India: Understanding public use and the loss of novelty
The novelty requirement is the sine qua non of every patent law. The term ‘novelty’ is not defined in any patent statute as such, but it means that what is in the public use or domain is not novel.
Defining what it is that makes the use of an invention public is not as easy to prove as it seems. Two prominent questions need a rather straight answer: the first being, whether the person doing the using is a member of the public, and the second being whether the use is itself in public. In both situations the invention is being used by at least one member of the public, and this person includes the inventor himself. In case this person is other than the inventor, he should be the one who is under no limitation, restriction, or obligation of secrecy to the inventor. What is taking place behind closed doors wrapped in secrecy is not use in public. But more important than mere use, that stands out in every dispute of public use, whether that use enables the invention to constitute prior art. This is perhaps the most difficult part of the invalidation disputes the courts, in India and elsewhere, have to deal with to come to a reasoned conclusion on the loss of novelty.
Role of the patent office in ascertaining novelty
The earliest patents were granted without any examination. This left the inventor at the risk of invalidation if it was challenged in court. As there was no searchable record available to the inventor, he was always subjected to the risk of invalidation. In the United States, patents were issued not as a special favour but as a matter of right. This right was granted on the consideration that a patent is granted for the benefit conferred upon the public by the inventor by disclosing and making known the product of his skill and genius. In the UK, on the other hand, inventors are never entitled, as of right, to a letters patent. They must obtain it from the crown by petition, and as a matter of grace and favour, the letters patent stating that the grant is so made. The grant of patents was regulated by the Statute of Monopolies, passed during the reign of James I. Later, the patent laws were crafted for the benefit of inventors, with the purpose of encouraging and stimulating a spirit of investigation and experiment, to the end that new and useful inventions, accruing the benefit of the public, might be produced. The concept of novelty (new) remained the hallmark and rather a gatekeeper for the patent examiners to grant or refuse any patent application. The establishment of the patent office in many jurisdictions set to the rest the use of registration as means of establishing rights on a patent. It was later established that a patent obtained under registration could be of little value to the inventor as it could be subjected to high risk on the chance of its validity. The patent office conferred upon its officials the powers to search the patent applications to determine its novelty. Later, it was well settled under the patent law that an inventor who applies for a patent must show that the subject matter sought to be patented satisfies the requirements of certain well-established, though not easily defined, tests. Novelty was an essential test of patentability in addition to other tests, viz., the proper subject matter of a patent and utility. The addition of obviousness/inventive step as criteria of patentability was added when the large number of patents on improvements on existing patents or prior art were filed and contested in invalidity disputes in the courts.
Defining novelty
The earliest attempt to define novelty could be found in the writings on the patent of Mr. Robinson, where he stated that legal novelty may be predicated of an invention whenever it is new to the public as a practically operative means; and that novelty consists in the substantial variation of the invention in question from all inventions, which, in contemplation of law, are already open to the public. Theoretically, this definition seems correct, but when it is employed as a test to determine the presence or absence of novelty, courts found it of little practical value. Therefore, the majority of other writers did not make an attempt to bind the definition of novelty in exact terms. However, they have looked for courts to lay down certain well-established rules by which the patent laws can be uniformly governed in ascertaining the questions of novelty.
Rules of novelty in patent law
Every patent statute demands that to entitle a person to obtain a patent, the invention must be one not known or used by others in the country where the application is filed. Initial stages of patent law implementation in various countries resulted in the strange contention that by proper construction of the patent law, as a whole, both prior knowledge and use must be proved to be negative novelty. This rule of law is inflexible as it was conclusively presumed that each inventor has knowledge of all prior inventions of the same character. The issue of who is doing the using rests on where and how that use must occur if it is to be public use. Additionally, the subject matter of the patent and the reach of its claims must be such that it completely matches its public use. If we take a closer look at the second route to public use, we will find that even if no member of the public uses the invention, an invention can be placed in public use if it is used by the inventor. In this situation, a patent is more likely to lose novelty only if it is displayed to the public in such a way that the public could have understood the invention. This means there can be public use without the public actually using the invention. In such a case, the court normally looks for whether that use is out in the open and tags it with enablement requirement to determine loss of novelty or otherwise. Courts in such cases appear to rely on an idea of constructive public knowledge. To illustrate this point, let’s look if a conference leaflet can be invalidating printed publication prior art. Yes, it will, if others could have learned about the invention just by reading it. In another situation where an inventor carries out a demonstration of his invention in public, even then it can be an invalidating public use if others could have learned about the invention from observing the demonstration. Therefore, treating enabling demonstrations, even by the inventor himself, as prior art in the patent law makes sense.
Novelty in Indian Law
Section 2(1) (j) of the Patents Act, 1970 states that “invention means a new product or process involving inventive step and capable of industrial application.” The term “new invention” is further defined in Section 2(1)(l):
“new invention” means 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;
The novelty, according to the Indian patent law, is absolute novelty as it states, ‘anticipated by publication in any document or used in the country or elsewhere’. It further clarifies without stating how it has fallen into public domain to mean that i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art;. However, the inventor at times discloses their inventions to others to investigate the invention or its merits or to know the results or its acceptability to the public. In such a situation, the inventor is required to be protected from loss of novelty if he has taken all the measures necessary to bind the member of public from the non-disclosure of the invention.
Prior public use position in India
In Lallubhai Chakubhai Jariwala v. Chimanlal Chunilal And Co. [AIR 1936 BOM 99], the Bombay High Court in Paragraph 13 formulated the question of prior public user as:
“Has it been publicly used by the plaintiff and/or by others before the date of the application ?
Public user does not mean a user or exercise of the invention by the public, but a user or exercise in a public manner; and
it is in every case a question of fact.”
The court went on further to state that:
“If the invention is being put into practice before and at the date of the grant, the grant will not be for a new invention or manufacture, and this applies equally whether the invention is being practised by the patentee himself or by others.”
A use of the invention for the purposes of trade may constitute a prior user which invalidates the patent, and it has been held that the prior public sale of goods or articles treated according to the invention is a public user of the invention, for the sale is strong evidence that the user was really commercial and not experimental. In order, however, for the sale to constitute sufficient evidence of public user it should be open and in the ordinary way of business.
The court looked into counsel’s argument that there was a prior public user by reason of the plaintiff allowing the firm of Harakhchand Shivji & Co. to put goods treated by his process on the market for sale as a part of their business.
The court stated that“No record of these sales is forthcoming, and no one has been called by the plaintiff from Harakhchand Shivji & Co.; but plaintiff stated in his evidence that his process was used for that firm in the ordinary course of their business, and he believes it is being used even now.
“Plaintiff also said that he bleached as much as he was required to do, and he would have bleached even more, but did not, as Harakhchand Shivji & Co. were awaiting the results of the sales in the market. It was pointed out by the Appeal Court in the same judgment to which I have referred before that in numerous cases a sale of articles treated by the plaintiff’s new process in open market might amount to a public user of the process, because the article might be of such a character that the secret of its manufacture could easily be ascertained and its sale would involve a disclosure of that secret and thus amount to a public user of the process. That is, however, only a way of making the process publicly known, for a publication may take various forms, but the publication of the invention by sale of the. articles treated by it for the purposes of trade by the patentee or by others may constitute a prior user even if there is no publication.”
The court said that:
“In Hudson, Scott & Sons, Ld. v. Barringer, Wallis and Manners Ld. (1905) 23 R.P.C. 79, rough and incomplete samples or specimens of tin-plate boxes were used, to obtain orders from intending customers, and though the method of the manufacture was not apparent from the samples, and there was therefore no publication, it was still held that there was a prior public user before the date of the patent. That is the English law, and, with due respect, I do not agree with the Appeal Court that on this point there is a difference between the law in England and Section 38 of our Act. But as that is the view of the Appeal Court, I am bound to follow it;”
Hence, the court held:
“that the sales of the betel-nuts in public did not amount to a public user of the invention on account of the nature of the article treated by it.”
Additionally, the court observed that:
“I may point out that in the earlier suit which went up to the Appeal Court there was no evidence of the quantities of almonds that were treated by the plaintiff’s process and then sold in the market, but according to the view of the Appeal Court, the quantity of the goods sold may be immaterial,as the secret of the process cannot be detected, whatever may be the quantity of the goods sold.”
This case can be starting point to formulate the questions on how the public use can be ascertained based on the facts of each case. This case also highlight that the secret use may not amount to public user depending upon the nature of the invention. The quality of the material sold would be immaterial.
Statement of facts
Though we have no reported precedence in India on what method shall be adopted to ascertain public use, we may look for the method adopted by Mr. Walker, a most eminent authority on patent law. In his valuable work on that subject, Mr. Walker says that the boundaries of novelty can be delineated “only by enumerating and explaining those classes of facts which fall within them, but which fall. without the boundaries of actual newness; those classes of facts which negative newness, but which do not negative novelty.“ Later on, many rules or tests were employed by the courts in determining public use to question novelty by applying the clear and positive terms of the statute and by applying it to new statements of fact. However, the fact that remained constant was that the determination of novelty in view of public use is a matter of ascertainment of the statement of facts in each case. For instance, in Yahoo v. Controller [2011 SCC online IPAB 106 : [20011[ IPAB 106], on appeal, the Intellectual Property Appellate Board looked into this aspect in drawing a conclusion that the mere fact of use of invention over the internet without the cogent and convincing evidence of its use in India is not sufficient to prove prior public use. [Para 16]
“16. Prior Public knowledge and Prior use: As regards prior public knowledge the respondent No. 2 submitted that use of any invention on the internet amounted to use in India. This is accepted by the Controller by referring to the phrase in the complete specification “search services are the most frequently used tool on the internet after email services”. After extracting this, the Controller had held that therefore the use of an invention on the internet amounts to prior public knowledge and prior use. There is no mention in the impugned order of the specific documents or any other evidence to show this invention was used on the internet in India before the priority date. To holdthat this was public working, there must be clear evidence of public knowledge. Without such evidence of public knowledge just by using a catch-all phrase like ‘frequently used tool’ the patent cannot be rejected on this ground. Any finding which is not based on reason cannot be accepted and is set aside.”
The IPAB rejected the finding of the Controller on the prior public user being not based on the reasons. Earlier in the Lallubhai Chakacha Jariwala v. Chimanlal Chunilal case, the Bombay High Court also ascertained the statement of fact to prove the public user and ruled that:
“Plaintiff, however, stated that the chemical solutions and mixtures were prepared by himself, that he. alone knew the weight of the bleaching powder he used for the purpose of the solution, and that no one was allowed to be present during the part of the process known as gasification. The fact that Harakhchand Shivji & Co. took steam, water and electric energy from Jasco Co. which was sold to the defendants is immaterial. There is not, in my opinion, sufficient and cogent evidence to establish that before the application plaintiff had made his process was publicly known, nor any reason for doubting the plaintiff’s word that secrecy was observed. Nor has it been shown that betel-nuts were treated “by other merchants according to the plaintiff’s process before the date of the application.”
Exception to public working
Section 32 provides protection even for public working where such working was affected for the purpose of reasonable trial only and it was reasonably necessary having regard to the nature of the invention, that the working for the purpose should be affected in public. But such working should be effected in India any time within one year before the priority date of the invention claimed.
32. Anticipation by public working.—
An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that at any time within one year before the priority date of the relevant claim of the specification, the invention was publicly worked in India—
(a) by the patentee or applicant for the patent or any person from whom he derives title; or
(b) by any other person with the consent of the patentee or applicant for the patent or any person for whom he derives title, if the 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.
Conclusion
It is the tenet of the patent law that the patentee received the grant of a patent entirely at his own risk. The grant of patent does not come with the presumption of validity. Any granted patent is liable to be revoked at any time after the grant upon the proof of use or knowledge of the invention prior to the inventor. The inventor’s only mean of ascertaining whether such use existed is through a private inquiry. Regardless of what argument a patentee and their attorneys place before the courts to counter the attack of public use, it serves as a reminder to inventors to avoid disclosing the details of an invention before they are ready to file a patent application. Where a disclosure has occurred, they should remember to preserve the argument that it wasn’t actually enabling. In the Yahoo case, for example, the appellant was successful in proving lack of cogent and sufficient evidence to prove public user, and in Lallubhai Chakubhai, the court was convinced that the use was secret. Expert advice could save a patent from invalidation on the ground of public use even where the use is by the inventor himself.