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.

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 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.

4. 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.

5. 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: