Amendments to a patent specification and claims can be allowed at the appellate stage if they comply with Section 59 of the Patents Act.
Facts of the Case:
The appellant, Cellectis, filed Indian Patent Application No. 10437/DELNP/2015 for a method of engineering allogenic and highly active T-cells for immunotherapy. The application was published on 12th February 2016, and a request for examination was filed on 17th April 2017. The First Examination Report (FER) was issued on 13th December 2019, citing objections under Sections 2(1)(ja), 3(d), and 3(h) of the Patents Act. After hearings and claim amendments, the patent was ultimately rejected on 23rd November 2022 under Section 3(i) of the Patents Act, as the claims were deemed to involve a method of diagnosis/treatment of humans, which is non-patentable.
Issues:
Whether amendments to the complete specification and claims can be made at the appellate stage before the High Court?
Reasoning of the Court:
The Court analyzed whether amendments to the complete specification and claims were permissible under Section 59 of the Patents Act, 1970. The following three requirements under Section 59 were examined:
Nature of the Amendment: The amendment must be in the form of a disclaimer, correction, or explanation. The appellant’s amendments removed references to "method of treating or preventing cancer or infections in the patients", which was considered a valid disclaimer. The inclusion of "derived from a healthy donor" in claims 1 and 2 was classified as a correction.
No Introduction of New Subject Matter: The amendment must not introduce any matter not originally disclosed in the specification. The Court found that the amendments did not add any new subject matter beyond what was already disclosed in the original specification.
Scope of Claims: The amended claims must remain within the scope of the original claims. The Court observed that the scope of the invention remained unchanged as the modifications were only clarificatory in nature and did not expand the original claims.
The Court relied on two judgments to support its conclusion:
Societe Des Produits Nestle SA v. Controller of Patents and Designs & Anr., 2023 SCC OnLine Del 582 – This judgment held that the High Court, while hearing an appeal against a refusal order passed by the Controller, has the same powers as the Controller under Section 15 of the Patents Act, which includes the power to require amendments.
Opentv Inc. v. Controller of Patents, 2023 SCC OnLine Del 2771 – This case confirmed that amendments at the appellate stage are permissible as long as they comply with Section 59. It also clarified that whether the amendment is directed by the Court or proposed by the applicant, it must remain within the original claim scope.
The appellant modified the claims to remove references to treatment and introduced disclaimers to ensure compliance with Section 59. Since the amendments did not introduce new subject matter or extend the scope of the original claims, they were considered valid.
Decision:
The Court allowed the amendment application, permitting the modified claims and amended specification to be taken on record. The matter was listed for further consideration regarding whether the amendments overcame the objections under Section 3(i) of the Patents Act.
Law Point Settled:
Amendments at the Appellate Stage: Amendments to a patent specification and claims can be allowed at the appellate stage if they comply with Section 59 of the Patents Act.
Case Title: Cellectis Vs. The Assistant Controller of Patents and Designs
Date of Order: 28th February 2025
Case Number: C.A.(COMM.IPD-PAT) 6/2023
Citation:2025:DHC:1466
Court: High Court of Delhi
Hon'ble Judge:Hon'ble Justice Shri Justice Amit Bansal
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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
