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
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
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
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,
Email: [email protected]
, Ph no: 9990389539