Anticipation in case of patents (29-34)
Written by: P Renuka Sai, Damodaram Sanjivayya National Law University
Under patent law, anticipation refers to the previous discovery or disclosure by another of the claimed invention, or the inventor’s declaration of the requested development by printing, selling, or promising to sell before the inventor seeks a patent. In other words, if someone else has used or used the invention before applying for a patent by the patent applicant, the patent applicant would not be entitled to a patent.
Anticipation is a reason why a patent is invalidated or denied, as it means that the alleged invention lacks novelty. Patent invalidity on the grounds of lack of innovation or excitement requires that the technology was recognised or used by others before the patentee invented it.
To order for an invention to be patentable, it must be distinct from all papers written, existing methods and goods put on the market. Before the application for a patent is filed, the invention may not already have been made available to the public. Here an innovation simply means “making something other people haven’t noticed.” A patent is a quid pro quo (a favour, or benefit, in exchange for something). The patentee, therefore, obtains rights over his invention.
The subject matter of a patent application can fall into the public domain and make it awaited either by prior publication in patent or by some sort of non-patent literature, or by the public exhibition, usage, or commercial sale. The grace period may be available in some countries for which it is not considered as anticipation if a patent application is filed.
Anticipation is regarded as a criterion for denying or invalidating a patent because it means that the alleged invention lacks novelty.
The prior publication needs to cover nearly every aspect of the argument for the excitement to happen. Two of one paper and the others of other publications can not and should not appeal at one thing.
Therefore, as to be anticipated, a prior patent must contain all the necessary instructions to do what the potentially invalid patent achieves. If the breakthrough would be made using the declaration, a declaration does not make innovation accessible because it will not be the result of the disclosure.
Testing for Anticipation
Anticipation testing is so close to a patent infringement testing procedure that it is often assumed that whatever would infringe a claim if it came later, anticipates if it happened before. First of all, one constructs or interprets the argument to decide what it means exactly. Afterwards, one applies the assertion to the application or patent for comparison. The argument acts as a checklist, and the argument is considered to be expected if any item of the claim fits the comparison.
Anticipation allows all elements of the disputed or anticipated argument to appear in a single reference. This is because the fusion of the teachings of one reference with the instructions of another reference may be innovative enough to be called a new patent.
Furthermore, if the prior art reference considered is a patent or a written document, it is deemed to be anticipatory only if it teaches every aspect of the invention concerned. The aspect of a specific argument can be explicitly or implicitly specified in the relation. Also, if a patent claims a large genus, the claim will be expected by a reference patent which includes a single species of the genus.
Assessment of Anticipation under Patents Act, 1970
The definition of anticipation under the Indian Patent Act is negative.6 This is because the law does not define anticipation, but prescribes exceptions to an invention or claim anticipation.
Section 34 of the Act, where conditions are such as those set out in sections 29 to 33 of the Act, talks about the exceptions to anticipation. In Sections 29 through 34, the Indian Patents Act addresses what are not anticipations, rather than describing anticipation. Exceptions are stated in the Indian Patent Act in which, notwithstanding public disclosure, the patent application can be filed and such public disclosure shall not be deemed to have been expected. These are:
Section 29: Anticipation by Previous Publication
Suppose the invention was published before the patent application was submitted, whether the applicant or the patent proprietor proves that the printed matter was obtained from him or from any person from whom he receives title without his permission or the permission of any such person. In that case, a full specification submitted shall not be deemed awaited.
For a publication to classify as prior art, it should have been published as:
- Any application filed in India, on or after 1 January 1912 for securing a patent.
- Published elsewhere in India, and in other documents as well.
- The earlier publication will reveal the same technology the patentee claims to have invented as the product. In such a case, the representation is anticipated7.
- Applicant must prove that his issue was released without his consent;
- Applicant must confirm that he had applied for the patent as soon as he was aware of the prior publication;
- However, exemptions can not be taken if the technology was commercially employed in India.
Section 30: Anticipation by previous communication to the Government
Unless the invention has been disclosed to the government or another individual approved by the government to investigate the invention, then it is not known that a full specification submitted has been expected.
Section 31: Anticipation by Public Display
This is a relevant section which deals with public show anticipation at an industrial or other exhibition. According to this section, if the invention was displayed on a presentation to which the Central Government extended the provisions of the instant section; or if the invention was mentioned in a publication as a consequence of the show of the invention at such an exhibition; or the declaration of an invention to an acquired society or the publishing of an invention in the transaction of that society; given that the application is filed within 12 months of the preceding public display, the full specification submitted shall not be considered to have been foreseen.
Section 32: Anticipation by Public Working
Suppose the invention was filed within 12 months of public work on the invention for a fair jury, taking into account the existence of the invention. In that case, a full specification filed shall not be considered to have been expected.
Sections 31 and 32 above allow for the filing of a patent application after public showing or use of the invention for 12 months often referred to as a “grace period.” Most countries like the US and the EU also provide for the same kind of exemption. This is an incentive offered to inventors who have already demonstrated or used the invention in error or good faith before applying for the grant of patents.
Section 33: Anticipation by use and publication after a provisional specification
Unless the technology was put to use and released after the provisional application was submitted, then the entire specification provided shall not be considered to have been expected if the Anticipation falls under the above exceptions, on the grounds of section 13 of the Act, statements of requirements sent to the controller that be refused.
As its advantages are numerous, it is desirable for innovators to patent their innovations, such as building proper barriers to competitors’ entry, securing income and market prices. Patents guarantee that small or medium-sized businesses are on a level playing field with large firms due to the economic power granted by them. It is therefore desirable that the inventor would apply for obtaining a Patent before making any knowledge about the Invention available to the public, and by any means, during the patenting process, to avoid having any difficulties due to the anticipation of the invention.
Section 34: No anticipation if circumstances are as described in sections 29, 30, 31 and 32
Notwithstanding everything found in the Act, the controller shall not refuse to issue a patent, and a patent shall not be withdrawn or invalidated on account of any circumstances which do not constitute anticipation under sections 29, 30, 31 and 32.
One would preferably file a patent application before revealing the invention publicly. Nevertheless, one should also consider patent application filing in light of the provisions mentioned above. With a patent application filed under the Paris Convention, it does not lead to an expectation of public use or publication of an invention either in India or elsewhere after the claim has been filed in the Convention country.
Through the exceptions set out above, the rightful inventors or applicants are allowed to obtain the patent rights, including making the invention public or making public use of the same under some circumstances. It is necessary to protect the rights of the inventors who have published their inventions in any exhibition or checked the functioning of the invention in public out of ignorance of the laws or in good faith. Based on the above, it can be inferred that, under such conditions, the Indian Patent Act, being equal to the laws of the other developed countries, provides for an exception to the anticipation.
 3 U.S.P.Q. 2d 1966(Fed. Cir. 1987)
 Intepat Team, India: Anticipation Of Invention, Mondaq (03 February 2017, ), https://www.mondaq.com/india/patent/565118/anticipation-of-invention#:~:text=Anticipation%20by%20previous%20publication%20(Sec,any%20such%20person%2C%20then%20a
 Geethika Satti, Anticipation of Invention: What constitutes Anticipation in India?, ipleaders (December 16, 2019, ), https://blog.ipleaders.in/anticipation-invention-constitutes/
 Nidhi Anand, India: anticipation by previous publication & prior claiming, Lexology (January 26 2018, ), https://www.lexology.com/library/detail.aspx?g=7e87a96f-c83c-42d3-bc3f-cdd486a12068
 Deepak J. S., Anticipation Under Section 31(d), Spicyip (2010, May 10), https://spicyip.com/2010/05/anticipation-under-section-31d.html
 Kailash Choudhary, India: What Are Not Anticipations: Exceptions Provided Under The Indian Patents Act, Mondaq (27 June 2013, ), https://www.mondaq.com/india/patent/247416/what-are-not-anticipations-exceptions-provided-under-the-indian-patents-act?signup=true