In a recent judgement, the Madras High Court set aside an order issued by the Controller of Patents (the “Respondent”) against Dr. Vandana Parvez and others (the “Appellant”) refusing the latter’s Patent Application.

Background: The Respondent refused the patent application numbered 202041010232 (hereinafter referred to as “IN’232”) as being anticipated by a patent application numbered 201941001564 (hereinafter referred as “IN’564”). Aggrieved by the rejection, the Appellant challenged the rejection of their patent application, before the High Court.

Facts: The Appellant had filed IN’564 in 2019 in the name of “Gemini Associates” and later on withdrew IN’564. Thereafter, the Appellant filed IN’232 in 2020. During substantive examination of IN’232, the Patent Office cited IN’564 as one of the prior arts to support their rejection of the application on the basis of novelty and inventive step. The appellant specifically highlighted the ‘withdrawn’ status of IN’564, to the Patent Office. Nevertheless, the Respondent did not agree, and instead proceeded to reject the said IN’232, on the ground that the subject invention is identical to and anticipated by the subject matter of IN’564.

Decision: On appeal, the High Court stated that a request for withdrawal of an application may be filed within 15 months from the date of application/priority date. IN’564 was filed on 14th January 2019, and was withdrawn on 10th March 2020 (which was well-within the prescribed time limit). It ought to be borne in mind that a request for early publication and expedited examination of IN’564 was filed on 18th January 2021, which is after the relevant period. Therefore, the Court observed that IN’564, which is withdrawn, should never have been considered as prior art, as doing so will violate the provisions stipulated in the Indian Patents Act, 1970 (as amended) as well the principles of natural justice. The Court went on to opine that even if IN’564 were to be published or examined, the Patent Office cannot do so without restoring or reinstating IN’564. Hence, the Court held that the procedure adopted by the Respondent is in clear violation of the general procedure and the established practice followed, while dealing with patent applications. In light thereof, the Court set aside the impugned order of the Respondent, and remanded the matter back to the Respondent. The Court also directed that another Controller examine the application, within six months, and expunged IN’564 from the public domain as its publication should have never taken place.