By Renu Bala and Shantanu Mishra
Rejection of patent application on the ground that the amendment of “product by process” claims to process claims which rendered the amended claims not allowable under section 59 (1) of the Patents Act, 1970 was held to be unsustainable in a recent judgment of Hon’ble High Court at Delhi pronounced on July 05, 2022, in the matter of “Nippon A&L Inc. vs The Controller of Patents and Designs”.
Brief facts of the case
Appellant (Nippon A&L Inc.), filed a patent application in India through national phase entry of PCT international application PCT/JP2014/069608. The Applicant in order to overcome the objections raised in the hearing notice amended the “product by process” claims to “process only” claims.
The controller rejected the patent application on two grounds:
- The amended claims were beyond the scope of the originally filed claims and the method claims were not supported by the description.
- The amended claims lacks inventive step.
and held that the claims are not allowable under section 59(1) of the Act. The Deputy Controller did not dealt with the objections of non-patentability under Section 3(d) and 3(e) of the Patents Act, 1970.
The Appellant challenged the order of Deputy Controller and filed an appeal before the Hon’ble High Court of Delhi.
The Hon’ble Court observed that following essential conditions are to be satisfied for an amendment under Section 59 (1) to be permissible, which are –
- (i) The amendment should be by way of disclaimer, correction or explanation.
- (ii) The amendment should be for the purpose of incorporation of actual facts.
(iii) (a) The effect of the amendment ought not be to amend the specification to claim or describe any matter which was not disclosed in substance or shown in the originally filed specification.
(iii)(b) The amended claims should fall within the scope of claims as originally filed.
Any amendment which does not fulfill the criteria of (i), (ii), (iii)(a) or (iii)(b) cannot be allowed.
The Hon’ble High Court noticed that in the field of patents the product claims are much broader than the process claims.
The Hon’ble Court observed that the Applicant is amending and narrowing the scope of the claims and is not expanding the same. The process claims sought by the Applicant to claim after amendment are clearly disclosed in the patent specification.
The Hon’ble Court set aside the rejection of the patent application of the Applicant stating that the amendment is within the scope of patent specification and satisfies the conditions of Section 59 (1) of the Patents Act, 1970. Thereafter, remanded the matter back to the IPO for consideration of questions related to lack of inventive step and non-patentability.
This is a very welcome and awaited decision by the Hon’ble High Court in which section 59 of the Patents Act, 1970 has been interpreted liberally. This case law would act as a guiding path for the Controllers at the Indian Patent Office for determining whether the amendments made by the Applicant are within the purview of Section 59 or not.