DELHI HIGH COURT ALLOWS APPELLANT’S AMENDMENTS TO PATENT APPLICATION, AS IT FELL WITHIN THE SCOPE OF ORIGINAL CLAIM

In a recent matter of Honeywell International Inc Vs The Controller of Patents C.A. (Comm. IPD- PAT) 396/2022, Justice Anish Dayal passed a Judgment dated 21-05-2024 and allowed the Appellant’s amendments to its Patent Application, as the amendments fell within the scope of the original claims.

Facts

i) In the present case, the Appellant- Honeywell International Inc filed a Patent Application with the Controller of Patents and Designs, seeking protection for “Organic Fluorescent Compositions” on 05-05-2010, which was allotted Application No. 3150/DELNP/2010 (Patent Application).

ii) The Ld. Assistant Controller issued a First Examination Report to the Appellant on 16-07-2015, wherein 10 objections were raised including lack of inventive step under Section 2 (1) (ja) of the Patent Act 1970 (Act) and non-patentability under Section 3 (d) and (e) of the Act (What are not inventions).[1]

iii) The Appellant filed its Response to the aforesaid Report on 20-11-2015 along with an amended set of claims, whereby, it deleted few claims and amended the others.

iv) Thereafter, a hearing took place on 20-12-2016. The objection taken in the hearing by the Assistant Controller was based on composition claims.

v) Post-hearing, the Appellant filed its written submissions along with a fresh set of Amended Claims. By the said amendment, the Appellant sought to amend the scope of the Original Claim, i.e. the “claim for composition” was amended to just ‘claim for the compound’.

vi) The Assistant Controller passed an Order dated 28-04-2017 and rejected the Patent Application on the following grounds:

vii) Considering the amendment, it stated that the Amended Claims were beyond the scope of originally filed claims, as originally it was a claim related to the composition and post- amendment, it was changed to a claim related to the compound itself.

viii) It further stated that a “composition of compound cannot be considered to be same as the compound itself. The same reasoning was reiterated for addressing the appellant’s response to objection under Section 3(e) [that the claim does not include admixture of different compounds but a single claimed compound].”

Aggrieved by the Ld. Assistant Controller’s Order dated 28-04-2017, the Appellant filed an Appeal before the Intellectual Property Appellate Board. The said Appeal was later transferred to the Hon’ble Delhi High Court, in view of abolition of the Appellate Board in 2021. The Appeal was renumbered as C.A. (Comm. IPD- PAT) 396/2022. The High Court, vide Order dated 21-05-2024, made the following observations:

1) That the Original Claim described the composition of a single compound i.e. “an organic fluorophore having a structure according to formula I”. The single compound with various moieties chemically bound together, was described with requisite formulae but did not include an admixture of different compounds.

2) That the inventiveness claimed was in the unexpected result obtained with the said compound, i.e. organic fluorophore, which could be used for an industrial application.

3) That post-amendment, the deletion of the word “composition” by the Appellant in its Amended Claims was merely to provide clarity to the claim, as it only detailed the elements of such single compound. Thus, the description of the said compound did not fall under the category of ‘admixture’ or mere aggregation of properties of the components of such compound and as a result, the Amended Claim did not fall within the vice of Section 3(e) of the Act.

4) That further, while interpreting “scope of a claim” as mentioned in Section 59(1) of the Act (Supplementary provisions as to amendment of application or specification), claims have to be read along with the complete specifications, together and as a whole, and thereby, observed as follows:

“It is quite evident from the very provision that amendments to be disallowed are those where the specifications, as amended, would claim or describe a matter, not in substance disclosed or shown in the specifications before the amendment, and any claim did not fall within the scope of the original claim(s).”

5) Further, under the Patent Act, “amendment ought to be a subset of the original claim and not beyond the original claim”. But in the present case, the Amended Claim also pertained to the description of the same compound, which was a subset of the original claim i.e. organic fluorophore.

Conclusion

Thus, based on the aforesaid observations, the High Court held that the Appellant’s Amended Claims only narrowed down the Original Claims, and did not disclose any matter which was not disclosed in the Original Claims or specifications. Hence, the Appeal filed by the Appellant was allowed and the Ld. Assistant Controller’s Order dated 28-04-2017, that disallowed the Appellant’s amendments to the Patent Application, was set aside.

Accordingly, the High Court remanded the Appellant’s Patent Application back to the Controller of Patents’ Office for fresh consideration of the Amended Claims, to be assessed on their own merits.

 

Harini Daliparthy

Lead Senior Associate

The Indian Lawyer & Allied Services

 

 

[1] Section 3 of Patent Act 1970: What are not inventions.—The following are not inventions within the meaning of this Act,—

(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant. Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;

(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;