Grace Period Exemptions on Scientific Publications under the Indian Patent Law
The main requirements for granting a patent are that one's invention must be novel, non-obvious and capable of industrial application. However, there are instances when inventors or researchers working on an invention have to publish their works in scientific journals before they officially file a patent application. What happens in such situations? Section 31(d) of the Act provides for an exception that allows them to apply for patents.
This article seeks to explore the grace period exemptions on scientific publications under the Indian Patent Law.
What is Section 31(d) of Indian Patent Law?
Section 31(d) of the Patents Act, 1970 states that —
“An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of 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 twelve months] after the opening of the exhibition or the reading or publication of the paper, as the case may be.”
To understand the provisions of Section 31(d), first, one must know that Section 31 of the Act has been written in negative language. It starts with the following line—"An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of.”
Hence, the main purpose of Section 31 is to list out the circumstances that are exceptions to those circumstances that are considered "anticipatory" under Section 13 of the Act.
It should be noted here that non-disclosure of an invention before applying for a patent is necessary. If details of a new invention have somehow been revealed, it will be seen as a compromise on the novelty of the said invention. However, there are certain exceptions under the Indian Patent Law where an invention’s disclosure by the inventor will not be cited against their patent application. Section 31(d) of the Act is one such exception.
If an inventor reveals the details of his/her inventions in front of a learned society or gets it published in the transactions of a society, it’ll not be considered to be prior art only if the inventor files a patent application within a period of 12 months of such a disclosure.
Meaning of “Learned Society” and “Transactions”
There is a lot of ambiguity when it comes to the legal definition of a “learned society” and “transactions” within such societies. The Act doesn’t offer any guidance regarding the definitions of these terms. Moreover, considering that there has been no significant precedence in India, the provision has remained open to various interpretations.
One can trace Section 31(d)’s origin to Section 51(2) of the UK Patents Act, 1949. The terms "learned society" and "transactions" weren't well-defined even in this provision and UK courts had interpreted them in their way.
For instance, in Ralph's Application [1978] FSR 226, UK Patent Office stated that the term "learned society" can be defined as a properly constituted society that comprises people who wish to promote and organise a discussion forum for the study of specific subjects.
The UK Patent Office provided further elaborations on the terms “learned society” and “transactions.” It specifically stated that there is no qualitative or quantitative definition of the term “learned”. While it can be defined as a society formed to promote “learning”, the meaning and scope of the word “learning” remain undefined.
However, usually, societies aspiring to get the epithet “learned societies” publish records of their proceedings. This is primarily because these societies are concerned with the analysis of knowledge and not "learning” or knowledge as such.
The reason why “learned society” was not defined properly lies in the fact that it would have required the legislature to decide on a qualitative threshold for the word “learned.” To avoid a broad interpretation of "learned," the word “transaction” was used instead of “publication”.
The Appeal Tribunal interpreted “transactions” in Ethyl Corporation's Patent [1963]. It was defined as "the published record of the proceedings of the learned society.”
It was stated that a publication’s mandatory requirement to be considered as a “transaction” is that it must be published under the auspices of and be the responsibility of an Association, which is the “learned society.”
It seems that the Indian Patent Office (IPO) has reached an understanding concerning the definition of a "learned society". In one instance, the Controller cited the UK case and said that the Indian Pharmacological Society along with its journal- Indian Journal of Pharmacology, should be considered a learned society.
In another instance, the Controller had granted a patent where an applicant provided an affidavit from a scientific journal's editor who had said that it was a learned society publication.
There have been many other instances as well when Controllers approved patent applications where the applicant had published their inventions in a scientific journal. As a result, it can be inferred that scientific journals are an integral part of “learned societies.” So, it seems that the description provided of "learned societies" by Ralph’s Application in the UK case may apply to defining "learned societies" in the Indian context as well.
However, one must consider considerable variation that exists when it comes to what the IPO views as an acceptable "transaction" under Section 31(d) of the Act. So, while the publication of a scientific article has been considered an acceptable "transaction" in certain cases, there have been instances where the Controllers have decided against it in others.
Similar Provisions in Different Countries
In the United States of America (USA), a one-year grace period is allowed for printed publications. Unlike Indian patent laws, US patent laws provide a broader scope of exemptions.
There is no exact definition of a “learned society” even in Australian law. However, the Australian Patent Manual of Practice and Procedure, as a guide, specifies that a “learned society” is a non-commercial entity that wishes to organise a forum and promote the development of certain subjects. There must be a discussion of ideas and dissemination of knowledge and information through the publishing of its proceedings.
So, a university or a government department will not be considered a learned society even if it actively organises conferences or seminars for disseminating and analysing technical information. In addition, while the participants of a conference or a seminar can form a learned society, forming it merely for the duration of a single conference will not establish it as one. Moreover, as was evident from the Parsons Supra Judgement, such a society can have several other objectives including sporting and social pursuits.
Proposed Form for availing Grace Period Exemption
The Indian Ministry of Commerce and Industry has published Draft Patent (Amendment) Rules, 2023 which proposes a new Form 31, under a new rule 29A, to file a formal request along with the prescribed fee for availing the Grace period exemptions as prescribed under Section 31. The applicants are required to provide details of public disclosure of the invention before the date of filing the patent application.
Conclusion
To sum up, Section 31(d) of Act states the provisions of an exemption concerning what may not be deemed to be anticipated. It states that if an invention in a patent application is revealed by “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” it will not be considered as “anticipated” only if a patent application is filed within 12 months of such disclosure.
It should be noted that the terms “learned society” and “transactions” have not been defined by Indian Patent law. Neither have they been judicially tested. As a result, these terms are susceptible to varied interpretation by Patent Offices. Usually, the Indian Patent Office considers scientific publications of scientific societies as “learned societies”.
IPO has proposed a new Form 31 for sharing the details of earlier public disclosure within the grace period to avoid anticipation by public display under Section 31.