Nippon A&L Inc. v. The Controller of Patents

Recently, the Delhi High Court, held that amendments to claims or patent specification shall not be rejected solely on account of the claims being converted from “product by process” claims to “process only” claims or method claims. The Court held that amendments to claims are permissible so long as they only narrow the scope of the originally filed claims and the invention under the amended claims/ specification is restricted to the scope of the disclosures already made in the originally drafted claims/ specification.

The Appellant filed an application seeking patent protection for “copolymer latex” product obtained by the process of “emulsion polymerization”, defining the scope of its claims to be for ‘product by process’. However, in order to overcome the Indian Patent Office’s objection that the claims in the original patent application were improperly drafted and the scope of whether protection was sought for a product or process was not clear, the Appellant ultimately amended its “product by process” claims to “process only” claims.

The Indian Patent Office rejected the patent application under Section 59(1) of the Patent Act, 1970 (the “Act”) on the ground that the original claims were ‘products claims’ and that the amendments rendered it to be ‘process claims’ and therefore beyond the scope of the original claims.

The Court, while allowing the appeal observed that the purport of Section 59(1) of the Act makes it clear that amendments to a patent specification or claims at the stage of examination prior to grant ought to be construed more liberally than narrowly. The Court, relying on the decision of the European Technical Board of Appeals in the case of Konica/Sensitizing [1994] EPOR 142, held that since the Appellant-Applicant had only narrowed the scope of its claims through the amendments to its claims, and since the ‘process’ sought to be claimed in the amended claims had been clearly disclosed in the original patent specification, the amendments effectively made the claims clearer and more definite. The Court further noted that the Indian Patent Office had itself sought clarification as to whether protection was sought for a product or process and could not therefore hold the view that process was originally disclaimed. Thus, the objections under Section 59(1) of the Act were held not sustainable.

Nippon A&L Inc. v. The Controller of Patents CS (COMM).IPD-PAT) 11/2022, Order dated July 5, 2022

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