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Withdrawn Patent Application Cannot Be Used as Prior Art

Criteria for patentability, including novelty and inventive step, often lead to legal disputes. One such instance is the case where withdrawn patent applications are considered as prior art, which can complicate the patent granting process. This article delves into a recent legal case where the applicants contested the rejection of their patent application, arguing against the use of their own withdrawn application as prior art.

Case Background:
The appellants, aggrieved by the rejection of their patent application titled "Method and System for Providing Effective Generation and Delivery of Interactive Online Digital Content," appealed against the decision of the Patent Controller. The appellants, who initially promoted a company named "Gemini Associates," had filed a patent application on behalf of the company in 2019, which they subsequently withdrew on 10th March 2020. They later re-filed the same claim in their individual capacities, presenting ten claims in their new application—two independent and eight dependent claims.

Grounds for Rejection:
In the First Examination Report (FER), the Controller objected to the patentability of the invention on grounds of lack of novelty and inventive step as defined under Sections 2(1)(l) and 2(1)(ja) of the Patents Act, respectively. The rejection was supported by two prior arts, designated as D1 and D2. Crucially, D1 was identified as the appellants' own earlier patent application, which had been withdrawn.

Appellants' Argument:
The appellants contended that the prior art cited as D1 was their own application filed in 2019, which was officially withdrawn on 10th March 2020. They argued that the withdrawn application should not have been considered prior art because it was not available to the public and thus did not contribute to the state of the art. The Controller, however, passed an order on 19th October 2022, rejecting their application, citing Section 13(1)(b) of the Patents Act and asserting that the invention was identical to the subject matter of D1.

Legal Analysis and Court's Observations:
The court allowed the appeal, emphasizing that the Controller had failed to recognize the critical aspect that D1, the prior art relied upon, was a withdrawn application by the appellants themselves. According to Sections 11A and 11B of the Patents Act, along with Rule 24 of the Patents Rules, a patent application can be withdrawn within 15 months from the filing or priority date, provided the request for withdrawal is submitted three months before the 18-month publication period.

The court noted that the old application, filed on 14th January 2019 and withdrawn on 10th March 2020, was within the permissible withdrawal period. Consequently, the withdrawn application should not have been considered by the respondent as prior art. The court underscored that using a withdrawn application as prior art violates the provisions of the Patents Act.

Implications of the Decision:
This decision reaffirms the legal position that a withdrawn patent application does not constitute prior art. The court's ruling is significant as it ensures that inventors are not unfairly penalized for withdrawing applications and re-filing them. The judgment emphasizes the importance of adhering to the procedural aspects of patent law, ensuring that the rights of inventors are protected and that the integrity of the patent system is maintained.

The ruling in favor of the appellants is a noteworthy reminder of the nuances in patent law, particularly regarding the treatment of withdrawn applications. It highlights the importance of procedural compliance and the protection of inventors' rights. By ensuring that withdrawn applications are not used against inventors as prior art, the court has upheld the principles of fairness and innovation that underpin the patent system.

Case Citation: Dr.Vandana Parvez Vs Controller of Patent: 23.02.2024: CMA(PT) No.33 of 2023::Mad High Court: N Seshasayee. H.J.

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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