Introduction:

The term "Secret Prior Art" refers to any documentation which, if made public, would create a risk of increasing competition and which the patent holder or applicant has deliberately withheld. These documents might include industry standard information, marketing materials or documents prepared by competitors and filed with the USPTO or other IP offices. If such documentation is disclosed outside of the proceedings in a patent application (e.g., during discussions with an examiner), it may result in challenges to that application as an invalid disclosure of Secret Prior Art under section 102(b) of the Patent Act.

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Patents are issued for innovative inventions that take an inventive step. Previous art is any information or material that was made publicly accessible or published prior to the submission of a patent application, and it serves as the foundation for assessing novelty and inventive step. A prior patent application must have been published before the subsequent patent application was submitted in order for it to be taken into account as prior art for that application. Many jurisdictions do not consider a prior patent application to be prior art if it was submitted before the submission of a subsequent patent application but published only after the submission of the subsequent patent application.

Patent applications that are considered previous art in jurisdictions that do so are typically referred to as 'secret prior art.' Secret preceding art presents an odd conundrum for both applicants and administrators. On the one hand, the applicant of the next application would be unfairly disadvantaged if secret previous art were accepted as legitimate. The applicant would not have the chance to distinguish their innovation from the prior invention in the application to prevent any potential subject-matter overlap because they would not be aware of the earlier patent application. Threats that covert previous art could invalidate a patent application could discourage innovation.

A patent application is maintained under seal from the time it is submitted until it is published. Therefore, it is likely that two or more patent applications having the same subject matter or claiming the same invention will be submitted between the application date and the publication date of the first filed patent application. The applicants of the later filed applications have no way of learning about the previously filed patent application at the time of their submission. In spite of this, the earlier patent application will have a patent-eliminating impact and could be used as pertinent prior art in the later filed applications. Such earlier works are referred to as secret prior art.Intriguing terms such as "previously filed, afterwards published applications," "conflicting applications," and "non-published prior rights" are also used to refer to the concealed prior art.

Why are Secret Prior Art or Non-Published prior rights important?

Secret previous art is used to reward the first individual to submit information, creating a monopoly in this process. Avoiding patenting a topic that has already been revealed. Avoiding the granting of two patents for the same idea is possible by using hidden prior art. Avoid Multiple Infringement Damages: Countries defend their people against multiple lawsuits for infringement or royalties on a single innovation. Preventing unreasonable time period extensions of patents is how nations safeguard their population from the exclusive rights granted by patents.

Approaches for considering Secret Prior Art:

There are different approaches throughout the world but there are mainly two approaches considered for prior art.

I) Whole Consent Approach: This strategy is the most generally used one; some of the most significant patenting systems, including USA, Europe, and Japan use this approch. Using this method, the complete text or content of the initial patent application submitted is used to defeat the asserted by earlier art the topic of a later patent applications. Let's take a hypothetical situation as an example. in which an applicant I submitted a filing a patent with a topic that is disclosed Subject-related matters A and B and claims just subject A. Prior to the release of the first-party applicant's patent application, yet another patent application that Subject B was submitted by Applicant II. If the patenting authority uses the Whole-content method in this situation, Applicant-later II's filed patent application will not be deemed new over Applicant-previously I's filed patent application, and Applicant II will thus not be granted patent rights. This might be attributed to the fact that the claimed subject matter of Applicant-earlier-filed II's patent application (i.e., B) was previously revealed in the description.

II) Prior Claimed Approach: This is the less popular method; several patenting regimes, like India, Vietnam, and Switzerland, employ it to take into account unpublished prior art. Only the claimed subject matter of the earlier patent application is used as prior art in this strategy when compared to the claimed subject matter of later patent applications. If the patenting authority uses the Prior-claimed technique in the aforementioned case scenario, Applicant-later-filed II's patent application will be deemed new over Applicant-earlier-filed I's patent application, and as a result, Applicant II will be eligible for patent rights. The reason for this is that the claimed subject matter of the patent application submitted by Applicant II (i.e., B) was not asserted in Applicant I's earlier-filed patent application.

Treatment of Secret Prior Art in India:

India's handling of secret prior art Indian Patent Act of 1970 has the condition that Section 13 refers to hidden previous art (1) Indian patent law is distinct from other countries' significant patenting methods in relation to the method for taking into account secrecy previous art Prior-claimed technique in India employed in place of a comprehensive content strategy. As a result, undisclosed previous art is claims of earlier filing but unpublished inventions.

Recent rulings in India show a tendency where the standard for determining non-obviousness, prior-claiming, and usage before the filing date of a patent application is higher when the applications in question are submitted by the same inventors and/or applicants. In AstraZeneca AB & Anr. v. Intas Pharmaceuticals Ltd. [FAO(OS) (COMM) 139/2020, judgement dated July 20, 2021], the Delhi High Court believed that the tests for "obvious to a person skilled in the art," "anticipation by publication," and "use before the date of filing of patent application with complete specification" should be taken into account in the context of the "person in the know" in situations where the inventor is the same because It is conceivable that the creator of the first innovation knew about the second one while submitting the first application for a patent. The Court further stated that it might be inferred that both applications reveal the same subject matter if a claim of infringement was made for both the earlier and the later filed applications by the same patentee. The Patentee cannot assert infringement for both applications and then contend that the applications do not cover the same ground in an effort to simply extend the exclusive rights for the same compound, the Court ruled.

Conclusion:

Different jurisdictions approach hidden previous art in different ways along a continuum. These become especially important when submitting multi-jurisdictional applications since various prosecution strategies may be used depending on where the application is submitted. When the same applicant who submitted the hidden prior art application also files the new application, there are divergences. When it comes to prosecuting applications using hidden prior art, India differs from other countries by using the "prior claiming" method (as opposed to the "full contents" approach used in EP, JP, and US). Additionally, India appears to be predisposed to enforce a higher standard for the assessment of obviousness in situations involving self-collision, which might necessitate greater preparation.

Author: Akanksha Chaudhary 2ND Year LL. B, Rajiv Gandhi School of Intellectual Property Law, IIT Kharagpur, in case of any query, contact us at Global Patent Filing, or write back us via email at support@globalpatentfiling.com.