CASE TITLE: NIPPON A&L INC. v. THE CONTROLLER OF PATENTS, INDIA
Coram : Justice Pratibha M Singh
Order reserved : 9th May 2022
Date of Decision : 5th July 2022
According to the Delhi High Court, changes made to a patent specification or claim before grant should be interpreted more broadly than narrowly.
The only thing to keep in mind, it said, is that the revised claims do not conflict with the previous ones in the original specification.
An invention before and after amendment need not be identical in cases of alteration before acceptance, according to single judge court led by Justice Pratibha M. Singh, "so long as the invention is comprehended within the matter disclosed."
The appellant sought patent protection for a "copolymer latex" product and procedure, to sum up the case's circumstances.
The Patent Office objected, stating that the phrasing of the claims did not make it obvious what was covered by the requested protection. The Patent Office sought clarification regarding whether the protection sought is for a process or a product.
The Appellant submitted a revised set of claims along with a response to the FER. In order to make the claims simpler and more specific, the appellant also suggested changing the claims from their prior format, which was characterised by attributes of both the product and the process, to "process only" claims to render the claims clearer and more definite.
The Deputy Controller of Patents heard the issue and determined that since the process had not previously been claimed, it was beyond the purview of the claims. He added that the procedure attempted to preserve was a well-known procedure, hence the appellant's idea lacked an inventive step.
The Deputy Controller discovered that in this case, method claims were outside the purview of the originally filed claims and were not in agreement with the description. Further, "that disclaimed is something which is not claimed". This indicates that the method claims are disclaimed because they were not made at the time of filing. Finally, Section 59(1) of the Patents Act of 1970 did not permit the revised claims. According to Section 59(1) of the Act, a claim revision is not permitted if the revised claim does not fully fall within the original claim's scope.
In this case, the Court was largely debating whether or not the Appellant could have changed the claims as initially filed into method claims.
The patent Office objected that it was unclear if the claim was for a product or a process, thus the appellant decided to limit the patent to the "process" only.
According to the court, the objections' phrasing demonstrates that the claims as they were initially made were for "product or process." Therefore, it would be inconsistent with what is stated in the FER and the following objections that were submitted for the Patent Office to now assert that there were no process claims in the original claims and that the method claims are not supported by the description. The judge further noted that in the world of patents, it is widely accepted that product claims are significantly more expansive than process claims. If a product claim is approved, the patent holder will have a monopoly over the product in question, regardless of how it might have been created. However, the interpretation of the claims in each situation is what determines the scope of the monopoly where there are product by process claims.
The court further examined Section 59 of the Act, which demonstrates that an application revision would only be acceptable if the requirements outlined in the Section were satisfied. According to the court, this Section has been altered, and a comparison of the original and updated versions of the clause reveals that the term "except for the purpose of correcting an obvious mistake" has been changed to "except for the purpose of incorporation of actual fact".
Reading the unamended and amended provisions reveals that the authority to amend has not been reduced, restricted, or constricted but rather increased.
The court said that the Appellate Board unambiguously held that the conversion and change in category of "product by process" claims to "process" claims was plainly admissible in Konica/Sensitizing [1994] EPOR 142, which was cited. The Ayyangar Committee Report was also cited by the court. According to the court, the purpose and goal of this Report was to grant greater and broader permissibility for revision of claims and specifications prior to the award and restrict same after the grant and advertisement thereof.
The Report was also emphatic in its observation that, in cases of alteration before acceptance, the invention before and after modification need not be identical. In the matter described, invention is included.
The judge declared that "The purport and spirit of Article 123 of the European Patent Convention is not that different, and it becomes clear that amendments to a patent specification or claims prior to grant ought to be construed more liberally than narrowly when this standard, as contemplated by the Ayyangar Committee Report, is applied to Section 59 of the Act as it currently stands."
In light of the foregoing, the court determined that the applicant was revising and constricting the claims' purview, not enlarging them. It was decided that the process sought to be claimed in the modified claims had already been explicitly described in the patent specification and that its addition through an amendment was not desired. It was determined that the alteration was within the purview of the initially filed patent specification and claims. As a result, the current petition was granted insofar as the Appellant's modified allegations were instructed to be recorded.
The court ordered the Deputy Controller of Patents to quickly and legally assess the application on all other grounds, including novelty, absence of inventive step, and non-patentability under Sections 3(d) and 3(e) of the Act.
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