AGC Flat Glass Europe SA v Anand Mahajan (2009)

Summary

The plaintiff applied “under Sections 57 and 58” “for an amendment in Claim 1 of its specifications. The present suit has been filed by the plaintiff for permanent injunction restraining infringement of Indian patent no. 190380” (para 1), “being ‘a mirror with no copper layer and process for manufacturing the same.’” (para 2) The plaintiff “wishes to amend its Claim 1 in Indian Patent no. 190380 and insert ‘a sensitizing material, typically tin’ in clause (ii).” (para 6) The defendants contended “that the present application has not been filed at the appropriate forum as provided under Section 57 of the Patents Act, 1970” and that “The amendment adds new matter to Claim 1 and varies its scope” (para 7), and that it “has been sought after 12 years of grant of the patent” (para 9).

The Court held that “The jurisdiction necessary to allow the amendment of a claim in the specification vests with the High Court, once the validity of the patent has been challenged in a patent infringement suit.” (para 17) It found that the five words “prima facie appear to be related to the first process of the invention and does not in any way seem to lie outside the scope of the invention, thus making the amendment a clarificatory one” (para 20), and that “it does not lead to an altogether new invention” (para 22). “The amendment is thus allowed as being a clarificatory one and the same does not attract the proviso of Section 58 and 59 of the Patent Act, 1970. The amended claims shall be filed within four weeks from today.” (para 25)

What the court decided

1. Forum for the amendment. “The law which emanates from the authorities cited is quite akin to the law of amendment. The jurisdiction necessary to allow the amendment of a claim in the specification vests with the High Court, once the validity of the patent has been challenged in a patent infringement suit.” (para 17)
2. Clarificatory amendments. “The claims can be amended and such amendment may be allowed provided that is it clarificatory or elaborative in nature and also, that it does not alter the scope of the claim or introduce any new claim in the invention which was not present in the original invention. Thus, the scope of enquiry in relation to amendments in the patent claim is limited to the extent as to whether it introduces any new claim which extends the scope of the monopoly rights of the patentee.” (para 17)
3. Disclaimer by narrowing. “Of course, the law operates differently when it comes to narrowing down or crystallizing the claims and apportioning those claims/subjects which are irrelevant and ultimately making it narrow and limiting the scope of the invention. An amendment under these circumstances is allowed and the excluded portion is disclaimed and the amendment becomes what is called a ‘disclaimer’. The disclaimer doctrine thus means that a right holder is delimiting the scope of the invention by narrowing down the claims to its inconvenience in a way which makes the amended claims not inconsistent with the earlier claims in the original specification.” (para 18)
4. Prior publication and delay. “It is settled law that if an amendment is put forward to overcome a possible objection to validity based upon a prior publication it may be relevant to consider whether the amendment propounded meets the objection arising out of such prior publication. If it does not, the amendment should be refused. If the patentee has known of the objection on the prior publication for many years, delay in applying for amendment will itself be ground for refusal.” (para 14) “It is also settled law that a patentee who had chosen to make his claim in a wide and sweeping form” “and who has had the advantage of the claim stated in that form for some years, may not be allowed to limit his claim by amendment to make his patent more secure.” (paras 14–15)
5. Reading the specification whole. “It is settled cannon of interpretation that for construing any instrument or document, the entire document/ instrument has be to read as a whole so as to infer the intention of the parties and the same is not to be read in isolation and given an isolated meaning dehors the instrument. Thus, it is imperative to read the entire specification and to see as to whether these words ‘a sensitizing material, typically tin’, which are intended to be added, alter the scope of the patentee’s invention.” (para 21)
6. The tin amendment. “On going through the entire specification of the registered patent, it can be easily gauged that the entire invention works upon a 3 step process” (para 20), and “From the conjoint reading of the two claims along with the other claims, it is clearly discernible that the working of the invention is based on three processes named in para 20 above and the amendment seeks to clarify the scope of the sensitizing process by mentioning some sensitizing material, namely tin. Thus, it does not lead to an altogether new invention and the objections regarding the amendment being beyond the scope of the original specifications and being inconsistent with the original claim are meritless.” (paras 20–22)
7. Validity left to the counter-claim. “It is the plaintiff who is seeking the amendment which is clarifying or narrowing the invention and the merits of the claims shall be gone into at a later stage. If by any chance, the defendant has any force in the argument of tin inclusive invention having no monopoly, the same can be looked into while looking into the counter claim of the defendant. Thus, the said objection also fails.” (para 23)
8. Merits immaterial on amendment. “It is now relevant to state and reiterate the law of amendment of plaint. The merit of the case is immaterial and cannot be looked into while considering an application for amendment” and “the correctness and falsity of the amendment cannot also be gone into at the stage of the amendment” (para 24)
9. Disposition. “I find that the present amendment is merely a clarificatory/ elaborative one and does not alter the scope of the invention. At best, even if the defendants’ objections are accepted, the said amendment appears to be a disclaimer which also cannot come in the way of permitting the amendment and in fact, the same rather support the amendment.” “The amendment is thus allowed as being a clarificatory one and the same does not attract the proviso of Section 58 and 59 of the Patent Act, 1970.” (para 25)

What the court did not decide

“The merits of the controversy as to whether it is disclaimer or clarification will be decided at a later stage.” (para 25)

Subsequent treatment

• Followed — In Nippon A&L v Controller of Patents (2022) the Delhi High Court held that in this case “a ld. Single Judge of this Court has clarified the legal position in relation to disclaimer vide amendment of claims. When the applicant seeks to narrow down or crystalise the claims, ultimately limiting the scope of invention, the amendment ought to be ordinarily allowed.” (para 56)
• Followed — In Societe Des Produits Nestle v Controller of Patents and Design (2023) the Delhi High Court recorded that by this order “a Single Judge of this Court had allowed amendments to Claims of a patent specification when an interim injunction application was being considered, so long as the amendment was in conformity with Section 58 and 59 of the Act.” (para 37)