The permissibility of amendments to patent claims prior to the grant and the broader permissibility for such amendments were established in the judgment.

JUDGMENT

Amit Bansal, J. (Oral)

1. The present appeal has been filed under Section 117-A of the Patents Act, 1970 impugning the order dated 28th June, 2022 passed by the Assistant Controller of Patents and Designs in the patent application no. 4334/DELNP/2013 (hereinafter "subject application") titled "Data Processing Device and Data Processing Method" (hereinafter "subject invention"). Subject invention relates to data processing method and device that can easily process control data that is required for performing demodulation during digital video broadcasting and has its PAPR (Peak-to- Average Power Ratio) improved.

2. Brief facts relevant to decide the present appeal are as follows:

2.1. The appellant had filed the subject application on 15th May, 2013 at the Patent Office, New Delhi as a national phase application of PCT (Patent Corporation Treaty) application PCT/JP2011/076173 dated 14th November 2011 and claimed priority from JP Patent Application no. 2010-259665 dated 22nd November, 2020.

2.2. On 16th October 2014, the appellant filed a request for examination of the subject application. However, it was only in November 2018 that the Patent Office examined the subject application and the First Examination Report (FER) was issued by the respondent on 26th November 2018.

2.3. Subsequently, a detailed response along with the supporting documents was filed by the appellant to the aforesaid FER on 26th August, 2019, wherein the appellant dealt with all the objections raised in the FER.

2.4. On 9th November, 2021, the respondent issued a hearing notice fixing the date of hearing in the subject application for 30th November 2021. At the oral hearing, the appellant made submissions with regard to the objections raised in the hearing notice and subsequently, the written submissions were filed on 15th December, 2021 along with amended claims 1 to 8.

2.5. On 16th February, 2022, the appellant filed further amended claims 1 to 8, in terms of which, the amended independent claims 1 and 4 corresponded with the independent claims 4 and 10 of the corresponding European Patent (EP) Divisional application. European Patent no. EP3429084 (B1) was granted on a EP divisional application out of main EP application no. EP2645579, which is counterpart application to the subject application.

3. The impugned order dated 28th June, 2022 was passed by the respondent rejecting the subject application on the ground that the amended claims are beyond the scope of the claims as filed and hence, not allowable under Section 59(1) of the Act. The relevant portion of the impugned order is set out below:

"The Applicant, vide communication dated 16/02/2022, filed a subsequent submission stating that the claims have been amended to be in line with the granted EP claims. However, it has been observed that the claims (filed on 16/02/2022) correspond to the granted EP claims of the divisional application and not the corresponding EP application of the instant application.

In addition, the claim amendments presented on 16/02/2022 are voluntary and differ from the claims of the instant application (claims filed along with the written submission) in the following aspects:

1. The feature "dummy data" has been replaced by "zero padding bits".

2. The feature "creating a frame containing the post- shortening LDPC code data (Npost) and multiplexing the frame into a DVB-T2 signal for transmission with one or more other frames, wherein the frame contains a preamble, which preamble includes a symbol including information identifying that the frame comprises the post- shortening LDPC code data (Npost) containing the scrambled control data (Ksig(s))." has been added to the principal claim.

The above mentioned amendments are beyond the scope of the as filed claims and not allowable under section 59(1) of the Patents Act, 1970. Further no support for amendments in the specification has been indicated in the marked up copy of claims.

Thus, the amended claims are beyond the