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Amendment in Patent specification by way of explanation

The case under discussion pertains to an appeal filed under Section 117A of the Patents Act, 1970, challenging the rejection of a patent application by the Assistant Controller of Patents and Designs. The appellant's patent application, filed on November 29, 2013, was rejected primarily under Section 15 read with Section 59(1) of the Act.

The Facts:
At the time of the national phase entry in India, the patent application comprised 33 claims, including independent and dependent claims. Subsequently, amendments were made to the claims in response to a First Examination Report (FER) issued on October 31, 2019. The amendments included restricting the preamble of Claim 1 and incorporating technical features from other claims to address objections related to clarity, conciseness, and definitiveness. Additionally, several claims were cancelled during this process.

Appellant's Contention:
The appellant argued that the impugned order was arbitrary and based on an incorrect interpretation of Section 59(1) of the Act. They contended that the amendments made to the claims were permissible under Section 59(1) as they constituted corrections, explanations, and disclaimers. Moreover, the appellant asserted that the scope of the amended claims was narrower than the original claims and merely served to clarify and explain the invention.

Analysis by Hon'ble High Court:
The Hon'ble High Court of Delhi, in allowing the appeal, focused on the interpretation of Section 59(1) of the Patents Act, 1970. The court observed that the use of the expression "method of marketing" in the amended claims was consistent with the original claim and fell within the scope of Section 59(1). The amendments were deemed to be explanations and clarifications of the original claims rather than introducing new subject matter.

Furthermore, the court emphasized that the amendments did not disclose any matter that was not originally disclosed in the claims filed before the amendment. Instead, they served to incorporate actual facts and refine the language of the claims to address objections raised during examination. As such, the amendments were held to be permissible under Section 59(1) of the Act.

This case underscores the importance of clarity and precision in drafting patent claims and the significance of amendments in addressing objections raised during examination. It reaffirms the principle that amendments aimed at clarifying and explaining the invention, rather than expanding its scope, are permissible under the law.

Case Title: The Regent of University of California Vs Controller General of India
Order Date: 05.02.2024
Case No. C.A.(COMM.IPD-PAT) 143/2022
Name of Court: Delhi High Court
Neutral Citation:2024:DHC:882
Name of Hon'ble Judge:Anish Dayal,H J.

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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