In the matter of CMA(PT) No. 33 of 2023, the Madras High Court, allowed an appeal challenging the Patent Controller’s decision to reject a patent application filed by Dr. Vandana Parvez and others. The Court set aside the refusal order holding it to be non-speaking, in violation of the Patents Act, 1970, and principles of natural justice.
Background
The appellants filed a patent application bearing number 202041010232 for their invention titled ‘Method and System for Providing Effective Generation and Delivery of Interactive Online Digital Content’. The appellants’ invention leverages machine learning to optimize the creation, delivery, and refinement of interactive digital advertising content, targeting audiences based on psychological parameters.
The appellants had filed a patent application in 2019 under a corporate entity by the name of “Gemini Associates” but withdrew it in March 2020. Subsequently, they submitted a new application in their individual capacity, making claims including technical advancements in audience segmentation and message delivery optimization.
Refusal by the Patent Office
The application was primarily refused based on prior art cited as “D1,” (IN 201941001564) which was, in fact, the appellants’ earlier withdrawn application. The appellants argued that D1’s citation violated Sections 11A, 11B, and Rule 24 of the Patents Act and Rules, which prohibit the publication or reliance on withdrawn applications unless reinstated. They further contended that the invention met patentability requirements under the 2017 Guidelines for Examination of Computer Related Inventions, including novelty and technical advancement.
Court’s observations
The Court found that the Controller had failed to evaluate the appellants’ detailed responses and submissions. The rejection order focused solely on Section 13(1)(b) of the Act, disregarding objections relating to other aspects like Section 3(k) and clarity of claims. The Court noted that the publication of D1 was procedurally invalid, rendering its citation impermissible.
The court observed that erroneous actions by statutory bodies should not prejudice applicants. The Court therefore remanded the matter to the Patent Office, directing a fresh examination of the application by a different Controller within six months. The Patent Office was also instructed to expunge D1 from the public domain to prevent further misuse.
As on the date of publication of this post, the status of the application continues to be under refusal.
The decision underscores the need for meticulous compliance with procedural safeguards in patent administration, particularly when rejecting applications.
Citation: Dr. Vandana Parvez & Ors. v. Controller of Patents, CMA(PT) No. 33 of 2023 (H.C. Madras Feb. 23, 2024). Available at: https://indiankanoon.org/doc/193545684/, visited on 21/11/2024.
Authored by Gaurav Mishra, BananaIP Counsels
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