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Admissibility of Amendments in National Phase Patent Applications

The recent appellate decision in the matter of patent application no. 3877/DELNP/2009 highlights the procedural intricacies surrounding the admissibility of amendments in national phase patent applications corresponding to PCT applications. The case delves into the application of Section 59 of the Patents Act, 1970, and the significance of procedural adherence during the examination process.

The appellant's patent application was refused under Section 15 of the Patents Act, 1970, with the Assistant Controller of Patents citing non-patentability under Section 3(h) of the Act. Additionally, the refusal was based on the disallowance of a formal request to amend method claims to composition claims, purportedly contravening Section 59 of the Act.

Amendments and Examination Process:
The appellant submitted a revised set of claims in response to the First Examination Report (FER), objecting under Section 3(h) of the Act. Despite subsequent amendments, the patent office continued to find the claims objectionable. The appellant then submitted further amended claims along with Form 13, seeking a change from method claims to composition claims.

Contentions and Ruling:
The crux of the matter revolved around the procedural adherence concerning claim treatment during the national phase entry of a PCT application into India. The appellant argued that the examination should have been confined to the original PCT claims, and any amendments introduced during the national phase should have been compared against these original claims.

Court's Analysis:
The appellate court scrutinized the procedural aspects and observed that the respondent erroneously focused on the modified claims from the national phase application instead of the original PCT claims. It emphasized the importance of adhering to procedural requirements and conducting examinations based on the original claims submitted during the PCT phase. In absence of any amendment sought by the Appellant to PCT application, the amended national phase application can not be looked into.

Decision and Implications:
The appellate court set aside the order and remanded the matter back to the controller, emphasizing the need for a reevaluation based on the original PCT claims. This decision underscores the significance of procedural adherence and highlights the potential pitfalls of overlooking the original claims during the examination process.

The case underscores the importance of procedural compliance and meticulous examination practices in patent applications, especially during the national phase entry of PCT applications. It serves as a reminder for patent applicants and examiners alike to adhere to statutory requirements and conduct examinations based on the original claims submitted during the PCT phase to ensure a fair and transparent process..

Case Title: Mitsui Chemicals Inc Vs Controller Of Patents
Order Date: 23.02.2024
Case No. C.A.(COMM.IPD-PAT) 196/2022
Neutral Citation:NA
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Sanjeev Narula, H.J.

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

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

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