Recently, the Delhi High Court clarified the interpretation of the statutory provisions governing the amendment of applications and specifications in the case of Honeywell International Inc. (“Appellant”) v. The Controller of Patents (“Controller”). The court, in this case, allowed the Appellant to amend the claims of its patent application for “Organic Fluorescent Compositions”, stating that the amendments fell within the scope of the original claims.
In this case, a First Examination Report (FER) was issued by the Controller, citing lack of inventive step and non-patentability. The Appellant responded to the FER by amending and deleting a few of the claims. Subsequently, a hearing notice was issued with additional objections. The Appellant attended the hearing, and sough to further amend its patent application, changing the claims from a ‘composition comprising a compound’ to just ‘the compound’ itself. The Controller rejected the application, stating that the amended claims were beyond the scope of the originally filed claims.
The Appellant argued that the original specification, prior to the amendment, clearly described both the composition as well as the compound, and the Controller’s conclusion that the amendments fell outside the scope of the originally filed claims was misguided. As per the Appellant, it is settled law that claims, and complete specifications have to be put together as a whole and cannot be dichotomized. The Controller, on the other hand, argued that the amendment was beyond the scope of the originally filed claims because the composition of a compound is not the same as the compound itself.
The court analysed the original and amended claims and found that the amendments were within the scope of the original claims. The court emphasized that, while interpreting “scope of a claim” in relation to the amendment of a patent application, the claims have to be read along with the complete specifications together and as a whole. The court concluded that the Controller’s rejection was incorrect, as the amendments did not introduce new matters and were merely a narrowing down of the original claims. Therefore, the court set aside the impugned order, allowed the appeal, and remanded the application back for fresh examination with the amendment, within three months.
Honeywell International Inc. v. The Controller of Patents, [C.A. (Comm. IPD- PAT) 396/2022, judgment dt. May 21, 2024]
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