In Case Of Amendment To A Patent Specification, The Invention Before & After Amendment Need Not Be Identical: Delhi High Court

The Delhi High Court has held that amendments to a patent specification or claims prior to grant ought to be construed more liberally than narrowly. It added that the only consideration that must be kept in mind is that the amended claims are not inconsistent with the earlier claims in the original specification.

A single judge bench comprising of Justice Pratibha M. Singh opined that an invention before and after amendment need not be identical in case of amendment before acceptance "so long as the invention is comprehended within the matter disclosed".

Briefly, the facts of the case are that the appellant sought patent protection for a "copolymer latex" product and process. The Patent Office raised an objection that the scope for which protection was sought was not clear from the wording of the claims. The Patent Office wanted clarity as to whether the scope for which the protection is sought is for a product or for a process.

A response to the FER was submitted by the Appellant along with an amended set of claims. The Appellant also proposed amending the claims, which were previously defined in 'product by process' format characterised by features of both the product and the process, to 'process only' claims to render the claims clearer and more definite.

The dispute was heard by the Deputy Controller of Patents who was of the opinion that the process was not claimed earlier and hence the same was beyond the scope of the claims. He also held that the process sought protection for was a known process and hence, there was no inventive step in the invention of the Appellant. The Deputy Controller found that here, the method claims were beyond the scope of the claims as originally filed and were not supported by the description. Further, "that which is not claimed is disclaimed." This means that since the method claims were not claimed at the time of filing, the said claims are disclaimed. Finally, the amended claims were not allowed under Section 59(1) of the Patents Act, 1970. As per Section 59(1) of the Act, an amendment of the claims cannot be allowed if the amended claims would not fall wholly within the scope of the claims before the amendment. 

In this case, the Court was primarily considering whether the claims as originally filed could have been amended into method claims by the Appellant or not.

Due to the objections raised by the Patent Office that there was no clarity as to whether the patent was for a product or for a process, the Appellant chose to restrict the patent to the 'process' alone. The court opined that the language used in the objections shows that the claims as originally filed were sought for "product or process". Thus, for the Patent Office to now say that there were no process claims in the original claims and that the method claims are not supported by the description would be contrary to what is stated in the FER and the subsequent objections which were raised. The court also stated that–

"It is common understanding in the field of patents that product claims are much broader claims than process claims. A product claim, if granted, confers a monopoly on the patentee for the product itself, irrespective of the process by which the said product could have been made. However, in the case of a process claim, the exclusivity or the monopoly is restricted to the manner/method by which a particular product is manufactured and if the same product is manufactured or achieved through a different process/method, the exclusivity of the patentee cannot usually extend to such different process or to the product manufactured by the different process. When there are 'product by process' claims, however, the extent of monopoly depends upon the reading of the claims in each case."

The court also analysed the contents of Section 59 of the Act which shows that an amendment of an application would be permissible only if the conditions laid down under the Section were met. The court stated that this Section was amended and a perusal of the provision as it existed prior to the amendment and as it exists today shows that the phrase "except for the purpose of correcting an obvious mistake" has been substituted to read "except for the purpose of incorporation of actual fact". A reading of the unamended provision and the provision post the amendment shows that the power to amend has not been abridged or curtailed or narrowed but has been expanded.

The court relied upon the judgement of Konica/Sensitizing [1994] EPOR 142 in which the Appellate Board categorically held that the conversion and the change in category of 'product by process' claims to 'process' claims was clearly admissible. The court also relied upon the the Ayyangar Committee Report.

As per the court, the purport and intention of this Report was to give broader and wider permissibility for amendment of claims and specification prior to the grant and restrict the same post the grant and advertisement thereof. The Report was also categorical in its observation that the invention before and after amendment need not be identical in case of amendment before acceptance "so long as the invention is comprehended within the matter disclosed". The court opined that–

"When this standard, as contemplated by the Ayyangar Committee Report, is applied to Section 59 of the Act as it stands today, it becomes clear that amendments to a patent specification or claims prior to grant ought to be construed more liberally rather than narrowly. The purport and spirit of Article 123 of the European Patent Convention is not too different. In effect, the legislative material and the statutory provisions require that nothing new should be permitted to be inserted in the specification or claims. So long as the invention is disclosed in the specification and the claims are being restricted to the disclosures already made in the specification, the amendment ought not be rejected, especially, at the stage of examination prior to grant."

In view of the aforementioned, the court held that the Applicant was amending and narrowing the scope of the claims and not expanding the same. It held that the process sought to be claimed in the amended claims had been clearly disclosed in the patent specification and the said process was not sought to be added newly by way of an amendment. The amendment was, thus, held to be within the scope of the patent specification and claims as originally filed.

Accordingly, the present petition was allowed to the extent that the amended claims filed by the Appellant were directed to be taken on record. The court directed the Deputy Controller of Patents to examine the same in accordance with law on the other grounds including of novelty, lack of inventive step and non- patentability under Section 3(d) and 3(e) of the Act, in an expeditious manner.

CASE TITLE: NIPPON A&L INC. v. THE CONTROLLER OF PATENTS

Citation: 2022 LiveLaw (Del) 616

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