Delhi High Court Clarifies Nature Of Amendments Possible Under Section 59
If an Applicant were to nationalize a PCT application into India bearing claims all of which were supposedly directed to non-patentable subject matter, the Applicant was customarily caught between the hammer and the anvil. The ‘hammer’ being the provisions of Section 138(4) which obligated the Applicant to enter India with all the claims as pending in the PCT application and the ‘anvil’ being Section 59 whose provisions were inferred thus far to prohibit any claim amendments that would alter the scope of claims to render them patentable.
These preconditions foreclosed all possibilities of seeking patent protection in India for the Applicant despite having disclosed one’s invention to the public and perhaps the invention bearing technical merit as well. The current ruling from the Delhi High Court can easily be considered as one of the most progressive orders that has clarified the underlying legal considerations to be taken into account while interpreting Section 59.
In its order dated 20 January 2023, the Hon’ble Delhi High Court set aside the decision of the Controller thereby allowing the Appellant to amend the original PCT claims directed to non-patentable ‘method of treatment’ to claims directed to the ‘intracameral implant’ per se.
BRIEF FACTS OF THE CASE
1. Application no. 7039/DELNP/2012 has been filed as an Indian national phase of a PCT International containing two sets of claims, one set relating to : "A method of treating an ocular condition comprising the steps of ...(using a sustained release therapeutic agent implants)" and another set relating to "A method of treating glaucoma in an eye comprising the steps of ... (using a sustained release therapeutic agent implants)".
2. The FER issued on the application inter alia raised an objection that the claims, being concerned with medical treatment, are not allowable under Section 3(i) of the Act.
3. To meet the official objection under Section 3(i), the Applicant proposed to amend the claims to "An intracameral implant comprising ... ".
4. The Controller issued a hearing notice objecting to the amendment proposed by the applicant in the claim alleging that such amendment is beyond the scope of the originally filed claims, given that there were no claims for 'intracameral implant' in the original statement of claims.
5. After hearing the Applicant, who pleaded that the features and characteristics of the presently-claimed implant were present in the original claims and the disclosure and therefore the proposed amendment of the claims to an implant is allowable, the Controller issued decision refusing the application on the sole ground that the amendments sought to be made in the claims do not conform to the criteria set out in Section 59(1) regarding allowable amendments.
6. The applicant appealed against the Controller's refusal decision at the Delhi High Court.
Allowing the appeal, the Hon'ble Justice C Harishankar has been pleased to hold that the amendment proposed in the claims by the applicant is well within the scope of Section 59(1). Following are the basis of his decision:
FOSTERING INVENTIVENESS IS QUINTESSENCE OF THE PATENT SYSTEM
Paragraph 31 of the order underlines the fact that one of the cardinal principles of patent law is to reward ‘inventiveness’ which cannot be compromised on account of a convoluted interpretation of Section 59 as ruled by the Controller. The reading of said paragraph is reproduced hereunder.
“Fostering of inventiveness is, therefore, the very raison d’etre of patent law, to which end any meaningful interpretation of the provisions of the Patents Act must aspire. Placing unduly restricted, pedantic, or hypertechnical interpretations on provisions of the Patents Act, in a manner which would discourage inventiveness and entrepreneurship would, therefore, be counter-productive to its purpose. It would be completely impermissible, therefore, for the provisions of the Patents Act to be so interpreted as to render a possibly inventive invention non-patentable.”
Patents become a lever for industrial progress, by incentivizing innovation and catalyzing prolific technological advancement. This being the very raison d’etre of patent law, no interpretation of the provisions of the Patents Act shall be construed in a manner that would defeat the very spirit of the law. Espousing the thus far understood narrow interpretation of Section 59 would result in the Applicant being foreclosed from seeking a patent which is a result of their own inventiveness.
The order further affirms that if the Controller finds, on examination, that the implants are not inventive or stand otherwise disentitled to a patent under the Patents Act for any reason whatsoever, the Appellant’s application would naturally stand disallowed. However, the application cannot be thrown out without examination at the very threshold.
Finally, the order affirms that the principle of purposive interpretation should be used rather than literal construction with faithful adherence to the plain words while construing a statute and it is particularly true for statutes dealing with intellectual property rights which seek to encourage scientific research, new technology and industrial progress.
IN ASSESSING ‘SCOPE OF CLAIM’ THE DESCRIPTION AND CLAIMS CANNOT BE DICHOTOMIZED
Conforming to the elementary principles of claim construction, this ruling has affirmed that the claims and complete specification have to be read together and as a whole. Hence, the claims are to be interpreted in light of the specification of which they form an integrated part. Certainly therefore, scope of the pre-amended claim cannot be based on a ‘textually cabined’ reading of the claims itself without consideration of the complete specification. Paragraph 43 of the order elucidates as follows:
‘’The very use of the expression “scope of a claim” in the concluding part of Section 59(1) would, therefore, in my considered opinion and keeping in mind the avowed purpose of the Patents Act, require taking into consideration the complete specifications of the pre-amended claim, and not merely a textually cabined reading of the pre-amended claims themselves, de hors the complete specifications.”
The Hon’ble Court further observed that the specification was indeed forthcoming in respect of embodiments describing the method of using certain implants for treating ocular ailments including details pertaining to said implants as well. Thus, it was opined that it would be a travesty to shut out the Appellant to seek a patent merely on the ground that the amendment was not permissible under Section 59(1) of the Indian Patents Act.
Hence, the order clarifies that in assessing the scope of a pre-amended claim with the amended claim, it is imperative that the scope of said claims be ascertained in light of the embodied working of the invention as disclosed in the specification. Depriving the Applicant his rightful claim to the invention that has been duly disclosed to the public works against natural justice.
PURPORT OF THE AYYANGAR COMMITTEE REPORT FAVORS WIDER SCOPE OF AMENDMENT PRIOR TO GRANT
The order observes that a perusal of relevant segments 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 of 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 with the matter disclosed” [para 46].
-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 46]
This is an important decision in that it recognizes the applicant's right to amend the claims from a non-patentable subject matter to a patentable subject matter - particularly in the case of National phase applications, where the Applicant does not have the liberty to amend the claims at the time of national phase entry - provided there is sufficient basis for such amendment in the original claims and disclosure.
Hence, this decision opens up doors for those National Phase applicants who were skeptical of nationalizing their application in India on account of the inflexibility to amend their non-patentable claims to a patentable scope based on the supported embodiments of the description. This order would also serve as a useful judicial precedence for applications at various stages of prosecution facing similar constraints with respect to claim amendments.
Authors : Divya Shekar and Dipanjana Chakraborty