Prior(/Even)-dated & Unpublished Applications Constituting ‘Prior Art’: Indian Law Needs an Upgrade

Each claim of a patent application carries a date of priority which demarcates the prior art for the purposes of determining novelty and inventive step of the claim. In firs-to-file jurisdictions, the date of priority is conferred upon a claim depending upon when the subject matter of the claim was first and fairly sufficiently disclosed in a patent application by the applicant to the patent office. As a general rule, anything which is available in the public domain before such date of priority is construed as ‘prior art’. A complicated situation, however, occurs in case where a patent application is found to claim a priority earlier than that of the claim under consideration but was actually published only after the date of priority of the claim. While such unpublished application is deemed not to be in the public domain as of the date of priority of the claim, it still appears to be entitled to claim seniority rights as against any claims with subsequent priority. Adoption of the strict rule of anticipation-by-publication-only may result in an undesirable multiple-patenting situation wherein two (or even more) persons may be granted exclusive rights in terms of patents for the same/similar invention. On the other hand, adoption of strict rule of priority-by-date would tend to curb the scope of protection for incremental innovations. In order to strike an appropriate balance, most of the jurisdictions have enabled sound and unambiguous statutory mechanism for addressing this problem. The corresponding provisions in India under the Patents Act, 1970, however, are unstructured and obsolete as of date.

The patent statutes of most of the countries address to this issues by enabling dual standards of protection wherein such earlier dated but later published applications are deemed to constitute prior art only for the purposes of determining the novelty of the later dated claim but are excluded from the scope of prior art for the purposes of determining the inventive step. This approach while ensures that two patents are not granted for identical inventions in favour of two different persons, also enables the scope of protection of any incremental innovations, viz. the inventions which are new, if not non-obvious, over the previous one. This is by far the most common and perhaps the most reasoned approach adopted by the countries which serves the public interest without prejudicing the interests of the applicants. For example the European Patent Convention (EPC), provides that the content of European patent applications as filed, the dates of filing of which are prior to the date of filing of a later European patent application and which were published on or after that date, shall be considered as comprised in the state of the art for the purposes of examining novelty, while Article 56 of EPC at the same time provides that such applications are not considered to form part of the state of the art for the purpose of determining whether there has been inventive step involved. Likewise in Japan and Australia there are similar provisions confirming to this approach. There are, however, countries like US which adopts a more stringent approach and thus construe such earlier but unpublished applications as part of the prior art for the purposes of examining novelty as well as inventive step of any later applications. Particularly in US, this stringent approach has been in place since at least 1965, when in the case of Hazeltine Research Inc. v. Brenner [382 U.S. 252 (1965)], US Supreme Court while holding that such application is deemed to be in public domain for the purpose of evaluating obviousness even though the public had no access, it stated “To adopt the result contended for by petitioners would create an area where patents are awarded for unpatentable advances in the art.”

In India, the Patents Act, 1970 provides under section 13(1)(b) that such prior dated but unpublished Indian patent applications shall be construed as prior art for the purposes of determining novelty. Regarding the inventive step, however, except for the applications filed by same applicant (wherein the earlier application is not counted as prior art for inventive step under the concept of Patent of Addition) there is no clear provision when the applicants are different. Even the definition of the phrase ‘inventive step’ in the Act does not mark any direct indication as to whether such prior dated but unpublished applications are to be counted within prior art or not. The only inference that can be drawn in such situation is from the fact that the Patents Act provides explicit provisions only to ensure that such prior dated unpublished applications do not anticipate the application at hand and there is likewise an explicit omission of any provision regarding the inventive step.

Furthermore, there are variations in approaches towards the content of such earlier unpublished applications which is taken into account as prior art for the purposes of determining novelty and/or inventive step of any later dated application. Historically, under the UK Patents Act, it was only the eventually granted claims of such earlier applications which were effectively considered as prior art and not the entire disclosure of the patent specification. This was with a view to prevent the double patenting and was usually referred to as anticipation by ‘prior claiming’. This ‘prior claim’ based approach was however changed to the ‘whole content’ based approach in the subsequent legislation wherein the entire content of such earlier application is construed as prior art. This adoption of ‘whole content’ approach is primarily because of the three important reasons – firstly, it is found to be against the public interest for a later applicant to monopolise subject matter which, although he was not aware of it at the time of the application, would inevitably have come into the public domain; secondly, it is realized that the scope of claims of the prior application is not always fixed and is subject to amendments during examination and even post grant; and thirdly, the applicant of earlier application may later would like to protect or use the information disclosed otherwise than by the claims, he would be unjustifiably prevented by the later applicant. This is also the standard adopted by most of the patent legislations thought the world including Europe, Japan, Australia and US. In Europe, by ‘content’ of a European application in this context means the whole disclosure, i.e. the description, drawings and claims, including:(i) any matter explicitly disclaimed (with the exception of disclaimers for unworkable embodiments); (ii) any matter for which an allowable reference to other documents is made; and (iii) prior art insofar as explicitly described. Even if the content of the earlier application which is filed in a non-official language and its matter is erroneously omitted from the translation in the language of the proceedings and not published in that language, it is the content of the original text which is relevant for the purposes of Art. 54(3). India, however, still follow the ‘prior claiming’ approach and thus the prior art is limited only to the claims of the earlier dated unpublished applications.

In another aspect of this discussion, it involves the applications filed by the different applicant and claiming same date of priority. Considering the low possibility of having same date of priority for identical set of claims by two distinct persons, this aspect has not been specifically dealt in most patent law statutes and thus the law is not well settled on this issue. In absence of any direct provision in this regard it is assumed in many countries, like in Europe, that each application must be allowed to proceed as though the other did not exist. Similarly in US, there is no explicit provision dealing with the situation wherein two applicants independently develop the same invention and file applications with the same effective date, which means that multiple valid patent claims could issue to different persons. Some countries, like Japan, however, do have specific provision dealing with this particular aspect wherein it is provided that where two or more patent applications claiming identical inventions have been filed on the same date, only one applicant, who was selected by consultations between the applicants who filed the said applications, shall be entitled to obtain a patent for the invention claimed and where no agreement is reached by consultations, none of the applicants is entitled to obtain a patent for the invention. In India there is no statutory provision in this context and thus it may be assumed, as like in several other countries, that in such a situation a joint patent with equal undivided share may be issued to both the applicant as if they were joint-applicants. A more explicit provision, however, will do no harm.

Any suggestions are welcome!