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Dichotomy between Amendment of Claims of Patent and Specification of Patent

The Parties in the Appeal:
The Appellant is the Applicant for the Patent while the Respondent is the Controller of the Patent which has passed the impugned Judgment.

The Judgment Impugned:
Vide impugned Judgment dated 30.03.2020 , the Respondent not only declined the amendment of Patent claims as sought by the Appellant but also rejected the Patent Application itself.

The Patent Application:
The Appellant filed the subject matter Patent Application No. 7039/DELNP/2012 for grant of a patent for "Intracameral Sustained Release Therapeutic Agent Implants with 20 Claims.

Objection of the Controller in FER:
The Claims in the patent application were not patentable as they related to the method of treatment of human beings/animals, in respect of which Section 3(i)1 of the Patents Act, 1970.

The Amendment in Claims Sought:
In view of the objection raised in FER, the Appellant sought the reduction of claims from 20 to 5.

The impugned judgment:
The Respondent rejected the proposed amendments of claims on the ground that the set of amended claims does not fall within the scope of the originally filed claims as per any clauses of section 59(1) of the Patents Act. Hence, as the amended sets of claims are not allowable u/s 59 of the Act. In view of the above, the Patent Application itself was rejected.

The Judgment of the Hon'ble Single Judge:
The judgment dated 30.03.2020 passed by the Controller was set aside.
The amendment of claims as sought by the Appellant was allowed.
The Patent Application with amended claims was remanded back to the controller to consideration of Patentability.

The Reasoning of the Hon'ble Single Judge:
The Original PCT application of the Appellant was filed in the US. In the US, the process/product Patent is permissible. However in India, method/process claims. This is the reason why the Appellant sought amendment of Plaint from process Patent to product Patent in view of objection raised by the Controller.

The method on the basis of which the subject matter product has been claimed, has already been disclosed in the specification. Only because the original Patent Application was filed for method only, this will not bar the Appellant from amending its claims from process Patent to product Patent.

There can not be any dichotomy between the amendment of claims and amendment of specifications. More over the subject matter case is a case of wide divergence between the claims for which the patent had originally been sought, and the claims as amended subsequently.

The claims and complete specifications of a patent have to be read together as a whole. Or, in the other way, it can be said that the claims of the Patent have to be read in the light of the complete specifications of the Patent. This is the reason why the Hon'ble Single Judge held that dichotomizing the claims and the accompanying specifications is, therefore, contrary to the most fundamental canons of patent law.

The Hon'ble Single further observed that while evaluating the scope of amended claims, the Controller should not eschew from considering the pre amendment specification.

Keeping this view, the Hon'ble Single Judge allowed the amendment of claims , as there was sufficient disclosure in the pre-amendment specification, regarding the method , on the basis of product which was claimed in the amended claims.

The Case Law Discussed:
Case Title: Allergan Inc Vs The Controller of Patent
Judgment date:20.01.2023
Neutral Citation No.2023/DHC/000515
Commercial Appeal No.C.A.(COMM.IPD-PAT) 22/2021
Name of Court: High Court of Delhi
Name of Hon'ble Justice: C Hari Shankar, JJ

This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be the possibility of error in perception, presentation and interpretation of facts and the law involved therein.

Written By: Ajay Amitabh Suman, IPR Advocate - Hon'ble High Court of Delhi.
Email: [email protected], Mob No: 9990389539

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