The present analysis pertains to the quid aspect of the hackneyed phrase “Patent System is a quid pro quo”. Much ink has been spilt over the understanding that the patent system rests on the hinges of a bargain between the Inventor and the Public, wherein the inventor discloses his invention to the public (quid), thereby contributing to the research and development, against which (pro) he gets limited exclusivity to practice the invention (quo). In such system, making an invention open to the public is not only a critical but an indispensable module, which basically constitutes one part of the bargain in itself.
The words ‘published’ or ‘publication’ and the phrase ‘open to the public’ are not defined in the Patents Act, 1970. In-fact these seemingly synonymous terms are actually not synonymous to each other and seems to have been used quite judiciously in the Act to confer their respective meanings. Although the term ‘Publication’ is defined in section 3 of the Copyright Act, 1957, which could be termed as pari materia for the Patents Act, 1970, but it would be unjustified to import that definition for the purposes of Patents as the significance of the term varies significantly among these two statutes. The bone of contention here is - whether a patent application is deemed to be in public merely by the efflux of stipulated time period (of 18 months) and the publication of application in the Patents Journal is a mere formality; or the application is considered to be published only upon the actual publication in the Official Journal.
Section 11 A (1) of the Patents Act, 1970 provides that “Save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed” (emphasis provided). The time period is provided in Rule 24 of the Patents Rules, 2003, which states as:
“The period for which an application for patent shall not ordinarily be open to public under sub-section (1) of section 11A shall be eighteen months from the date of filing of application or the date of priority of the application, whichever is earlier” (emphasis provided)
Thus there is clear consistency about the use of word ‘open to public’. The usage of the phrase ‘open to public’ makes out a clear inference that the ‘open to public’ becomes operative, automatically, as soon as 18 months period expires. This is different from the ‘publication’ which means literal publication in the Patents Journal and which has no effect on the operation of the ‘open to public’ clause. This is evident from the fact that the same Rule 24 has a proviso which states that:
PROVIDED that the period within which the Controller shall publish the application in the Journal shall ordinarily be one month from the date of expiry of said period, or one month from the date of request for publication under rule 24A
The use of phrase ‘open to public’ and the word publish/publication in the same clause (Rule 24) clearly reflects that the legislature intentionally used the different terminology to confer different meanings thereto. At all other instances in the Act and Rules justifiably uses the word publish/publication only.
It is further evident from the fact that the proviso was added only in 2006 and then it became imperative upon the Controller to publish the application within 1 month of the expiry of the period. It cannot be said that before the characterization of this proviso, the applications were not used to be open to public after expiry of 18 months. Still, at several instances, due to technical glitches or mishandling, there are several applications which do not get published in the Patent Journal within 1 month of the expiry of the 18 month period. In effect, such applications are open to public but are not published and the applicant as well as public will be devoid of any and all rights and liabilities with respect to that application which arises only upon the actual publication in the Patent Journal. However, in a very idealistic situation, a very pro-active competitor who somehow keeps track of the filings by an individual/organization should be able to file a request for inspection and be inspect the file upon payment of requisite fee after the application is open to public even though it is not published. In this regard, section 11A(6)(b) provides that:
Upon publication of an application for a patent under this section—
the patent office may, on payment of such fee as may be prescribed, make the specification and drawings, if any, of such application available to the public. (emphasis provided)
Firstly, it provides that the patent office may make the specification and drawing available to public. This ‘may’ should be treated as shall here otherwise it will greatly prejudice the provisions of pre-grant opposition wherein ‘any person’ can file a pre-grant opposition and for that these details are usually necessary. As per section Section 11A (5) of the Act, the Publication must include “date of application, number of application, name and address of the applicant identifying the application and an abstract”. An abstract may not provide sufficient details to file a pre-grant opposition and the Patent Office cannot refuse the availability of the specification and drawings. Secondly, merely stating that upon publication the specification is available to public does not rule out the possibility that it cannot be before literal publication in the Patent Journal. The use of word ‘publication’ is due to presumption that there is no other source of information available to the general public that such an application has been filed and thus a request for inspection could be filed only after the publication.
Finally, as per section section 11A(7) of the Patents Act:
On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application. (emphasis provided)
These ‘like rights’ of the applicant starts from the date of publication of the application. Theoretically, it should start from the date on which the application becomes open to public viz. immediately upon expiry of the 18 months period irrespective of the publication. This is because, the rights of the applicant should start as soon as the application is in public domain and for the purpose of being available in public domain, same standards must be applicable as are for the purpose of determining the novelty, wherein, hypothetically, if something which is available on an auction in a some remote country for a very short period of time and at very stringent conditions which eventually was not bought by someone, does constitutes the prior art. Therefore, simply mentioning that the invention shall be available to public after 18 months itself is sufficient to deem it as available in public domain, automatically, after the period of 18 months and an infringer should not be able to say that it was not aware of the existence of any such patent application. However, section 111 of the Patents Act is of some relevance here, which provides as:
In a suit for infringement of a patent, damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed.
On a similar note, it will well be a defence available to the infringer, atleast against the charge of damages, that atleast until the publication it had no reasonable ground to believe that such an invention has been encompassed in a patent application. Therefore, it may be practically not viable to offer such like rights to the applicant without actual publication of the application in the Patent Journal.
It can be concluded that the application is deemed to be published on the expiry of 18 months time period and any person can, upon payment of official fee, inspect the file the very next day of expiry of 18 months. [Thus ‘publication’ of an application could take place only simultaneously or after the application becomes ‘open to public’. In regular case, the application becomes open to public with expiry of 18 months and is published within 1 month by the Controller in the Patent Journal. In case a request for early publication is filed by the applicant, both the acts viz. publication of application and the application becoming open to public, takes place simultaneously.]
