Patent

Anticipation Under Section 31(d)


A few days ago, I was surprised when I was told that our Patents Act provides the same kind of grace period that the US Patents Act provides to its inventors/patent applicants. Section 102 of the US Act provides for a one year grace period under which, even if the invention disclosed in a patent specification is published not earlier than a year before the filing of the patent, it does not anticipate the application.

It must be pointed out that Section 102 of the US Act does not limit publication to any forum or manner, which is to say it is wide in its amplitude. All these days I was and am still of the belief that the Indian Act is much more restrictive than its US counterpart; nevertheless, this was worth a harder look.

Section 31(d) of our Act states that an invention 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 reading or publication of the paper, as the case may be.


Neither is the word “learned society” defined in the Act nor the word “transaction”. But merely because these terms are not defined, one cannot bring anything and everything under the sun. One needs to impute both these terms specific meanings which are restrictive so that they do not militate against the legislative intent reflected in its choice of such words. Why? How would it be wrong to give them a broad interpretation? Also, is subjectivity necessarily synonymous with untrammelled latitude?

Let’s take a look at related provisions to understand the role of Section 31 in particular and chapter VI (Anticipation) of the Act in general, vis-a-vis the other provisions in the Act.

Section 13(2) of the Act, which speaks of search for anticipation by previous publication, requires the examiner to make an investigation to ascertain if the invention disclosed in the complete specification has been anticipated by publication in India or elsewhere in any document other than the ones mentioned in Section 13(1) (which refers to complete patent specifications published in India).

How is this relevant to Section 31(d)? It is relevant because Chapter VI (which includes Section 31) carves an exception to anticipatory documents envisaged under Section 13(2). What this means is that the documents mentioned in Section 31(d) too would have been anticipatory had they not been deemed as exceptions to anticipation by virtue of Section 31. This is evidenced by the fact that Section 34 clearly states that circumstances not covered under Section 29-33 would be anticipatory to the patent specification.

Therefore, for one to avail the benefit of Chapter VI, he would have to fall within the instances spelt out therein. Not just that, since the definition of anticipation under our Act is negative, it must be given a restrictive interpretation. This is the difference between defining something positively and negatively.

Further, if Section 31 was meant to be read independent of Section 13, Section 31 would have begun with a non-obstante clause (“Notwithstanding anything…). Also, if Section 31 was to play a prevailing role, Section 13 would have started with a “Subject to anything…”. But then, in the absence of either of these clauses, how are we to read them together (“construction”)?

The word “learned society” in general refers to a peer group formed for the purpose of promotion of knowledge and scholarship in a particular field of endeavour. The critical pointer here is the word “transaction” since it tells us that for the publication to be non-prejudicial/non-anticipatory, it must be in the nature of a transaction. The word transaction is not superfluous or paraphernalial, it is the key for it in fact serves to characterize the nature of interaction of the learned society which is non-anticipatory to the patent application.

This should ideally lead one to ask if the use of the words “learned society” and “transactions” have origins which go beyond the Act. Section 51 of the erstwhile UK Patents Act, 1949 contained an identical provision. Sub-section 2 of section 51 read as follows:

An invention claimed . . . 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”


It is pertinent to note that the UK Act too did not contain definitions for “learned society” and “transactions”, but that did not deter UK Courts from interpreting these terms in a rationally restrictive manner.


In Ethyl Corporation’s Patent (1963 RPC155) and Ralph M. Parsons Application (1978 FSR 226), the width of the definitions was at issue and it was held thus:


1.   1. The term “learned society” has not been defined, not because it can be used to bring anything within its ambit, but merely because the legislature did not deem it wise to identify a qualitative threshold for learning.


2.   2. To ensure that the absence of threshold does not lead to an unwarranted broad interpretation, the word transaction was used instead of publication.


3.   3. As for what constitutes transaction, I quote the latter judgment- “An essential prerequisite of a publication, if it is to be regarded as “transactions” is that it should be published under the auspices of and finally be the responsibility of the Association—the learned society—whose organ of publication it is.”


4.   4. Such transactions are meant for the private consumption of all the members of the learned society as a recordal of their proceedings, and which are not published for consumption by non-members in return for a fee or otherwise. Stated otherwise, if such transactions are made public to anyone who is not a member of such a society, either free or for a fee, it would no more remain a mere transaction and in fact would qualify as anticipatory publication. 


Therefore, if a paper is published in any journal, although it may be published by a learned society, it is not a transaction of the learned society and hence would serve as prejudicial disclosure/anticipatory prior art. This is clearly evidenced from the wording of Section 31(d), which says “published in the transactions of a society” and not “publication of the transactions of the society”.


A simpler way of looking at Section 31(d) is as follows- if what would have been read before the members of the society is published solely for the benefit of the members of the society, it is a transaction. Anything else would be anticipatory publication.

We look forward to hearing from our readers and experienced practitioners.

15 comments.

  1. Avatarneocog

    You bring out an excellent analysis Deepak. Kudos.

    Under a plain meaning analysis of the terms of the statute, it is clear that there is only one kind of exception made for documents that cannot be considered as prior art. These documents must necessarily either be presented ‘by the inventor’ or be submitted by his consent before a body of peers.

    Under a plain construction of a statute, the plain, obvious, and rational meaning of a statute is to be preferred over any curious, narrow, or strained construction.

    However, even the plain interpretation of the statute seems to be too narrowly focussed upon peer reviewed journals.

    Consider the following scenarios:

    What if a paper is posted by an inventor online on his own website.

    What if a society calls for papers and posts them online-and then selects a final few for publication?

    What if the inventor is not a first named author of the paper-and the application is for her contribution?

    These situations are not uncommon and therefore the Indian Act places a higher bar than the US.

    This requirement may restrict publication in India rather than encourage it-a no-no. Neither the public nor the inventor benefit.

    Reply
  2. AvatarAnonymous

    ON a tangential note, 31(a) pertaining to exhibition at Industrial Exhibitions notified by the Central Govt.

    I have NOT seen any exhibition, being so notified.

    Have any other practitioners’ noted such gazette posts?

    Regards,
    Freq. Anon.

    Reply
  3. AvatarJ. Sai Deepak

    Dear Neocog,
    I think you are bang on, I have always believed that questions serve to explain and sharpen the focus of a discussion better and your comment only reinforces my belief. In fact, your point on the Indian standard discouraging publication is precisely one of the arguments I had in mind to support my interpretation of Section 31(d). That is, opponents of patents cite patenting as the reason for fall in journal publications. My point is that if Section 31(d) were to be interpreted to mean any kind of publication, one sees no reason why an applicant or an inventor would or should hold back publication in a journal. The fact that there is decline in academic publication thanks to patenting shows that quite a few practitioners realize that Section 31(d) provides only a limited window. Further, even US applicants have realized that their publications in US journals affect their right to file in India.

    As for the wisdom behind the provision, I would say that if the inventor/applicant has an academic inclination and wishes to disclose the invention in a journal, then he should not expect a monopoly in return for something already disclosed.

    I would like to know the opinion of policy analysts on this point.

    Bests,
    Sai.

    Reply
  4. AvatarAshwani

    A Fantastic One Sai!!!

    A very enlightening article for existing Patent Agents, especially for those who cleared the exam this time only.

    It is well said by Bruce Lee that
    “A wise man can learn more from a foolish question than a fool can learn from a wise answer”.

    Just to add on the discussion, I completely agree with Sai and feels that the impugned interpretation of the provision would render almost all other provisions of Chapter VI (ANTICIPATION) of the Patents Act to be defunct and inoperative.

    Section 32, which allows the use of publicly working of invention but with a proviso that “working was effected for the purpose of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should be effected in public.” If it was intended to allow the open publication (as suggested), I don’t find any reason to include this provision. Same goes with section 29 (2) and (3); sections 30 and section 31 (a)-(c), which all would be of no use and meaningless in light of such interpretation.
    To me, it’s like laying down a set of comprehensive rules to be strictly followed in a boxing match and last rule says that the match is “free-for-all” and there is no rule. It nullifies the whole exercise of laying down earlier rules, which is unacceptable.

    A general rule of the interpretation says that the interpretation which renders the meaning or use of a clause redundant must be rejected. This time not a clause but the whole chapter or I should say the theme of the Act is at stake.

    Sai, I just hope that whoever raised this question is not a patent agent, else the person should surrender the qualification immediately on the moral grounds.

    Yours,

    Ashwani

    Reply
  5. AvatarYpsita

    Sai,

    Excellent write up on one of the most controversial issues of the Indian Patent Act. But, do you seem to propose that Section 31(d) discourages an inventor from publishing his work in a journal, rather encourages him to discuss/present his work to his peers. If that’s so, I am afraid, the scientific fraternity may have a positive balance if they opt for publishing their work and not patenting it!

    Regards,
    Ypsita

    Reply
  6. AvatarJ. Sai Deepak

    Hi Ypsita (demunshi?),
    Yes, you’ve got me right. I am saying that Section 31(d) permits the presentation/communication of the work to the inventor’s peers and none else. I agree with you; given that publications are still considered to have greater peer value than patents among the best of scientific minds, publishing may hold more fascination than patenting.

    Bests,
    Sai.

    Reply
  7. AvatarJ. Sai Deepak

    That said, what I fail to understand is that why is it necessary for inventors to publish their work before applying for a patent? How difficult is it to apply for a patent and then publish wherever they wish to?

    Sai.

    Reply
  8. Avatarankush Bedi

    Just came across this write-up. Very interesting discussion.

    Trying to add my two cents here. Based on section 31(d) and the discussion on this blog, I understand that an applicant has a 12 month period for filing a patent application after discussing/publishing an idea, only if the same is within a peer group.

    However, I am sure that there is no concept of swearing behind in India (unlike US). So, I think one should first secure a priority date by filing a patent application (preferably a provisional) and then have any such a discussion even in a peer-group.

    Reply
  9. AvatarBlayne Peacock, Singapore

    Hi

    Hi Deepak

    your point 4 seems to be contrary to the decision in Ethyl and Parsons and I couldn’t find any support for it in either decision. Both cases suggest that a publicaiton under the auspices of a learned society would be exempt. There is no suugestion that if the publicaiton is a available to the public for a fee, that it would not be exempted – this would be contrary to the intent of the legistaltion in any case. Where did the support for point 4 come from?

    Reply
  10. AvatarJ. Sai Deepak

    Dear Blayne,
    The support for the 4th point comes from the observations in the last three pages of the Ralph M. Parson’s case.

    The Patentee in Ralph Parson submitted an argument on grounds that he was entitled to protection under Section 50(2)(a) because there was no consent given to members of the press who were present at the time of reading of the abstract and since there was no consent, they could avail of the protection under Section 50 i.e. a publication does not anticipate a patent when it is not published with the consent of the patent applicant. This defence was submitted taking support from the Ethyl Corporation case. However, this argument of the patentee was not accepted on grounds that when the patentee made preprints of the material available to members of the press, consent for worldwide publication was effectively given.

    The decision then goes on to observe thus:

    “Furthermore historically at least learned societies were not associated with commercial exploitation, purporting to disseminate the relevant learning without consideration of economic gain. Moreover it is, I think, usual for societies aspiring to the epithet “learned society” to publish records of their proceedings and indeed this is to be expected since such societies are presumed to be concerned not with arcane knowledge but with the dissemination of information amongst the members of the society whether they are able to attend meetings or not”.

    What this could mean is that publication of the proceedings for the benefit of the members of the learned would amount to transaction. Also, I think we should interpret Section 50(2)(a) and Section 51(2) together to understand their combined import, which, in my opinion, is as follows:

    If publication with consent is prejudicial publication and serves as anticipatory literature, would it not be right to conclude that publication with consent for limited consumption within members of a learned society would be a consistent exception to the general rule? Isn’t this why it was held in this decision that although the Canadian Natural Gas Processing Association (CNGPA ) would qualify as a learned society, the publication of the Beavon paper by the press was with consent of the patent applicant, and would therefore not be afforded protection as a transaction, thereby depriving it of protections under both Section 50 and 51?

    Therefore, i would think that “publication under the auspices of the society” too would mean publication for consumption by the members under the auspices of the society.

    If we again create an exception to the above exception by saying that even material that can be made available to the public who are non-members of the learned society at the payment of a fee would constitute a transaction, wouldn’t that render the purpose of the first exception nugatory?

    Please let me know your thoughts.

    Best Regards,
    Sai.

    Reply
  11. AvatarJ. Sai Deepak

    Blayne,
    On a broader note, wouldn’t access to material which is otherwise deemed as “unpublished” (as understood in the patent sense of the word) at the payment of a subscription fee, constitute publication of the material? In fact, does payment of a subscription fee change the factum of publication by sharing it with a non-member in any manner? Isn’t point 4 a corollary to points 1-3?

    Please let me know.

    Bests,
    Sai.

    Reply
  12. AvatarJ. Sai Deepak

    Blayne,
    Also, I think we should not confuse “publication in a transaction” with “publication of a transaction”. The former is not prejudicial, the latter is. The former is meant for private consumption and hence does not anticipate the patent application, whereas the latter is anticipatory if it goes beyond the confines of the learned society, free or or for a fee, it doesnt change the factum of publication.

    Section 31(d) of the Indian Act clearly states “published in the transactions of a society” and not “publication of the transactions of the society”.

    I would like to hear your views on the same.

    Best Regards,
    Sai.

    Reply
  13. AvatarBlayne Peacock, Singapore

    Hi Sai

    I agree “publication in a transaction” with “publication of a transaction” are different. I don’t think this is relavent though.

    I haven’t looked at the cases for a long time but I thought the decision said that the members did not authorise the “transaction” – therefore not a transaction and therefore anticipatory. Thus the “rule” relates to consent of memebers.

    The 1949 Uk act defines a learned society as having a main object being the promotion of any branch of learning or science. I presume the statute in India is the same.

    I presume your arguement #4 is that if there is a fee involved the object is different and therefore it is not a learned society? The portion from Parson you have quoted above is in the context of explaining what a transaction is, not what a learned society is. Thus your #4 is a different arguement and not addressed in either of these cases.

    My point is therefore that while #4 might be valid it is not supported by those cases. You have inidcated #4 is part of the decsisions which is in my opinion quite misleading.

    If I have missed something please let me know.

    Reply
  14. AvatarFaisal

    Considering the provisions of section 31, does inventor or any person deriving title from him needs to file a patent application accompanied by complete specification within twelve months from the date of said display/publication or he may file a patent application accompanied with provisional specification and may later file a complete specification within 12 months from the date of provisional patent specification as allowed under section 9. Please comment

    Reply
  15. AvatarAnonymous

    Hi,
    I just want to know if inventor publish the invention in a science journal and within 12 months apply for patent. Is it considered as anticipatory or not?

    second case is that if invention was published in us and within 12 months patent application was filed in US. Now taking priority of US, inventor has filed in india. In this case what will be the effect of earlier publication by inventor

    Reply

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