The concept of “auxiliary claims” has recently surfaced in Indian patent jurisprudence, particularly in the context of decisions by the Delhi High Court. Despite its increasing usage, the term remains undefined within the Indian Patents Act, 1970, or the Patent Rules, 2003. This article critically examines the emergence of auxiliary claims in Indian patent litigation, their legal basis, and the implications of their judicial acceptance, particularly in comparison to European patent practice.
Understanding Auxiliary Claims: Origin and Applicability
Auxiliary claims are widely recognized in proceedings before the European Patent Office (EPO), where they serve as fallback positions when primary claims face rejection. Applicants submit these alternative claims before oral hearings, ensuring that a narrower or modified scope remains available for examination. However, under Indian patent law, neither the Patents Act nor the Manual of Patent Practice and Procedure explicitly recognizes such claims. This raises fundamental questions regarding their legitimacy and procedural acceptability in India.
The Delhi High Court’s recent reliance on auxiliary claims, as seen in Immunolight v. Controller of Patents, has reignited the debate on whether Indian jurisprudence is implicitly aligning itself with European practices. The Court directed the Patent Office to reconsider the matter in light of the auxiliary claims filed by Immunolight, despite the absence of statutory backing for such claims.
Legislative Silence: Can Auxiliary Claims be Justified?
A closer examination of Section 59(1) of the Patents Act, 1970, which governs amendments, suggests that any claim modification must be within the scope of the originally filed claims. While applicants frequently amend claims during prosecution, the Act does not explicitly permit the simultaneous filing of auxiliary claims as a contingency mechanism. The absence of legislative clarity raises concerns regarding the procedural propriety of allowing such claims at the appellate stage.
In various cases, including Agro Innovation International v. Controller of Patents, Trident Limited v. Controller of Patents, and Bia Separations D.O.O v. Assistant Controller of Patents, the Delhi High Court either remanded matters for fresh consideration or refrained from adjudicating the validity of auxiliary claims. Notably, all such decisions emerged post-2022, after the abolition of the Intellectual Property Appellate Board (IPAB), suggesting a judicial shift towards greater procedural flexibility in patent matters.
Auxiliary Claims in European Patent Law
In contrast, European patent law has long established the legitimacy of auxiliary claims. The Enlarged Board of Appeal of the EPO has upheld their admissibility in several cases. In T 937/09 (Molecular Markers/UNILEVER), the Board recognized that auxiliary requests provide applicants with a mechanism to modify claims in a structured manner without prejudicing procedural economy. Similarly, in T 409/10 (Application of Amended Claims), the EPO Board emphasized that auxiliary claims must comply with Article 123(2) and (3) of the European Patent Convention (EPC), ensuring that they do not extend beyond the original disclosure while allowing reasonable modifications to address objections.
Furthermore, T 1695/07 (Secondary Amendments) reaffirmed that auxiliary claims play a crucial role in ensuring applicants retain some degree of protection even when primary claims are deemed unpatentable. These decisions illustrate how European patent law embraces auxiliary claims as an integral part of the prosecution and appeal process, providing valuable guidance on how Indian jurisprudence might develop in this regard.
Judicial Precedents and Procedural Concerns
The manner in which auxiliary claims have been entertained by courts raises critical procedural concerns. In Immunolight v. Controller of Patents, the auxiliary claims were introduced in 2024—seven years after the initial rejection order in 2017. The High Court, rather than engaging with the substantive validity of the amended claims, remanded the matter back to the Patent Office for fresh determination. A similar approach was observed in Baxalta Incorporated v. Controller of Patents (2024), where the Court opted for remand rather than substantive adjudication.
This judicial trend of returning cases to the Patent Office poses several challenges:
- Delays in Adjudication – In Immunolight, the entire appellate process spanned eight years before the remand order, adding to systemic inefficiencies in patent grant timelines.
- Burden on the Patent Office – The remand process effectively resets examination, requiring the Controller to re-evaluate the claims within a compressed timeframe (typically three months), potentially impacting the quality of scrutiny.
- Equitable Considerations – Given that auxiliary claims were introduced significantly late in the process, courts must consider whether such delays should be permissible, particularly when they alter the scope of the granted patent monopoly.
The Need for Judicial Clarity and Legislative Reform
The judicial use of auxiliary claims in Indian patent litigation underscores the need for greater doctrinal clarity. If courts continue to accept such claims, either at the appellate or examination stage, legislative amendments or judicial guidelines are essential to prevent ad hoc adjudication. Moreover, reliance on EPO practices without a statutory basis may introduce unnecessary complexities into Indian patent prosecution.
Going forward, policymakers and the judiciary must deliberate on:
- Whether auxiliary claims should be formally incorporated within the Indian patent framework;
- The procedural stage at which such claims may be filed;
- The extent to which they may alter the scope of an application without contravening Section 59.
Until such clarity is provided, applicants must tread cautiously when invoking auxiliary claims, ensuring compliance with existing statutory provisions to avoid unnecessary procedural hurdles.
Conclusion
The emergence of auxiliary claims in Indian patent jurisprudence represents an evolving intersection of procedural flexibility and statutory rigidity. While courts have thus far accommodated such claims without substantive analysis, their long-term viability remains uncertain. Judicial or legislative intervention is imperative to resolve ambiguities and establish a definitive framework for claim amendments in India. Until then, stakeholders must navigate this legal grey area with strategic foresight and procedural diligence.
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