ANTICIPATION BY PRIOR CLAIM (PRIOR CLAIMING)

Section 13 of the Indian Patents Act (The Patents Act, 1970) specifically provides that the examiner shall make an investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification is claimed in any claim of any other complete specification published on or after the date of filing of the applicant’s complete specification, being a specification filed in pursuance of an application for a patent made in India and dated before or claiming the priority date earlier than that date.

Simply put, where the invention as claimed in a complete specification (A) filed in India has already been CLAIMED in the complete specification (B) BUT where (B) has been filed in INDIA before the priority date of (A) but (B) is published on or after the filing of (A), then in such a case the relevant claims of (B) will anticipate the claims of (A) by PRIOR CLAIM.

Prior claiming is not limited only to Examination but may be raised by ANY PERSON in a pre-grant opposition under Section 25(1) or by a PERSON INTERESTED in a post-grant opposition under Section 25(2) i.e.

Clause (c) of sub-Section (1) of Section 25 provides –
that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant’s claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant’s claim.

Clause (c) of sub-Section (1) of Section 25 provides –
that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the claim of the patentee and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the claim of the patentee.

Thus for the purpose of examination and for oppositions, it is not necessary that the claim of the earlier complete specification which anticipates by prior claim be only that in a granted patent in India but can even include a publication.

Only in case of seek Revocation of a Patent under Section 64 i.e. in an application for revocation filed before the Intellectual Property Appellate Board or in a counter-claim against a suit for infringement before a Court, does the claim of the earlier complete specification which anticipates by prior claim have to be a valid claim in a complete specification of a patent granted in India.

Clause (a) of sub-Section (1) of Section 64 provides-
that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India.

Reference to Patent Law by P. Narayanan; 4th Edition; Eastern Law House Private Limited makes clear that in order to establish prior claim it must be shown that the subject-matter of a claim in the specification forms the subject-matter of a distinct claim in the cited specification (earlier specification) and that it is not sufficient if the claim is merely comprehended in the subject-matter of a claim in the cited specification.

Dominic Alvares

A senior associate in S Majumdar & Co., an advocate and a registered Indian Patent Agent who is based out of the Mumbai office. He has been involved in numerous contentious matters before the Indian Patent Office as well as revocation and appeal proceedings before the Intellectual Property Appellate Board, mainly in the fields of biotechnology, chemistry (such as APIs) and pharmaceuticals and also in respect of engineering cases. He is also involved in contentious and non-contentious trademark matters before the Indian Trade Marks Registry.He represents clients before the Controller of Patents and Registrar of Trade Marks, and other judicial and quasi-judicial forums, including the Customs Office.

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