Nippon A&L Inc. v. The Controller of Patents

Relevant Acts and provisions

Patents Act, 1970

Section 57Section 59

Provisions considered: Section 59 of the Patents Act, 1970, on permissible pre-grant amendment of claims.

Brief facts

Nippon A&L's national phase application for a copolymer latex was rejected under Section 15 after the Deputy Controller held that amending the originally filed product-by-process claims into pure process claims exceeded the scope permitted under Section 59, on the footing that no process claims existed in the application as filed. The rejection came despite the Patent Office's own hearing notices having repeatedly questioned whether protection was sought for a product or a process.

Issues before the Court

1. Can product-by-process claims be amended into process-only claims without exceeding the scope of the originally filed claims under Section 59?
2. What standard governs whether a pre-grant amendment falls within the scope of the original claims?

Court's findings

The Court held that amendments made before grant must be construed liberally, drawing on the Ayyangar Committee Report's emphasis on wider pre-grant permissibility, so long as the amended claims remain comprehended within matter already disclosed in the specification and narrow rather than broaden the claims.

The Court found that the Patent Office's own examination report and hearing notices had themselves treated the scope of protection as ambiguous between product and process, so it was inconsistent for the Controller then to hold that no process claims existed in the original application; restricting the claims to the process was therefore a permissible narrowing amendment.

The Court distinguished product claims, which confer a monopoly over a product irrespective of the process of manufacture, from process claims, which are narrower in scope, and held that restricting the claims to the process was to the appellant's own detriment and could not be said to unfairly expand the earlier claims.

Decision

Appeal allowed; the refusal order was set aside and the amendment converting the claims to process-only claims was permitted.

Keywords

Claim Amendment Patent Prosecution Product By Process Claims Section 59