One of the first and foremost conditions for the grant of patent is that the invention should be new or novel. In other words, it can be said that the invention should not be anticipated by any publication anywhere in the World. However, it is very difficult to preserve the invention before applying for the grant of patent. In the normal course of development of an invention, many people may be involved in the same or due to the nature of the invention, same is required to be worked out or its results are to be analyzed in order to ascertain the effectiveness or efficiency. So in nutshell, it is nearly impossible to keep the invention private so as not to become public and cause problems in getting patent protection. The Indian Patent Act, 1970 (hereinafter "Act") has provided various provisions wherein exceptions are provided for anticipation. In the present article, endeavor is made to explain the provisions of the Act related to anticipation.
Chapter VIII, sections 29 to 34 of the Act deal with the situations where anticipation of invention is exempted.
Section 29: Anticipation by previous publication
This section states that the invention claimed in a patent application shall not be deemed to be anticipated by reason only that the same was published in a patent application made in India and dated before 1st January, 1912.
Further, it provides that an invention will not be deemed to be anticipated by reason that the same was published before the priority date, if the applicant proves that the matter was published without his consent or without the consent of person from whom he derives the title and after getting knowledge of such publication, application for the grant of patent was made as soon as reasonable practicable. However, the above will not be applicable where the invention is commercially worked in India before the priority date of the invention with the consent of the applicant.
It also states that an invention claimed in a patent application shall not be anticipated by reason only that any other application filed for the same invention is in contravention of the rights of the applicant or by reason only that after the date of filing of other application, the invention was published or used by that other person without the consent of the first applicant.
Section 30: Anticipation by previous communication to Government
An invention shall not be deemed to be anticipated by reason that the same was communicated to the government to investigate the invention or its merits.
Section 31: Anticipation by public display
This is an important section dealing with the anticipation by public display at an industrial or other exhibition. According to this section, an invention will not be anticipated by public display at industrial exhibition or publication of description of the invention or use of the invention in consequence of such display or disclosure of invention before the learned society by the applicant or any person deriving title from him. Further, the invention will not be anticipated by use of the invention after such display or use at an exhibition, by any other person without the consent of the applicant
However, in order to claim the benefit of the above, the application for grant of patent shall be made within 12 months from the first disclosure of invention at such industrial or other exhibition or reading or publication of the paper.
Section 32: Anticipation by public working
The invention shall not be anticipated by public working in India at any time within one year before the priority date of the invention by the applicant or any person deriving title from him. Provided that the working was affected for the purpose of reasonable trial or the working was necessary, having regard to the nature of the invention.
The above sections 31 and 32 provide for 12 months time period, also termed as "grace period", for filing of an application for grant of patent after the public display or use of the invention. Most of the countries including United States and EU also provide for the same type of exception. This is an opportunity provided to the inventors who has mistakenly or in good faith, displayed or used the invention publicly before applying for the grant of patents.
Section 33: Anticipation by use and publication after provisional specification
According to the above section, the invention shall not be refused to grant the patent and the patent shall not be revoked by reason that the matter described in the provisional specification was used in India or published in India or elsewhere at any time after the date of filing of that specification. Further, in case of convention application filed in India, the invention will not be refused to grant or revoked by reason that the same was used in India or published in India or elsewhere at any time after the priority date of the application.
Section 34: No anticipation if circumstances are only as described in sections 29, 30, 31 and 32
The above sections state that notwithstanding anything contained in the Act, the Controller shall not refuse to grant a patent and a patent shall not be revoked or invalidated by reason of any circumstances which, by virtue of sections 29, 30, 31 and 32, do not constitute anticipation.
Conclusion
By the way of above exceptions, an opportunity is provided to the legitimate inventors or applicants to secure the patent rights despite of making the invention public or use of the same publicly under certain circumstances. It is important to protect the rights of the inventors who have, due to ignorance of the laws or in good faith, published their inventions in any exhibition or tested the working of the invention in public. Based on the above, it can be concluded that the Indian Patent Act, being at par with the laws of the other developed countries, provides for exception to the anticipation under certain circumstances.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
