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What Kind Of Amendments In Claims Of Patent Are Permissible?

This article examines the permissible scope of amendments to claims in a patent application under the Patents Act, 1970, in the context of an appeal against the rejection of amended claims by the Assistant Controller of Patents and Designs. The case in question involves a patent application for "Organic Fluorescent Compositions," where the appellant sought to amend the claims from a composition to the compound itself. The analysis focuses on the legal implications of such amendments and the rationale behind the court's decision to allow the amendments.

The appellant filed a patent application (Application No. 3150/DELNP/2010) on May 5, 2010, seeking protection for "Organic Fluorescent Compositions." The original claims were Markush claims, detailing a composition comprising an organic compound with a structure according to formula I. Post-hearing, the appellant submitted written submissions with a set of amended claims, shifting the scope from "composition comprising a compound" to "the compound" itself, thus eliminating the compositional aspect. The Assistant Controller of Patents and Designs rejected these amended claims on April 28, 2017, stating that they extended beyond the scope of the originally filed claims.

In Appeal, it was found that the amendment merely pared down the original claims without introducing new subject matter. The formula I in the amended claims remained the same as in the original claims, with the only change being the removal of the term "composition." This indicated that the scope was narrowed rather than broadened, as no new compounds were claimed, and the essence of the original invention remained intact.

Legal Implication:
Under Section 59 of the Patents Act, 1970, amendments to a patent application are permissible provided they do not introduce new matter beyond what was originally disclosed. The critical issue is whether the amendments broaden the scope of the claims or merely narrow it. In this case, the court found that the amendments were a narrowing of the claims, aligning with the statutory requirements. Therefore, the rejection by the Assistant Controller was deemed unsustainable as it misinterpreted the nature of the amendments.

The court's decision hinged on the interpretation that amendments which narrow the scope of the claims do not constitute new matter and are permissible under the Patents Act. The key ratio decidendi is that the deletion of the term "composition" and the focus on the "compound" did not extend beyond the original disclosure but rather specified the invention more precisely. This interpretation supports a more flexible approach to claim amendments, provided they remain within the bounds of the original invention disclosure.

Concluding Note:
The court's decision underscores the importance of understanding the permissible scope of amendments in patent claims. Amendments that narrow the claims and provide greater precision without introducing new matter are consistent with the legislative intent of the Patents Act, 1970. This case reaffirms that the protection of the original invention's essence is paramount, and technical adjustments that do not alter this essence should be allowed.

Case Title: Honey well International Inc Vs The Controller of Patent
Order Date: 21.05.2024
Case No. CA (Comm IPD Pat) 396 of 2022
Neutral Citation:2024:DHC:4712
Name of Court: Delhi High Court
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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