Amendments to Patent Specifications
Claims determine the scope or extent of protection granted to a patentee/applicant for his invention. The scope of a claim indicates a boundary, which when applied to patent law defines the scope of the invention for which the applicant seeks protection under the patent law.
Section 59 of the Patents Act, 1970 deals with permissible amendments to patent claims or specifications. It has a negative or prohibitory nature and leaves no scope for ambiguity. Section 59 holds that subsequent amendments to claims or specifications must deal with a matter which has already been disclosed in the pre-amendment claim. One has to make a side-by-side comparison of the original claim and amended claim to check that the amended claim falls wholly within the scope of at least one of the original claims. The new claim cannot add or enlarge the scope of the previously filed claim, instead, it may restrict it so as to make it clearer.
The Indian Patent Office (IPO) has time and again adopted a rather rigid approach towards amendments of claims. It has occasionally raised objections against such amendments. In OA/48/2020/PT/DEL IPAB (Intellectual Property Appellate Board) which now stands abolished, held additional claims would at large be barred. IPAB opined that the patentee could get no monopoly unless it was claimed in the prior claim. In AGC Flat Glass Europe v Anand Mahajan the High Court of Delhi took a liberal approach and allowed a post-grant claim as it did not alter the boundary or scope of the originally filed claims.
However, a recent case from 05 July 2022 has been described as giving even more leeway to interpreting Patent Claims broadly. Let’s take a look into exactly what this judgement means.
The Judgement in Question
In this case of Nippon A&L INC v The Controller of Patents 2022, a single judge bench of J. Pratibha Singh gave a judgment favorable to the appellant. The HC has taken a liberal view towards the amendment of a patent claim. The Court held that “invention before the amendment and after the amendment need not be identical, before granting of the patent. Provide that the scope of claims is not altered. “
The Appellants (Nippon A&L INC) had filed a patent on a “product by process” format. They sought patent protection for both the features of the product and the process. They were however met with objections by the Patent Office on the grounds that the claim was clear and there was ambiguity on whether the patent demanded the product or the process.
To make the claims clearer the Appellants amend the claims from “product by process” to “process only”. The Deputy Controller of Patents objected to this and expressed that the process was not previously claimed in the original claims, thereby they were beyond the scope of the original claims. The ambit of Section 59 (1) was cited and held that “new claims which did not fall within the scope of the originally filed claims, would not be allowed.”
The High Court upon taking up this matter contended a largely favourable view for the Appellants. HC held that the Appellants had amended the claim originally filed covering both the products and the process, to protection for the process only. Thereby, they restricted the scope to make it less ambiguous. HC disagreed with the objections raised by the Patent Office, which stated that the Appellant’s claims to patent the process, were not originally filed and therefore lie beyond the scope of the claims.
The HC noted that such statements by the Patents Office were contrary to what was stated in the First Examination Report. The Court in this judgement explained the meaning of “product patent” and “process patent”. It held that a “product patent” grants the owner monopoly for the product only and not the process by which the product is manufactured. “Process patent” grants the owner monopoly over the process used to manufacture the product, the owner cannot exercise a monopoly over any other process used to manufacture a different product. The monopoly demanded in a “product by process” would depend upon the reading of the claims. High Court upon analyzing Section 59 held that the power to amend the claim has not been abridged but rather broadened.
To support such a view High Court cited the judgement passed in the case of Konica/Sensitizing 1994 EPOR 142 where the Appellate Board had allowed the claim “product by process” to be changed to “process only”. The Court further held that the intention of the Ayyangar Committee Report was to allow a greater level of flexibility in the amendment of claims prior to the grant of the patent. The Report stated that inventions before and after the amendment need not be identical as long as the invention can be dissuaded from the scope of the claims.
The Court opined that the Appellants had indeed made efforts to narrow the scope. The process in the amended claim had been previously disclosed in the patent specification. The process was not sought to be added as a new claim by the amendment. The amendment was, therefore, within the scope of the original patent specification and claim and the Respondent’s objections were dismissed.
Initially, there does not seem to be quite as much as a radical shift here as advertised. The elements and reasoning involved in this specific case are similar to the ones allowed before. The modified claims were allowed because they were found to be (in this particular case) within the scope of the original claims, a requirement that has already been noted in several cases.
But this does pave the ground for a less strict, more broad Patent Examination environment in the future. Especially since traditionally, a product by process claim is held to be narrower than a process claim. This may very well change the way patent drafts are written for future products by process inventions.
Author: Dipanwita Chakraborty, Associate Trainee at PA Legal.
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