INDIA: Unlawful Publication of Withdrawn Applications: Not Admissible as Prior Art

Introduction

The present case involves an appeal filed before the Hon'ble High Court of Madras (hereinafter the “Hon’ble Court”) by  Dr. Vandana Parvez, Ms. Vedika Parvez, and Mahek Parvez (hereinafter the “Appellant”) against the Assistant Controller of Patents and Designs (hereinafter the “Respondent”) [CMA(PT) No.33 of 2023], challenging the Respondent’s order refusing the Appellant’s Application No. 202041010232 (hereinafter referred to as the “subject application”). The Hon’ble Court found the order to be non-speaking, which contravenes the very object of patent and IP laws, and the principles of natural justice. Consequently, the case was remanded to the Indian Patent Office for reconsideration by a different Officer.

Background

The appeal was instituted by the Appellant to challenge the Respondent's order, which refused the subject application titled “Method and System for Providing Effective Generation and Delivery of Interactive Online Digital Content”. The subject application was refused based on objections under Sections 2(1)(j), 2(1)(ja), 3(k), and 13(1)(b) of the Patents Act, 1970 (hereinafter “the Act”). Specifically, the Controller cited Section 13(1)(b) of the Act, arguing that the subject application was identical to a previously filed application (D1), which had been withdrawn by the Appellant.

Section 13(1)(b) of the Act states “The examiner to whom an application for a patent is referred under section 12 shall make investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification— (b) is claimed in any claim of any other complete specification published on or after the date of filing of the applicant's complete specification, being a specification filed in pursuance of an application for a patent made in India and dated before or claiming the priority date earlier than that date”.

The Appellant initially filed a patent application in 2019 through their company, “Gemini Associates”, which was later withdrawn dated March 10, 2020, and a new application was filed by the Appellant the same claim was presented in their individual capacity. Following the issuance of the First Examination Report (FER), which outlined objections under Sections 2(1)(j), 2(1)(ja), and 3(k) of the Act, the Appellant responded with a detailed reply distinguishing their invention from prior arts, including their own withdrawn application cited as D1 in the FER.

Issues:

The following key issues were raised:

1. Whether the Appellant’s subject application meets the criteria of novelty and inventive step under Sections 2(1)(j) and 2(1)(ja) of the Act.

2. Whether the Respondent’s reliance on the Appellants' withdrawn application (cited as D1 in the FER) as prior art under Section 13(1)(b) of the Act was justified.

3. Whether the rejection of the subject application by the Respondent was in accordance with the principles of natural justice and the provisions of the Act.

Appellant’s Submissions:

The Appellant argued that their subject application offered a novel and technologically advanced approach in the field of online advertising. They contended that their method, utilizing machine learning and customized message delivery based on psychological patterns, significantly improved user engagement and interaction metrics. The Appellant submitted a detailed response to the First Examination Report objections, highlighting distinctions from prior art, including their own withdrawn patent application (D1). They clarified that the said prior art which was filed by them on March 14, 2019, was physically withdrawn dated March 10, 2020, within the prescribed time limits, and that it should not have been cited as prior art. Additionally, they admitted that while filing Forms 9 and 18A [request for early publication and expedited examination] for the instant subject application, they had filed the same for the old application as well. 

During subsequent hearings, the Appellant requested that D1 be disregarded, as it was erroneously cited and never should have entered the public domain. However, the Respondent continued to rely on D1 and maintained the initial objections.

The Appellant asserted that the rejection by the Respondent under Section 13(1)(b) of the Act, was flawed, citing procedural irregularities and a failure to fully consider the unique aspects and technical advancements of their invention. They emphasized violations of natural justice in the Respondent’s decision-making process, advocating for a fair reassessment of their patent application.

Respondent's Submissions:

The Respondent argued that the Appellant’s subject application lacked novelty and inventive step required under Sections 2(1)(j), 2(1)(ja), and 3(k) of the Act. Further, the Respondent pointed out similarities between the Appellant’s subject application and their own withdrawn patent application (D1), which had been cited as prior art in the FER. The Respondent maintained that the subject application did not sufficiently differentiate itself from existing technologies and failed to demonstrate a significant technical advancement beyond prior art. The rejection of the subject application, was justified under Section 13(1)(b) of the Act, as the alleged improvements were not substantial enough to warrant patent protection. Further, it was argued that the objections raised in the First Examination Report were based on valid grounds, emphasizing the need for adherence to strict patentability criteria to maintain the integrity of patent law and ensure fair competition in the marketplace.

Court’s Analysis: 

The Hon’ble Court reviewed the Respondent’s decision based on objections under Sections 2(1)(j), 2(1)(ja), and 3(k) of the Act. The order is notably inadequate, lacking any detailed reasoning or engagement with the appellants' submissions. It spans barely one page and solely relies on citing the appellants' own withdrawn patent application (D1) without addressing other substantive objections. Such a non-speaking order undermines the principles of natural justice and the objectives of patent law.

The Hon’ble Court noted that the reliance on the Appellant’s withdrawn application (D1) violated Sections 11A and 11B of the Act and Rule 24 of the Patent Rules, which clearly allow an applicant to withdraw an application within 15 months. The Hon’ble Court concluded that the Appellant had lawfully withdrawn their earlier application on March 10, 2020, and the subsequent filing of Forms 9 and 18A did not imply that the withdrawn application had been restored.

The Hon’ble Court found that the Respondent’s decision to rely on the withdrawn application without due process violated established procedures. Moreover, the Respondent should have sought clarification from the Appellant upon receiving the erroneously filed forms, rather than assuming the application had been revived.

Furthermore, the Hon’ble Court found that the subject application exhibited clear technical advancements and was not invalid under Section 3(k). The citation of D1 as prior art was deemed invalid and inconsistent with the provisions of the Patents Act. It was opined that “it is prima facie evident that the impugned order dated 19.10.2022 passed by the Respondent is a non speaking and suffers from non-application of mind, and therefore goes against not only the very objective of the Patents Act, 1970, but also the foundations of natural justice”.

Conclusion

The Hon’ble Court taking cognizance of the situation, remanded the case back to the Indian Patent Office requiring some other Officer to examine the application of the Appellant. Further, the Hon’ble Court directed the Patent Office to undertake the requisite measures to expunge D1 from the public domain, as its publication should have never been undertaken in the first place, and to prevent its erroneous citation as a prior art in any subsequent application.