuse to grant patents for reasons which as per the above-mentioned sections does not constitute anticipation. 

Test for anticipation

In India anticipation can be tested in the following ways:

  1. By interpreting and comparing the claim to the patent/prior invention: If similarities are found between the claim and the patent or the prior invention so much so that there is a complete lack of novelty then the claim could be rejected. 
  2. If the invention when read or interpreted by one having sufficient knowledge in the field results in the expert understanding or filling gaps in the invention in such a manner that it leads to a patented invention then n such a case the invention will be anticipated.
  3. If the claimed invention falls within the scope of prior invention to the extent that prior invention specifies what is to be achieved, then the same would be considered to be anticipated.

Conclusion

Thus, we see that though Indian Patent Law hasn’t provided a specific definition of Anticipation, it has provided several provisions to ensure that legitimate inventions are protected. The reason for this is that in a world where intellectual property is treated with such high regard accorded with several benefits, anticipation in the field of patents is used as a metric/benchmark to reject a claim for patents that novelty or originality.

References

  1.  Meaning of Anticipation in Invention and what constitutes it in India, Saptaswara Chakraborty, Lex Forti available at https://lexforti.com/legal-news/meaning-of-an-anticipation-of-invention-and-what-it-constitutes-in-india/#:~:text=%20In%20India%2C%20the%20anticipated%20test%20can%20be,innovation%20falls%20within%20the%20scope%20of…%20More%20, [last seen on 19.03.21]
  2. The General Tire & Rubber Company v. The Firestone Tyre And Rubber Company Limited And Others, [1972] R.P.C. 457
  3. Bishwanath Prasad Radhey Shyam vs. Hindustan Metal Industries AIR 1982 SC 1444
  4. Blackey vs. Lathem, 1888 6 Pat Ca 184

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