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How Much Claim Amendment Can Be Allowed In A Patent Application? – Patent



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Rejection of patent application on the ground that the amendment
of “product by process” claims to process claims which
rendered the amended claims not allowable under section 59 (1) of
the Patents Act, 1970 was held to be unsustainable in a recent
judgment of Hon’ble High Court at Delhi pronounced on July 05,
2022, in the matter of “Nippon A&L Inc. vs The
Controller of Patents and Designs”
.

Brief facts of the case

Appellant (Nippon A&L Inc.), filed a patent application in
India through national phase entry of PCT international application
PCT/JP2014/069608. The Applicant in order to overcome the
objections raised in the hearing notice amended the “product
by process” claims to “process only” claims.

The controller rejected the patent application on two
grounds:

  1. The amended claims were beyond the scope of the originally
    filed claims and the method claims were not supported by the
    description.

  2. The amended claims lacks inventive step.

and held that the claims are not allowable under section 59(1)
of the Act. The Deputy Controller did not dealt with the objections
of non-patentability under Section 3(d) and 3(e) of the Patents
Act, 1970.

The Appellant challenged the order of Deputy Controller and
filed an appeal before the Hon’ble High Court of Delhi.

Judgement

The Hon’ble Court observed that following essential
conditions are to be satisfied for an amendment under Section 59
(1) to be permissible, which are –

  • (i) The amendment should be by way of disclaimer, correction or
    explanation.

  • (ii) The amendment should be for the purpose of incorporation
    of actual facts.

(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.

(iii)(b) The amended claims should fall within the scope of
claims as originally filed.

Any amendment which does not fulfill the criteria of (i), (ii),
(iii)(a) or (iii)(b) cannot be allowed.

The Hon’ble High Court noticed that in the field of patents
the product claims are much broader than the process claims.

The Hon’ble Court observed that the Applicant is amending
and narrowing the scope of the claims and is not expanding the
same. The process claims sought by the Applicant to claim after
amendment are clearly disclosed in the patent specification.

The Hon’ble Court set aside the rejection of the patent
application of the Applicant stating that the amendment is within
the scope of patent specification and satisfies the conditions of
Section 59 (1) of the Patents Act, 1970. Thereafter, remanded the
matter back to the IPO for consideration of questions related to
lack of inventive step and non-patentability.

Conclusion:

This is a very welcome and awaited decision by the Hon’ble
High Court in which section 59 of the Patents Act, 1970 has been
interpreted liberally. This case law would act as a guiding path
for the Controllers at the Indian Patent Office for determining
whether the amendments made by the Applicant are within the purview
of Section 59 or not.

For further information please contact at S.S Rana &
Co. email: info@ssrana.in or
call at (+91- 11 4012 3000). Our website can be accessed at
www.ssrana.in

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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