IPO v. Ravindranath Pradhan: Anticipation by Prior Claiming Ignored?

Continuing from my earlier post on the issue concerning anticipation by way of prior claiming in India, I came across a relatively recent judgment of Karnataka High Court - Union of India Ministry of Law Justice & Company Affairs (Legislative Department), The Controller of Patents & Designs Government of India and The Assistant Controller of Patents & Designs v. Dr. Ravindranath Pradhan [Writ Appeal No. 109 of 2008 (GM-RES), Decided On: 29.08.2013]. Although the case does not deal with the issue of anticipation and prior claiming, it appears that this issue was erroneously overlooked by the Court while deciding upon a related issue and should have been taken into consideration. The brief facts of the case are as follows:

Dr. Ravindranath Pradhan (Appellant/Petitioner) filed a patent application (No. 374/MAS/92) on June 19, 1992. The Patent Office, after scrutiny, raised certain objections under First Examination Report dated November 3, 1995 and the said objections were required to be complied with by 26.10.1996. The petitioner sent his reply to the said objections by speed post on 22.10.1996 which was delivered to the Patent Office on 30.10.1996. Since there was delay, the Patent Office refused the application and wrote a letter dated 18.03.1997 stating that the application was not put in order for acceptance within the period stipulated under Section 21(1) of the Act and therefore, deemed to have been abandoned. Petitioner preferred writ petition before the Karnataka High Court. The High Court while remanding back the matter to the Patent Office, held that since the delay was due to postal strike, the application ought to have been taken into consideration. Even after the remand, the application was not considered within the six months' time granted by the High Court. On 23.02.2001, petitioner was called upon to re-submit his application, which was acknowledged by the Patent Office on 09.04.2001.

Thereafter, by a communication dated 09.04.2001, the petitioner was informed that the application has been accepted and it is found to be in order. On 27.09.2002, the petitioner received notice of acceptance of complete specification under Section 23 of the Act from the Patent Office. After such acceptance, Sl. No. 187971 was granted to the petitioner's application and the Patent was received on 07.03.2003 after expiration of the term of opposition. The same was published in the official Gazette on 05.04.2003. In the patent granted to the petitioner, it was notified that the term of the Patent is for 14 years (which was the term under pre-2002 Act) from 19.06.1992. The petitioner contended that the Patent should be valid for a period of 14 years from the date of sealing and not from that date when the earliest effort was made by the petitioner to get his application scrutinized. The petitioner aggrieved by the illegal and arbitrary action on the part of the respondents in trampling upon his Patent by cutting short the life of the same, preferred the writ petition before the Court challenging the same. The learned single Judge held that under Section 17(2) of the Act (un-amended pre-2002 Act), the date has to be reckoned from the date on which the application is filed with full specification. It also stated that it is only on 23.02.2001 that the petitioner submitted his application with full specification and therefore, the period of Patent has to be reckoned only from that date. It is against this order, respondents appealed.

The Court in appeal also held that “[T]hough the first application for patent was filed on 19.06.1992, the authorities treated the said application as having been abandoned by the petitioner as within the period prescribed, he did not furnish the requisite particulars. It is at their request, a second application was filed on 23.02.2001 with complete specification. Therefore, the date of patent is the day on which the second application with complete specification was filed i.e., 23.02.2001. Fourteen years period is to be reckoned from 23.02.2001.”

Apparently, from the contents of the judgment, the facts of the case are not very clear as to what warranted the patent office to request the petitioner for re-submission of the complete specification on 23.02.2001 and what was the status of the new filing [viz. whether the filing made on 23.02.2001 was construed as only re-submission of the complete specification in the originally continuing application no. 374/MAS/92 or was deemed as new patent application filing (with separate application no. and the earlier application no. 374/MAS/92 deemed abandoned)]. In the former case, if the filing of complete specification on 23.02.2001 is merely RE-SUBMISSION of the complete specification under the previously continuing patent application no. 374/MAS/92 and the patent is eventually granted against the same application, then clearly 23.02.2001 cannot be construed as the date of filing of the complete specification for the purpose of ascertaining the date for commencement of the term of patent. The date (under the pre-2002 Act) which is considered for commencement of the term of patent, is the date on which the complete specification was first filed by the applicant. The law is quite unambiguous and settled on this aspect. Had this been the case, the Court should have clearly accepted the contention of the Patent Office and the 14 years period would commence from 1992.

If, however, the case is latter, viz. the filing of 23.02.2001 is deemed as new application (with complete specification), then there are several questions which arise:

(i)                 On what basis did the Patent Office abandon the previous application? Was the Petitioner/Applicant informed of the same? – When the Court had ordered that the Petitioner’s response to FER be taken on record (while condoning the delay caused by the postal department), the previous application (No. 374/MAS/92) was very much technically alive then. Any delay thereafter caused by Patent Office (such as in complying with the 6 month time period granted by the Court) cannot be used to prejudice the rights of the petitioner/applicant, particularly without informing the applicant that the application is being abandoned [with the legal consequences of abandonment of the patent application (one can refer here for the law on this aspect)].

(ii)               What right does Patent Office has to as the petitioner/applicant to file a new patent application? – Patent Office does not have any right to ask anyone to file a new patent application while abandoning its previous application. Such arbitrary action is not supported under the law. The new patent application no. (if any) is also not provided.

(iii)             Does the new filing amounts to postponing of the priority? – There is clear and set law on postponing the priority, and the Patent Office cannot, suo moto, take action to postpone the priority of any invention. Right of priority is one of the most essential rights under the patent law and that cannot be manipulated by the Patent Office arbitrarily outside the prescribed statutory law and without taking the applicant into confidence.

Even assuming that somehow the previous application was abandoned and the petitioner filed the new application, the priority could not have been postponed and in that case the previous application of the same application (petitioner), even if abandoned and even assuming it was never published (which is likely the case for 1992 application), will clearly anticipate the subsequent application at least through prior claiming if not directly. Section 13 (anticipation by previous publication and prior claim) does not provide any such exemption wherein the previous application by the same applicant will not be considered for the purpose of ascertaining novelty of the application under examination. Therefore, even if we ignore all other technical (or as one say hyper-technical) issues, the issue of novelty and anticipation is too fundamental to be so arbitrarily ignored.

Thus, irrespective of the factual status of the filing dated 23.02.2001 (viz. whether construed as part of the continuing application, or treated as new application) the conclusion reached at by the Hon’ble High Court seems to be erroneous and flawed in the application of law.  

Prior(/Even)-dated & Unpublished Applications Constituting ‘Prior Art’: Indian Law Needs an Upgrade

Each claim of a patent application carries a date of priority which demarcates the prior art for the purposes of determining novelty and inventive step of the claim. In firs-to-file jurisdictions, the date of priority is conferred upon a claim depending upon when the subject matter of the claim was first and fairly sufficiently disclosed in a patent application by the applicant to the patent office. As a general rule, anything which is available in the public domain before such date of priority is construed as ‘prior art’. A complicated situation, however, occurs in case where a patent application is found to claim a priority earlier than that of the claim under consideration but was actually published only after the date of priority of the claim. While such unpublished application is deemed not to be in the public domain as of the date of priority of the claim, it still appears to be entitled to claim seniority rights as against any claims with subsequent priority. Adoption of the strict rule of anticipation-by-publication-only may result in an undesirable multiple-patenting situation wherein two (or even more) persons may be granted exclusive rights in terms of patents for the same/similar invention. On the other hand, adoption of strict rule of priority-by-date would tend to curb the scope of protection for incremental innovations. In order to strike an appropriate balance, most of the jurisdictions have enabled sound and unambiguous statutory mechanism for addressing this problem. The corresponding provisions in India under the Patents Act, 1970, however, are unstructured and obsolete as of date.

The patent statutes of most of the countries address to this issues by enabling dual standards of protection wherein such earlier dated but later published applications are deemed to constitute prior art only for the purposes of determining the novelty of the later dated claim but are excluded from the scope of prior art for the purposes of determining the inventive step. This approach while ensures that two patents are not granted for identical inventions in favour of two different persons, also enables the scope of protection of any incremental innovations, viz. the inventions which are new, if not non-obvious, over the previous one. This is by far the most common and perhaps the most reasoned approach adopted by the countries which serves the public interest without prejudicing the interests of the applicants. For example the European Patent Convention (EPC), provides that the content of European patent applications as filed, the dates of filing of which are prior to the date of filing of a later European patent application and which were published on or after that date, shall be considered as comprised in the state of the art for the purposes of examining novelty, while Article 56 of EPC at the same time provides that such applications are not considered to form part of the state of the art for the purpose of determining whether there has been inventive step involved. Likewise in Japan and Australia there are similar provisions confirming to this approach. There are, however, countries like US which adopts a more stringent approach and thus construe such earlier but unpublished applications as part of the prior art for the purposes of examining novelty as well as inventive step of any later applications. Particularly in US, this stringent approach has been in place since at least 1965, when in the case of Hazeltine Research Inc. v. Brenner [382 U.S. 252 (1965)], US Supreme Court while holding that such application is deemed to be in public domain for the purpose of evaluating obviousness even though the public had no access, it stated “To adopt the result contended for by petitioners would create an area where patents are awarded for unpatentable advances in the art.”

In India, the Patents Act, 1970 provides under section 13(1)(b) that such prior dated but unpublished Indian patent applications shall be construed as prior art for the purposes of determining novelty. Regarding the inventive step, however, except for the applications filed by same applicant (wherein the earlier application is not counted as prior art for inventive step under the concept of Patent of Addition) there is no clear provision when the applicants are different. Even the definition of the phrase ‘inventive step’ in the Act does not mark any direct indication as to whether such prior dated but unpublished applications are to be counted within prior art or not. The only inference that can be drawn in such situation is from the fact that the Patents Act provides explicit provisions only to ensure that such prior dated unpublished applications do not anticipate the application at hand and there is likewise an explicit omission of any provision regarding the inventive step.

Furthermore, there are variations in approaches towards the content of such earlier unpublished applications which is taken into account as prior art for the purposes of determining novelty and/or inventive step of any later dated application. Historically, under the UK Patents Act, it was only the eventually granted claims of such earlier applications which were effectively considered as prior art and not the entire disclosure of the patent specification. This was with a view to prevent the double patenting and was usually referred to as anticipation by ‘prior claiming’. This ‘prior claim’ based approach was however changed to the ‘whole content’ based approach in the subsequent legislation wherein the entire content of such earlier application is construed as prior art. This adoption of ‘whole content’ approach is primarily because of the three important reasons – firstly, it is found to be against the public interest for a later applicant to monopolise subject matter which, although he was not aware of it at the time of the application, would inevitably have come into the public domain; secondly, it is realized that the scope of claims of the prior application is not always fixed and is subject to amendments during examination and even post grant; and thirdly, the applicant of earlier application may later would like to protect or use the information disclosed otherwise than by the claims, he would be unjustifiably prevented by the later applicant. This is also the standard adopted by most of the patent legislations thought the world including Europe, Japan, Australia and US. In Europe, by ‘content’ of a European application in this context means the whole disclosure, i.e. the description, drawings and claims, including:(i) any matter explicitly disclaimed (with the exception of disclaimers for unworkable embodiments); (ii) any matter for which an allowable reference to other documents is made; and (iii) prior art insofar as explicitly described. Even if the content of the earlier application which is filed in a non-official language and its matter is erroneously omitted from the translation in the language of the proceedings and not published in that language, it is the content of the original text which is relevant for the purposes of Art. 54(3). India, however, still follow the ‘prior claiming’ approach and thus the prior art is limited only to the claims of the earlier dated unpublished applications.

In another aspect of this discussion, it involves the applications filed by the different applicant and claiming same date of priority. Considering the low possibility of having same date of priority for identical set of claims by two distinct persons, this aspect has not been specifically dealt in most patent law statutes and thus the law is not well settled on this issue. In absence of any direct provision in this regard it is assumed in many countries, like in Europe, that each application must be allowed to proceed as though the other did not exist. Similarly in US, there is no explicit provision dealing with the situation wherein two applicants independently develop the same invention and file applications with the same effective date, which means that multiple valid patent claims could issue to different persons. Some countries, like Japan, however, do have specific provision dealing with this particular aspect wherein it is provided that where two or more patent applications claiming identical inventions have been filed on the same date, only one applicant, who was selected by consultations between the applicants who filed the said applications, shall be entitled to obtain a patent for the invention claimed and where no agreement is reached by consultations, none of the applicants is entitled to obtain a patent for the invention. In India there is no statutory provision in this context and thus it may be assumed, as like in several other countries, that in such a situation a joint patent with equal undivided share may be issued to both the applicant as if they were joint-applicants. A more explicit provision, however, will do no harm.

Any suggestions are welcome!