Delhi High Court Rules On The Scope Of Amendments Under Section 59

• Published date: 05 August 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Khaitan & Co LLP
• Author: Mr Adheesh Nargolkar, Nisha Austine and Kishore Kumar V S

In the matter of NIPPON A&L INC. V. THE CONTROLLER OF PATENTS¹, the Delhi High Court (the Court) through its Judgment dated 5 July 2022 has passed a decision on the allowability of amendments under Section 59 of the Patents Act, 1970 (the Act). The Court held that the amendments must not be restricted if the same does not broaden the scope of the originally filed Claims and is disclosed in the specification.

Factual Matrix

Nippon A&L Inc (Appellant/Applicant) had filed a Patent Application No. 201617003704, wherein protection was sought for a "A copolymer latex being obtained by emulsion polymerization" process. During prosecution, the Patent Office raised objections on the grounds of (i) lack of inventive step, (ii) non-patentability under section 3(d) and 3(e) and (iii) lack of clarity in the first examination report on the scope of claims for the product-by-process claims . The Appellant responded to the objections by carrying out minor amendments in the claims. Thereafter, a hearing notice was issued reiterating the aforementioned 3 (three) objections. Post the hearing, the Appellant amended the 'product by process' to 'process' claims. Thereafter, the Patent Office passed an order refusing the application on the ground that the amendments are beyond the scope of claims as originally filed and so not allowable under Section 59(1) of the Act.

An appeal against said order rendered this present decision.

Findings and Decision

The Court observed that the Applicant had made several references to the process in the description and had explained the process of emulsion polymerisation in the minutest form. Further, it was also noted that the Patent Office had raised objection on lack of clarity with respect to the scope of claims ie questioned whether the claim was towards a process or product. The Court gave a prima facie opinion that by giving up the product claim and restricting the claim to a process claim, the Applicant had narrowed the scope of the claims in comparison to its original scope. The Court also noted that in process claims, the monopoly is curtailed to the process alone and not the product and thereby the...