Delhi High Court rules on an amendment to a patent specification

Delhi High Court rules on an amendment to a patent specification

It directed the Deputy Controller of Patents to examine it all in accordance with the law

The Delhi High Court has held that amendments to a patent specification or claims prior to the grant must be construed more liberally than narrowly. But it should be ensured that the amended claims are not inconsistent with the claims in the original specification.

A single-judge bench comprising Justice Pratibha M. Singh stated that an invention before and after the amendment need not be identical in case of the amendment before the acceptance, "so long as the invention is comprehended within the matter disclosed."

The appellant had sought patent protection for a 'copolymer latex' product and process. The Patent Office raised an objection that the scope for which protection was sought was not clear from the wording of the claims. It sought clarity of whether the protection was for a 'product' or a 'process.'

The appellant submitted the response along with an amended set of claims. The appellant also proposed the claims, which were previously defined in the 'product by process' format characterized by the features of both the product and the process. It suggested simplifying it by being definite that it was for 'process only.'

The dispute was heard by the Deputy Controller of Patents. The officer maintained that the process was not claimed earlier, hence it was beyond the scope of the claims. He also held that the process sought protection for, was a known process and there was no inventive step in the invention of the appellant.

He said that the method claims were beyond the scope of the claims as originally filed and were not supported by the description. He added, "That which is not claimed, is disclaimed." This meant that since the method claims were not claimed at the time of the filing, the claims were disclaimed.

Also, the amended claims were not allowed under the Patents Act, 1970. As per the Act, an amendment of the claims could not be allowed if the amended claims did not fall wholly within the scope of the claims before the amendment.

The court was primarily considering whether the claims, as originally filed, could have been amended into method claims by the appellant or not.

The court stated, "In the field of patents, product claims are much broader claims than process claims. A product claim, if granted, confers a monopoly on the patentee for the product itself, irrespective of the process by which the product could have been made. However, in the case of a process claim, the exclusivity or the monopoly is restricted to the manner/method by which a particular product is manufactured."

"If the same product is manufactured or achieved through a different process/method, the exclusivity of the patentee cannot usually extend to such a different process or to the product manufactured by the different process. When there are 'product by process' claims, however, the extent of monopoly depends upon the reading of the claims in each case," it added.

The court also analyzed the contents of the Act which showed that an amendment of an application would be permissible only if the conditions laid down were met. It stated that this was amended and a perusal of the provision as it existed prior to the amendment and as it existed today showed that the phrase "except for the purpose of correcting an obvious mistake" had been substituted to read "except for the purpose of incorporation of actual fact."

A reading of the unamended provision and the provision post the amendment showed that the power to amend had not been abridged or curtailed or narrowed but was expanded, Justice Singh explained.

The court relied upon an earlier judgment which held that the conversion and the change in the category of the 'product by process' claims to 'process' claims, was clearly admissible.

The court held that the appellant was amending and narrowing the scope of the claims and not expanding the same. Allowing the petition, the court directed the Deputy Controller of Patents to examine the same in accordance with the law.