Nippon A & L Inc Vs The Controller of Patents

This Appeal was decided by Hon'ble High Court of Delhi in its Judgement dated 05.07.2022 passed in C.A.(COMM.IPD-PAT) 11/2022 titled as Nippon A & L Inc Vs The Controller of Patents. This Appeal has been preferred against the Order of controller of Patent, to the effect of rejecting the Patent Application of the Appellant. Para 2.

2.The facts before Hon'ble Justice Prathiba M Singh, High Court of Delhi was that the Appellant filed patent application in Japan bearing no. 2013153727 seeking patent protection for a “copolymer latex” product and process on 24th July, 2013 and corresponding to said International filing, the Appellant filed application bearing no. 201617003704 dated 2nd February, 2016 in India. Para 3.

3.A request for examination of Appellant’s application was filed on 15th March, 2017 and subsequently First Examination Report was issued on 22.11.2019. Para 3.

4. Initially the Patent was filed as product by process. When first examination was issued and the Appellant filed reply thereto dated 18.05.2020, during the the course of oral hearing , the Appellant proposed to amend the claims as process only. Subsequent thereto amended sets of claims were also filed along with written submission on 24.01.2021. Para 5.

5.The Appellant claimed that amended claims were filed in order to make the claims more clear and in order to bring definiteness in it. However the controller of Patent rejected the amended claims of the Appellant basically on the grounds that these amended claims were beyond the scope of original claims and that the same also lack inventive steps. In such a situation, the present Appeal was filed. Para 6.

6.The crux of the argument before the Hon'ble Court was that whether a Patent Application, which was filed as process by patent, can by virtue of amendments, the claims be allowed as process only, even if the subject matter claims in the nature of product only? Para 12

7.The court observed that initially the specification gives the characteristic features of the copolymer latex and the brief manner in which the process is to be carried out , hence it was product by process. The Controller of Patent issued the first examination report, where by it sought explanation from the Appellant, whether the subject matter Patent Application relate to a product patent or a process patent? In view of objections raised by the controller of Patent , the Appellant agreed to amend the claims of the Patent to process Patent only? Para 24, 27, 30.

8.The main ground of the controller in rejecting the amended claims of the Appellant was that in the original claims, process were not claimed. Hence the amended claims were beyond the scope of claims as it included the process. Para 34

9.The court observed that the specification of the subject matter Patent was detailed in which the process of emulsion polymerisation’ has been explained in the minutest form. Subsequently the unique features in the product was claimed which was resultant of the process shown in the specification. In view of objection raised by the controller, the Appellant amended the claims to change it to claims in the process. It was rejected by the controller on the ground that originally no claims were made in the process. Hence subsequently, the appellant could not have changed the claims from product to process. Para 35,36

10.The court made out distinction between a product claim and process claim. Product claim is much wider that process claim. If product claim is granted, it grants exclusive right over the product irrespective of what process adopted by the Patentee in order to achieve the product. However in a process Patent extremely limited right is granted to the Patentee only limited to the extent of process claimed in the Patent. If same product is achieved through different process , then Patentee can not extend its rights to this product. Para 37.

11. The Hon'ble Referred section 59 (1) of the Patent Act 1970, which says that disclaimer of claims are allowed. In the present case, the amendments of claims as sought for by way of disclaimer only. In amended claims , products claims were disclaimed. Para 42,44

12.The Hon'ble Court further relied upon Ayyangar Committee Report and observed that intention of this Report was to give broader and wider permissibility for amendment of claims and specification prior to the grant and restrict the same post the grant and advertisement thereof. Para 54

13. The court observed that in the subject matter case the Appellant was amending and narrowing the scope of the claims and not expanding the same. The process sought to be claimed in the amended claims has been clearly disclosed in the patent specification. Hence the controller's observation that amended claims were beyond the scope , was not held to be tenable in the eyes of law. Para 58.

14.As the Controller has passed the order only to extent of amendments in claims, it was set aside to that extent. However the matter was remanded back to the controller to decide the fate the Patent application with respect to other legal embargo , i.e. novelty, lack of inventive steps etc. Para 59,60

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389539
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