DELHI HIGH COURT:
The Delhi High Court has become a prominent centre for intellectual property litigation in India. Recently, the Court addressed the issue of allowable claim amendments under Section 59(1) of the Patents Act. In the case of Allergan Inc. v. The Controller of Patents, the court overturned the decision of the Indian Patent Office and allowed specific claim amendments. This case examines the evolving landscape of allowable amendments in India.
SECTION 59 (1) and NIPPON CASE:
Section 59(1) of the Indian Patent Act has historically been interpreted to reflect amendments in a patent application to fall within the original scope of the as filed claims. In the case of Nippon A&L Inc. v. The Controller of Patents, the Delhi High Court ruled that amendments disclosed in the specification, without expanding the original claims, can be made without restrictions. The court highlighted a 2002 amendment that aimed to allow more lenient admissibility of amendments as long as they are disclosed and do not broaden the claims. It also noted that process claims provide limited protection compared to the original claims. Consequently, the court considered the proposed alterations permissible.
ALLERGAN CASE :
The Allergan case involved an application that initially included a claim for a “method of treatment” using specific implants. The Patent Office objected to these claims, but the applicant amended them to focus on the composition of the implants aspect. However, the Patent Office rejected the amendments, claiming they were outside the scope of the originally filed claims. The applicant appealed to the Delhi High Court, which held that the amendment from a method claim to a product claim should be allowed under Section 59(1). The court sent the case back to the Patent Office for further examination of the amended claims.
In its analysis, the Delhi High Court noted inconsistencies in the reasons provided by the Patent Office for the rejection. The Court observed that the rejection was based on the claims not falling within the scope of the original filing. The court also emphasized that the applicant should not be questioned for filing the application with method claims, as it is common practice for national phase applications to enter India with un-amended claims (as is claims in PCT). Amendments to the complete specification can be made after filing in accordance with the law. The court’s decision mainly focused on the differences in the allowability of method claims in India and the United States.
DIVERGENT DECISIONS/VIEWS:
Interestingly, the Allergan case is not the only decision on claim amendments under Section 59(1) from the Intellectual Property Division of the Delhi High Court. Previous cases, such as Boehringer and Nippon, have dealt with similar issues but resulted in divergent and/or conflicting judgments. While the Boehringer case upheld the rejection of an amendment from a method claim to a product claim, the Allergan case allowed such an amendment. These divergent views have created a certain degree of uncertainty and lack of clarity, leading to different interpretations and arguments in future patent proceedings.
WAY FORWARD:
The Court in the Allergan case focused on the disclosure of the amended claims in the specification to support its decision, deviating from the previous legal position that the claims must fall within the original scope. The conflicting interpretations of Section 59(1) in different cases do complicate the understanding of the law in this area. However, its moving in the right direction and as more and more matters are adjudicated, much needed clarity in this critical aspect of patent law jurisprudence will be provided. As patent applicants and practitioners navigate the evolving landscape of claim amendments in India, more clarity and consistency in judicial decisions will be crucial for a fair and predictable patent system.
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