We’re pleased to bring to our readers a 2 part post by Amit Tailor on the recent case Nippon A&L vs The Controller of Patents, which looked into questions of how and to what extent a claim in a patent application can be amended under the Patents Act. In the first part, Amit introduces the issue and argues that the court’s reliance on the European Technical Board of Appeal’s Konica case is questionable. In the second part, Amit argues that the court’s reliance on the Ayyangar Committee Report for allowing a wider amendment is not actually supported by the report. Amit has written several guest posts for us before and you can find them here.
Amit is a post graduate in Pharmaceutical Sciences from National Institute of Pharmaceutical Education and Research (NIPER), S.A.S. Nagar (Mohali) and LL.B. from Faculty of Law, Maharaja Sayajirao University of Baroda (MSU), Vadodara. He has also completed his graduation in Pharmacy from MSU, Vadodara. Amit is a registered Patent Agent and an IP practitioner and currently part of the IP litigation team at Sun Pharmaceuticals. He was earlier associated with Cadila Healthcare (currently – Zydus Lifesciences). He also writes poetry with penname “કાચબો” [Kācabō – meaning tortoise/turtle] at www.amittailor.com : અમિતટેલર.કોમ – કાચબાની કલમનું કાયમી સરનામું (Permanent Address of the Pen of Kācabō).
The Extent of Amendment Allowed in a Patent Application: Part 1
Author: Amit Tailor
Recently in NIPPON A&L INC. vs. THE CONTROLLER OF PATENTS [C.A.(COMM.IPD-PAT) 11/2022], the Delhi HC has set aside a Controller’s order refusing a patent application and remanded the case back to the Patent Office (the “Judgement”). The Controller had rejected the application on the grounds that the amendments to the claim(s) entered by the applicant changed the scope of the claims and therefore not allowable under Section 59(1) of The Patent Acts, 1970 [the “Sec. 59(1)” or the “Section” and the “Act”]. This post is trying to review the position, in India, on the issue – what can be allowed to be entered as an amendment to a claim u/s 59(1) of the Act. Later, the post would review the position in light of the Court’s reasoning in the Order.
Provisions of Amendment, to Specification and to Claims, Under the Act
The Chapter X (Sections 57-59) of the Act specifically deals with amendments to patent application and specification. While, Sec. 57 provides broadly for amendments to application and specification or any other document related thereto, before the Controller, and Sec. 58 provides for amendments before the High Court, the Sec. 59 provides certain limitations, subject to which, those amendments can be entered. Relevant to the instant inquiry is Clause 1 of Sec. 59, which reads as follows –
“59(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, and 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.” [emphasis supplied]
Certainly, claims form a part of the specification itself, but still both the terms are not synonymous or interchangeable, at least, for the purpose of above Clause. Use of the expressions “No amendment of …a complete specification”, “the specification … would claim’ or describe“, “any claim of the specification”, “a claim of the specification” etc., in the text of Sec. 59(1), indicates that the statute has clearly identified two distinct elements of a ‘complete specification’ – the ‘description’ and the ‘claims’; and apparently provides different standards for amendments to the two. For the purposes of this post, the ‘amendment to the specification’ part of Sec. 59(1) is not being reviewed, and the focus is on the ‘amendment to a claim’ element part.
Careful review of the language of the said clause makes it clear that, primarily, two express limitations are imposed for a claim amendment to be permissible u/s 59(1): the amended claim – (i) shall not claim matter not in substance disclosed or shown in the specification – and (ii) shall fall wholly within the Scope of a claim of the specification-, before the amendment.
I.e. when it comes to reviewing a claim amendment against the provisions of Sec. 59(1), the relevant inquiry requires the fact finder to look into the claims before and after the amendment in addition to the specification as filed. The amended claim(s), for the purpose of this section, being disclosed in the specification (i.e. in the description) is necessary but not a sufficient position and the claim must also fall wholly within the scope of a claim of the specification before the amendment.
Reasoning of the Court in NIPPON & Corresponding Legal Position
The claims at issue in this case were the so called – ‘product-by-process’ claims, which were amended by the applicant to ‘process’ claims. The Controller had rejected this amendment on the grounds that the amendment in question changed the scope of the claims, and the amended claims would not fall wholly within the scope of the claims before amendment; hence not allowable u/s 59(1).. The Delhi HC, on appeal, allowed such amendments to be entered and remanded the case back to the Patent Office to review the amended claims on merit. While allowing the appeal, the Hon’ble Court made certain observations like – the originally filed product-by-process claims had both the elements – product and process, amending a product claim to a process is markedly a ‘step down’, such an amendment is a ‘disclaimer’ and claims can be amended by way of disclaimer, etc. This post does not focus much on such observations or on other ancillary issues of the case, viz. – the ‘product-by-process’ type of claims and their scope vis-à-vis the ‘process’ claims, the effect of such amendments and the type and amount of protection afforded by the same, etc.; rather the post focus on the reasoning provided, and the authority relied upon, by the Hon’ble Court to allow the appeal and thereby the amendments.
Reliance on a Decision of the European Technical Board of Appeal is Erroneous
The Hon’ble Court relied upon a decision of the European Technical Board of Appeal (the “Board”) in one Konica/Sensitizing (“Konica”) wherein the Board allowed the applicant therein to amend the claims from so called ‘product-by-process’ claims to ‘process’ claims, drawing authority from Article 123 of EPC (the “Art. 123”). This reliance on Konica and drawing authority therefrom based on the Art. 123 is factually erroneous for the following reasons.
Firstly, Konica is a foreign authority and the decision of the Board therein is based on a completely different legislation compared to that in India. A side-by-side comparison of the two can make things clearer.
| Art. 123: Amendments | Sec. 59(1) |
| (2) The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.
(3) The European patent may not be amended in such a way as to extend the protection it confers. |
… 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. |
Apparently, there is a marked difference between the language, and therefore expectedly, the scope of the two statutes. Without delving deep in to the interpretation of the Art. 123, simple reading of the language thereof makes it clear, that the mandate of Art. 123 is to allow amendments to an application in general or broadly, without categorizing them in two – one for the description and one for the claims. Whereas, the position in India is completely different. Sec. 59(1) clearly provides different mandates for allowing amendments to description and claims.
Even assuming for the sake of argument, that an amended claim ‘not falling wholly within the scope of a claim before the amendment’ may be allowed to be entered at the EPO, under Art. 123, the same cannot be said to be true for India under the Act. As discussed earlier, for a claim amendment to be allowable u/s 59(1), the amended claim must fall wholly within the scope of a claim of the specification before the amendment. Therefore, drawing analogy from the Board’s decision in light of Art. 123 to the facts of the case under Sec. 59(1) is clearly erroneous.
In addition to that, the Hon’ble Court’s observation that “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.” is not fairly supported by the very citation relied upon by the Hon’ble court. Konica does not expressly mandate that such a change from a product-by-process claim to a process claim may be generally allowable as a right or a regulation under Art. 123, but rather categorically said that such a change would be admissible under the circumstances of the case therein, see para. 50 & 51 of the Judgment, – “The change in category from a product-by-process claim to a (manufacturing) process claim is, in the present circumstances, admissible.” (emphasis supplied) i.e. even assuming that authority may be drawn from the foreign Board’s decision on a matter under Art. 123, the said authority itself does not hold that such a change is ‘clearly permissible’ as a general rule.
Therefore, reading a foreign authority on a completely different statute in to an Indian statute, contrary to express language of the legislation is prima facie per incuriam and against the clear legislative mandate.
Part 2 is available here
Thank you for your thought provoking and insightful post Amit. Although, I must say that I have a few queries after I went through your analysis. While your analysis of Section 59 of the Patents Act is spot on; that an amendment to claims need to satisfy the twin requirement of amended claim failing within the scope of specifications, and the claims as originally filed, I am not entirely in agreement with your hypothesis “that an amended claim ‘not falling wholly within the scope of a claim before the amendment’ may be allowed to be entered at the EPO, under Art. 123”. Even an amendment under Article 123 of the EPC would require the Patentee (in case of amendment to granted patent) / Applicant (in case of amendment of patent application) to show that the amended claims fall with the scope of claims as originally filed and the specifications. In my view, this is a safeguard that stops an applicant from extending the scope subject matter beyond the application as originally filed. The European Board of Appeals in Amorphous TPM/ENICHEM in 1998 has held that:
“4.3. Article 123(3) EPC requires that the claims of a patent may not be amended during opposition proceedings in such a way as to extend the protection conferred. This applies to all amendments including the change of the category of claim. In order to decide whether or not the change of the category in the patent in suit satisfies that requirement, it is necessary to compare the protection conferred by the category of claim before amendment, i.e. as granted, with that of the new category of claim after amendment (see decision G 2/88, loc cit., points 3.2. and 4.1 of the reasons).”
To my mind, this proposition seems to be the natural extension of the language of the provision “may not be amended in such a way that it contains subject matter which extends beyond the contention of the application as filed” appearing in Article 123(2) EPC. Or at least it would require something more that “an assumption for the sake of the argument”.
Also, while you point out that in Konica, the change in the category of was allowed in the specific set of circumstances of the case, in my humble opinion, to show that Konica was not the correct precedent to rely upon, you will have to at least show how the circumstances in Nippon were different from Konica. The judicial exercise of adjudication is always done in the specific set of circumstances that court is faced with. The ratio has to be culled out by way of abstraction by the Court considering the judgment (Glanville Williams’ ‘Learning the Law’ has an instructive chapter on it.)
As far as the Ayyangar Committee Report is concerned, your remarks are spot on. The Report was given in a different legal landscape. And it seems that IPAB decision in ‘Tony Mon George’ takes that point into consideration (see para 29-32) and then lays down the law. To be honest, reliance on the Report on the question of amendment, post the changes in 2002, is not much helpful. However, if your ‘spirit of the recommendation’ argument if followed, then no amendment of an application would be permissible as third-party rights have kick in. And the whole process of amendment of patent after grant would also have to be dislodged, because the rights have precipitated, no? There has to be distinction between the Applicant comes and says “I want to limit my right” in which case amendment should be allowed and where the Applicant wishes to expand the scope of patent. Whether in the facts of this case the rights were sought be restricted or not, is a wholly different question though.
Thank you for the detailed analysis of the Europen position on this issue.
For “…amended claim ‘not falling wholly within the scope … may be allowed…”, as I have expressly said, I have not tried to review the position in Europe, and the hypothesis is only an assumption for the argument under the Indian Statute. So, I have not tried to comment anything on the position under Art.123 here. In fact the detailed analysis provided by you is highly enligtening on the European position on this. The only point I was drawing under the head was that the two legislations have different texts and therefore it may not be a good authority under Indian statute to rely upon. In addition, the intent was to draw the attention that even Konica does not talk of allowing such an amednment as a generalisation, in line with what you have professed by citing Amorphous TPM/ENICHEM.
On drawing similarities between Konica and the instant case – this post is no trying to do draw any such dis-/similarities, in fact the Hon’ble Court has done the exercise and the argument here is such an inquiry would be infructious, in light of the different languages of the statute and allegedly different legislative intents.
And, I agree with your remarks “Whether in the facts of this case the rights were sought be restricted or not, is a wholly different question”
However, I must say that, the counter Arguments provided by you to the views expressed herein are equally thought provoking and needs reasonable efforts to counter and support the views of the post.
And most importantly, when the content of the post is found insightful and ignites such insightful thoughts from the fraternity and get others discussing the issue, than the efforts put in doing the research and writing, are justified. Because, the purpose is not to press any views but to offer a perspective and equally openly accepting views from others.
After posing the previous comment, I realised that my rant is not as lengthy as I thought it was, so I will point out one very pertinent point that the judgment, in my opinion, offers no clarity upon. That is ‘whether process claims are actually narrow than product by process claims’. The judgment proceeds on the assumption that pure process claims are narrower than product by process claims. Therefore, amendment by the patentee is a step down.
The scope of the claims is determined by the nature of exclusivity they provide. Can a patentee having product by process claims can claim exclusivity over anything other than the ‘process’ specified in the product by process claims? If not, the scope of product by process claims would be no different from pure process claims. In such a scenario, can one really claim that by changing product by process claims to pure process claim, he/she is narrowing down the scope of the claims? Plus, in such a case the ground of ‘disclaimer’ goes out of the window. Because you are not really disclaiming anything as such. You are merely changing the scope of the claims.
There are a couple of judgments of the of the Federal Circuit Court of the US dealing with infringement of product by process patents and to be honest there is actually no clarity on the scope of product by process claims.
‘Are product by process claims infringed unless the same process is practiced as specified in the claims?’ is that question that lies at the crux of the matter. The judgment ought to have, ideally, dealt with the question. However, the interesting thing is that none of the literature that I have read till now analyzing the judgment has yet called out this assumption of the Court.
Yes, these are also the issues involved in this case, but I have not touched upon those, as the purpose of this post is only to review the position u/s 59(1) and the reasoning provided by the Hon’ble court for their reversal.