Amendments under Section 59(1) of the Patents Act, 1970 to Pass Rigours of Six Benchmarks

Amendments under Section 59(1) of the Patents Act, 1970 to Pass Rigours of Six BenchmarksThe Delhi High Court, in its recent decision dated February 5, 2024, succinctly summarised the key benchmarks and parameters which amendments under Section 59(1) of the Patents Act, 1970 (hereinafter referred to as “the Act”) need to qualify for them to be allowed. The observation of the Court came in the appeal filed by The Regents of The University Of California (hereinafter referred to as “the Appellant”) that challenged the decision of refusal of their patent application (hereinafter referred to as “the subject application”) by the Controller General of Patents, Designs & Trademarks (hereinafter referred to as “the Controller of Patents”) vide its order dated February 18, 2021(hereinafter referred to as the “impugned order”).

The subject application at the time of issuance of the First Examination Report (“FER”) was initially objected to on the grounds of lack of novelty under Section 2(1)(j), lack of inventive step under Section 2(1)(j)(a) and non-patentable subject matter under Section 3(i) and Section 3(k) of the Act. To overcome the objections, the appellant amended the claims to be more definitive and restrictive in their scope and incorporated technical features implicitly covered under the dependent claims. However, maintaining all objections earlier raised in FER, the subject application received a hearing notice. To further overcome the objections, the appellant submitted an amended set of claims. However, the subject application after the hearing was refused, disallowing the amended claims under Section 59(1) of the Act.

Section 59 of the Act provides as follows:

Section 59: Supplementary provisions as to amendment of application or specification. —

(1) No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation. No amendment shall be allowed except for the purpose of incorporating actual fact. No amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.”

The appellant’s counsel submitted that the impugned order passed by the Controller of Patents was arbitrary and arose out of a wrong and incorrect interpretation of the provisions of Section 59(1) of the Act relying upon the following grounds:-

  1. Amendment of claims was done by way of correction, explanation and disclaimer as permitted under the Act.
  2. The scope of amended claims was narrower and was a subset of the original specification in claims.
  • Amended claims were already disclosed in the original claims and specification, both implicitly and explicitly.
  1. The scope offered by the originally filed description should be read along with the claims and examples.
  2. Amended claims were clearly derived by merging features of multiple dependent claims of the original specification, which did not enlarge the scope of the claims. Support for claims in the description must be seen from the perspective of a person skilled in the art and processes, one having common knowledge, and one who can identify the inventions and substance in line with the phrase “not in substance” used in Section 59(1) of the Act.
  3. The Controller of Patents failed to apply the test for added matter and appreciate that from the perspective of a skilled person, nothing new was discernible from the amendments.
  • Additional words from the unamended specifications are permissible to offer a clear explanation as permitted under the Act.
  • Renumbering and introducing new numbering and rewording technical features to impart definiteness and conciseness cannot be construed to take away or change the inherent scope of the originally filed claims.

While the counsel representing Controller of Patents submitted in support of the impugned order primarily relying on four legs of arguments:

  1. That the claims to “a method of marketing”, which was part of the preamble, was non-specific and could not have been acceptable;
  2. Use of the word “obtaining” as part of an independent claim did not emanate from the original claim and, therefore, could not be allowed under Section 59(1) of the Act;
  • Some parts of the independent claim added additional specifications that were not found in the initially filed claim and
  1. Certain expressions in the independent claim were also beyond the scope of the initially filed claim.

The impugned order was passed on the premise that although the preamble of amended claims was the same, certain parts of the independent claim were not disclosed in the originally filed claims and also are not as such disclosed anywhere in the specification. Thus, the impugned order disallowing the amendments under Section 59(1) of the Act held that the scope of amended claims is beyond the scope of claims as originally filed, and it also describes matters not in substance disclosed or shown in the specification.

The Court interpreted the scope of Section 59(1) of the Act and observed that amendments to the original application can only be made through Disclaimer, Correction, or Explanation.

Additionally, the proposed amendments are to be tested against the following parameters:

  • The amendment should serve the purpose of incorporation of actual facts;
  • The effect of the amendment should not allow matter not in substance, disclosed originally or shown in the specification;
  • The amended claim of the specification should fall within the scope of the original claim of the specification.

In light of the above, the Court that the appellant at the time of amendment was merely reverting to the original expression used in the original claims that were not outside the scope of the original claims and were simply mirroring the same. The Court gleaned through the specification and original claims to observe that the scope of the claim involved the method of determining the efficacy of the said compound and, therefore, the use of the expression “method of marketing”, which mirrored the original claim could not be considered, in any manner whatsoever, to be outside the scope and purview of Section 59(1) of the Act.

For determining the scope of dependent claims, the Court reiterated the decision in F. Hoffmann-La Roche Ltd. v. Cipla Ltd. 2015 SCC OnLine Del 13619, which held that “where claims are ‘dependent’ it incorporates by reference ‘everything in the parent claim and adds some further statement, limitations or restrictions.”

Since the appellant clarified that the phrase “obtaining” did not mean that they would be manufacturing but only procuring the compound from existing sources and finally testing it, the same was acceptable.

Since the parts of Claim 1 objected to by the Controller of Patents already formed part of the original claims and specifications, the Court held that the amendments made by the appellant only served as an explanation to the original claims, amounting to the incorporation of actual facts, and does not disclose any matter which was not initially disclosed in the claims of specification filed before the amendment and thus allowed the same.

The impugned order was set aside with an observation that it was not an accurate analysis or a correct conclusion, and by allowing the appeal, the subject application was remanded back to be examined afresh along with the amendments. This decision of the Court paves the way for the correct interpretation of Section 59 of the Act and, thereby, is bound to provide clarity to the scope of amendments that can be allowed during the prosecution of a patent application before the Patent Office.

Authors: Manisha Singh and Swati Mittal

First Published by: Lexology here