When is an invention not anticipated by prior publication? Section 29 of Indian Patent Act

section 29 indian patent act

Section 29 of the Indian Patent Act deals with certain exceptions to anticipation of an invention by prior publication. This section covers multiple scenarios when a claimed invention is not considered to be anticipated if the same invention was already published before a patent application covering this claimed invention is filed. Let’s dissect the various clauses and understand the underlying meaning behind them below.

Section 29 (1)

This section states “An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published in a specification filed in pursuance of an application for a patent made in India and dated before the 1st day of January, 1912.

This clause implies that a claimed invention is not anticipated if the subject matter was already published in a patent application filed in India before January 1, 1912.

Section 29 (2):

This clause states “Subject as hereinafter provided, an invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published before the priority date of the relevant claim of the specification, if the patentee or the applicant for the patent proves—

             (a) that the matter published was obtained from him, or (where he is not himself the true and first inventor) from any person from whom he derives title, and was published without his consent or the consent of any such person; and 

              (b) where the patentee or the applicant for the patent or any person from whom he derives title learned of the publication before the date of the application for the patent, or, in the case of a convention application, before the date of the application for protection in a convention country, that the application or the application in the convention country, as the case may be, was made as soon as reasonably practicable thereafter: 

Provided that this sub-section shall not apply if the invention was before the priority date of the claim commercially worked in India, otherwise than for the purpose of reasonable trial, either by the patentee or the applicant for the patent or any person from whom he derives title or by any other person with the consent of the patentee or the applicant for the patent or any person from whom he derives title.

This clause covers 2 conditions (a) and (b). If both conditions are satisfied by the patentee or applicant, then his invention is not anticipated by prior publication of the subject matter.

The first condition (a) that the patentee or applicant should prove is that the subject matter published prior to filing the claimed invention was obtained from him and published without his consent.

The second condition that the patentee or applicant should prove is if he learnt of the above-mentioned prior art publication before the date of filing the claimed invention in a patent application, the patent application was filed as soon as reasonably practicable. There is no clarity in the patent act on the phrase ”reasonably practicable” but it may be interpreted as without undue delay.

There is an exception as well that this clause covers. The above 2 conditions would not be applicable If the invention was commercially worked in India before the priority date of the above-mentioned patent application, except for the purposes of reasonable trial. This means that unless the invention was commercially worked for the purposes of reasonable trail before filing a patent application, it will be anticipated by a prior publication regardless of the above 2 conditions being true. For this above 2 conditions to be successful, an invention must not be commercially worked in India (for any other purpose) before file the patent application.

Section 29 (3):

This clause states “Where a complete specification is filed in pursuance of an application for a patent made by a person being the true and first inventor or deriving title from him, an invention claimed in that specification shall not be deemed to have been anticipated by reason only of any other application for a patent in respect of the same invention made in contravention of the rights of that person, or by reason only that after the date of filing of that other application the invention was used or published, without the consent of that person, by the applicant in respect of that other application, or by any other person in consequence of any disclosure of any invention by that applicant.”

This section implies that if a patent application is filed by the true and first inventor, the claimed invention in that specification is not anticipated by another patent application covering the same claimed invention but made in contravention of the rights of the true and first inventor. The claimed invention filed by the true and first inventor is also not anticipated if after the other application is filed, the invention covered in this other application was used or published by a) the applicant of the other application without the consent of the true and first inventor or b) another (third) person on disclosure by the applicant of the other application to that third person.

Hope this article was helpful in understanding some exceptions to anticipation by prior publication.

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