A Critical Study of Disclaimer under Patents Act, 1970 in light of Judicial Pronouncements

9th December, 2022 - 7:25 am Categories: Patent Act 0 Comments

INTRODUCTION

Section 59 is a gateway to determine the scope of possible amendments. Therefore, it follows that the real leeway provided to applicants and patentees attempting to alter claims would rely heavily on the interpretive leeway allowed to the constraints established by Section 59. The Supreme Court of India has ruled repeatedly that if a provision is written in a negative or prohibitive tone, it is almost never intended to be directive, and that the use of a negative type of peremptory language is itself evidence that the law is meant to be required^[1]. Since complying with Section 59 is obligatory, the establishment of claim scope becomes crucial throughout any revision process.

[Image Source: Istock]

A crucial category of disclaimers may possibly be aimed at clarification and accuracy of novelty of the subject matter already claimed by confining a claim against an art cited prior. During patent litigation, the Patentee may agree to drop some of the claims in the patent as part of a settlement. In order to prevent or end litigation, or to remove such claims from a lawsuit, a patent holder may choose to disclaim a claim or claims that are deemed to be excessively broad or otherwise defective. The laws and restrictions of disclaimers were clarified in the case of AGC Flat Glass Europe SA vs. Anand Mahajan^[2], in which the High Court determined on a post-grant modification of a disclaimer to disclaim under the Indian patent law.

The court in the same case laid a foundational basis for the ‘Doctrine of Disclaimer’ which stipulates that in most cases, an update should be approved if it helps the applicant clarify or reduce the breadth of the claims for the invention. The only thing to watch out for is that the revised claims don’t contradict the original claims in the original specification.

Decision on the admissibility of changes under Section 59 of the Patents Act, 1970 was rendered by the Delhi High Court (the Court) in the case of NIPPON A&L INC. V. THE CONTROLLER OF PATENTS^[3] on 5 July 2022. (the Act). If a change is revealed in the specification and does not expand the scope of the original Claims, the Court has ruled that it may be made without restriction.

The Court observed that Section 59(1) of the Act as it appears today in the legislation, came into force vide Patent (Amendment) Act, 2002 where the term “save for the purpose of rectifying an evident error” has been changed with “except for the purpose of inclusion of real fact”. Accordingly, the Court determined that the purpose of the revision to Section 59(1) was to provide a more liberal admissibility for amendments, provided that they are revealed in the Application and do not broaden the scope of the claims. The Court further remarked that the protection afforded by process claims is less extensive than the claims initially brought since the monopoly is limited to the process itself rather than the product. As a result, the court found that the alterations may stand.

In a recent judgment of the IPO, the controller objected to the addition of new claims highlighting that this was a voluntary amendment, whereby claims were amended by way of addition, and therefore would be barred Section 59 (1) of the Act. The IPAB, while agreeing that it was a settled principle of law on amendment of claims that no new claim may be allowed, with respect to two of the three claims in question, held that said claims could “not be construed as ‘new’ claim insertions, since they were just qualifying and limiting the scope of the already defined subject matter of the independent claim. No new feature(s), which was present in description but not claimed earlier, is being claimed through these claims.” The Intellectual Property Appellate Board (IPAB) in appeal^[4] stated that to hold that “the function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers. Their primary object is to limit and not to extend the monopoly. What is not claimed is disclaimed… A patentee who describes an invention in the body of a specification obtains no monopoly unless it is claimed in the claims.”

The Controller has previously denied a number of petitions based on a rigid reading of Section 59(1) of the Act, but this instance is different. The now-defunct Intellectual Property Appeal Board (IPAB) had previously ruled that “the rectification is going beyond the scope of the claims submitted before as in the first claim” in the case of Enercon (India) Limited vs. Alloys Wobben^[5].

In another instance, Dimminaco A.G. vs. Controller of Patents and Designs^[6], IPAB ruled against the proposed revisions because “amended claims lie beyond the scope of un-amended claims and none of them were revealed implicitly in the original specification.” It is pertinent to note that the scope of the claims has been expanded by amendments.

The Justice Ayyangar Committee’s 1959 Report stipulated that one of the main reasons modification of claims is limited is that applicants can’t expand their monopoly via the amendment procedure. As a result, even if not originally claimed, an applicant should be able to introduce claims that do encompass the invention, are described in the specification, and fulfill the patentability requirements. It is unreasonable to resist harmonization of patent laws and to maintain such stringent standards for approving amendments.

CONCLUSION

As is well known, the IPO often takes a narrow view of Section 59, severely restricting the kind of changes that an applicant may make. Practitioners are left wondering whether the recent rush of Section 59 objections is the consequence of stringent interpretation, and if the real test, used to assess the scope of a claim, has to be applied.

Accordingly, it can be said that even though the provision is clear and the legislative intent behind incorporating such provision, in essence, was to give broader and wider permissibility for amendment of claims and specification prior to the grant, the strict interpretation of Section 59(1) by the Indian Controllers has created a whole host of issues for the Applicants.

Author: Satakshi N Dixit, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

^[1] Crawford, the Construction of Statutes pp. 523-24

^[2]  (2009) ILR 4 DELHI 256

^[3] C.A.(COMM.IPD-PAT) 11/2022

^[4]  (OA/48/2020/PT/DEL)

^[5] ORA/3/2009/PT/CH

^[6] (2002) I.P.L.R. 255 (Cal)