Saturday, October 13, 2012

Section 31(d) of the Patents Act: Scope of Exception to Anticipation

Section 31(d) of the Patents Act, 1970 states that an invention shall 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 reading or publication of the paper, as the case may be.

The Act does not define the word “learned society” nor does it elaborate on what constitutes a “transaction”. In the absence of these terms, is it possible to bring anything and everything under the sun within the scope of the terms?

The scope of both the terms must be circumscribed in a manner that the scope does not run counter to the legislative intent reflected in the choice of such words. This is because sometimes undefined terms are subjected to unduly broad interpretations which do not find statutory sanction.

How does one infer legislative intent with respect to Section 31(d)? It would help to peruse provisions of the Act which deal with anticipation, namely Sections 29-34.

In particular, Section 34 clearly states that circumstances not covered under Section 29-33 would anticipate a patent specification. In other words, the Act defines what is not anticipatory, and those which do not fall within the penumbras of the windows carved out in Sections 29-33, shall be deemed to anticipate a patent specification. Negative definitions are typically interpreted strictly since they are caveats as to what is not permissible.

Therefore, words such as “learned society” and “transaction” too must be interpreted in a manner which gives effect to the negative definition of anticipation.

The term “learned society” usually alludes to a peer group which has been constituted with the object of promoting knowledge and scholarship in a specific field of human activity. The interpretation of “learned society” depends on the use of the word “transaction”.

This is because, under Section 31(d), for the publication to not anticipate a patent specification, the nature of the publication must be a “transaction”. In other words, the use of the word “transaction” as opposed to a blanket “publication”, serves a specific purpose. Not all publications of a learned society qualify for the exemption under Section 31(d), only publications in the “transactions of a learned society” can rely on the provision to fend off allegations of anticipation.

Section 31(d) appears to have English origins. Section 51(2) is reproduced below:

“An invention claimed . . . shall not be deemed to have been anticipated by reason only of—(d) 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”

What is relevant is that the English Act too does not provide definitions of “learned society” and “transactions”.  In Ethyl Corporation’s Patent (1963 RPC155) and Ralph M. Parsons Application (1978 FSR 226), the UK Courts had an opportunity to elaborate on the terms wherein it was held thus:

1.  The reason for not defining the term “learned society” is because it would have required the legislature to set a qualitative threshold for the word “learned”.
2.  To avoid unduly broad interpretation of the word “learned”, the term transaction was used in place of “publication”.
3.  On the term transaction, in Ralph M. Parsons Application, it was observed as below:

An essential prerequisite of a publication, if it is to be regarded as “transactions” is that it should be published under the auspices of and finally be the responsibility of the Association—the learned society—whose organ of publication it is.”

4.  These “transactions” are for the private consumption of members of the learned society as a recordal of the society’s proceedings, and which are not published for consumption by non-members in return for a fee or otherwise. In other words, if the publication is accessible to non-members, it would lose the quality of “publication in a transaction”, and could hence anticipate a patent specification.

The problem with the provision is that the way “learned societies” like SAE or IEEE function, the distinction between a “publication in a transaction”, and “publication of a transaction” is nearly moot because articles which are published in “transactions” are available for non-members too.

So how would Courts purposively construe the provision to ensure that the spirit of “limited exceptions to anticipation” is not undermined? Comments are welcome!


  1. Thanks for the incisive post. Well thought of!
    Consider this case Sai. An articles in a journal is available to non-members on payment of a fee but only after they become members of the journal.What would happen in such a case? Will it be a publication in the transaction of a learned society?
    Also, do only peer reviewed journals qualify for this exclusion. That being the case, abstracts of such journals may or may not be available online. How will examiners even come to know of such publications?

    1. Thanks Disha :-) I am not really sure of this distinction between paid subscription and free membership because the provision does not seem to prescribe a parameter based on conditions for subscription. Again, as far as peer-reviewed journals are concerned, I dont think the scope of the provision can be limited to peer-reviewed journals. The latitude of the provision and the absence of definitions for key terms makes this provision vulnerable to mischievous interpretation.

      It would probably be better to amend Section 31(d) and align it with the position in the US wherein the one year grace period appears to be applicable to publication by the inventor, regardless of where it is published.

      Best Regards,

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  3. Sir wrt the reply to the 1st comment, I don't think there is a need to realign it with the US law with regard to the 1 year grace period. Perhaps it is already embedded in the lines itself, though with ambiguity. If we can have a look at

    "..... 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 reading or publication of the paper, as the case may be.", would mean even if he had published but filed the patent before the 12 month period, his patent may not be termed as anticipated.