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Do scientific publications exempt patent applications from anticipation?: The Indian position

Introduction

One of the three universal requirements for the grant of a patent is that the patent must be for a new invention. The Indian Patents Act, 1970 (the Act) defines a ‘new invention’ in Section 2(l) as ‘any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art’. In other words, the invention must not have been revealed to the public, anywhere and in any form.

Disclosure before a ‘learned society’

The requirement of non-disclosure of an invention before applying for a patent is sacrosanct. If an invention has somehow been revealed, it would prejudice the novelty and inventive step of the patent application. But there are some exceptions under Indian law when the disclosure of an invention by the inventor themselves would not be cited against their own patent application.

One such exception is contained in Section 31 (d) which states that:

An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of 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 twelve months] after the opening of the exhibition or the reading or publication of the paper, as the case may be’.

A literal interpretation of this provision suggests that if an inventor discloses the invention before a learned society or publishes it in the transactions of the society, then such a disclosure or publication would not be considered prior art when prosecuting a patent application for the same invention, provided that the patent application is made by the same inventor(s) within 12 months of such a disclosure.

What is a ‘learned society’ and its ‘transactions’?

Ambiguity arises when we try to unpack what is meant by a ‘learned society’, as also permissible ‘transactions’ within such societies. The Act does not provide any guidance on this, and the lack of precedent in India makes this provision open to interpretation.

The origins of this section can be traced to section 51(2) of the UK Patents Act, 1949 (since superceded), where the terms ‘learned society’ and ‘transactions’ were also not defined but were subsequently interpreted by the courts. The UK Patent Office in Ralph’s Application [1978] FSR 226 stated that the term ‘learned society’ could be applied to ‘a properly constituted society made up of persons seeking to promote and organize the study of specific subjects by the provision of a forum for discussion.’ The term ‘transactions’ was given some clarity by the Appeal Tribunal in Ethyl Corporation’s Patent [1963] RPC 155 where it was stated that the word ‘transactions’ should be construed to mean ‘the published record of the proceedings of the learned society’.

The Indian Patent Office (IPO) appears to have reached some common understanding as to what constitutes a ‘learned society’. For instance, in 692/KOL/2008, the Controller, citing these same UK cases, clarified that the Indian Pharmacological Society (and Indian Journal of Pharmacology which was a publication maintained by the society) was to be considered as a learned society. Similarly, in 1894/MUM/2006 the Controller allowed the grant of a patent in which the applicant produced an affidavit from the editor of the scientific journal under question stating that the journal, in which the inventors published their scientific paper, was a learned society publication. In some other cases too, Controllers have allowed patent applications where cited prior art were publications by the same inventors in a scientific journal, leading to the inference that scientific journals were part of learned societies. Thus, it would be safe to assume that the description provided by Ralph’s Application (supra) may be applied for the purposes of defining a ‘learned society’ within the Indian context as well.

However, there is considerable variation as to what the IPO considers an acceptable ‘transaction’ under Section 31(d). For instance, while a publication of a scientific article in a journal has been considered acceptable in some cases (e..g., 1585/KOL/2011 and 790/MUM/2015), in others, Controllers have taken a contrary view. For instance, in 2446/DEL/2006 the Controller said that publication in the journal of a learned society could not be considered a “transaction of learned society” as such a publication would also be available to the public (either by subscription or free of cost), thus making the publication beyond the ambit of the requirement of ‘publishing in the transaction of a learned society’. Presentations of scientific papers before a scientific society or a Ph.D. thesis before the university are considered to be within the definition of ‘transactions within a learned society’ by the IPO (See 2117/MUM/2006 and 2154/MUMNP/2010).

Identical authorship as an essential requirement

While the nature of learned societies and the permitted transactions are yet to be clarified, an essential requirement, which the IPO has consistently maintained in many cases, is to ensure that all the inventors and applicants named in a patent application are also authors in the cited scientific publication. Any difference in authorship between the patent and the scientific publication would result in the non-applicability of the exemption under Section 31(d) and the publication would be cited as prior art against the inventors’ own invention. This is seen in cases such as 842/CHE/2009, 86/CHE/2012, 1448/CHE/2009, for instance, where the Controllers in each case insisted on the need for consistency of authorship between the patent application and scientific publication.

If there is a mismatch of authorship between the patent application and the scientific publication, one way to circumvent this is by providing an affidavit by the authors that have been left out, stating the reasons for change in authorship. For example, the affidavit could clarify that an inventor contributed to the data in the scientific paper but not in the corresponding patent (or vice versa) thus resulting in the removal of their name from authorship in one of the documents. This procedure was adopted in 2154/MUMNP/2010 which was subsequently found acceptable by the Controller in this case.

Conclusion

Section 31(d) provides an exemption that an invention in a patent application that is disclosed by ‘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’ is not deemed to be anticipated, provided such a disclosure was made within 12 months of the date of application of the patent. However, the terms ‘learned society’ and its ‘transactions’ have not been judicially tested; as a result, their meanings are not set in stone and are open to interpretation by patent offices. In general, a scientific publication of a scientific society is regarded by the IPO as a permitted publication of a ‘learned society’. However, there is no consensus on whether the act of publication in a scientific journal is considered an accepted ‘transaction’ owing to the fact that such publications are also available to the general public.

It is recommended to ensure consistency in authorship between the inventors and applicants of a patent application and those of the scientific publication i.e. all the authors of a scientific publication must be named in the patent application. Differences in authorship may be overcome by appropriately-worded affidavits and evidence, but their acceptance cannot be always assured.

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