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.
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