The Conundrum
In an interesting order, the Madras High Court, in the case of Dr. Vandana Parvez vs The Controller of Patents, dealt with a withdrawn patent application that had been wrongfully published and then later cited as prior art for the same applicant’s subsequent patent application!
A brief into the facts of the case: This is an appeal for challenging the rejection of a patent application for an invention titled “Method and System for Providing Effective Generation and Delivery of Interactive Online Digital Content”. The invention, belonging to the field of computer science, provides a method for creating and delivering interactive digital content for online advertising campaigns. Despite the withdrawal of the appellant’s patent application, it was wrongfully published. And then subsequently cited as prior art by the Patent Office to reject the appellant’s subsequent patent! The most intriguing aspect of this case is that the Controller rejected the application based on the appellant’s own withdrawn application. The Court held that the withdrawn application should not have been published and directed the Controller to expunge it, ensuring it cannot be cited as prior art.
This situation raises an important question: Can wrongfully published applications still be regarded as prior art?
What Reasoning Did the Court Give for its Decision?
Firstly, the Court criticised the Patent Controller’s rejection order for being overly brief and failing to adequately address the appellants’ arguments and submissions. This approach, as has been pointed out time after time, undermines the principles of natural justice (covered in this blog before here, here and here).
Subsequently, the Court commented that the Controller cited Section 13(1)(b) of the Indian Patents Act 1970 to justify rejecting the application. However, the Controller overlooked that the prior art relied upon was a patent application that shouldn’t have been published, as it had been withdrawn by the appellants earlier. According to Sections 11A (Publication of applications), 11B (Request for examination) of the Patents Act and Rule 24 (Publication of application) of the Patents Rules 2003 (excerpts in the image below), a withdrawal request can be filed up to 3 months before the 18-month publication period. The Court noted that while the old patent application was withdrawn within the prescribed time limit, Forms 9 (request for publication) and 18A (expedited publication) for the old application were filed after the allowed period had expired. Thus, the Court commented that the Patent Office should not have proceeded with the publication or examination of the old patent application without reinstating it. This process disregards established procedures for handling patent applications and violates natural justice.
Therefore, the Controller’s reliance on the withdrawn patent was improper procedurally, as well as against the principles of natural justice. The Patent Office cannot examine or publish a withdrawn patent without reinstatement, which was not done in this case, violating established procedures.
The Court added another layer of argument to this by arguing that an innocent party should not suffer due to errors made by a quasi-judicial body. Quoting the Supreme Court in Inderchand Jain (Dead) through LRs. v. Motilal emphasised that no party should be prejudiced by actions of the Court, and for that matter, any statutory authorities responsible for deciding citizen rights.
Understanding the Scope of “Prior Art”
Prior art encompasses all information publicly accessible through written or oral descriptions, use, or any other means before the invention’s priority date. It serves a crucial role in assessing the novelty of an invention, a primary requirement for obtaining a patent. Novelty dictates that an invention must not have been publicly disclosed anywhere prior to filing the patent application. This includes publications in academic journals, conference posters, 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 that patented inventions are genuinely new and not previously disclosed to the public.
Given the absence of Indian precedents on the specific issue in the extant case, an international approach is adopted, focusing on how American law addresses similar matters. According to US statute (read this blog here for a better understanding), if a previously filed patent application becomes public (through publication or grant) before a new application is filed, it qualifies as prior art under Section 102(a)(1), unless it meets exceptions under Section 102(b)(1). Abandoned, withdrawn, or rejected applications, if published, serve as prior art to subsequently filed patent applications that do not claim priority before the publication date. Such information remains accessible to the public, including disclosures within the written application and details from the application’s file wrapper (arguments, correspondence, rejections, amendments, etc., as per MPEP 711.04 Public Access to Abandoned Applications). Therefore, these applications become prior art if published but not if they remain unpublished.
In the US, statutory language clarifies that previously filed patent applications, when later published, do not qualify as ‘printed publications’ under patent law, as reaffirmed in Lynk Labs Inc. v. Samsung Electronics Co. (extensively discussed in this blog here). However, abandoned applications, including provisional ones, if disclosed to the public, can serve as prior art. In Lee Pharmaceutical v. Kreps, an abandoned application can be considered prior art only if it has been appropriately disclosed, such as through reference in another patent’s disclosure, publication, or voluntary disclosure under former Defensive Publication rules. The abandoned application becomes prior art from the date it becomes accessible to the public. Nevertheless, its content, whether from provisional or nonprovisional applications, may influence patent rejections based on disclosure within a US patent or application publication, provided it is expressly included or referenced. If no publication occurs, it does not contribute to prior art considerations.
As for the European Patent Office (EPO), preparations for publication are completed 5 weeks before the end of the 18-month period as per Rule 67(1) EPC and also attempts to prevent publication if a withdrawal declaration is received at least two weeks before the scheduled date. As per Art 93 EPC, the EPO also accepts conditional withdrawals, provided the application will not be published. If publication cannot be stopped, the EPO informs the applicant, and the withdrawal becomes invalid unless they want to withdraw it unconditionally. Moreover, the office while addressing a query, clarified that “If the patent application deemed to be withdrawn has been published, it has been made available to the general public and no longer fulfils the criteria for patentability.” Clearly, the position in EPO lies in tandem with that in the US.
Did the Court Get it Right?
In the extant case, the Court has ordered to expunge the publication to prevent it from being counted as prior art. However, at least as per US and EPO norms, as pointed out above, once something is “published”, it is considered prior art. Internationally, the law does not consider wrongful publication as relevant when determining prior publication; what matters is simply the act of publication or making something available to the public.
However, there is a distinctive aspect of the Indian statute that could explain the court’s reasoning in this case. Section 29(2)(a) of the Indian Patents Act, 1970, includes an element of “consent.” It states that an invention is not considered anticipated by a prior publication if the patentee proves that the published material was obtained from them or their predecessor without their consent. This adds an interesting dimension that might support the Court’s analysis since the publication of the withdrawn patent applications did take place by the Controller without the ‘consent’ of the applicants, and so those documents must not be considered for anticipation by previous publication.
Nevertheless, while the Court’s reading may be in line with the Patent Act due to the current fact scenario, it does now raise some other questions about Section 29’s interpretation. For instance, if someone else promptly copied the invention after the wrongful publication, would they also be exempt from anticipation? This appears to be a gap opened up by this section, as it wouldn’t make sense to exempt only one party and not others. Or would it? Welcome readers’ thoughts below!