Understanding the Intricacies of Secret Prior Art
The applicants of the later filed applications have no means to be aware of the first filed patent application at the filing stage of their applications. Nevertheless, such earlier filed patent application will have patent defeating effect and can act as an applicable prior art for the later filed applications. This type of prior art is often termed as secret prior art. Some of the other interesting names by which the secret prior art is addressed are ‘‘previously filed, subsequently published applications’’, ‘‘conﬂicting applications” and “non-published prior rights”.
The secret prior art (i.e. earlier filed and later published patent applications) is considered as valid prior art according to the patent laws of many countries. However, its treatment and the conditions of use varies considerably throughout the world.
This article has been aimed at understanding the concept of secret prior art, factors affecting the consideration of secret prior art, its treatment within major patenting systems (especially Europe, USA, Japan, India), effect of various patent reforms or acts on the consideration of secret prior art, and further comparing the different patenting systems with regards to the approach they follow for treatment of secret prior art.
||Article 54(3) EP Law||Pre AIA: 35 U.S.C. §§ 102(e)(1) and (2) Post AIA: 35 U.S.C.,§102(a)(2)||Article 29-2||S. 13(1) b of Patent act 1970|
||Whole content approach||Whole content approach||Whole content approach||Prior claims only|
||Novelty only||Novelty & non-obviousness||Novelty||Novelty|
||Self-Collision||Anti-self-collision||Anti-self-collision||Self-Collision (Prior claimed approach)|
||European phase entry & publication in an official language of the EPO||PCT designated US published in English (Pre AIA)PCT designated US published in any Language (Post AIA)||PCT designated Japan & submission of translation||On national phase entry|
||Yes||Pre AIA : No Post AIA : Yes||Yes|