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India- In a landmark ruling, the Delhi High Court clarifies the permissibility of Patent claim amendments

In what can be considered a watershed moment, the High Court of Delhi in Allergan Inc. v. The Controller of Patents, 2023/DHC/515, quashed and set aside an order of the latter (in which the Controller had refused to allow the amendments to the claims which the Appellant had sought), and remanded the matter back to the Controller for consideration of patentability of the invention afresh, whilst allowing the said claim amendments.

Background: Allergan Inc. (“the Appellant”) had filed Patent Application No. 7039/DELNP/2012 with the Indian Patent Office on 13th August 2012, with claims relating to a “Method for treating an ocular condition.” On 6th November 2017, the Controller of Patents (“the Respondent”) issued the First Examination Report (‘FER’), in which, among other objections, the claims were found to be non-patentable under Section 3(i) of the Patents Act, 1970 (as amended) (the ‘Act’), as they purportedly related to a method of treatment of human beings/animals. The Appellant then submitted a set of amended claims. Thereafter, the Respondent issued a Hearing notice, in which the said objections were reiterated, and also the said voluntary amendments were held not be not allowable under Section 59(1) of the Act on the basis that, “such type of ‘compositions of intracameral implant”’ does not have support in the originally filed claims, and further the same ‘intracameral implants’ has not been claimed either in the WIPO (International) claims or while entering in the national phase.” A Hearing was held, and the Respondent issued an Order refusing the patent application stating that the amended claims do not fall within the scope of the originally filed claims. Aggrieved by the said Order, the Appellant filed an appeal before the High Court of Delhi.

Submissions by Appellant: The original claims pertained to methods for treating ocular conditions using intracameral implants with specific and unique compositions and constituents which, are inventive. The amended claims relate to the implant themselves and are within the scope of original filed claims.

Submissions by Respondent: Section 59(1) of the Act proscribes amendment of claims where the amended claims do not fall wholly within the scope of the pre-amended claims. The complete specification accompanying the original claims would be relevant only if the amendment sought were of the complete specification. The amendment cannot be allowed merely because the amended claims are within the scope of the pre-amended complete specification, except, possibly, where the amendment was by way of a disclaimer, correction or explanation of the claim.

Decision of the High Court of Delhi: The Court held that- while examining the scope of the amended claims, the court cannot eschew, from consideration, the complete specification in the pre-amended claims. Where every detail of the implants, as contained in the amended claims, was in fact disclosed in the original claims as filed, it would be a travesty to shut out the Appellant from seeking a patent in respect of the implants merely on the ground that the amendment is not permissible under Section 59(1) of the Act. The Court then proceeded to allow the amended claims, and remanded the matter back to the Respondent for consideration of the patentability of the invention afresh.