The Period Between Priority and Publication!

 

A dilemma I discussed about the infringement invoking retrospective rights between the period of publication and date of grant. But the question ensues, what about the period between priority and date of publication, which has not been discussed by many, even explicitly not been mentioned in the act itself, as per my knowledge and belief, and if I’m not wrong!

But before discussing the next conundrum, I’ve nowhere supported the provision of Patent Trolling, in which most of the inventors take pride, and according to me, it’s an obnoxious behavior. YET, the rights of the original inventor shouldn’t be circumvented either! As the whole purpose of IP is to know the original behind the originality, and, not then being used it as the weapon. But in the absence of IP also, things get murkier.

Now, one would contend that, if in case of joint venture, the parties involved would generally be executing NDAs, Employee-Employer Contracts, Assignments etc. and that would be invoked if there’s a case of Breach of Contract. But herein, and as what has been explicitly written u/s 11A(7) of the Patents Act too, and even in several other nations wherein the rights are being considered as Provisional Rights between that period (as one is not sure whether the patent would be granted or not; or, whether the patent would be accepted with all the contended claims or not); and further, the period when the right to claim for the damages starts from date of publication, as it has been considered as the date when any of the infringing party would take cognizance about the existence of the invention itself in the public domain (even if the cease and desist notice has not been sent). But what happens if and when, there’re no such documents been executed, and, joint venture commenced, let’s presume, under the goodwill and understanding between the persons involved only. And yes, even today, there’re many businesses been conducted on the goodwill and mutual understanding than been executed vide any of the formal documents as mentioned above.

The dilemma herein ensues, what if in case between the period of priority and publication, an infringement occurs? And as it has been explicitly mentioned that the rights to claim damages only starts from the date of publication, and not from the date of priority; then under that circumstance, how those rights would even be invoked?

Because, as per my knowledge and belief (and I may be wrong, and I always accept my mistake), nowhere has been explicitly mentioned that the rights to claim damages starts from the date of priority and not from the date of publication, including under S. 11A(7), or under any Provisional Rights; subject to the grant of patent of course.

Now there’re two important aspects. First is, it indeed makes sense that right to claim for damages must start from the date of publication and it is the responsibility of the Applicant/Patentee itself to make sure that the invention never is revealed before that period of time. But in the second case, how one would enforce any such claim, if in case such infringement happens between the period of priority and period of publication, wherein the joint venture has been executed on the basis of Trust?

Further, there’s this provision of Anticipation that states, if within one year before the filing of the application, the invention has been used for the purpose of the exhibition, or, for the purpose of demonstration in any of the scientific display, with the consent of the applicant himself/herself; then in that case, that invention can be accepted for grant, if the application has been filed within that statutory period of time (S.31).

My dilemma is: is it possible that in such demonstration at the exhibition, let’s say what if someone copies the same proposed invention, and as there’s a period of one year within which the application has to be filed, what if the infringer files for the application before the original inventor, claiming to be the true inventor? Herein, in case of the pre or post grant opposition, it would become difficult for anyone to prove who exactly was the original inventor; the person who used the exemption of anticipation, or, the person who filed the application earlier, and then took the advantage of the publication, even via early publication?

In such scenario, who could be trusted most? Of course, the one who has the priority of the application. Correct? Even with the help of the Provisional Application? Correct? Rare circumstance, yet, can’t be circumvented. Correct?

The priority is understandable. But when it involves Trust, what if the infringer is able to prove that it precedes the priority, and then, file for the revocation of the patent, pre-grant or post-grant, if in case the other part files the same first? And further, even in the case, let’s presume, when the applicant was the major inventor in invention, wherein the other person wasn’t involved in that major part of the invention?

I can understand that this dilemma is meaningless, and I accept, or maybe it’s too vague; yet, when we define everything explicitly in every documentations, so much so that the manual of every single timeline has been elucidated with multiple pages; then, what’s the harm of not being proving such detail in the act or rules itself? But then, what’s the point of keeping the infringement claims starting from publication?

Now, herein my theory would come into effect:

·       Firstly, I proposed that mere adding the Proof of Inventorship Certificate is not enough, as that I’ve tried to opine in one of my previous blog also, as why that served no purpose. Furthermore, one needs to know every aspect of how much individually, every inventor has added in the product/process; explained in the declaration of the inventorship;  

·       Secondly, the publication date should be reduced from 18 Months to 1 Month. No More! No Less! In any case, the request of early publication would publish the application within the statutory period of 1 Month only, then what’s the point of 18 Months wherein additional fees has been charged?

·       Thirdly, remove the provision of Provisional Patent Application. I never understood the concept of it, as it is absolutely meaningless, when the complete specification is supposed to include the features and claims within the scope of the provisional specification only. Thus, if only the drafting is sought whilst filing of the application, then within 15 days (merely an opinion) would be given to the Applicant to file the detailed Complete Specification, whilst asking the applicant to file the Claims only first, to seek the priority of the invention vide provisional application.

What my theory would achieve is that the right to claim for damages would start almost from the date of priority, than from the date of publication! Wherein 18 Months doesn’t make any sense, when the provision can also be invoked for 1 Month also vide early publication. And there shouldn’t be extra fees assigned merely for the reason for early publication. Now, in that case, the entire PCT provision would then needs to be changed. But, as in one of my previous blog, I pointed out several defects in the PCT application system itself when being compared to the Madrid Act (trademark), or Hague (designs) etc. Furthermore, I pointed out that the entire examination process is absolutely contradictory when it is being compared with the trademark acts of any nation. Why? Look at these four points:

1.    Territorial Examination Reports in case of trademarks, but not in case of Patents (as it constitutes global citations);

2.    The passing-off action that can be executed even if the trademark is not registered or pending or not even applied for registration, compared to the patents as explained above, between the period of priority and publication, as the trademarks are prima facie rights, wherein patents are the mandatory rights;

3.    The timelines of PCT and Madrid. And the priority in case of the trademark is 6 Months in case of the Madrid, wherein the case of the Patents, it is 1 Year w.r.t PCT (means even 6 Months difference matters);

4.    And if I’m not wrong, this One-Year provision of ANTICIPATION should be removed. What’s the point of it? On one hand you’ re saying the patent application is hidden until the date of publication, and on the another hand, you’re contending that even via the display at any of the exhibitions; within the period of 1 Year, one can file for the patent. Just alike trademark, publish it as a New Patent Application.

All these things can only happen, IF, IP be known to EVERYONE, and anyone can file, as I’ve explained in my book also IP FOR EVERYONE, and also in its second part, which elucidates the timeline provision of the application.😊

© Pranav Chaturvedi 2024