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!
