A recent appeal has been allowed by the Hon’ble High Court of Delhi and a refusal of the Patent office under Section 59, not allowing the revised claims filed by the appellant, has been reversed. The matter has been remanded back to the Patent office for reconsideration of the amended claims by the controller for patentability on other grounds.

The appeal challenged the order dated 15th March, 2021 passed under section 15 of the Patents Act, 1970. The Appellant- Nippon A&L Inc. filed a patent application bearing no. 201617003704 as the Indian national phase entry of international application PCT/JP2014/069608.

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.

A response to the FER dated 18th May, 2020 was submitted by the Appellant along with an amended set of claims. 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 sought was not clear. Therefore, the applicant was asked to redraft the claims.

The hearing took place on 11th January, 2021.The Appellant in the heraing also proposed amending the claims, which were previously defined in ‘product by process’ format characterized by features of both the product and the process, to ‘process only’ claims to render the claims clearer and more definite.

The patent application of the Appellant was rejected by the Deputy Controller of Patents primarily on two grounds:
i. That the new set of claims was beyond the scope of the original claims. The original claims were ‘product claims’ relating to ‘copolymer latex’ which were now sought to be amended/converted by the Appellant to ‘method/process’ claims. The amendment from ‘product claims’ to ‘process claims’ was not supported by the description.
ii. The Controller also held that the amended claims are lacking inventive step.

The present appeal was thereafter filed and in the appeal the appellant argued that :-

1. The original claims which were drafted were ‘product by process’ claims. After objections were raised by the Patent Office in the hearing notice, the claims were restricted to method claims, i.e., process claims. This amendment cannot be held to be beyond the scope of the original claims as the original claims contained both, product as also process claims. By restricting the claims to the process, the Appellant has given up a significant part of the claims itself and it could not be held to be hit by Section 59 of the Act.
2. Appellant relied upon Article 123 of the European Patent Convention, 1973 (hereinafter ‘EPC’) and the decision of the European Board of Appeals in Konica/Sensitizing [1994] EPOR 142 to argue that whenever product by process claims are amended and the applicant restricts the claims to only the process, the said amendment can be allowed in terms of Article 123 of EPC.
3. He also relied upon the decision of the Asst. Controller of Patents, Patent Office, Kolkata in Antacor Ltd. & Schweiger, Martin dated 18th July, 2017. As per the said decision, the amendment of ‘product by process’ claims to ‘process only’ claims, under similar circumstances, for making the claims clearer and more definite was held to be permissible.
4. Appellant also relies upon the decision in The Polymer Corporation’s Patent [1972] RPC 39 to argue that amendments by way of an explanation, which turn ambiguous claims to clearer claims, ought to be permitted.
5. Appellant took the Court through the complete specification to explain that the process for which the patent is currently being sought was described in complete detail in the specification.
6. Even if the originally filed claims were granted, as they were, he submits that the product would have been limited by the process as described in claim 1. Due to the objections raised by the Patent Office that there was no clarity as to whether the patent was for a product or for a process, the Appellant chose to restrict the patent to the ‘process’ alone. In fact, the objections raised by the Patent Office in the FER and the hearing notices themselves make it adequately clear that the patent as originally filed also had process/method claims.
7. The language used in the objections shows that the claims as originally filed were sought for “product or process”. Thus, for the Patent Office to now say that there were no process claims in the original claims and that the method claims are not supported by the description would be contrary to what is stated in the FER and the subsequent objections which were raised.

The Court held that:-

1. A product claim, if granted, confers a monopoly on the patentee for the product itself, irrespective of the process by which the said product could have been made. However, in the case of a process claim, the exclusivity or the monopoly is restricted to the manner/method by which a particular product is manufactured and if the same product is manufactured or achieved through a different process/method, the exclusivity of the patentee cannot usually extend to such different process or to the product manufactured by the different process. When there are ‘product by process’ claims, however, the extent of monopoly depends upon the reading of the claims in each case. In the present case, the amendment of the claims from ‘product by process claims’, wherein the copolymer latex has various features and can be manufactured by the process described in the specification, to merely the process of manufacturing the copolymer latex is clearly a step down for the patentee.

2. Perusal of Section 59(1) shows that an amendment of an application, specification or any document related thereto would be permissible only if the following conditions are satisfied:
(i) The amendment has to be by way of disclaimer, correction or explanation;
And
(ii) The amendment has to be for the purpose of incorporation of actual facts;
And
(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.
And
(iii)(b) The amended claims have to fall within the scope of claims as originally filed.

3. A perusal of the provision as it existed prior to the amendment and as it exists today shows that the phrase “except for the purpose of correcting an obvious mistake” has been substituted to read “except for the purpose of incorporation of actual fact”. A reading of the unamended provision and the provision post the amendment shows that the power to amend has not been abridged or curtailed or narrowed but has been expanded

4. The amendment in the present case of the claims is by disclaiming the product portion of the claims, in view of the objections raised by the Patent Office itself. The argument of the Respondent that the process was originally disclaimed is clearly not correct as the objection of the Patent Office itself was that there was no clarity as to whether the claim was for a product or for a process

5. In the case of Konica, the Appellate Board categorically holds that the conversion and the change in category of ‘product by process’ claims to ‘process’ claims is clearly admissible. In fact, the Appellate Board holds that the Applicant has given up the claim for absolute product protection and has limited their claim significantly.

6. The Court also considered the following extract of the Ayyangar Committee report:-

Where the invention which emerges as a result of an amendment is different from that which was the subject matter of the specification as originally accepted, such an amendment should not be permitted.

I consider that the scope of an amendment before acceptance ought to be wider than that after acceptance because at the former stage the specification is not disclosed to the public. It is then wholly a matter between the applicant for the patent and the office, and such amendments as are necessary to afford to the applicant, the benefit of the invention which he has disclosed in his complete specification ought to be available to him.

After a complete specification has been accepted two limitations not applicable to amendments at the earlier stage should be imposed. The first is in regard to the formulation of new claims which were not found in the original specification.

But where the specification has been accepted and advertised, the position is entirely different. In that case unless the claim after amendment would fairly fall within the claim before amendment it should not be permitted.

The second is a requirement that the invention before and after the amendment should be identical. This requirement would be out of place before acceptance and at that stage an amendment may be allowed so long as the invention is comprehended within the matter disclosed.

7. As per the Court, when this standard, as contemplated by the Ayyangar Committee Report, is applied to Section 59 of the Act as it stands today, it becomes clear that amendments to a patent specification or claims prior to grant ought to be construed more liberally rather than narrowly.

8. The Court further held that , so long as the invention is disclosed in the specification and the claims are being restricted to the disclosures already made in the specification, the amendment ought not be rejected, especially, at the stage of examination prior to grant. When the applicant seeks to narrow down or crystalise the claims, ultimately limiting the scope of invention, the amendment ought to be ordinarily allowed. The only consideration that must be kept in mind is that the amended claims are not inconsistent with the earlier claims in the original specification.

By applying the principles laid above, the Court held that it is clear that in the present case, the Applicant is amending and narrowing the scope of the claims and not expanding the same. The process sought to be claimed in the amended claims has been clearly disclosed in the patent specification. The said process is not sought to be added newly by way of an amendment. The amendment is, thus, within the scope of the patent specification and claims as originally filed. Thus, the objection under Section 59(1) of the Act is not sustainable.

Accordingly, the appeal was allowed to the extent that the amended claims filed by the Appellant were directed to be taken on record. The patent office was directed to examine the same in accordance with law on the other grounds including of novelty, lack of inventive step, non-patentability under Section 3(d) and 3(e) of the Act, in an expeditious manner.