The Madras High Court, in Dr. Vandana Parvez vs The Controller of Patents [CMA(PT) No.33 of 2023], addressed the issue of erroneous citation of a prior art that stood duly withdrawn under the provisions of the Patent Act, 1970. 

In the instant case, the subject patent application numbered 202041010232 was mainly refused under Section 13(1)(b) of the Patents Act for claiming the same subject matter as claimed in an earlier filed Indian patent application D1 (201941001564).

Notably, the Appellant themselves, in the capacity of a corporate concern, had applied for patent grant in respect of the invention disclosed in D1, and the said application was later withdrawn. Subsequently, the Appellant presented the same claim in their individual capacity in the subject application. Additionally, the Appellant appears to have erroneously requested for early publication and expedited examination of the withdrawn application after its withdrawal.

During the prosecution of the subject application, the Controller raised the objection of anticipation through prior claiming in view of document D1. The Appellant brought to the attention of the Controller that considering its withdrawal, document D1 should not have been published by the Patent Office and further that D1 cannot be treated as prior art for determining novelty and inventive step. The Appellant also prayed that document D1 be disregarded from the record since it was not supposed to be in public domain due to its withdrawal. However, the Controller proceeded to refuse the application on the ground of prior claiming in view of D1, through a non-speaking order which failed to address any of the applicant’s submissions and provided no reasoning for the negative finding.   

The Court noted the impugned order’s silence in relation to the submissions advanced by the Appellant and remarked that such non-speaking orders violate the principles of natural justice.

The Court further noted that the Appellant had filed for withdrawal of D1 within the time limit prescribed by the Patents Act. Therefore, the Controller erred in citing the withdrawn application which was neither restored nor reinstated.

Regarding the requests filed for early publication and examination of D1 through forms 9 and 18A subsequent to the withdrawal request of D1, the Court held that “an erroneous filing of Forms 9 and 18A for a withdrawn application does not imply that the patent application itself has been revived/restored/reinstated”. The Court stressed that in cases of erroneous filings, the Controller must either demand clarification through a notice/correspondence regarding the applicant’s intention in relation to the application or should conduct a hearing to obtain necessary clarification.

The Court affirmed the application of the maxim “Actus Curiae Neminem Gravabit” (the Court shall prejudice no man) to the Patent Office by emphasizing that the maxim applies to every statutory authority, including quasi-judicial bodies, entrusted with the duty to adjudicate the rights of citizens. The Court, thus, held that the consideration of D1 as prior art by the Controller was inconsistent with the provisions of the Patents Act and also violated the principles of natural justice.

Consequently, the Court invalidated the impugned order and remanded the matter to the Patent Office with a direction that the application be examined by a different Controller. Additionally, the Court directed the Patent Office to expunge D1 from public domain and prevent its citation as prior art in future applications.