2022 Supreme(Del) 2197

IN THE HIGH COURT OF DELHI AT NEW DELHI
PRATHIBA M. SINGH, J.
Nippon A. & L. Inc. – Appellant
Versus
The Controller Of Patents - Respondent
C.A. (Comm. IPD-PAT) 11 Of 2022
Decided On : 05-07-2022

Amendment of claims from ‘product by process’ claims to ‘process’ claims is permissible under Section 59(1) of the Patents Act, 1970, subject to certain conditions.

Headnote:

PATENT - AMENDMENT OF CLAIMS - SECTION 59 OF THE PATENTS ACT, 1970 - AMENDMENT OF CLAIMS FROM 'PRODUCT BY PROCESS' CLAIMS TO 'PROCESS' CLAIMS - PERMISSIBLE - CONDITIONS - SCOPE OF CLAIMS AS AMENDED MUST FALL WITHIN THE SCOPE OF CLAIMS AS ORIGINALLY FILED - AMENDMENT MUST BE BY WAY OF DISCLAIMER, CORRECTION OR EXPLANATION - AMENDMENT MUST BE FOR THE PURPOSE OF INCORPORATION OF ACTUAL FACTS - AMENDMENT MUST NOT CLAIM OR DESCRIBE MATTER NOT IN SUBSTANCE DISCLOSED OR SHOWN IN THE SPECIFICATION BEFORE THE AMENDMENT.

Fact of the Case:

The Appellant had filed a patent application in Japan bearing no. 2013153727 seeking patent protection for a “copolymer latex” product and process on 24th July, 2013. Thereafter, application bearing no. 201617003704 dated 2nd February, 2016 was filed as the Indian national phase entry of international application PCT/JP2014/069608. A request for examination of Appellant’s application was filed on 15th March, 2017. The said application was examined and First Examination Report (FER) was issued on 22nd November, 2019. In the FER, objections relating to inventive step under Section 2(1) (ja) of the Act, non-patentability under Sections 3(d) & 3(e) of the Act were raised by the Patent Office. The Patent Office further raised an objection that the scope for which protection was sought was not clear from the wording of the claims. A response to the FER dated 18th May, 2020 was submitted by the Appellant along with an amended set of claims. It was contended by the Appellant in its response that the invention in question cannot be conceived from the prior art. It was also argued that objections under Sections 3(d) and 3(e) of the Act were not attracted. The Respondent on 18th September, 2020 issued a hearing notice under section 14 of the Act. One of the objections taken in the hearing notice was that claims 1, 2, 4 and 6 were not properly drafted and the scope for which protection was sought was not clear. Therefore, the applicant was asked to redraft the claims. Objections under Sections 2(1)(j), 2(1)(ja), 3(d), 3(e) of the Act were also raised in the hearing notice. The hearing took place on 11th January, 2021. In the hearing, Appellant’s Agent appeared and detailed oral submissions were stated to have been made on the objections raised in the hearing notice. 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. On 24th January, 2021, Appellant’s Agent filed written submissions encapsulating the oral arguments along with a fresh set of amended claims. The original set of claims and the final amended set of claims as filed on 24th January, 2021 are set out below: The Deputy Controller of Patents in the impugned order held that the main issue which is still outstanding is the objection regarding scope of claims. As per the impugned order, the Appellant converted all ‘copolymer latex’ claims to ‘method of emulsion polymerization’, however, the method of emulsion polymerization was not present in the originally filed claims. The ld. Deputy Controller was further of the view that the process of emulsion polymerisation is a known process. Hence, there is no inventive step in the invention of the Appellant. However, on the aspect of inventive step, the discussion is very minimal as it appears that the overwhelming opinion of the ld. Deputy Controller was that the amendment would not be liable to be allowed. There is also no discussion on the objection of non-patentability under Sections 3(d) and 3(e) of the Act.

Finding of the Court:

The Court held that the amendment of claims from ‘product by process’ claims to ‘process’ claims is permissible. The Court further held that the conditions for amendment of claims under Section 59(1) of the Patents Act, 1970 are as follows: (i) The amendment has to be by way of disclaimer, correction or explanation; And (ii) The amendment has to be for the purpose of incorporation of actual facts; And (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. And (iii)(b) The amended claims have to fall within the scope of claims as originally filed.

Issues: Whether the amendment of claims from ‘product by process’ claims to ‘process’ claims is permissible.

Ratio Decidendi: The Court held that the amendment of claims from ‘product by process’ claims to ‘process’ claims is permissible. The Court further held that the conditions for amendment of claims under Section 59(1) of the Patents Act, 1970 are as follows: (i) The amendment has to be by way of disclaimer, correction or explanation; And (ii) The amendment has to be for the purpose of incorporation of actual facts; And (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. And (iii)(b) The amended claims have to fall within the scope of claims as originally filed.

Final Decision: The Court allowed the petition and directed the Deputy Controller of Patents to dispose of the application of the Appellant within a period of six months.