The Critical Link between Disclosure in Provisional Spec. and Priority Dates: Lessons from a Madras HC Ruling
- seo835
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In a significant ruling by Madras High Court, an order of the Patent Controller was overturned and the application was remanded back for reconsideration for failing to consider the contentions raised on the priority date of the prior art while considering the issue of anticipation by prior claiming. The case involved an appeal against the order rejecting the application for a patent application concerning EC composition comprising Pendimethalin and Metribuzin.
A patent application seeking protection for Emulsifiable Concentrate formulation of two herbicidal compounds Pendimethalin and Metribuzin was rejected on the ground that the invention was anticipated by way of prior claiming in view of prior filed patent application 2243/MUM/2014, inter-alia, other grounds.
Priority date in a patent application is the effective date before which anything published can be used as a prior-art to challenge patentability/validity. In case of anticipation by way of prior claiming, the claim of the alleged prior-art must have a priority date earlier than that of the claim under challenge. Sec 11(2) of the Patent Act provides that a claim can claim priority from a provisional specification, only if the subject matter of the claim is fairly based on the disclosures made in the provisional specification.
In the instant matter the provisional specification for the patent application was filed on 25.08.2014, while that of 2243/MUM/2014 was filed on 09.07.2014. The complete specification of the prior art 2243/MUM/2014 was filed on 30.12.2014.
During the opposition proceedings specific contentions was raised as below:
Claim 1 of the complete specification of 2243/MUM/2014 broadly claims liquid compositions Pendimethalin and Metribuzin with claim 2 specifying that the liquid composition can be EC formulation. However, the provisional specification did not disclose the EC formulation as claimed in the patent application; rather, the disclosure of the provisional specification was limited to a Suspo-Emulsion composition, inasmuch as, the provisional specification highlights the advantages of the SE formulation over EC formulation. In view of these facts, the question arose if claims 1 and 2 (covering EC formulation) of 2243/MUM/2014 can validly claim priority date from the provisional specification or otherwise.
The court examined the contentions and found a prima facie error in the controller’s approach towards the conclusion made regarding the ground of prior claiming without assessment of validity of the claim of priority date from the provisional application. The court after carefully analysing the prior art 2243/MUM/2014 noted that the provisional specification filed prior to the instant patent application does not disclose anything about the EC formulation and it only describes SE formulation and claims superiority of the same.
The court opined the important issue before the controller was to determine whether the claims of the prior art in 2243/MUM/2014 are fairly based on the disclosure of the provisional specification as per section 11(2). On analysis it was found that there is neither any analysis nor any finding on whether the claim on EC formulation was “fairly based” on the provisional specification. Thus the court concluded that the omission of such analysis and lack of findings of the same in the order warrants reconsideration. The Court also observed that order had failed to record any findings in relation to the expert affidavits and non-consideration of the several prior arts documents referred by the pre-grant opponents and remanded the matter for reconsideration.
Khurana and Khurana was represented by Mr. Adarsh Ramanujan and assisted by Tarun Khurana, Tapan Shah and Subburaj.
PDF of Judgement