Nippon A&L Inc v Controller of Patents (2022)

Summary

Nippon A&L “had filed a patent application in Japan bearing no. 2013153727 seeking patent protection for a ‘copolymer latex’ product and process on 24th July, 2013. Thereafter, application bearing no. 201617003704 dated 2nd February, 2016 was filed as the Indian national phase entry of international application PCT/JP2014/069608.” (para 3) “Clearly, the unamended claims were ‘product by process’ claims wherein the invention was defined by a product possessing various characteristics and manufactured using a specific process.” (para 24) “Due to the objections raised by the Patent Office that there was no clarity as to whether the patent was for a product or for a process, the Appellant chose to restrict the patent to the ‘process’ alone.” (para 36) “The present appeal challenges the impugned order dated 15th March, 2021 passed under section 15 of the Patents Act, 1970” ... “Vide the impugned order, the Appellant’s application for the grant of patent has been rejected by the Deputy Controller of Patents.” (para 2) Among the Deputy Controller’s findings, the Court recorded that “The method claims are beyond the scope of the claims as originally filed and are not supported by the description” and that “That which is not claimed is disclaimed.” (para 33)

“For the purpose of the present appeal, therefore, this Court is primarily considering whether the claims as originally filed could have been amended into method claims by the Appellant or not.” (para 35) The Court held that “the power to amend has not been abridged or curtailed or narrowed but has been expanded” (para 43) and that “amendments to a patent specification or claims prior to grant ought to be construed more liberally rather than narrowly.” (para 55) “So long as the invention is disclosed in the specification and the claims are being restricted to the disclosures already made in the specification, the amendment ought not be rejected, especially, at the stage of examination prior to grant.” (para 55) It found that “the Applicant is amending and narrowing the scope of the claims and not expanding the same” and that “the amended claims of the Appellant satisfy the conditions of Section 59(1) of the Act as specified above.” (para 58) “Accordingly, the present petition is allowed to the extent that the amended claims filed by the Appellant on 24th January, 2021 are directed to be taken on record.” (para 60)

What the court decided

1. The Controller’s power and section 59. “Chapter X of the Patent Act, 1970 deals with amendment of applications or the Specification. Section 57 of the Act empowers the Controller to allow the amendment of an application for patent or complete specification or any document related thereto subject to such conditions as the Controller thinks fit. However, this power of Controller to allow amendment of an application is subject to Section 59 of the Act.” (para 38)
2. Before and after grant. “Section 59 has two aspects. Sub-section (1) deals with amendment of a pending application, its specification, claims or any document related thereto. Sub-section (2) deals with amendment after the grant of the patent. In the present case, the Court is concerned with a pending patent application so the amendment has to be tested on the conditions specified in Section 59(1) of the Act.” (para 39)
3. The conditions of section 59(1). “A perusal of Section 59(1) shows that an amendment of an application, specification or any document related thereto would be permissible only if the following conditions are satisfied: (i) The amendment has to be by way of disclaimer, correction or explanation;” and “(ii) The amendment has to be for the purpose of incorporation of actual facts;” and “(iii)(a) The effect of the amendment ought not be to amend the specification to claim or describe any matter which was not disclosed in substance or shown in the originally filed specification.” and “(iii)(b) The amended claims have to fall within the scope of claims as originally filed.” (para 40) “Thus, for an amendment to be allowed all conditions have to be satisfied. Any amendment falling foul of (i), (ii), (iii)(a) or (iii)(b) above cannot be allowed.” (paras 40–41)
4. The 2002 substitution. “Section 59(1) of the Act as it exists presently in the statute came into effect vide Patent (Amendment) Act, 2002 with effect from 20th May, 2003.” (para 42) “A perusal of the provision as it existed prior to the amendment and as it exists today shows that the phrase ’except for the purpose of correcting an obvious mistake’ has 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 shows that the power to amend has not been abridged or curtailed or narrowed but has been expanded.” (paras 42–43)
5. Product claims and process claims. “It is common understanding in the field of patents that product claims are much broader claims then process claims. A product claim, if granted, confers a monopoly on the patentee for the product itself, irrespective of the process by which the said 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 and if the same product is manufactured or achieved through a different process/method, the exclusivity of the patentee cannot usually extend to such 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.” (para 37)
6. The claims as filed. “Claim 1 initially gives the characteristic features of the copolymer latex and the brief manner in which the process is to be carried out. The dependent claims, as filed, then expanded on the various steps further. Clearly, the unamended claims were ‘product by process’ claims wherein the invention was defined by a product possessing various characteristics and manufactured using a specific process. Thus, both the product and the process were captured in the claims as filed originally.” (para 24)
7. The Patent Office’s own objection. “In fact, the objections raised by the Patent Office in the FER” (“First Examination Report”) “and the hearing notices themselves make it adequately clear that the patent as originally filed also had process/method claims. The language used in the objections shows that the claims as originally filed were sought for ‘product or process’. Thus, for the Patent Office to now say that there were no process claims in the original claims and that the method claims are not supported by the description would be contrary to what is stated in the FER and the subsequent objections which were raised.” (para 36) “The amendment in the present case of the claims is by disclaiming the product portion of the claims, in view of the objections raised by the Patent Office itself. The argument of the Respondent that the process was originally disclaimed is clearly not correct as the objection of the Patent Office itself was that there was no clarity as to whether the claim was for a product or for a process.” (paras 36, 44)
8. A step down for the patentee. “In the face of such an objection, the Appellant has sought to limit the claims to the method i.e., the process, to its own detriment. By so amending the claims, the Appellant loses the claim of exclusivity for the copolymer latex as a product.” (para 36) “In the present case, the amendment of the claims from ‘product by process claims’, wherein the copolymer latex has various features and can be manufactured by the process described in the specification, to merely the process of manufacturing the copolymer latex is clearly a step down for the patentee.” (paras 36–37)
9. Konica. Of “the decision of the European Technical Board of Appeal” ... “in Konica (supra) dated 10th June, 1992”, the Court held that “The said decision merits consideration as it related to a patent where the original claims and the amended claims were considered by the Appellate Board, in a similar context.” (para 45) “Thus, in the case of Konica (supra), the Appellate Board categorically holds that the conversion and the change in category of ‘product by process’ claims to ‘process’ claims is clearly admissible. In fact, the Appellate Board holds that the Applicant has given up the claim for absolute product protection and has limited their claim significantly.” (paras 45, 51)
10. The Ayyangar Committee Report. The Court reproduced the Report, which stated: “I consider that the scope of an amendment before acceptance ought to be wider than that after acceptance because at the former stage the specification is not disclosed to the public.” “A mere shifting of the centre of gravity ought not to preclude an applicant from adjusting that centre until the specification is accepted, and is thrown open to public inspection.” (para 52) The Court held: “A perusal of the paragraphs of the Ayyangar Committee Report clearly shows that the purport and intention of this Report was to give broader and wider permissibility for amendment of claims and specification prior to the grant and restrict the same post the grant and advertisement thereof. The Report is also categorical in its observation that the invention before and after amendment need not be identical in case of amendment before acceptance ‘so long as the invention is comprehended within the matter disclosed’.” (paras 52, 54)
11. New features and clarificatory amendments. “The import of these paragraphs of the Ayyangar Committee Report has been considered by the IPAB in Tony Mon George (supra) and it has held that the Report favours wider scope of amendment before acceptance to that after acceptance. The IPAB concluded that if the amended claims define any ’new’ features, hitherto not defined in the body of the claims, then they should not be allowed but if they are clarificatory or disclaim earlier claimed features, they can be allowed.” (para 53)
12. Liberal construction before grant. “When this standard, as contemplated by the Ayyangar Committee Report, is applied to Section 59 of the Act as it stands today, it becomes clear that amendments to a patent specification or claims prior to grant ought to be construed more liberally rather than narrowly. The purport and spirit of Article 123 of the European Patent Convention is not too different. In effect, the legislative material and the statutory provisions require that nothing new should be permitted to be inserted in the specification or claims. So long as the invention is disclosed in the specification and the claims are being restricted to the disclosures already made in the specification, the amendment ought not be rejected, especially, at the stage of examination prior to grant.” (para 55)
13. Disclaimer by narrowing. “In AGC Flats Glass Europe SA v. Anand Mahajan 2009 (41) PTC 207 (Del) 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. The only consideration that must be kept in mind is that the amended claims are not inconsistent with the earlier claims in the original specification.” (para 56) “This position of law has been reiterated by this Court in Sulphur Mills Limited v. Dharamraj Crop Guard Limited (2021) 87 PTC 567 wherein the Court held” that “It is usual for patent applicants to edit, amend, modify and vary the claims during the examination and opposition process. So long as the amendments sought are within the scope of the claims originally filed, no adverse conclusion can be drawn on the basis of the said amendments.” (paras 56–57)
14. Applied. “The process of ’emulsion polymerisation’ has been explained in the minutest form in the specification.” (para 35) “By applying the principles laid down in the above discussed provisions and decisions, it is clear that in the present case, the Applicant is amending and narrowing the scope of the claims and not expanding the same. The process sought to be claimed in the amended claims has been clearly disclosed in the patent specification. The said process is not sought to be added newly by way of an amendment. The amendment is, thus, within the scope of the patent specification and claims as originally filed. In the opinion of the Court, the amended claims of the Appellant satisfy the conditions of Section 59(1) of the Act as specified above. Thus, the objection under Section 59(1) of the Act is not sustainable.” (paras 35, 58)
15. Procedure. Relief. “Accordingly, the present petition is allowed to the extent that the amended claims filed by the Appellant on 24th January, 2021 are directed to be taken on record. The same shall now be examined in accordance with law on the other grounds including of novelty, lack of inventive step, non-patentability under Section 3(d) and 3(e) of the Act, in an expeditious manner.” (para 60) “The ld. Deputy Controller of Patents is directed to dispose of the application of the Appellant within a period of six months.” (paras 60–61)

What the court did not decide

“The current enquiry by this Court having been restricted to the objection under Section 59 of the Act, the questions of lack of inventive step and non-patentability under sections 3(d) and 3(e) of the Act raised in the FER” (“First Examination Report”) “and the hearing notices would remain to be decided by the Patent Office. It is clarified that this Court has not given any opinion on the objections.” (para 59)

Subsequent treatment

• Followed — In Allergan v Controller of Patents (2023) the Delhi High Court held that “The view that I have taken also harmonises with paras 53 to 55 of the decision of the Co-ordinate Bench in Nippon” (para 46), and allowed the appellant to substitute claims to the implants for claims to the method of using them, remanding the amended claims for examination (paras 45, 48).
• Followed — In OpenTV v Controller of Patents and Designs (2023) the Delhi High Court held that “The question as to the nature of amendments that are permissible during prosecution of a patent application has been dealt with in detail by this Court in Nippon A And L Inc. v. The Controller of Patents, 2022 SCC OnLine Del 1909” (para 48), and that “Thus, reduction or narrowing down a Claim is permissible, but broadening, widening or expansion of Claims is not permissible.” (para 50)
• Followed — In Kroll Information Assurance v Controller General of Patents, Designs and Trademarks (2025) the Delhi High Court reproduced paras 40 and 41 of this judgment (para 12) and held the proposed amendments “fully within the scope of Section 59 of the Act” (para 14).