Can a product by process patent be converted into a process patent solely by amending the claims Is this a valid way to change claims? According to Section 59 of the Patent Act of 1970, are such changes permissible?

This issue was addressed by the Hon'ble High Court of Delhi in one of the appeals filed by The Hon'ble High Court of Delhi decided this appeal in its judgement dated 05.07.2022 in C.A. (COMM.IPD-PAT) 11/2022 titled Nippon A & L Inc vs The Controller of Patents. This appeal has been filed against the Order of the Controller of Patents, which rejected the Appellant's Patent Application.

The facts before Hon'ble Justice Prathiba M Singh, High Court of Delhi were that on July 24th, 2013, the Appellant filed a patent application in Japan bearing no. 2013153727 seeking patent protection for a "copolymer latex" product and process, and on February 2nd, 2016, the Appellant filed an application in India bearing no. 201617003704 corresponding to said international filing.

On March 15, 2017, the Appellant's application was requested to be examined, and a First Examination Report was issued on November 22, 2019.

The patent was initially filed as a product by process patent. When the first examination was issued, and the Appellant filed a reply dated 18.05.2020, the Appellant proposed to amend the claims as a matter of procedure only during the oral hearing. On January 24, 2012, amended sets of claims were also filed, along with a written submission.

The Appellant claimed that amended claims were filed in order to make the claims clearer and more definite. The patent controller, however, rejected the Appellant's amended claims, primarily because they were beyond the scope of the original claims and lacked inventive steps. In such a case, the current appeal was filed.

The crux of the argument before the Hon'ble Court was whether a patent application filed as a process by a patent could be allowed as a process only through amendments, even if the subject matter was claimed to be in the nature of a product only.

The court observed that the specification initially gives the characteristics of the copolymer latex and a brief description of how the process is to be carried out; thus, it was product by process.

The first examination report was issued by the Controller of Patents, in which it requested an explanation from the Appellant as to whether the subject matter of the patent application relates to a product patent or a process patent. In view of objections raised by the controller of the Patent, the Appellant agreed to amend the claims of the Patent to process Patent only.

The controller's main reason for rejecting the appellant's amended claims was that process was not claimed in the original claims. As a result, the amended claims went beyond the scope of the claims because they included the process.

The court noted that the subject matter patent specification was detailed, with the process of emulsion polymerisation explained in minute detail. The product's unique features were claimed as a result of the process outlined in the specification. In response to the controller's objection, the appellant amended the claims to make them claims in process. The controller rejected it because no claims were initially made in the process.

The court distinguished between product and process claims. Product claims are much broader in scope than process claims. If a product claim is granted, it grants the patentee exclusive rights to the product regardless of the process used to achieve the product.

A process patent, on the other hand, grants the patentee an extremely limited right that is only limited to the scope of the process claimed in the patent. If the same product is created using a different process, the patentee's rights cannot be extended to this product.

The Right Hon'ble Referring to Section 59 (1) of the Patent Act of 1970, which states that claim disclaimers are permitted. In amended claims, product claims were disclaimed.

The Hon'ble Court also relied on the Ayyangar Committee Report, observing that the intention of this report was to allow for broader and wider permissibility for amending claims and specifications prior to grant and to restrict the same after grant and advertisement thereof.

The court observed that the appellant in the subject matter case was amending and narrowing the scope of the claims rather than expanding them. The patent specification clearly discloses the process sought to be claimed in the amended claims. As a result, the controller's observation that amended claims were beyond the scope of the law was rejected.

The order was set aside because the Controller only passed it to the extent of claim amendments. However, the case was remanded to the controller to decide the fate of the patent application in light of other legal constraints, such as novelty, lack of inventive steps, and so on.

It is apparent that a product by process patent can be converted into a process as the product claim is much broader than the process claim.

If a product patent is granted, it grants the patentee exclusive rights to the product regardless of the process used to achieve the product. A process patent, on the other hand, grants the patentee an extremely limited right that is only limited to the scope of the process claimed in the patent.

In the subject matter case, the appellant sought to amend its claims solely by way of disclaimer, disclaiming only product claims. As a result, this amendment of seeking the give up the claims pertaining to product patent and limiting it to the extent of process patent only was held to be tenable in the eyes of law.

Case Law discussed:
Date Of Judgement: 05.07.2022
Case No: C.A.(Comm.Ipd-Pat) 11/2022
Name Of Hon'ble Court: High Court Of Delhi
Name Of Hon'ble Judge: The Honourable Justice Prathiba M Singh
Case Title: Nippon A & L Inc Vs The Controller of Patents


Written By: Ajay Amitabh Suman, IPR Advocate, Hon'ble Delhi High Court, D/1027/2002
Email: [email protected], Ph no: 9990389539