In the matter of NIPPON A&L INC. V. THE CONTROLLER OF PATENTS1, the Delhi High Court (the Court) through its Judgment dated 5 July 2022 has passed a decision on the allowability of amendments under Section 59 of the Patents Act, 1970 (the Act). The Court held that the amendments must not be restricted if the same does not broaden the scope of the originally filed Claims and is disclosed in the specification.
Nippon A&L Inc (Appellant/Applicant) had filed a Patent Application No. 201617003704, wherein protection was sought for a "A copolymer latex being obtained by emulsion polymerization" process. During prosecution, the Patent Office raised objections on the grounds of (i) lack of inventive step, (ii) non-patentability under section 3(d) and 3(e) and (iii) lack of clarity in the first examination report on the scope of claims for the product-by-process claims . The Appellant responded to the objections by carrying out minor amendments in the claims. Thereafter, a hearing notice was issued reiterating the aforementioned 3 (three) objections. Post the hearing, the Appellant amended the 'product by process' to 'process' claims. Thereafter, the Patent Office passed an order refusing the application on the ground that the amendments are beyond the scope of claims as originally filed and so not allowable under Section 59(1) of the Act.
An appeal against said order rendered this present decision.
Findings and Decision
The Court observed that the Applicant had made several references to the process in the description and had explained the process of emulsion polymerisation in the minutest form. Further, it was also noted that the Patent Office had raised objection on lack of clarity with respect to the scope of claims ie questioned whether the claim was towards a process or product. The Court gave a prima facie opinion that by giving up the product claim and restricting the claim to a process claim, the Applicant had narrowed the scope of the claims in comparison to its original scope. The Court also noted that in process claims, the monopoly is curtailed to the process alone and not the product and thereby the protection is narrower than the originally filed claims. Thus, the amendments were held to be allowable. The Court had referred to the case of Konica/Sensitizing2. In the case the European Technical Board of Appeal had categorically held that the conversion and the change in category of 'product by process' claims to 'process' claims is clearly admissible under Article 123 of the European Patent Convention. This case is the basis on which the Court had come a similar conclusion in the current matter.
Clarification with respect to Section 59.
The Court noted that Section 59(1) of the Act as it exists presently in the statute, came into effect vide Patent (Amendment) Act, 2002 where the phrase "except for the purpose of correcting an obvious mistake" has been substituted with "except for the purpose of incorporation of actual fact". Thus, the Court held that the amendment to the Section 59(1) was made to provide a broader and wider admissibility for amendments so long as they are disclosed in the Application and the scope of the claims is not expanded.
This is a welcome decision by the Delhi High Court. It has clarified the scope of amendments that can be carried out under Section 59 of the Act and expanded the interpretation of the phrase "except for the purpose of incorporation of actual fact".
1. C.A.(COMM.IPD-PAT) 11/2022
2.  EPOR 142
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