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PRATHIBA M. SINGH
Nippon A. & L. Inc. – Appellant
Versus
Controller Of Patents – Respondent
JUDGMENT :
(Prathiba M. Singh, J.)
1. This pronouncement has been done through hybrid conferencing.
Background
2. The present appeal challenges the impugned order dated 15th March, 2021 passed under section 15 of the Patents Act, 1970 (hereinafter ‘Act’). Vide the impugned order, the Appellant’s application for the grant of patent has been rejected by the Deputy Controller of Patents.
3. The Appellant/Applicant- Nippon A&L Inc. (hereinafter “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 A
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.
Amendments to patent claims are permissible to restrict claims as long as they remain within the scope of the original specification, supporting both clarity and legal compliance under Section 59.
The decision highlights that patent amendment claims must fall within the initial disclosure's scope, and a lack of a reasoned decision violates the principles of natural justice in patent law.
The permissibility of amendments to patent claims prior to the grant and the broader permissibility for such amendments were established in the judgment.
The court allowed the amendment of claims at the appellate stage and found that the invention satisfied the criteria of inventive step.
The court has the authority to allow a change of name under Section 151 of the CPC.
The main legal point established in the judgment is that amendments made to patent claims at the instance of the Controller, pursuant to the directions of the Controller, do not violate the principle....
Procedural irregularities in patent opposition must respect principles of natural justice, and amendments to patent claims cannot broaden their scope.
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