[Patent Act] Applicant's Failure To Disclose Prior Art Doesn't Bar Amendment In Specifications Of Application: Delhi High Court

However, Justice Mini Pushkarna added, “if a prior art comes to the notice of the Controller during the pendency of a patent application, though not disclosed by the applicant, and if objection in that regard is raised by the Controller, the applicant would have a right to address such issues by way of amending the specifications, within the norms of amendment that are allowed as per law.”

The bench thus held that the Controller of Patents and Designs erred in this case, relating to grant of patent for 'Vertical Rotary Parking System' developed by a South Korean company, by denying its plea to amend its patent application and address the objections raised by the opponent on the basis of a prior art.

Significant to note that the prior art belonged to the appellant-company itself.

Though appellant sought to explain the difference and the inventive step by way of an amendment, the Controller rejected such request and denied grant of patent citing the prior art.

The High Court agreed that the appellant was enjoined upon to disclose the prior art at the time of filing of its patent application.

Nonetheless, it held that on the basis of such non-disclosure of prior art, the Controller cannot refuse to consider the application for amendment of specifications on merits, especially, when such prior art is relied on by the Controller to raise objections to patent application of such applicant.

“The Controller has the authority to consider such amended specifications in order to adjudicate the patent application of the applicant…Though the cited prior art D-5 belonged to the appellant itself, however, merely because the appellant did not cite D-5 at the time of filing the subject application, cannot be held against the appellant as a failure to disclose a complete specification,” the Court held.

It added that rejection of the amendment application amounted to “deprivation of a fair opportunity” to the appellant to address the objections.

The Court also relied on Opentv INC Versus Controller of Patents and Designs and Another (2023) where it was held that the amendments in claims and specifications can be allowed subsequently, even at the stage of appeal, so long as the same are in consonance with the earlier claims and original specifications.

In this case the Court noted that the appellant's application for amendment was not an attempt to shift the invention's foundation but was a legitimate response to the Controller's subsequent introduction of the prior art.

“Thus, the Controller‟s refusal to allow the appellant‟s application for amendment of the specifications, is not justified. Once a new prior art has been introduced, even though it may belong to the applicant itself and was not part of the FER, then, also an applicant has the right to respond to the said newly introduced prior art…Therefore, refusal to allow the amendment to the specifications, which was sought to provide clarification regarding the technical advancements of the subject invention over the newly cited prior art, amounts to a clear violation of the Principles of Natural Justice,” held the Court and ordered that the appellant's patent application be re-examined.

Appearance: Mr. Pravin Anand, Mr. Ravi Aggarwal, Advocates for Appellant; Mr. Ankur Mittal, CGSC with Mr. Aviraj Pandey, Advocates for Respondent

Case title: Dong Yang PC, Inc v. Controller Of Patents And Designs

Citation: 2025 LiveLaw (Del) 900

Case no.: C.A. (COMM.IPD-PAT) 60/2024

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