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Amendment of Product by Process Claim to a Process Complies Section 59(1)

08

AUG

2022

A recent judgement in matter of Nippon A&L Inc. V. The Controller of Patents dated 5th July 2022 by the single judge bench of Justice Prathiba M. Singh, in Delhi HC, adjudicates the challenge raised by the Appellant by way of civil appeal against rejection of patent application by Deputy Controller of Patents under Section 15 of the Patents, 1970 (hereinafter “Act’). The verdict of the High Court is based on the applicability and the scope of amendments as contemplated in Section 59 of the Act, particularly those ones made prior to grant.

FACTUAL MATRIX:

The Appellant/Applicant, Nippon A&L Inc., filed a patent application bearing no. 201617003704 dated 2nd February 2016 and sought patent protection for "A copolymer latex being obtained by emulsion polymerization", a product by process claim. The Respondent (Deputy Controller of Patents) issued the First Examination Report (FER) on the basis of, among other things, a lack of inventive step, patentability under Sections 3(d) and 3(e) of the Act, and a lack of scope for which protection was sought, which was not clear from the claims' wording. A reply to the FER was filed by Appellant along with amended claims. Following this, an opportunity of hearing was offered to the Appellant and a hearing notice was issued, wherein the Respondent further contended that the scope for which the protection is sought is for a product or for a process is not clear, along with other objections. In order to make the claims more precise and clear, the Appellant changed the claims from their former “product by process” style, which was defined by features of both the product and the process, to “process alone” claims. The Respondent rejected the patent application and asserted that since the process claim had not previously been claimed, it was beyond the purview of the as-filed claims. He added that the method for which protection was sought was well-known, hence the Appellant's invention lacked an inventive step.

Ground of Appeal

Pursuant to objections raised by the Respondent, claims of Appellant originally drafted as ‘product by process’ claims were restricted to ‘method claims’/ ‘process claims’ by way of amendment and amended claims fell well within the ambit of Section 59(1) of the Act. The Appellant gave up ‘product’ part per se and was limited to ‘process’ part and this cannot be held to be in contravention of Section 59(1) of the Act.

Objection of the Respondent

  • The raison d'etre for dismissing the amended claims was that the original ‘product by process’ claims were primarily and essentially product claims and converting them into ‘process claims’ by removing product related claims was not allowed. Such amendments changed the very nature of the original claims and, therefore, were not permissible as per the scheme of Section 59 of the Act.
  • The original claims as filed by the Appellant were not actually ‘product by process’ claims and they were merely ‘product’ claims. The original claim was for a product ‘copolymer latex’ only. The novelty and inventive step were claimed only in product and not in the process.
  • In fact, the Appellant was trying to convert ‘product’ claims to ‘product by process’ claims and then convert the ‘product by process’ claims to ‘process’ claims. Original claims defined product ‘copolymer latex’ but amended claims were mildly modified to convert them into some method of preparing ‘copolymer latex’. The process claims, not claimed originally, are deemed to be disclaimed. The claims were found to be obvious in view of the teachings and rightly rejected.

ANALYSIS AND FINDINGS

Amendments fulfilling requirements of Section 59(1) of the Act to be allowed-

The High Court observed that there was noticeable inconsistency between the objections raised in the FER dated 22nd November 2019 raised by Patent Office and impugned order dated 15th March 2021 of rejection of patent application. Objections in FER sought on clarity whether the patent was a product or for a process and in response the Appellant chose to restrict to the ‘process’ alone. It makes it evident that the patent as originally filed also had process/method claims. Later in the impugned order, the Respondent held that the ‘process’ was not claimed earlier and was beyond the scope of the amendment. The Respondent to now say that there were no process claims in the original claims and that the method claims are not supported by the description would be contrary to the FER objection.

The Court held that the amendment of the claims in the present case is by disclaiming the product portion of the claims, narrowing the scope of the claims and not expanding the same. The ‘process’ sought to be claimed in the amended claims has been clearly disclosed in the patent specification. The amendment is, thus, within the scope of the patent specification and claims as originally filed which satisfies the condition of Section 59(1) of the Act.

The Court cited and relied on various authorities and Ayyangar Committee Report, within the ambit of Article 123 of the European Patent Convention to arrive at the above conclusion. The rationes decidendi referred to this effect, inter alia, are Konica/Sensitizing [1994] EPOR 142, Sulphur Mills Limited v. Dharamraj Crop Guard Limited (2021) 87 PTC5 67, and AGC Flats Glass Europe SA v. Anand Mahajan 2009 (41) PTC 207 (Del).

Matter to be re-examined-

Since there was no discussion on the objections of non-patentability under Sections 3(d) and 3(e) of the Act, in the impugned order dated 15th March 2021, the High Court directed the Patent office to examine the said points after taking account for the amended claims on record.

CONCLUSION

The amendments to a patent specification or claims prior to grant ought to be construed more liberally rather than narrowly. The ‘product by process’ claims can be amended to ‘process’ claims provided the amended claims sought fall within the ambit of the specification or claims as originally filed and fulfil the other criteria of Section 59(1) of the Act. The Court, in a way, applied the doctrine of estoppel where it noted that the Patent Office is estopped from holding a conclusion which is contrary to what was stated earlier in FER and the Appellant acted upon the same.

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