In its recent decision in Honeywell International Inc vs The Controller of Patents [CA (COMM. IPD PAT) 396/2022], the Delhi High Court set aside the order passed by the Controller of Patents in application number 3150/DELNP/2010 and remanded the application to the Patent Office for fresh consideration.

The Appellant, in the subject application, had originally claimed a composition comprising an organic fluorophore of formula 1 and the subsequent claims further detailed the various substitutions on formula 1. Put differently, the original claim was directed to a compositions comprising a compound defined through its Markush formula.

In order to address an objection under Section 3(e) of the Patents Act raised by the Controller during the prosecution of the application, the Appellant amended the ‘composition’ claim to ‘compound’ claim.

The impugned order held that the claim set prior to the amendment was not patentable under Section 3(e) and disallowed the amended claims for being outside the scope of the original claims without specifically citing Section 59 of the Patents Act, 1970. 

Section 59(1) states that, “no amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.”.

It was the case of the Appellant that since the underlining reason for refusal was non-permissibility of the amended claims under Section 59, the Controller ought to have first raised an objection under Section 59 and afforded the Appellant an opportunity of being heard. It was further argued that as per the original specification, the amended claims fell within the scope of the original claims.

The Court, after comparing the originally filed claims with the amended claims, found that the original claim of a composition comprising the compound was simply narrowed down to a claim in the compound itself and the various formulae in the amended claims were merely detailed elements of the compound initially covered by the composition claims. Thus, the Court concluded that the deletion of the word “composition” by the appellant was merely to provide clarity to the claims and to overcome the objection of Section 3(e), and, therefore, was not outside the scope and preview of Section 59(1).

The Court’s analysis of Section 59 highlighted several key principles:

• In cases where the originally filed claims are based on a composition comprising a single compound, the composition of that compound can be treated to be the same as the compound itself. It is only for those compositions that involve many other elements beyond one single compound, or involve a different set of compounds, that amending the claims to a single compound, which is not part of the original composition or the basis of the originally filed claims, is disallowed as per Section 59.
• While interpreting the expression “scope of a claim” mentioned in Section 59(1), claims must be read in conjunction with the complete specification, together and as a whole.
• The correct approach to construe a specification involves initially reviewing the full description of the invention, followed by the claims.
• Section 59 provides that the amendment ought to be a subset of the original claim and should not be beyond the original claim.
• Amendment of claims must be read broadly and widely before the patent grant.
• Section 59 requires comparing the amended claim with the scope of the pre-amended claim and disallow those amendments which exceed the scope of the pre-amended claim.