In a landmark ruling in ALLERGAN INC versus THE CONTROLLER OF PATENTS, the Delhi High Court set aside an order of the Indian Patent Office rejecting a patent application on the ground that the claim amendments pertaining to claims directed to a method for treating an ocular condition which involves implants, to the intracameral implant itself did not fall under section 59(1).

The court held that the use of the expression “scope of a claim” in the concluding part of Section 59(1) (no amendment of a complete specification shall be allowed, the effect of which would be that…any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment) require taking into consideration the complete specifications of the pre-amended claim, and not merely the pre-amended claims themselves. The claim by itself, and de hors the complete specifications which accompany it, cannot convey, the exact scope of the claim. The court stated that placing unduly restricted, pedantic, or hyper technical interpretations on provisions of the Patents Act, in a manner which would discourage inventiveness and entrepreneurship would be counter-productive to its purpose. It would be completely impermissible, therefore, for the provisions of the Patents Act to be so interpreted as to render a possibly inventive invention non-patentable. The court essentially held that if the patent office’s interpretation is to be accepted, the appellant would be foreclosed from seeking a patent in respect of the implants which, according to it, are a result of the appellant’s own inventiveness and which are intended to cure a wide variety of ocular ailments. In such circumstances, the Court is also required to keep in mind public interest, being one of the cardinal aims of patent law, especially where the patent is pharmaceutical or therapeutic in nature. The court also noted that in view of section 138(4), at the time of entering the National Phase, there could be no occasion for the appellant to amend the Claims as originally filed in the PCT application in the US which allowed the patenting of such method claims.

The matter has been remanded back to the Patent Office to accept the amendments and decide on patentability.