PUBLICATION AND EXAMINATION OF APPLICATIONSCentral

Section 18 of (ACT NO. 39 OF 1970) in hindi

(1)Where it appears to the Controller that the invention so far as claimed in any claim of the complete specification has been anticipated in the manner referred to in clause (a) of sub-section (1) or sub-section (2) of section 13, he may refuse to ⁵[the application] unless the applicant—
1. (a)shows to the satisfaction of the Controller that the priority date of the claim of his complete specification is not later than the date on which the relevant document was published; or
2. (b)amends his complete specification to the satisfaction of the Controller.
(2)If it appears to the Controller that the invention is claimed in a claim of any other complete

↩1.Subs. by Act 15 of 2005, s. 15, for “before the acceptance of the complete specification” (w.e.f. 1-1-2005).

↩2.Subs. by s. 15, ibid., for Explanation (w.e.f. 1-1-2005).

↩3.Subs. by s. 16, ibid., for “before acceptance of the complete specification” (w.e.f. 1-1-2005).

↩4.Subs. by Act 38 of 2002, s. 13, for sub-section (2) (w.e.f. 20-5-2003).

↩5.Subs. by Act 15 of 2005, s. 17, for “to accept the complete specification” (w.e.f. 1-1-2005).

specification referred to in clause (b) of sub-section (1) of section 13, he may, subject to the provisions

hereinafter contained, direct that a reference to that other specification shall be inserted by way of notice to the public in the applicant’s complete specification unless within such time as may be prescribed,—

(a)the applicant shows to the satisfaction of the Controller that the priority date of his claim is not later than the priority date of the claim of the said other specification; or
(b)the complete specification is amended to the satisfaction of the Controller.

(3)If it appears to the Controller, as a result of an investigation under section 13 or otherwise,—
1. (a)that the invention so far as claimed in any claim of the applicant’s complete specification has been claimed in any other complete specification referred to in clause (a) of sub-section (1) of section 13; and
2. (b)that such other complete specification was published on or after the priority date of the applicant’s claim, then, unless it is shown to the satisfaction of the Controller that the priority date of the applicant’s claim is not later than the priority date of the claim of that specification, the provisions of sub-section (2) shall apply thereto in the same manner as they apply to a specification published on or after the date of filing of the applicant’s complete specification.
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Summary

(1) Where it appears to the Controller that the invention so far as claimed in any claim of the complete specification has been anticipated in the manner referred to in clause (a) of sub-section (1) or sub-section (2) of section 13, he may refuse to 5[the application] unless the applicant, (a).

Practical examples

1Rekha's blender design is flagged because a scientific paper published in 2023 already described the exact same design. Under Section 18, the Controller threatens to refuse her application unless Rekha proves her priority date is earlier than 2023 or amends her specification.

2Hari's complete specification is found to claim the same solar cell technology as another patent application with an earlier priority date. Under Section 18, the Controller orders Hari to either amend his specification or insert a public notice referring to the other patent in his text.

FAQ

1. What can the Controller do under Section 18 of The Patents Act, 1970, if an invention is anticipated by previous publication?

Under Section 18 of The Patents Act, 1970, the Controller can refuse the application unless the applicant shows their priority date is not later than the publication date, or amends their complete specification to their satisfaction.

2. Under Section 18 of The Patents Act, 1970, what can the Controller direct the applicant to insert in their complete specification if there is a prior claim?

Under Section 18 of The Patents Act, 1970, if the invention is claimed in another complete specification with an earlier priority date, the Controller can direct that a reference to that other specification be inserted in the applicant's complete specification by way of notice to the public.

3. How can an applicant avoid having a reference to another patent inserted as a public notice under Section 18 of The Patents Act, 1970?

Under Section 18 of The Patents Act, 1970, the applicant can prevent the insertion of a reference by showing that the priority date of their claim is not later than the priority date of the other specification's claim, or by amending their complete specification.

Test yourself

Q1.Under Section 18 of The Patents Act, 1970, what power does the Controller have if an invention has been anticipated by a publication referred to in Section 13?

Q2.Under Section 18 of The Patents Act, 1970, if an invention is claimed in another specification with an earlier priority date, what may the Controller direct to be inserted in the applicant's specification?

Q3.Under Section 18 of The Patents Act, 1970, what can the applicant do to prevent the Controller from inserting a public notice reference to a prior specification?

Q4.Let us connect Section 13 and Section 18 of The Patents Act, 1970. What is the key relationship between these two provisions?

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