India follows the principle of absolute novelty which may be construed by a joint reading of sections 2 (l) and 13 of the Indian Patents Act, 1970.
For a patent to qualify the test of absolute novelty, it must be determined that it is not anticipated by previous publication in India and elsewhere (section 13(1)(a) and 13(2)) or by prior claiming in India (section 13 (1)(b)).
It is pertinent to mention that the principles of anticipation by previous publication and by prior claim are to be investigated under section 13 of the Act and if found against the patent claim, it would form a ground for revocation under Section 64(1)(e) of the Act and when there are materials on record to show that there was prior publication of the claim, the patent claim is liable to be rejected.
ANTICIPATION BY PREVIOUS PUBLICATION
In the event, where an invention is anticipated by prior publication, the Controller may refuse the complete specification unless the applicant proves that the priority date of his claim is not later than that of the prior art or amends his complete specification to the satisfaction of the Controller.
ANTICIPATION BY PRIOR CLAIMING
To establish prior claiming, it must be shown that the subject matter of a claim in the applicant's specification forms the subject matter of a distinct claim in the cited specification. It is not sufficient if the claim is merely comprehended in the subject matter of a claim in the cited specification.
In cases where an invention is anticipated by prior claiming as provided under section 13(1) (b) of the Act, the Controller may direct that a reference to the prior specification be inserted in to the applicant’s specification by way of notice to the public, unless the applicant shows that the priority date of his claim is not later than that of the claim of cited document or amends the specification to the satisfaction of the Controller.
Format for incorporation of reference is “Reference has been directed, in pursuance of section 18(2) of the Patents Act 1970, to the specification filed in pursuance of application No…”
PRESUMPTION OF VALIDITY:
Section 13 (4) of the Act, explicitly states the following:
Search for anticipation by previous publication and by prior claim-
(4) The examination and investigations required under Section 12 and this section shall not be deemed in any way to warrant the validity of any patent, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon.
In re Bishwanath Prasad Radhey Shyam vs Hindustan Metal Industries, it was observed that “it is noteworthy that the grant and sealing of the patent, or the decision rendered by the Controller in the case of opposition, does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in revocation or infringement proceedings. It is pertinent to note that this position, viz. the validity of a patent is not guaranteed by the grant, is now expressly provided in Section 13(4) of the Patents Act, 1970.”
Under the Act, it is manifestly clear that the plaintiff must establish a prima facie case about the existence of his monopoly right and its infringement by the defendant independently of the grant of patent as such to him. It is not sufficient to say that owing to Section 48 of the Act the patentee has the exclusive right by himself, his agents or licensee to make use, exercise, sell or distribute the patented article in India. The Act expressly denies presumptive validity to the grant of a patent.
REVOCATION, PRE-GRANT OPPOSITION & POST GRANT OPPOSTION
In any suit for infringement of a patent every ground on which it may be revoked shall be available as a ground of defence.
A division bench of the Honorable Delhi High Court held that it is not sufficient merely to have registration of the patent and that the court must look at the whole case of the patentee and the strength of the defense such as those falling under section 107 of the Act conjointly read with section 64 of the Act.
A granted patent may be revoked by any person interested in a counter claim in a suit for infringement of the patent by the High Court on the ground that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in section 13 of the Act.
Similarly, a published pending patent application may be opposed by any person against the grant of a patent under section 25 (1)(b), (c) and (d) and a granted patent may be opposed by any person interested within a period of one year of grant from the publication of grant under section 25 (2) (b), (c) and (d). In such circumstances the onus is on the opponent to prove the ground for prior publication and to submit any evidence to the fact that the invention is obvious.
DOCUMENTS THAT CONSTITUTE PUBLICATION
Farbewerke Hoechst & B. Corporation v. Unichem Laboratories, it was observed that, "had the document been placed in the hands of a competent craftsman (or engineer as distinguished from a mere artisan), endowed with the common general knowledge at the 'priority date', who was faced with the problem solved by the patentee but without knowledge of the patented invention, would he have said, "this gives me what I want?" (Encyclopaedia Britannica; ibid). To put it in another form: "Was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned?"
Further, to fulfil the requirement of being ‘publicly known’ as required under sub clauses (e) and (f) of section 64(1), it is not essential that it should be widely used to the knowledge of the consumer. It is enough if it is known to the persons who are engaged in the pursuit of the knowledge of the patented product or process either as men of science or men of commerce or consumers.
The term 'Public Use' does not mean use by the public, but use in a public manner and not secretly.
GRANT OF INTERIM INJUNCTIONS
In practice and in theory it has been observed that if the patent is new and its validity has not been established in a judicial proceeding and if it is contested that the patent ought not to have been granted, the Court will not interfere by issuing a temporary injunction.
For the proposition that where the patent is of recent origin and its validity has not been tested, the Court should not grant injunction based on the alleged infringement, as well as, the ratio that mere grant of patent does not guarantee its validity.
SECRET PRIOR ART
A patent application (and not any other public) disclosure filed in India, which is not publicly available at the filing stage of another patent application and poses an absolute bar to its novelty, would constitute secret prior art.
The secret prior art or a previously filed, subsequently published application must be filed in the same jurisdiction as that of the consequent patent application. For example, an application filed in Japan would not form secret prior art for an application filed consecutively in India.
India follows the prior claimed approach, wherein only the claimed subject matter in the prior application would form secret prior art for the ensuing the application, and not the complete specification. The prior claimed approach is difficult to pursue, since the scope of claims may be amended till the examination of the prior application concludes.