Allergan Inc vs The Controller of Patents

2nd May, 2023 - 6:31 am Categories: Patent Litigation 0 Comments

Introduction

• 13^th August, 2012: Allergan Inc (“Appellant”) applied to the Patent Office, New Delhi, for the grant of a patent for “INTRACAMERAL SUSTAINED RELEASE THERAPEUTIC AGENT IMPLANTS” stating 20 claims.
• 06^th November, 2017: The Controller of Patents (“Respondent”) objected the application by informing the Appellant that the subject matter is not patentable as under section 3(i) of the Patents Act, 1970 (“Act”).
• Pursuant to the First Examination Report (FER), the claims were reduced from 20 to 5 claims.
• 29^th July, 2019: The Respondent issued the notice of personal hearing to the Appellant on the question- ‘whether the appellant was entitled to amend his claims?’.
• 30^th March, 2020: The Respondent passed an order rejecting the Appellant’s amended claims on the basis of section 59 of the Act. The Respondent noted that the amended claims pertained to the composition of implant whereas the original claims pertained to the method for treating an ocular condition. Further, the Respondent also stated that the claim was also not made in WIPO international claims and the national phase claims.
• The question brought before the hon’ble High Court is whether such an amendment to the claims could have been allowed or not.

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Law applicable

Section 59(1)

The provision clearly provides:

• A patent application shall not be made except by a disclaimer, correction or explanation,
• The amendment shall only be allowed to incorporate an actual fact,
• An amendment to a complete specification shall only be allowed if it is related to the specification disclosed before amendment or which is within the scope of the former specification.

Contentions

Appellant

• The learned counsel demonstrated that the amended claims were for the implants used for the ocular therapy. The method was already sought to be patented and the attempt was to protect the substance as well.
• Moreover, the details of implants were disclosed in the claims [paras 0007, 0008, 0027, 0031, 0039] as well as the descriptions [paras 0027, 0028, 0046, 0047, 0054] in the original application. Therefore, the scope for the claims was related to similar subject matter.

Respondent

• The learned counsel states that the provision allows two types of amendment- amendment of the complete specification and amendment of the claims and therefore, restricted.
• The counsel disregarded the importance of complete specifications because the amended claims must be compared vis-à-vis the original claims. Accordingly, the section does not allow amendment of claims if the amended ones do not follow under the scope of pre-amended claims. The same has also been reiterated in para 40 of Nippon A and L Inc vs. Controller of Patents[1].
• He contended that the claims form a part of the specifications[2] and therefore, cannot be equated with the same.

Decision

The hon’ble court set aside the decision of the Respondent and remanded for consideration of the patentability based on the grounds i.e., novelty, inventive step, non-obviousness and utility.

Conclusion

The Justice Ayyangar Committee Report on Patents of 1959[3] explicitly states that the amendment of claims cannot allow an applicant to gain a larger monopoly than already claimed. However, an applicant must be allowed to bring such amendments that fall under the scope of specifications and satisfy the patentability criteria even though they were not previously claimed. In Tony Mon George vs. Controller General of Patents, Designs and Trademarks[4], the Intellectual Property Appellate Board (IPAB) reiterated that the report favors wider scope of amendment before the acceptance of application i.e., before public disclosure.

In many instances, the courts have allowed the amendment in the claims when the monopoly in aimed to be restricted and concerned to a particular product or process only. The decision of the European Board of Appeals in Konica[5] deals with the restriction of claims to process only. The hon’ble board stated if the claims are narrowed from ‘product by process’ to ‘process only’, the same must be admitted. A similar position was also taken by the Indian Patent Office in Antacor Ltd. & Schweiger, Martin[6], wherein the ‘process only’ claims were allowed. Simultaneously, it must be ensured that the references to the claimed ‘process’ had been made in the pre-amendment claims. Therefore, if the motive is to narrow down the scope of claims, the same ought to be allowed.[7]

In the present case, a parallel interpretation with respect to the above decisions of acceptance of ‘process only’ claims can be drawn to substantiate the findings of the hon’ble court. The decision of the court is appropriate and in consonance with the judicial opinions based on the following reasons:

1. Narrowed claims: After amendment to the claims, the applicant restricted the claims from 20 to 5 and focused on ‘product only’. Based on the above precedents, the amendment shall be allowed if the purpose is to narrow the scope and market monopoly.
2. Scope of amended claims: The pre-amended claims had made a reference to the implants in various items of claims and specifications and therefore, the amended claims fall under the scope of the former ones.
3. Lack of protection provisions: The applicant was forced to amend claims to ensure patentability of the invention. Section 3(i)[8] of the Act states that any process for treatment of human beings is not an invention and thus, not patentable. An applicant must not be punished for the lack of provision.
4. Omission of natural justice: The judicial pronouncements have highlighted the importance of assessment of an application based on patentability criteria before dismissing the same. The learned Respondent failed to ensure natural justice for the applicant.

Based on the statutory as well as judicial opinions, it is evident that the claims aimed at narrowing the scope, falling within the pre-amended claims must be allowed by the Controller. Therefore, the hon’ble court is correct in remanding the Respondent to evaluate the application again.

Author: Tanya Saraswat, 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.

References

• Justice NR Ayyangar Committee Report: https://ipindia.gov.in/writereaddata/Portal/Images/pdf/1959-_Justice_N_R_Ayyangar_committee_report.pdf (Paras 553-555).

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

[2] Section 10(4) of the Act.

[3]

[4] OA/48/2020/PT/DEL.

[5] [1994] EPOR 142.

[6] 2712/KOLNP/2009.

[7] AGC Flats Glass Europe SA vs. Anand Mahajan 2009 (41) PTC 207 (DEL).

[8] Any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.