When not to trust your co-inventor

Generally, prior disclosure of an invention deprives the inventor of the chance to patent it as it now lacks novelty. However, across all patent jurisdictions the inventor is protected from this consequence in two situations, evident abuse and international exhibitions. The evident abuse must be proved by the inventor to set aside the effects of prior publication.

Section 29 of the Indian Patent Act, 1970, sets out the circumstances in which the invention will not be deemed to be anticipated by way of prior publication. The manner of prior publication may be oral, written, or through the use or filing of an application. If the publication falls within the terms of section 29, it does not destroy the novelty of an invention. The term evident abuse is not used in section 29, but provides the circumstances in which a third party displays ill will or does a malicious act on the part of a third party to destroy novelty. Section 29(2) states that,

Subject as hereinafter provided, an invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published before the priority date of the relevant claim of the specification, if the patentee or the applicant for the patent proves —

(a) that the matter published was obtained from him, or (where he is not himself the true and first inventor) from any person from whom he derives title, and was published without his consent or the consent of any such person; and

(b) where the patentee or the applicant for the patent or any person from whom he derives title learned of the publication before the date of the application for the patent, or, in the case of a convention application, before the date of the application for protection in a convention country, that the application or the application in the convention country, as the case may be, was made as soon as reasonably practicable thereafter:

Provided that this subsection shall not apply if the invention was before the priority date of the claim commercially worked in India, otherwise than for the purpose of the reasonable trial, either by the patentee or the applicant for the patent or any person from whom he derives title or by any other person with the consent of the patentee or the applicant for the patent or any person from whom he derives title.

Section 29(2) is concerned with the effect of an unauthorized disclosure on the right of the inventor to apply for a patent. The mere act of publication without the consent of the inventor would suffice to prove the abuse for the purpose of section 29. But the burden of establishing that the publication was without the consent of the inventor rests with the applicant.

What happens when a co-inventor publishes a paper disclosing the invention without the knowledge or consent of the other inventor? The applicability of section 29 as an exception to anticipation is difficult, as the co-inventor has the right to deal with the invention as they like in the absence of any agreement to the contrary. The potentially novelty-destroying prior publication in the English case of Accord Healthcare Limited v Research Corporation Technologies, Inc. [lacosamide patent] case revolved around an attempt to shift the priority date from the US filing to the later date of filing an international application. That would have allowed the publication of a graduate thesis to be regarded as a prior public disclosure, invalidating the patent. This attempt failed.

English law recognises the concepts of legal title to and beneficial enjoyment of property being separate interests. The claimants also failed in their attempt to use these concepts to show that the applicant for the patent did not possess both interests in the patent subject matter at the relevant date.

However, this case does highlight the perils of working with co-inventors, in this instance a university research team, who are at liberty to publish their work. Had the decision gone the other way, it would have serious adverse consequences for patent holders and universities where there are co-inventors who are not prohibited from publication of the invention during the patent application. Lead inventors should consider requiring team members to refrain from publishing details of the patent subject matter during the period from domestic to international application.

DPS Parmar, Special Counsel, LexOrbis, discusses the possible perils of working with a co-inventor.