NIPPON VS CONTROLLER OF PATENTS 2022 4 HCC (DEL) 651

JUDGEMENT REVIEW ON AMENDING PATENT CLAIMS

PUBLISHED AS ON 09.05.2024 BY MS. HARINDER NARVAN, MS. APARNA JAIN, MS.

AASHRIKA AHUJA, MR. ATUL KUMAR AND MR. KOUSTAV BHATTACHARYA

INTRODUCTION

Sections 57 and 59 of the Patents Act 1970, have always attracted attention and wit this recent

judgement much needed clarity has been provided in the matters concerning amendment of patent

claims. In this article, we explore the case of Nippon A&L Inc. Vs Controller of Patents (2022) 4

HCC (Del) 651. The case was a landmark judgment that allowed the amendment of a “product-by-

process” claim to a “process claim”. The Delhi HC has set aside a Controller’s order refusing a patent

application and remanded the case back to the Patent Office (the “Judgement”). The Controller had

rejected the application on the grounds that the amendments to the claim(s) entered by the applicant

changed the scope of the claims and therefore not allowable under Section 59(1) of The Patent Acts,

1970 [the “Sec. 59(1)” or the “Section” and the “Act”].

FACTS OF THE CASE

The Appellant in this case, Nippon A&L Inc, had filed a patent application in Japan through PCT

seeking protection for a “copolymer latex” product and process. An application for protection of the

invention in India through Indian National Phase Entry was filed later. Upon issue of the First

Examination Report, objections relating to the inventive step under Section 2(1)(ja) of the Act, non-

patentability under Section 3(d) and 3(e) alongside an objection that the scope of protection sought for

was not clear from the wording of the claims, were raised by the Patent Office.

The appellant responded to the FER with their arguments and subsequently the Controller of Patents

issued a hearing notice under Section 14 of the Patents Act 1970.

In the hearing of the Controller of Patents, the appellant contended that the claims could be more

clearly defined if the claims were amended from “product-by-process” to a “process only”

claim. The appellant then filed a fresh set of claims omitting the product aspect of the previous claim.

However, the Controller of Patents passed an order barring the amendment of the patent application to

Nippon A&L Inc (Appellant).

The Deputy Controller of Patents rejected the amended application because:

1. The new set of claims was beyond the scope of the original claims. The claims were amended

from “product claims” about “copolymer latex” to “process claims”.

2. The amended claims lacked inventive steps.

IMPORTANT PROVISIONS OF THE PATENTS ACT

Section 59(1) of the Patents Act 1970 states that:“…no amendment of a complete specification shall be allowed, the effect of which would be that the

specification as amended would claim or describe matter not in substance disclosed or shown in the

specification before the amendment, or that any claim of the specification as amended would not fall

wholly within the scope of a claim of the specification before the amendment.”

After the objections were raised by the Patent Office, the appellant restricted the claims to only

process claims. The amendment could not have been beyond the scope of the original claims as the

new claims were made by giving up significant portions of the original claim. The restricted claims

could not be struck by Section 59 of the Act. The Appellant’s Counsel pointed out Article 123 of the

European Patent Convention and the case of Konica/Sensitizing [1994] EPOR 142 to argue that

whenever product-by-process claims are amended and the applicant restricts the claims to only the

process, the amendment is allowed under the article. The Counsel also referenced Antacor Ltd. &

Schweiger, Martin where in a similar situation the Assistant Controller of Patents, Patents

Office, Kolkata held the amendment of a “product by process” claim to a “process claim” to be

permissible.The Respondent’s Counsel argued that the meat of the matter in a “product by process”

patent is in the product itself. The primary claims are tested for novelty and inventive steps of the

product and not the process. The appellant by removing the product-related claims changes the very

nature of the claims, which is impermissible vide Section 59. The Counsel also argued that the

original claims only contained “product claims” and not “product by process” claims as originally

filed. The original focus of the application was on the product i.e. “copolymer latex” upon

which novelty and inventive steps were claimed. By requesting the present claims to be converted into

a Process claim, the appellant effectively converted a “product patent” into a “process patent”, which

is contrary to the legislative scheme of the Patent Act 1970.

THE VERDICT

On 5th July 2022, J. Pratibha M. Singh allowed the present petition by the applicant. The Court did

not provide any opinion on the objections. The amended claims would be examined on other

grounds including novelty, lack of inventive step, and non-patentability by the Patent Office. The case

became the first time that a person could amend product-by-process claims and change them into

process claims.

TIMELINE OF THE CASE:

24th July 2013: Nippon A&L Inc filed a patent application in Japan.

2nd February 2016: Application for protection of the invention in India through Indian National

Phase Entry was filed.

22nd November 2019: Objections raised by Patent Office in FER.

11th January 2021: Hearing of the Controller of Patents

24th January 2021: Nippon A&L files fresh set of claims which remove the product part of the

previous claims

15th March 2021: Controller of Patents passes an order rejecting the amended application.

5th July 2022: Verdict delivered allowing the appellant to amend the application.

12th August 2022: Controller issued a review petition hearing notice2nd September 2022: Nippon A&L filed written submission after hearing and amended claims as per

the suggestion of the controller

12th October 2022: Patent Granted

CONCLUSION

In the field of patents, it is common knowledge that a product claim is much broader than a process

claim. A product claim, if granted, effectively allows the monopoly on the product itself whereas a

process only restricts the method of manufacture of a particular product. In the present case, the scope

of protection of a “product by process” has been significantly reduced by merely claiming the process

in the claim. The copolymer latex has various features that could be claimed in the patent but the same

has been disclaimed in the amendment. Given this being a step down to the patentee, the court granted

the applicant’s petition. At Knowledgentia Consultants, we have the best patent consultants in

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