Prior Knowledge/ Prior Publication/ Exhibits In Public In Infringement Of Patent Proceedings

Effects Of Prior Knowledge/ Prior Publication/ Exhibits In Public In Infringement Of Patent Proceedings

Ms. Thabitha Marion Varghese

The term publicly known or publicly used is used under Section 25(1) (d) which is a ground for opposition. Importation into India before the priority date of a product made by the pate ted process would amount to public knowledge or public use except where such importation was for the purpose of reasonable trial or experiment. Information whether in documentary form or in the form of invention if communicated to a single member of the public without inhibiting fetters is enough to make an invention public. Section 13 of the Act states that any claim in the invention if not new or was publicly known or used in India before the priority date of the claim or published in India or elsewhere is said to have lack of novelty. Mere publication is not enough to establish public knowledge. A thing may be publicly known either orally or through document.

Publication must be such that the persons to whom the information is communicated must be free to use it and to communicate the information to others. It is sufficient if the invention is known to the persons who are engaged in the pursuit of the knowledge of the patented product or process. If the public once becomes possessed of an invention by any means, no subsequent no subsequent patent for it can be granted either to the true or to the first inventor or to any other person. Thus an invention is said to be publicly known by oral prior disclosure. An invention will become publicly known through documents or books published prior to the date of patent as held in Otto vs. Steel.[1] Section 29-33 provides exception to the law of anticipation. A claim will not be deemed to have been anticipated by reason only of prior publication, prior communication, prior public display in exhibitions, prior public working.

Exceptions to anticipation are:

Ø Prior publication in a specification filed in pursuance of an application for a patent made

before 1^st January 1912.

Ø A prior publication, if the matter was obtained from the true inventor or from the one

who derived title from him, published without his consent, an application for patent made by persons entitled soon after knowledge of such publication in India or in the Convention country or if the invention was not commercially worked in India for purpose other than reasonable trial.

Ø Any other application for patent in respect of the same invention in contravention of the

rights of the person entitle d to the invention or any use or publication pursuant to that application without the consent of the person entitled.

Ø Prior communication to Government for investigation of the merits of the invention.

Ø Public display or use of the invention with the consent of the person entitled in an

exhibition authorized by Government notification or publication of the description of the invention consequent to such exhibition or use of the invention by any person after its display in the exhibition or description of the invention in a paper read by the first or true inventor before a learned society or published with his consent in the transaction of such a society if the application for the patent is made within 12 months from the date of exhibition or reading or publication of the paper.

Ø Public working during one year before the priority date by the person entitled to the

patent or by any other person with his consent if the working was for reasonable trial and was necessary.

Ø Publication or use of matter described in the provisional specification after the date of

filing of the provisional specification.

Ø And in case of conventional application, publication or use of the invention after the date

of application in the convention country.

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[1] (1886) 3 RPC 109.