By Sudarshan S. Shekhawat
Generally speaking, all enabling publications before the priority date of claims of patents shall be anticipatory. Section 13(2) of the Indian Patents Act, 1970 (hereinafter ‘the Act’)(see end note 1), considers all such documents relevant for anticipation. However, there are exceptions to the above rule. Many jurisdictions provide that disclosures/publication without the consent of the inventor will not be considered anticipatory. In India, there are a few more exceptions, one being the description of the invention in a paper read by the true and first inventor before a learned society or published with his consent in the transactions of such a society vide Section 31(d) of the Act (see end note 2).
The terms “learned society” and “transaction” are not defined under the Act and their interpretation has not been dealt with by any court in India. This article deals with the question whether publication of an enabling disclosure by a learned society on the internet that is accessible to the public, would amount to anticipation.
In order to appreciate the above issue, three key terms must be considered i.e. ‘learned society’, ‘transaction’ and ‘application for patent’. An identical provision existed in the erstwhile UK Patents Act 1949 as Section 51(2)(d). The UK Act also did not define ‘learned society’ and ‘transaction’. The term ‘learned society’ was interpreted by the UK Patent Office in Ralph’s Application - [1978] FSR 226, which stated that the said expression is “apt to be applied to any properly constituted society made up of persons seeking to promote and organise the study of specific subjects by the provision of a forum for discussion and a means of contact for those of common interest.” Thus, without putting any boundaries as to who shall be ‘learned’, a general understanding of ‘learned society’ was provided. This can be safely applied in the Indian context as well.
The word ‘transaction’ was interpreted by the Appeal Tribunal in the case of Ethyl Corporation’s Patent - [1963] RPC 155. The appeal was filed against the order of the Controller who held, that ‘transaction’ meant “published record of the proceedings of the learned society”. The tribunal upheld the Controller's judgement. ‘Transaction’ also came up in Ralph’s Application (supra) before the Patent office where an opponent sought to rely upon four publications which were available in the UK before the priority date. The publications contained the subject matter of a paper read by the inventor at a meeting of the Canadian Natural Gas Processing Association. The reporters present at the meeting received a copy of the paper and published the same in their journals in the UK. The inventor challenged the admissibility of the publications and raised the ground that the publication took place by the reason of the reading of the paper before a learned society and that the four publications were in effect reporting the proceedings of that learned society. The patent office, dismissing the plea of the inventor, held that the circulation of the paper and publications were not made in the ‘transactions’ of the learned society.
The reasoning of the UK Patent Office was that the society had no control (approval/editorial) over the publications i.e. what was to be printed in the several journals. It was held that for publication to be regarded as a “transaction”, it should be published under the auspices of and finally be the responsibility of the Association-the learned society.” This conclusion of the UK Patent Office is silent on the issue whether even such ‘controlled’ content would be considered anticipatory, if it is freely available to public via, say internet.
The case for consideration, from the Indian context, is where a learned society publishes an enabling disclosure, presented by an inventor, on its website. Although the contents of the publication are in the control of the society, the said contents are viewable by all. The question is whether such a publication would be considered to be made ‘in the transaction’ of the society.
One view could be that since the information is controlled (edited/approved) by the society, the publication may be termed as being made ‘in the ‘transaction’ of the society. This could seem more relevant for many learned associations and societies which work towards the object of dissemination of knowledge through their websites.
Another, rather restricted, view is that such publication cannot be considered to be ‘in the transaction of the society’ and would be anticipatory. This is because, broadly speaking, the legislature considers all enabling publications before the priority date of the invention to be anticipatory, Section 31(d) being the exception must be narrowly construed. Exceptions such as Section 31(d) have been provided so as to grant inventors the opportunity to disseminate knowledge amongst members of the society bound by common interest. The learned society cannot exist or be defined sans the members. Therefore, ‘transactions’ of such society are meant to cover the record of the proceedings, for the benefit of those members. One cannot claim the benefit of Section 31(d) while disclosing the invention to the public at large. Thus such a publication in the internet accessible to the public may not be considered to be ‘in the transaction’ of the society.
It would be interesting to see how the Indian courts interpret the word ‘transaction’, given the fact that several associations have operational website which publish their content online and such content is accessible to the public.
The last question is what is meant by ‘application for patent’ in Section 31 – the provision only grants a grace period of 12 months within which an ‘application for patent’ has to be filed. The issue is whether the term ‘application for patent’, as used in Section 31 includes, in addition to a usual application for patent in India, a base application of a convention application filed in India and an international application. In the Ethyl Corporation’s Patent case (supra) the Appeal Tribunal in the UK held that the term ‘application for patent' means an application for patent in the UK and not a convention application. The tribunal said that the other sections in the same chapter (other exceptions to anticipation) clearly used ‘convention application’ as being distinct from ‘application for patent’. This was not done so in Section 51(2)(d) of the erstwhile UK Act. The tribunal observed that this would amount to increasing the grace period from six months to 18 months which meant that ‘the embarrassment to trade and industry caused by the uncertainty would be gravely extended’.
If the above principle is applied to the Indian context, then the base convention application may not be considered to fall within the scope of the term ‘application for patent’, in determining the grace time-period under Section 31(d). However, so far as international applications are concerned, the aforesaid reasoning of the tribunal may not directly apply due to Section 7(1A), read with Section 138(4), which clearly states that every International Application under the PCT shall be deemed to an application under the Act, if a corresponding application has also been filed before the Controller in India.
One would have to await a specific pronouncement on the issue by an Indian court.
Notes
1. Section 13(2) - The examiner shall, in addition, make such investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been anticipated by the publication in India or elsewhere in any document other than those mentioned in sub-section (1) before the date of filing of the applicant’s complete specification.
2. Section 31- Anticipation by public display, etc.- An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of – (d) the description of the invention in a paper read by the true and first inventor before a learned society or published with his consent in the transactions of such a society,… …if the application for the patent is made by the true and first inventor or a person deriving title from him not later than 12 months after the…reading or publication of the paper, as the case may be.
[The author is Principal Associate, IPR Division, Lakshmikumaran & Sridharan, New Delhi]
Generally speaking, all enabling publications before the priority date of claims of patents shall be anticipatory. Section 13(2) of the Indian Patents Act, 1970 (hereinafter ‘the Act’)(see end note 1), considers all such documents relevant for anticipation. However, there are exceptions to the above rule. Many jurisdictions provide that disclosures/publication without the consent of the inventor will not be considered anticipatory. In India, there are a few more exceptions, one being the description of the invention in a paper read by the true and first inventor before a learned society or published with his consent in the transactions of such a society vide Section 31(d) of the Act (see end note 2).
The terms “learned society” and “transaction” are not defined under the Act and their interpretation has not been dealt with by any court in India. This article deals with the question whether publication of an enabling disclosure by a learned society on the internet that is accessible to the public, would amount to anticipation.
In order to appreciate the above issue, three key terms must be considered i.e. ‘learned society’, ‘transaction’ and ‘application for patent’. An identical provision existed in the erstwhile UK Patents Act 1949 as Section 51(2)(d). The UK Act also did not define ‘learned society’ and ‘transaction’. The term ‘learned society’ was interpreted by the UK Patent Office in Ralph’s Application - [1978] FSR 226, which stated that the said expression is “apt to be applied to any properly constituted society made up of persons seeking to promote and organise the study of specific subjects by the provision of a forum for discussion and a means of contact for those of common interest.” Thus, without putting any boundaries as to who shall be ‘learned’, a general understanding of ‘learned society’ was provided. This can be safely applied in the Indian context as well.
The word ‘transaction’ was interpreted by the Appeal Tribunal in the case of Ethyl Corporation’s Patent - [1963] RPC 155. The appeal was filed against the order of the Controller who held, that ‘transaction’ meant “published record of the proceedings of the learned society”. The tribunal upheld the Controller's judgement. ‘Transaction’ also came up in Ralph’s Application (supra) before the Patent office where an opponent sought to rely upon four publications which were available in the UK before the priority date. The publications contained the subject matter of a paper read by the inventor at a meeting of the Canadian Natural Gas Processing Association. The reporters present at the meeting received a copy of the paper and published the same in their journals in the UK. The inventor challenged the admissibility of the publications and raised the ground that the publication took place by the reason of the reading of the paper before a learned society and that the four publications were in effect reporting the proceedings of that learned society. The patent office, dismissing the plea of the inventor, held that the circulation of the paper and publications were not made in the ‘transactions’ of the learned society.
The reasoning of the UK Patent Office was that the society had no control (approval/editorial) over the publications i.e. what was to be printed in the several journals. It was held that for publication to be regarded as a “transaction”, it should be published under the auspices of and finally be the responsibility of the Association-the learned society.” This conclusion of the UK Patent Office is silent on the issue whether even such ‘controlled’ content would be considered anticipatory, if it is freely available to public via, say internet.
The case for consideration, from the Indian context, is where a learned society publishes an enabling disclosure, presented by an inventor, on its website. Although the contents of the publication are in the control of the society, the said contents are viewable by all. The question is whether such a publication would be considered to be made ‘in the transaction’ of the society.
One view could be that since the information is controlled (edited/approved) by the society, the publication may be termed as being made ‘in the ‘transaction’ of the society. This could seem more relevant for many learned associations and societies which work towards the object of dissemination of knowledge through their websites.
Another, rather restricted, view is that such publication cannot be considered to be ‘in the transaction of the society’ and would be anticipatory. This is because, broadly speaking, the legislature considers all enabling publications before the priority date of the invention to be anticipatory, Section 31(d) being the exception must be narrowly construed. Exceptions such as Section 31(d) have been provided so as to grant inventors the opportunity to disseminate knowledge amongst members of the society bound by common interest. The learned society cannot exist or be defined sans the members. Therefore, ‘transactions’ of such society are meant to cover the record of the proceedings, for the benefit of those members. One cannot claim the benefit of Section 31(d) while disclosing the invention to the public at large. Thus such a publication in the internet accessible to the public may not be considered to be ‘in the transaction’ of the society.
It would be interesting to see how the Indian courts interpret the word ‘transaction’, given the fact that several associations have operational website which publish their content online and such content is accessible to the public.
The last question is what is meant by ‘application for patent’ in Section 31 – the provision only grants a grace period of 12 months within which an ‘application for patent’ has to be filed. The issue is whether the term ‘application for patent’, as used in Section 31 includes, in addition to a usual application for patent in India, a base application of a convention application filed in India and an international application. In the Ethyl Corporation’s Patent case (supra) the Appeal Tribunal in the UK held that the term ‘application for patent' means an application for patent in the UK and not a convention application. The tribunal said that the other sections in the same chapter (other exceptions to anticipation) clearly used ‘convention application’ as being distinct from ‘application for patent’. This was not done so in Section 51(2)(d) of the erstwhile UK Act. The tribunal observed that this would amount to increasing the grace period from six months to 18 months which meant that ‘the embarrassment to trade and industry caused by the uncertainty would be gravely extended’.
If the above principle is applied to the Indian context, then the base convention application may not be considered to fall within the scope of the term ‘application for patent’, in determining the grace time-period under Section 31(d). However, so far as international applications are concerned, the aforesaid reasoning of the tribunal may not directly apply due to Section 7(1A), read with Section 138(4), which clearly states that every International Application under the PCT shall be deemed to an application under the Act, if a corresponding application has also been filed before the Controller in India.
One would have to await a specific pronouncement on the issue by an Indian court.
Notes
1. Section 13(2) - The examiner shall, in addition, make such investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been anticipated by the publication in India or elsewhere in any document other than those mentioned in sub-section (1) before the date of filing of the applicant’s complete specification.
2. Section 31- Anticipation by public display, etc.- An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of – (d) the description of the invention in a paper read by the true and first inventor before a learned society or published with his consent in the transactions of such a society,… …if the application for the patent is made by the true and first inventor or a person deriving title from him not later than 12 months after the…reading or publication of the paper, as the case may be.
[The author is Principal Associate, IPR Division, Lakshmikumaran & Sridharan, New Delhi]