Balancing Innovation and Compliance: Google LLC v. Controller of Patents


This case delves into a patent application rejected by the European Patent Office (EPO) and the EU patent bureau. The application aimed to patent a method facilitating instant messaging sessions across devices but was dismissed for lacking inventive advancement and technical specificity. During the appeals process, critical oversights and non-disclosures surfaced, leading to sanctions for the applicant. The case highlights the importance of candor, precision, and adherence to procedural requirements in patent applications. It serves as a lesson, emphasizing thorough preparation, comprehensive disclosure, and compliance with legal standards. Ultimately, the case underscores the intersection of innovation, legal compliance, and procedural integrity in patent law, emphasizing the enduring significance of diligence and transparency in advancing technology.

Facts of the case

Amidst a lawsuit’s inception, a patent application emerged proposing a method for instant messaging session transfers among devices. Initially submitted to the European Patent Office (EPO), it was rejected for lacking innovation. A subsequent application to the European Union (EU) patent bureau, consisting of a main and separate submission, faced similar dismissal due to perceived lack of advancement and technical specificity. Criticism cantered on the concept’s perceived simplicity and insufficient technical details. During the appeals process, it was revealed that the corresponding EU patent application had been abandoned, a fact the appellant failed to disclose. This non-disclosure led to further scrutiny and eventual dismissal of the appeal, with sanctions imposed on the appellant for deceptive behaviour and non-compliance. The case underscores the importance of honesty and integrity in patent applications, highlighting the consequences of withholding crucial information and the necessity for applicants to adhere strictly to legal and procedural requirements throughout the application process.

Issues concerned with the case

  • The dismissal of the patent application by the European Patent Office (EPO) and subsequent repudiation of corresponding EU patent submissions.
  • Deficiency in innovative progression cited as the principal rationale for repudiation by both the EPO and EU patent bureau.
  • Non-disclosure of the abandonment of the corresponding EU patent submission during the appellate procedure.
  • Dissemination of erroneous representations of facts by the petitioner to the tribunal & Non-adherence to disclosure requisites pursuant to statutory provisions.
  • Levying of financial liabilities on the petitioner owing to their deceptive actions and non-conformity with lawful obligations.

Contention of the case

Appellant’s Contentions

The Appellant argues that the rejection of their patent application by both the European Patent Office (EPO) and the EU patent submissions was unjustified. They assert that their innovation offers a pioneering approach to transferring instant messaging sessions, streamlining manual operations and enhancing user interaction by autonomously selecting the device with the most comprehensive session. They dispute the notion that their innovation merely mechanizes existing functions, emphasizing its substantive enhancement of the instant messaging technical landscape. Additionally, they contend that their application adequately discloses the technical intricacies of the auto-selection process and refute claims that their invention lacks inventive prowess.

Regarding the non-disclosure of the abandonment of the EU patent application, the Appellant acknowledges the oversight but argues that it does not diminish the substance of their appeal. They stress that the rejection of the EU patent submissions does not undermine the novelty or inventiveness of their innovation and urge the Court to focus on the technical merits rather than procedural irregularities.

Respondent’s Contention

In contrast, the Respondent rebuts the Appellant’s contentions, asserting that the rejection of the patent application was justified based on patentability criteria. They argue that the proposed innovation lacks inventive step as it merely automates existing manual functions within instant messaging. The Respondent contends that the auto-selection feature does not represent a significant advancement and fails to demonstrate inventive step according to European Patent Convention (EPC) guidelines.

Respondent highlights the lack of detailed implementation information in the patent application, undermining the credibility of the innovation. They assert that the application lacks adequate disclosure regarding the technical feasibility and execution of the auto-selection feature, weakening its case for inventive step. Addressing the non-disclosure of the abandonment of the EU patent application, the Respondent criticizes it as a lack of transparency and adherence to legal obligations. They stress the importance of full disclosure in patent proceedings to uphold transparency and equity.

Judgment of the case

The European Patent Office (EPO) rejected a patent application concerning a method for transferring instant messaging sessions due to perceived deficiencies in compliance with the European Patent Convention (EPC). The rejection was primarily based on the lack of inventive step and insufficient disclosure of technical implementation details. Despite appeal efforts, the court upheld the dismissal, emphasizing rigorous examination and adherence to patent laws. The decision highlighted the importance of thorough disclosure during patent proceedings to ensure comprehensive information regarding the claimed invention.

Fundamental principles of patent law, particularly inventive step and disclosure requirements, underpinned the rejection. The court’s commitment to these principles aimed to grant patents only to inventions genuinely contributing to technological advancement and adequately described for replication by others skilled in the art.

Central to the rejection was the determination of whether the claimed invention involved an inventive step. The EPO argued that the proposed method merely automated a previously manual process, lacking the non-obvious departure from the prior art required by patent law. This underscored the necessity of demonstrating both technical improvement and non-obviousness.

The case also underscored the critical role of disclosure. The court’s dismissal suggested that the lack of detailed technical information regarding implementation was a significant factor in the rejection, emphasizing the need for comprehensive descriptions enabling accurate assessment of novelty, inventive step, and industrial applicability.


The case examines the rejection of a patent application by the European Patent Office (EPO) due to perceived deficiencies in inventive ingenuity and disclosure. Despite appeals, the court upheld the dismissal, emphasizing the necessity for innovations to demonstrate genuine technological advancement and be comprehensively disclosed. The ruling underscores the importance of meticulous preparation and adherence to patent statutes, highlighting the need for applicants to not only showcase technical improvement but also a significant departure from existing knowledge to meet patentability criteria. Additionally, the case emphasizes the critical role of detailed disclosure in enabling accurate assessment of novelty and industrial applicability. While representing a setback for the appellant, the case serves as a valuable lesson for patent aspirants, emphasizing the significance of diligence, precision, and conformity to legal benchmarks in securing patent protection and contributing to the integrity of the patent framework.


In the realm of patent law, this case serves as a poignant reminder of the intricate dance between innovation and legal scrutiny. As the legal proceedings conclude, several key lessons emerge, echoing throughout patent jurisprudence. Firstly, the case highlights the fundamental principle of inventive ingenuity as essential for patentability. While advancements are celebrated, patents demand a departure from existing knowledge. The rejection by both the EPO and the EU patent bureau underscores the need for not just technical improvements but substantial leaps in technology. Additionally, the case underscores the critical role of disclosure in patent applications. Thoroughly detailing innovations isn’t merely procedural; it’s crucial for examiners to assess novelty and industrial applicability accurately. The lack of detailed specifications proved detrimental, serving as a warning for future applicants. Beyond its legal implications, the case underscores the enduring importance of integrity and transparency. The tribunal’s response to the appellant’s non-disclosure emphasizes the gravity of adherence to statutory provisions and ethical standards throughout the patent process. Ultimately, while the case may represent a setback for the appellant, it serves as a guiding light for future patent endeavours. Through its examination of inventive ingenuity, disclosure requirements, and procedural adherence, it emphasizes the delicate balance between innovation and legal compliance. It reinforces the necessity of diligence, precision, and adherence to legal standards in securing patent protection for groundbreaking innovations.

About Aeshita Marwah 4 Articles
Aeshita Marwah is a third-year law student at the University of Petroleum and Energy Studies with a strong passion for labor laws and intellectual property matters. She is an avid reader and researcher who is always up-to-date with the latest legal issues from around the world. Her research work is characterized by her dedication to thoroughness, analytical rigor, and innovative thinking. Her commitment to labor laws is driven by a desire to promote fair and equitable treatment of workers, while her fascination with intellectual property matters is driven by her appreciation for creativity and innovation. With her unwavering determination and passion for the law, Aeshita is poised to make a significant impact on the legal profession.

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