Scope of Changes Permissible Under Section 59 of the Indian Patents Act

24th July, 2024 - 10:16 am Categories: Patents 0 Comments

INTRODUCTION

On July 5, 2022, the Delhi High Court made a significant judgment regarding Indian patent law concerning the alteration of claims according to Section 59 of the Patents Act. This judgment stems from a legal case between Nippon A N L Incorporated and the Controller of patents. In this instance, the court evaluated how broad the modifications were in the patent claims and how closely they resembled the original claims.

Section 59 of the Patents Act states that any amendment that goes beyond the scope of the original specification would not be allowed. This requirement has been a contentious issue, with controllers often disagreeing on what type of amendments could be allowed under section 59. In this case, the original specification was a product by process, which was drafted in the form of a product by process claim. However, objections were raised in the examination report, where the patent office objected that the scope of the protection is not very clear.

MAIN BLOG

 During the hearing, the patent applicant changed the type of claim to claim only a method instead of a product by process. The amendments were rejected by the controller patents, based on the ground that the new set of claims were beyond the scope of the original claims as the original claims related to a product claim while what is now being claimed is a process claim. The patent office argued that by changing the product claims to a process claim, they were changing the nature of the invention as such and this is not allowable under section 59.

The patent office argued that patentability of a product by process claim is educated based on consideration of the product as such, so it represents a product per se and thus has a different scope of protection compared to a method claim. Thus, the patent office wanted to say that a product by process claim has a different scope and a process claim as such has a different scope, thus the original claims had a different scope while the amended claims were beyond the scope of the original claims.

The high court went into the analysis of the complete specification and noted that there are two different aspects that are being taught in the specification. For both the aspects, the process for obtaining the particular product covered in the different aspects has been described in the complete specification. The original claims were relating to a product by process, and thus both the product and the process were captured in the claims as were originally filed.

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The court also noted that the original claims were relating to a product by process, and thus both the product and the process were captured in the claims as were originally filed. The main objection of the controller was that since there was not a single method claim in the original claims, the process claims which are being claimed do not have any support in the original claims, thus the method claims or the process claims that are now being claimed are beyond the scope of the invention which was originally claimed.

The court crystallized the issue as the contention that the process which is now being claimed was not claimed earlier and does it is beyond the scope of the claims that were originally filed. The court considered whether the claims that were originally filed would have been converted to a method claim and could have been considered as allowable under the patents act.

The court noted that in the first examination report, the patent office itself raised an objection that it was not clear whether the claims relate to a product or a process, so it is not available to the patent office to say that the claims did not have a process in it because they themselves raised this objection.

The court also noted that the monopoly that is being granted by a product claim is quite broad as compared to what is granted by a process claim because the process claim is only limited to the particular method steps. If the same product is being achieved by different methods step, the process claims protected would not provide any protection or against infringement to the patented.

CONCLUSION

The judgment of the Delhi High Court clarifies how Section 59 of the Indian Patent Act should be understood and applied when amending claims. This shows the importance of developing a draft amendment to the initial disclosure and proposing relevant changes for the opinion and improvement of patent claims.

Author: H.N.Mallika, 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

1. http://164.100.69.66/jupload/dhc/PMS/judgement/06-07-2022/PMS05072022CAP112022_110420.pdf
2. https://spicyip.com/2022/07/the-extent-of-amendment-allowed-in-a-patent-application-part-1.html