In Dr. Vandana Parvez vs. The Controller of Patents' case, the Appellant, Dr. Vandana Parvez, filed a patent application in 2019 under the name "Gemini Associates," which was withdrawn. Later, the appellant submitted a new patent application for the same invention and claims. However, upon examination, the Patent Office rejected this latter application on grounds of lack of novelty, inventive step, non-patentability under Section 3(k), and deficiencies in sufficiency of disclosure, clarity, conciseness, and definitiveness as required by Section 10 of the Patents Act, 1970. The rejection was supported by two Prior Arts (as mentioned below), one of which was the appellant's withdrawn patent application.
In response to the First Examination Report (FER), the appellant informed the Patent Office about the withdrawn status of the earlier application and the unavailability of its information on the online patent registry. Despite this clarification and multiple submissions and hearings, the Controller rejected the appellant's arguments and issued an order rejecting the patent application. The rejection order, surprisingly concise and spanning barely a page, asserted that granting the subsequent patent application would contravene Section 13 of the Act.
Decoding The Madras High Court's Verdict
The Court subsequently noted that the Controller cited Section 13(1)(b) of the Indian Patents Act, 1970 to justify the rejection of the application. However, the Controller failed to recognize that the Prior Art cited was based on a withdrawn patent application that should not have been published. As per Sections 11A (Publication of applications) and 11B (Request for examination) of the Patents Act and Rule 24 (Publication of application) of the Patents Rules, 2003, a withdrawal request can be filed up to three months before the 18 (eighteen) months publication period.
The Court observed that although the earlier patent application was withdrawn within the allowable timeframe, Forms 9 and 18A were incorrectly filed after the deadline. Form 9, used for requesting early publication of the patent application specification, and Form 18A, used for requesting expedited examination, were both submitted late. This mishandling by the patent office violated standard procedures and established practices for handling patent applications. The erroneous filing of Forms 9 and 18A (as mentioned hereinabove) for a withdrawn application does not mean the patent application was revived or reinstated.
The Court criticized the Patent Controller's rejection order for its brevity and failure to adequately address the appellants' arguments and submissions. The order reflected a lack of proper consideration and contradicted the objectives of the Act and principles of natural justice. Consequently, the Court directed a different Controller to re-examine the application within 6 (six) months and removed the earlier patent application from the public domain, acknowledging that its publication should never have occurred.
The Court further reasoned that the principle of equity dictates that an innocent party should not be made to suffer on account of errors committed by a quasi-judicial body. The Supreme Court's decision in Inderchand Jain (D) v. Motilal (D) was invoked to underscore this point. The Supreme Court in that case observed that there is a well-recognized maxim of equity, namely "Actus Curiae Neminem Gravabit," which means that an act of the Court shall prejudice no man. This maxim, founded upon principles of justice and good sense, serves as a guiding principle in the administration of law.
The Court emphasized that this maxim applies not just to the judiciary, but to any statutory authority that is entrusted with the duty of deciding on the rights of citizens. Therefore, the publication of the outdated patent application and its subsequent citation in the instant case was invalid and not in consonance with the provisions of the Act. Consequently, the objections raised regarding the issues of novelty and inventive step, insofar as they were premised on the flawed citation of the outdated patent application could not be sustained.
Prior Art: What Is Its Scope?
Prior Art includes all publicly accessible information through
written or oral descriptions, use, or any other means before the
priority date of an invention. It plays a crucial role in
determining the novelty of an invention, a key requirement for
patent eligibility. Novelty means an invention must not have been
publicly disclosed anywhere before filing the patent application.
This encompasses publications in academic journals, conference
presentations, newspapers, industry magazines, exhibitions,
personal blogs, videos, and even recorded verbal statements. The
concept of Prior Art applies universally across languages and all
forms of publication, ensuring patented inventions are truly new
and not previously disclosed to the public.
Regarding the European Patent Office (EPO), preparations for
publication are completed 5 (five) weeks before the end of the 18
(eighteen) month period , with efforts to prevent publication if a
withdrawal declaration is received at least 2 (two) weeks before
the scheduled date. Additionally, the EPO also accepts conditional
withdrawals, provided the application will not be published. If
publication cannot be halted, the EPO informs the applicant, and
the withdrawal becomes invalid unless the applicant opts for
unconditional withdrawal. Additionally, the EPO clarified that if a
withdrawn patent application has been published, it is available to
the public and no longer meets patentability criteria. This aligns
with the position in the USA.
In the present case, the Court ordered the expunging of the publication to prevent it from being considered Prior Art. However, according to the USA law and EPO norms, once something is "published," it is regarded as Prior Art. Internationally, the law does not consider wrongful publication as relevant when determining prior publication; the key factor is simply the act of publication or making information available to the public.
However, a distinctive aspect of the Indian statute could explain the Court's reasoning in this case. Section 29(2)(a) of the Act, includes an element of "consent," which reads: "(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;"
This introduces a compelling perspective that could bolster the Court's reasoning, as the withdrawn patent applications were published without the applicants' consent, suggesting these documents should not anticipate prior publications. However, while the Court's stance may align with the Patent Act based on present circumstances, it raises queries about Section 29's interpretation. For instance, if a different party were to duplicate the invention shortly after its erroneous publication, they too would be exempt from anticipation. This discrepancy underscores a potential loophole in the section, as it seems illogical to exempt one party but not others.
Conclusion
The Madras High Court's ruling in this case highlights the fundamental principles embedded in the Patents Act and its associated rules. The Court's decision affirms that erroneous actions by the Patent Office, such as the wrongful publication of a withdrawn application, cannot retroactively create Prior Art. This stance is crucial for maintaining the integrity and purpose of the Act, as allowing such errors to influence the evaluation of novelty and inventive steps would undermine the entire framework designed to protect patent applicants' rights. By emphasizing that procedural lapses by the Patent Office should not prejudice applicants, the Court reinforces the need for strict adherence to statutory provisions and safeguards the equitable treatment of inventors. This judgment highlights the importance of administrative accuracy and the protection of applicants from institutional errors, ensuring that the purpose of patent law, to encourage and secure genuine innovation, is not compromised.
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