The recent orders from the Delhi High court clarify that the claims can be amended by including the features from the description, thus redefining the permissibility of the claim amendments by the Indian Patent Act. The Delhi High Court, Intellectual Property Division (IPD)’s decisions interpret section 59 (1) of the Patent Act (that provides for amendment of application or specification) broader and clarify an essential aspect of claim amendment during prosecution. The post discusses three different cases where claim amendments were disallowed by the patent office but were permitted by the IPD. The decisions lay down important principles in the evolving landscape of amendment of claims.
According to Section 59(1) of the Act, an amendment is permitted where it is:
(i) by way of disclaimer, correction, or explanation; and
(ii) for incorporation of actual fact.
The section further provides that:
(iii) no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter, not in substance disclosed or shown in the specification before the amendment; or
(iv) any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.
Case-1 (In the matter of NIPPON A&L INC. V. THE CONTROLLER OF PATENTS) (Case No- C.A.(COMM.IPD-PAT) 11/2022)
Nippon A&L Inc (Appellant/Applicant) had filed a Patent Application No. 201617003704, wherein protection was sought for “A copolymer latex being obtained by emulsion polymerization” process. During prosecution, the patent office raised objections on the grounds of:
- Lack of inventive steps.
- Non-patentability under sections 3(d) and 3(e).
- Lack of clarity on the scope of claims for which protection has been sought, whether it is for product or for process is not clear from wording “obtained by emulsion polymerization…” as used in claim 1, 4.
The Appellant responded to the objections by making minor amendments to the claims. After that, a hearing notice was issued reiterating the (three) objections. Post the hearing; the Appellant amended the ‘product by process’ to ‘process’ claims. The patent office passed an order refusing the application on the ground that the amendments are beyond the scope of claims as filed initially and so not allowable under section 59(1) of the Act.
Court findings and decision:
The Court in Appeal against the Order of the Controller observed that prima facie it is of the view that by giving up the product claim and restricting the claim to a process claim, the Applicant had narrowed the scope of the claims in comparison to its original scope. The Court also noted that in process claims, the monopoly is curtailed to the process alone and not the product and thereby the protection is narrower than the originally filed claims. Thus, the amendments were held to be allowable.
Case-2 (Boehringer Ingelheim International Gmbh V. The Controller of Patents) (Case No- C.A. (COMM.IPD-PAT) 295/2022)
An application was filed with a set of claims which were later amended in response to the First Examination Report (the “First Amendment”). Before the patent office evaluated the First Amendment sought by the Applicant, it filed two successive amendments to the claims The Controller, after hearing, refused the claims based on the First Amendment carried out by the Applicant for being allegedly anticipated by and/or obvious over the prior art. At the same time, the Controller also refused the second set of amendments sought by the Applicant under section 59(1). The Controller opined that the amended claims allegedly changed the scope of the claims and therefore did not fall wholly within the scope of the claims before the amendment.
Soon after the hearing and before the Controller issued its order of refusal under section 15, the Applicant filed a divisional application with materially the same set of claims as that submitted with the second set of amendments. However, even the divisional application, after examination & hearing, was refused because the division itself cannot be permitted, as the claims filed with the divisional application were already rejected in the parent application. The applicant appealed the order refusing the divisional application before the Delhi High Court, IPD.
Court findings and decision:
In the decision, the Court, in a way, reiterated the fundamental rule of patent law, i.e., ‘what is not claimed is disclaimed’ and ruled that a divisional application would be maintainable only when the claims of the parent application disclose “plurality of inventions”. The Court held that a divisional application in the present case could not be filed since there was no “plurality of inventions” in the parent application.
Considering the patent office refusal orders and the opinion of the Court in these three cases with respect to their treatment of section 59(1) it can be inferred that:
- a) the patent office appears to have adopted one interpretation nearly consistently, that the amended claims should fall wholly within the scope of the claims (before the amendment or as filed) to be allowable. Whereas, the Court appears to have taken a different position by allowing the claim amendments where the support can be drawn from the specification.
- b) Further, these judgments by the Court, it has been highlighted that the Act should be interpreted with a certain perceptiveness considering the principle of natural justice.
- c) The Court also took the view that provisions recited in the sections serve as a guideline for the controllers and the inventors/applicants.
The above-discussed orders by the Court are a significant departure from the practice followed by the patent office. The decision is expected to open the gates for several Patents to be accepted, which would otherwise be refused on account of a strict interpretation of section 59 (1) by the patent office.
Written by Ranjan Narula and Chandan Kumar of RNA, Technology and IP Attorneys