anticipation & secrecy directions

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Indian Patent Act, 1970 Chapters 6 and 7

Bindu SharmaMSc, LLB, Regd. Patent Agent.

Origiin IP Solutions LLPBangalore

Anticipation

Dictionary Meaning:

A prior action that takes into account or forestalls a later action

Visualization of a future event or state

Meaning w.r.t. to Patents:

Any description of the invention which destroys the element of novelty of the invention

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What are not Anticipations

Section 29: Anticipation by previous publication

1. If published before the 1st day of January 1912

2. A publication before priority date will not be deemed as anticipation if the patentee or the applicant proves that:

a. matter was obtained from him or the inventor or assignor and b. publication was done without their knowledge, and c. application for patent was therefore made immediately after learning

that the publication had happened.

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Section 29: Anticipation by previous publication

Illustration: Sheela has an invention. Rahul published it in a journal of which Sheela is not aware of. On getting information on publication, Sheela immediately files patent application. Such invention is not considered anticipated.

The invention shall not be commercially worked in India before the priority date of the claim [than for the purpose of reasonable trial] by the inventor, patentee or applicant, their assignor or assignee or some one else having their consent.

IllustrationCommercially worked: from 20th June 2008Priority date: 15th Aug 2009Invention IS ANTICIPATED

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Section 29: Anticipation by previous publication An invention claimed in an application made by the inventor or his

assignee should not be deemed as anticipated by another application for patent in respect of the same invention made in contravention of the rights of that person, or its publication or use by the other applicant or any other person in consequence of its disclosure by him without the consent of the first mentioned applicant.

X is true and first inventor for the invention and files compete specification on 10th July 2008.

Y files application for same invention on 15th Dec 2008 Invention of X is not deemed to be anticipated for the reason that his

invention is published or used or disclosed by Y or any other person without his consent.

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Section 30: Anticipation by previous communication to Government

Government can investigate the invention and if such investigation is done before priority date of the patent, it is not considered to be anticipated.

Invention claimed in the complete specification is not deemed to be anticipated if it is communicated to the Government or to any person authorized by the Government to investigate the invention or its merits, or of anything done, in consequence of such a communication, for the purpose of investigation.

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Section 31: Anticipation by public display etc. If the application for the patent is made by the inventor or his assignee not later

than 12 months after the opening of the exhibition (notified by the Central Government) where the invention is first displayed and published by the applicant or used with his consent, it will not be deemed as anticipated.

An invention claimed in a complete specification shall not be deemed to have been anticipated if:

(a) The invention has been displayed or used with the consent of the true and first inventor [or assignee or legal representative] at an industrial or other exhibition to which the provisions of this section have been extended by the Central Government by notification in the Official Gazette.

(b) Any description of the invention has been published in consequence of the display or use of the invention at any such exhibition or

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Section 31: Anticipation by public display etc.

(c) The use of the invention, after it has been displayed or used at such exhibition and during the period of the exhibition, by any person without the consent of the true and first inventor or a person deriving title from him or

(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, if the application for the patent is made by the true and first inventor or a person deriving title from him not later than 12 months after the opening of the exhibition or the reading or publication of the paper.

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Section 32: Anticipation by public working This deals with public working of an invention claimed in a complete specification for reasonable trial because the nature of the invention is such that it is necessary to do so.

This type of public working will not be deemed as anticipation if performed within one year before the priority date by the patentee, applicant (or assignor) or by any person with their consent.

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Section 33: Anticipation by use and Publication after provisional specification

Once the priority is claimed by filing provisional or convention application, the invention is not deemed to be anticipated if it is used publicly or published. And the Controller shall not consider such invention as anticipated when complete specifications are filed for the same invention that claims priority from the provisional application filing. The Controller shall not refuse to grant the patent for the reason of anticipation.

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Where a complete specification is filed or proceeded with in pursuance of an application which was accompanied by a provisional specification, the Controller shall not refuse to grant the patent, and the patent shall not be revoked or invalidated if:

◦ Any matter described in the provisional specification or ◦ In the specification treated as a provisional specification was used in India

or published in India or elsewhere at any time after the date of the filing of that specification.

Illustration Mohit files provisional application on 24th June 2009 and complete specification

on 22nd June 2010. He claims priority from the day of provisional filing. The invention of Mohit shall not be considered anticipated if he uses or publishes his invention after filing the provisional application.



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Where a complete specification is filed in pursuance of a convention application, the Controller shall not refuse to grant the patent, and the patent shall not be revoked or invalidated for the reason that any matter disclosed in any application for protection in a convention country upon which the convention application is founded was used in India or published in India or elsewhere at any time after the date of that application for protection.

Illustration Anderson files a patent application in Switzerland (convention country) on 15th

August 2008 and subsequently in India on 10th August 2009. His invention is not considered as anticipated if his invention was used or published in India or elsewhere anytime after 15th August 2008.



Section 34 : No anticipation if circumstances are only as described in Sections 29, 30, 31 and 32

Controller shall not refuse to grant a patent, and a patent shall not be revoked or invalidated by reason only of any circumstances which, by virtue of section 29 or section 30 or section 31 or section 32, do not constitute an anticipation of the invention claimed in the specification.

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CHAPTER 7Provisions For Secrecy of Certain Inventions

(Section 35 – 42)

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Section 35: Secrecy direction relating to inventions relevant for defense purposes

If invention is relevant for defense purposes, Central Government may prohibit publication

Controller may give direction for prohibiting or restricting the publication of information, if invention is one of a class notified by Central Government as relevant for defence purposes

Controller will give notice of the application and of the direction to the Central Government.

If the Central Government considers that the publication of the invention would not be prejudicial to the defence of India, it will inform the Controller and the Controller will revoke the secrecy direction and inform the applicant accordingly.

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Provisions For Secrecy Of Certain Inventions

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Section 36: Secrecy directions to be periodically reviewed

Central Government at intervals of six months or on a request made by the applicant to Controller may reconsider and if it appears to the Central Government that the publication of the invention would no longer be prejudicial to the defence of India

In case of an application filed by a foreign applicant it is found that the invention is published outside India it shall forthwith give notice to the Controller to revoke the direction and the Controllers shall thereupon revoke the directions previously given by him.

The result of every re-consideration shall be communicated to the applicant

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Section 37: Consequences of secrecy directions

No patent shall be refused the grant by the Controller till the time secrecy directions are imposed on the application.

Application will not be published

The Controller shall not pass order to reject the application

No appeal shall lie from any order of the Controller

Application may proceed up to the stage of grant of the patent, but the application and the specification found to be in order for grant of the patent shall not be published, and no patent shall be granted in pursuance of that application

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If, during the continuance in force of the directions, any use of the invention is made by or on behalf of, or to the order of the Government, the provisions of

◦ Section 100 (Power of Central government to use inventions for the purpose of Government),

◦ Sections 101 (Right of Third parties in respect of use of inventions for purposes of Government ) and

◦ Section 103 ( Reference to High Court of disputes as to use for purposes of Government)

shall apply in relation to that use, as if the patent has been granted for the invention.

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If the Central Government finds that the applicant has suffered hardship by reason of continuation of such direction, it may make payment of a suitable sum to the applicant by way of solatium, having regard to novelty and the utility of the invention and the purpose for which it is designed

If a patent is granted to the invention in respect of which secrecy direction have been issued, no renewal fee is payable in respect of the period during which such direction was in force

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Section 38: Revocation of secrecy directions and extension of time

When secrecy direction is revoked by the Controller, he may impose, extend the time for doing anything required or authorize to be done by or under this Act in connection with application, whether or not that time has previously expired.

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Rule 72: Communication of result of reconsideration under

section 36(2)

1. The result of every reconsideration shall be communicated to the applicant within fifteen days of the receipt of the notice by the Controller.

2. The extension of time to be given for doing anything required or authorized to be done under section 38 shall not exceed the period for which directions given by the Central Government under sub-section (1) of section 35 were in force.

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Section 39: Residents not to apply for patents outside India without prior permission

Applicant who is resident of India and interested in filing application in foreign country shall:

Either file application first in India before foreign filing and wait for 21 days to receive any objections from the Controller or

Shall take permission from the Controller on Form-25 [Request for permission for making patent application outside India] before filing application in foreign country in order to safeguard national defense and security.

There shall not be any secrecy direction imposed on the application [Section-35 (1)] in relation to the application in India, or all such directions have been revoked.

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Section 39: Residents not to apply for patents outside India without prior permission

If the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permission to file patent in foreign country without the prior consent of the Central Government.

This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.

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Rule 71: Permission for making patent application outside India under section 39

1. Form 25 [Request for permission for making patent application outside India], Fees: 1000/4000 INR

2. The time within which the Controller dispose of the request in case of inventions relating to defense and atomic energy applications, shall ordinarily be within a period of twenty one days from the date of filing of such request.

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Section 40: Liability for contravention of section 35 or section 39

Deemed to be withdrawn or If the patent has been granted already, it is deemed to be

revoked

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Section 41: Finality of orders of Controller and Central Government

All orders of the Controller giving directions as to secrecy as well as all orders of the Central Government under this Chapter shall be final and shall not be called in question in any court on any ground whatsoever.

Section 42: Savings respecting disclosure of Government The Controller cant be prevented from disclosure of information concerning

an application for a patent or a specification filed in pursuance thereof to the Central Government for the purpose of the application or specification being examined for considering whether an order under this Chapter should be made or whether an order so made should be revoked.

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Section 20(1)

As from the commencement of this Act, no patents shall be granted for inventions which in the opinion of the Central Government are useful for or relate to the production, control, use or disposal of atomic energy or the prospecting, mining, extraction, production, physical and chemical treatment, fabrication, enrichment, canning or use of any prescribed substance or radioactive substance or the ensuring of safety in atomic energy operations.

The Atomic Energy Act, 1962

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Thank you

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