A Conduit for INVALID PATENTS – Section 13(1)(b)

First Publication Date: 8th December 2010.
 
Section 13 of the Indian Patent Act requires the Examiner, to whom an application for a patent is referred to, to search for previous publications which anticipate the invention claimed in the referred patent application.
Section 13 recites
“Search for anticipation by previous publication and by prior claim
(1) The examiner to whom an application for a patent is referred under section 12 shall make investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification-
(a) has been anticipated by publication before the date of filing of the applicant’s complete specification in any specification filed in the pursuance of an application for a patent made in India and dated on or after the 1st day of January, 1912;
(b) Is claimed in any claim of any other complete specification published on or after the date of filing of the applicant’s complete specification, being a specification filed in pursuance of an application for a patent made in India and dated before or claiming the priority date earlier than that date.
(2) The examiner shall, in addition, make such investigation for the purpose of ascertaining whether the invention, so far claimed in any claim of the complete specification, has been anticipated by publication in India or elsewhere in any document other than those mentioned in sub-section (1) before the date of filing of the applicant’s complete specification.”
It may be noted that the objective of section 13 of the Indian Patent Act is for the examiner to uncover all possible prior art in the form of publications which anticipate/disclose the claimed invention in the referred application.
To achieve the afore mentioned objective, section 13(1)(a) requires the examiner to consider Indian patent applications (filed on or after 1st January 1912) which disclose the claimed invention of the referred application and which are published before the date of filing of the referred application. Under section 13(1)(a), the prior art in the form of publications is limited to Indian patent applications.
Further, Section 13(2) requires the examiner to consider any documents, including patent applications, published outside India in determining the novelty of the claimed invention of the referred application. Further, section 13(2) also requires the examiner to consider the any document (other than Indian patent application publication) published in India that discloses the claimed invention of the referred application.
With section 13(1) (a) and section 13(2), the objective of section 13 may be achieved in part where all the documents published prior to the filing date of the referred application are uncovered. Further, with patent applications being kept secret until 18 months (at least in the event where request for early publication has not been filed) from their filing/priority date, such patent applications which are filed before the filing date of the referred application should also constitute as a prior art and should anticipate the claimed invention of the referred application if such application discloses the subject matter of the claimed invention. In other words, the application filed before the filing date of the referred application should be considered as a prior art based on the disclosure in the specification, claims and drawings.
However, section 13(1)(b) requires the patent examiner to consider an Indian patent application filed prior to the filing date of the referred application and published after the filing date of the referred application as prior art based ONLY on claims. This requirement of section 13(1)(b) disregards the disclosure of the subject matter in the specification and drawings of the earlier patent application from being considered as prior art and hence does not add any value to the objective of section 13. As a result, the invention claimed in the referred application will receive a patent grant if the Indian patent application publication as defined in section 13(1)(b) does not claim the subject matter of the claimed invention of the referred application although such subject matter is disclosed in the specification and drawings of such Indian patent application publication.
The operating nature of section 13(1)(b) as discussed above may accommodate grant of a potentially invalid patent. Therefore, in my opinion, with the above backdrop, section 13(1)(b) needs a reconsideration. One of the possible amendments to section 13(1)(b) would be as follows:
“The examiner to whom an application for a patent is referred under section 12 shall make investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification-…….
(b) is disclosed in any other complete specification published on or after the date of filing of the applicant’s complete specification, being a specification filed in pursuance of an application for a patent made in India and dated before or claiming the priority date earlier than that date…..”
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