Prior art in Patent Law is generally understood as any information disclosed to the public before a patent application’s filing date, which can affect the novelty and non-obviousness of an invention. Under the Patents Act, 1970, this includes documents like published specifications and public uses, as seen in various legal interpretations. The Act, particularly Section 13, outlines how examiners investigate anticipation by previous publication and prior claims. This section details checks against specifications filed in India since January 1, 1912, and other documents, suggesting a structured approach to assessing prior art.
Step into the future of legal expertise! Join our Advanced Certification Program in Intellectual Property Law, created by The Legal School in collaboration with Khaitan & Co. Designed for fresh law graduates and professionals, this unique course boosts your legal career. Don’t miss this opportunity—enquire today to secure your spot!
What is Prior Art in Patent Law?
Prior art refers to any information that has been made available to the public before the date a patent application is filed. This information can include things like published documents, journal articles, or even public use of an invention. In patent law, prior art is used to check if an invention is new (novel) and not obvious (has an inventive step). If an invention is already part of prior art, it cannot be patented because it isn’t considered new or inventive.
Under the Patents Act, 1970, prior art plays a central role in deciding whether an invention qualifies for a patent. The Act, which became law in 1972 and has been updated several times, sets rules to balance India’s economic and developmental needs with international patent standards. Prior art includes:
Published patents or patent applications.
Scientific articles or books.
Public use or demonstrations of an invention.
Any other publicly available information before the patent filing date.
Patent examiners use prior art to ensure that only truly new and inventive ideas get patented. For example, if someone tries to patent a machine that was already described in a journal article, the examiner can reject the application because the machine is part of prior art.
India also has a unique approach to secret prior art. Secret prior art refers to patent applications that were filed earlier but not yet published at the time of a new application.
Also, Get to Know About Infringement of Geographical Indication.
Legal Provisions Governing Prior Art in Patent Law
The Patents Act, 1970, has clear rules for how prior art is evaluated, mainly outlined in Section 13. This section is part of Chapter IV of the Act, which deals with the publication and examination of patent applications. Section 13 explains how patent examiners search for prior art to check if an invention has been “anticipated” (meaning it’s not new because it already exists in prior art). Below is a breakdown of the key provisions:
Section 13(1): The examiner checks if the invention described in the patent application has been anticipated by:
(a) Specifications (detailed descriptions) or other documents from patent applications filed in India on or after January 1, 1912, which are now publicly available.
(b) Claims (the specific parts of an invention being patented) in other patent applications that were filed earlier in India but published later, as long as they have an earlier priority date.
Section 13(2): The examiner also looks at any document published anywhere in the world (not just India) before the filing date of the new patent application. This makes the scope of prior art very broad.
Section 13(3): If a patent application is amended before the patent is granted, the examiner checks the amended version the same way they check the original. This ensures fairness and consistency.
Section 13(4): The examination process under Sections 12 and 13 (which cover patent examination in general) does not guarantee that a patent is valid. It also states that the Indian government or its officers are not legally responsible for any issues related to the examination process.
Read about What is a Trade Secret?
Treatment of Secret Prior Art
Secret prior art refers to patent applications that were filed earlier than a new application but haven’t been published yet. Since these applications are not publicly available at the time of the new filing, they are considered “secret.” However, they can still affect whether a new invention can be patented.
In India, the treatment of secret prior art is unique. The Patents Act follows a “prior claim” approach. This means that only the claims (the specific parts of the invention being patented) in the earlier, unpublished application are considered prior art—not the entire description or specification of the earlier application. This is different from some other countries, where the full content of an earlier application might be used as prior art.
For example:
Imagine someone files a patent application (Application A) for a new type of phone on January 1, 2025, but it’s not published yet.
Another person files a patent application (Application B) for a similar phone on March 1, 2025.
In India, only the claims in Application A (not the full description) would be checked to see if they anticipate Application B.
This approach is outlined in Section 13(1)(b) of the Patents Act and has been discussed in legal analyses. It makes India’s patent system distinct from countries that consider the entire content of secret prior art.
Dive into Best IPR Law Firms in India.
Importance of Prior Art Search
Before filing a patent application, inventors and companies often conduct a prior art search. This involves looking for existing information, such as patents, published applications, or other public documents that might affect whether their invention can be patented. A thorough prior art search helps applicants:
Avoid wasting time and money on an application that’s likely to be rejected.
Amend their invention to make it more novel or non-obvious.
Meet legal requirements to disclose any known prior art to the patent office.
For example, if an inventor finds a published patent that describes a similar idea, they might tweak their invention to add unique features, ensuring it meets the patent novelty and inventive step requirements.
How Prior Art Affects Patent Applications
If a prior art is found during the examination process, the patent examiner may reject the application or ask the applicant to make changes and the applicants must be proactive in identifying and addressing prior art to increase their chances of getting a patent.
Summary
Prior art is a key concept under the Patents Act, 1970. It includes any publicly available information before a patent application’s filing date, such as published patents, articles, or public uses. The Act’s Section 13 provides a clear framework for how examiners search for prior art to check an invention’s novelty and inventiveness. The “prior claim” approach to secret prior art, focusing only on the claims of earlier, unpublished applications sets it apart from other countries. Recent court cases and controversies, such as issues with wrongfully published applications, show that this area of law is dynamic and constantly evolving. For inventors, companies, and patent professionals, understanding prior art is essential for navigating the patent system successfully. Staying informed about legal developments ensures compliance with both Indian and international patent standards.
Related Posts:
Prior Art in Patent Law: FAQs
Q1. What is prior art under the Patents Act?
Prior art includes any information made public before a patent application’s filing date, such as published documents, prior claims, or public uses, as outlined in Section 13 of the Patents Act, 1970.
Q2. What is the prior art base of a patent?
The prior art base is all the existing knowledge, such as publications, patents, and public uses, that a patent’s novelty and inventiveness are compared against.
Q3. What does prior art include?
Prior art includes published patents, journal articles, public demonstrations, and claims from earlier-filed patent applications, whether in India or worldwide, before the filing date.
Q4. Why is prior art important?
Prior art ensures that patents are granted only for new and non-obvious inventions. By comparing an invention to existing knowledge, it prevents redundant patents and encourages genuine innovation.
