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Abandoned patent application may also constitue prior art

Patents granted before the date of filing of a patent application constitute prior art. Also the patent applications which have been filed but still not granted can form prior art provided they have been published after few months. For example, in the case of European Patent Office every patent application filed is published within eighteen months of the date of filing. Such publications then become the prior art for any of the patent applications filed after that date. What happens to the patent applications, which have been abandoned or withdrawn by the inventor or the assignee before publication. Do they form prior art? Presented below is a case decided in the UK Patent Office in which an abandoned application also became prior art although it was withdrawn before the publication date.

A patent application (A) concerning an illumination method and device was filed by Mr. Leslie Adrian Alfred Woolard on 3 June 1997 and was published on 12 August 1998. A previous application (B) of  Mr.Leslie relating to a very similar subject matter was filed on 1 December 1995 and published on 4 June 1997. At the substantive examination stage, this earlier application (B) was cited by the examiner under section 2 (3) of Patents Act 1997 of UK against present application (A). The applicant alleged that he had abandoned the application ‘B’ before publication. So it cannot form a prior art for the application ‘A’. The main questions at dispute in this case are whether the withdrawal of application ’B’ will have the intended effect of nullifying the publication as per Section 2 (3) and whether the word application in Section 2 (3) be construed as limited to applications which are pending (not withdrawn or refused) when published.

Section 2(3) states :

“The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say-

(a)     that matter was contained in the application for that other patent both as iled and as published; and

(b)     the priority date of that matter is earlier than that of the invention.”

The applicant had instructed his agent to abandon the earlier application ‘B’ on 26th March 1997. But the agent didn’t act upon the instruction in time and on 8 May 1997 the agent received a notice from the Patent Office stating that the application would be published on 4 June 1997. On 12 May 1997 the Patent Office received letter from the agent for withdrawal of the application ‘B’. The examiner however was of the opinion that the intimation for withdrawal was received after the preparations for publication were complete. According to section 16 (1) of the Act “The controller shall, unless the application is withdrawn or refused before preparations for its publication have been completed by the Patent Office, publish it as filed. The agent felt it appropriate  to involve common sense to the meaning of the Act and said that if an application is withdrawn before preparations and by some administrative error it is published, then any action after withdrawal should be considered not to have happened. The examiner refuted this ‘common  sense’ argument stating that a statute should only be interpreted on its own words. The agent further argued that the word ‘application’ in section 2 (3) means ‘live’ application i.e. one that contains a request for the grant of a patent and when withdrawal is requested, one is asking for the withdrawal of the request for grant of a patent and after withdrawal the application ceases to be an  application as defined by section 2 (3). To this argument the examiner replied that when a term is used in different places in a statute it has the same meaning unless there is express indication to the contrary. Finally, the agent cited the E P O practice according to which it does not consider a published withdrawn application to be a valid application. To this argument the examiner replied that Rule 48 of EPC differs from section 16 of the Act in the sense that according to this Rule the application shall not be published if it is withdrawn before preparations for publication are complete whereas section 16 says that the application shall be published as soon as possible after the prescribed period unless withdrawal is requested before preparations for publication are completed.

The judge held that the application ‘B’ did form a prior art for application ‘A’ as the application ‘B’ was withdrawn only after the preparations for publication were over.

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