Current Perspective of the Delhi High Court on permissible claim amendments in Indian Patent Applications

In India, the scope of permissible claim amendments is provided in Sections 57-59 of the Indian Patents Act (hereinafter referred to as ‘the Act’). Generally, a patent application (or any related document) can be amended during the course of the prosecution as well as after the grant, provided that said amendment is in substance disclosed or shown in the original specification, and amendment of the claims is within the scope of original claims (Section 57). An amendment may be made by way of an explanation, a disclaimer or a correction, and for the purpose of incorporation of actual fact (Section 59). However, the interpretation of the extent to which amendments are permissible in patent applications and the criteria for accepting such amendments has been an evolving matter.

Since the scrapping of the Intellectual Property Appellate Board, the High Courts in India have been tasked with adjudicating patent appeals arising from the refusal orders of the Indian Patent Office. In the last 2 years, the High Courts have passed a plethora of landmark judgments, many of which relate to the scope of permissible amendments in India.

In 2022, in the case of Nippon A and L Inc vs. Controller of Patents [2022 SCC OnLine Del 1909], the Hon’ble Delhi High Court while deciding on the permissibility of claim amendments noted that “So long as the invention is disclosed in the specification and the claims are being restricted to the disclosures already made in the specification, the amendment ought not be rejected, especially, at the stage of examination prior to grant”.

In said case, the Court referred to the legislative intent of the relevant provisions in the Ayyangar Committee Report and noted that “A perusal of the paragraphs of the Ayyangar Committee Report clearly shows that the purport and 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. The Report is also categorical in its observation that the invention before and after amendment need not be identical in case of amendment before acceptance “so long as the invention is comprehended within the matter disclosed”.

The Court further noted that “When this standard, as contemplated by the Ayyangar Committee Report, is applied to Section 59 of the Act as it stands today, it becomes clear that amendments to a patent specification or claims prior to grant ought to be construed more liberally rather than narrowly. The purport and spirit of Article 123 of the European Patent Convention is not too different”.

The Court also referred to the decision of the EPO in Konica/Sensitizing [1994] EPOR 142[2] in which the Appellate Board categorically held that the conversion and change in the category of ‘product by process’ claims to ‘process’ claims were clearly admissible.

Conclusively, the Court opined that “in the present case, the Applicant is 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. The said process is not sought to be added newly by way of an amendment. The amendment is, thus, within the scope of the patent specification and claims as originally filed”.

In February 2023, the Delhi High Court noted in the case of Societe Des Produits Nestle Sa vs. The Controller Of Patents And Designs [C.A.(COMM.IPD-PAT) 22/2022], that the claims were amended from purpose-limited product claims to composition claims to overcome the objections raised in the office action and hearing notice. However, the same was considered to be in contravention of Section 59 of the Act by the Indian Patent Office. Among others, the Delhi High Court addressed the following observations:

1. No provision in the Act, specifically bars the amendment of a patent specification at the appellate stage. However, the amendment has to fulfil the requirements under Section 59 of the Act and the consideration that has to be kept in mind is that the amended claims are not inconsistent with the original Claims in the specification.
2. The Court further noted that “If the High Court, in appeal is considering the issue of grant of patent, it should necessarily have the same powers as given to the Controller under Section 15 of the Act, which includes power to require amendment”.

The Courts have taken a liberal view in certain cases, emphasizing the importance of ensuring that the claims are restricted to the disclosures already made in the original application. The Courts have also highlighted the importance of considering the complete specifications and claims as an integrated whole, rather than treating them as separate entities.

It will be interesting to see if the decisions of larger benches of the High Courts are consistent with the above decisions. It will also be important to note whether the IPO is able to fully imbibe the above precedents while adjudicating future amendments.