Recently, on July 05, 2022, a Single Judge Bench consisting of Hon’ble Justice Pratibha M. Singh delivered a milestone judgment relating to the amendment of patent specifications, holding that with respect to claims, an invention may be amended “so long as the invention is comprehended within the matter disclosed”. Owing to the nature of the judgment, many analysts interpreted that the invention before and after amendment may not be identical where said amendment is done before acceptance at the Intellectual Property Office (IPO), India. We are interpreting the judgment in detail to show that the conclusion drawn from the judgment delivered is misleading, and may raise incorrect perceptions about the procedure of amendment itself.

 

 

 

 

Before deliberating about the subject, let us revisit the relevant sections regarding the amendment referring to the Indian Patent Act, 1970 (as Amended) [Hereinafter “the Act”]. Section 57 and 59 inter alia deal with the amendments of a patent specification, said sections are replicated hereunder:

 

 

 

 

 

As Section 57 is “subject to the provisions of Section 59”, referring to the said section:

 

 

Therefore, it may be understood that any amendment to a specification can only be done for incorporating a fact, either to rectify a mistake that has arisen during the drafting of the patent specification that is not an error of judgment, or to provide clarity to the underlying invention of the specification through explanation and/ or disclaimer, while staying within the delineated scope of the specification at the time of filing.

 

 

However, regarding the phrase “correction” as mentioned U/S 59(1), there might be confusion regarding a similar phrase in Section 78, which says:

 

 

“78 Power of Controller to correct clerical errors, etc.:

 

 

 

Thus, although both Section 59 as well as Section 78 talk about “correction”, the phrase “correction” used U/S 59 mean “substantial correction” wherein any unintentional technical misrepresentation may be corrected, whereas, for Section 78, the meaning is to be clearly and categorically understood as “correction of only a clerical error”.

 

 

Having said so, it may as well be the case that a substantial amendment may be desirable with respect to an objection during prosecution or in relation to any provisions U/S 3 or even U/S 2(1)(j) of the Act, wherein the amendment principally constitutes exclusion unless solely in response to an objection in an office action issued from IPO, India. Regarding the subject matter, Section 59 categorically deters any expansion of the delineated scope of the specification or addition of any new subject matter, and directs that any amendment may only cover subject matter already mentioned in the specification.

 

Coming to the amendment of claims, the part of the complete specification that determines the ambit of protection, a similar logic applies. U/S 10(4)(c), it is stated that “Every complete specification shall end with a claim or claims defining the scope of the invention for which protection is claimed.” Thus, claims are the determining part of a specification regarding the aspect for which a limited period of monopoly is sought, said claims should directly be referred from the main body of the complete specification, namely, “Summary of the Invention”, “Detailed description of the invention” as well as “Example(s)”, which is/ are the culminating part of the latter.

 

 

It is clear that no new matter can be added in the specification and no new claim(s) can be introduced. However, a question remains outstanding whether new claim(s) can be added referring to any other aspect of the filed specification, absent in the filed claims.

 

 

Answering this question may require an understanding of the patent regime wherein when a specification is filed; the protection is sought for the claims, not for the entire specification. Therefore, it is a well-understood fact that anything that is not claimed is disclaimed. Thus, a disclaimed aspect of the invention can never resurface as claimed matter in a specification although that aspect is well within the delineated scope of the specification. The principle laid down by Section 59 not only bars any amendment to a complete specification introducing new claims, but also the amendment to a claim that falls wholly within the scope of the claim of the specification prior said amendment.

 

 

 

 

With this background of amendment, let us revisit the judgment delivered by Hon’ble Justice Pratibha Singh between NIPPON A&L INC. v/s THE CONTROLLER OF PATENTS. The Appellant NIPPON filed a national phase patent application through the PCT route before the IPO, India, on February 02, 2016, bearing the Indian Patent Application No.: 201617003704, titled “Copolymer Latex”, corresponding to the Japanese priority Application No.: 2013153727, International Application No.: PCT/JP2014/069608. This was examined in the manner as prescribed, and finally, a Hearing Notice was issued U/S 14 of the Act. Following the hearing and corresponding discussion with the concerned Controller, the originally filed claims were amended to deal with any outstanding objections U/S 2(1)(j), 2(1)(ja), U/S 3(d) and 3(e) of the Act. Those amendments were not allowed by the concerned Controller, who rejected the patent application on March 15, 2021. Aggrieved, NIPPON approached the Court.

 

 

Regarding this claim amendment, originally the claims were drafted as “product-by-process” claims, wherein the “product” was in the preamble of the principal claim, further characterized by “process” steps to achieve the “product”. Correspondingly, dependent claims 2 – 7 started with the “product” i.e. “copolymer latex”. The originally filed claim 1 read as:

 

 

 

 

A copolymer latex being obtained by emulsion polymerization, wherein the copolymer comprises monomer components comprising:

 

 

 

 

 

Post-hearing, the amendment replaced the phrase “product” with “method” right in the independent claim 1, as well as in all the dependent claims, and the originally filed claim 6 was cancelled with further amendment in the erstwhile claim 4 by incorporating the details of “emulsion polymerization” already existing in originally filed claim 1, by way of “explanation” to improve clarity and definitiveness.

 

 

Post-amendment, the amended claim 1 read as:

 

“A copolymer latex being obtained by emulsion polymerization, wherein the copolymer comprises monomer components comprising:

 

 

15 to 60% by mass of (a) an aliphatic conjugated dienic monomer; 6.5 to 35% by mass of (b) an ethylenic unsaturated carboxylic acid monomer; 1 to 30% by mass of (c) a vinyl cyanide monomer, and 0 to 77.5% by mass of (d) a monomer copolymerizable therewith, and wherein a difference between a moisture percentage of a latex film of 0.3 to 0.5 mm in thickness and of a 4 cm-side square fabricated using the copolymer latex as humidity-conditioned in an atmosphere of 23°C and 50% RH for 2 days and a moisture percentage of the latex film as dried in a desiccator installed with drying silica gel for 2 days is 3.0% by mass or lower; and a viscosity of the copolymer latex as regulated at a solid content concentration of 50.0% by mass with pure water being used as a disperse medium, a pH of 6.5 and a liquid temperature of 25°C is 1000 mPa•s or lower. ”

 

 

The post-amended claim 4 reads as:

 

 

“A method of emulsion polymerization for obtaining a copolymer latex,

wherein the copolymer comprises monomer components comprising:

15 to 60% by mass of (a) an aliphatic conjugated dienic monomer;

6.5 to 35% by mass of (b) an ethylenic unsaturated carboxylic acid monomer;

l to 30% by mass of (c) a vinyl cyanide monomer, and

0 to 77.5% by mass of (d) a monomer copolymerizable therewith,

wherein a difference between a moisture percentage of a latex film of 0.3 to 0.5 mm in thickness and of a 4 cm-side square fabricated using the copolymer latex as humidity-conditioned in an atmosphere of 23°C and 50%RH for 2 days and a moisture percentage of the latex film as dried in a desiccator installed with drying silica gel for 2 days is 3.0% by mass or lower; and

 

 

a viscosity of the copolymer latex as regulated at a solid content concentration of 50.0% by mass with pure water being used as a disperse medium, a pH of 6.5 and a liquid temperature of 25°C is 1000 mPa•s or lower; and

 

 

 

The concerned Controller, however, refused the grant of the application on the ground that the scope of the originally filed “product” claims claiming “copolymer latex” was changed to “method” of producing said latex, as well as the process was considered as obvious, therefore, lacking inventive steps. Other responses to the outstanding objections U/S 3(d) and 3(e) were not even considered due to the non-acceptance of the amendment U/S 59(1) of the Act.

 

 

 

 

From the decision of the Controller, IPO, India, it is evident that the amendment regarding changing the existing claim-set, drafted as “product-by-process” claims and amended to “method”/ “process” claims, were not accepted. The analysis is done before Hon’ble Delhi HC is already published, however, further analysis may be required to bring even more clarity to the rationale of the judgment in tandem with the already published ones.

 

 

Before analysing the subject, we may refer to the definition of such a claim from the Guidelines issued by the European Patent Office (EPO). The Guideline says “A claim defining a product in terms of a process is to be construed as a claim to the product as such. The technical content of the invention lies not in the process per se, but rather in the technical properties imparted to the product by the process.” Thus, it may be understood from such guideline that a “product-by-process” claim should be taken at par with a “product” claim, not a “process” claim. The understanding of the IPO was that the Applicant of the patent had outflanked the limitation drawn U/S 59 of the Act by claiming an aspect of the invention underlying the specification, which was although disclosed in the specification, but not claimed, therefore, categorically disclaimed.

 

 

IPO disregarded the amendment perceiving it be claiming of an aspect hitherto disclaimed.

 

 

However, seeing this from another angle, even adhering to the definition from the EPO Guideline as mentioned before, it should be understood that although a “product-by-process” claim is a de facto “product” claim, it is limited by the “process” or rather is defined by that particular claimed “process” or to the “technical properties imparted to the product by the process”. Therefore, the crux of the claims although lies in the “product”, the “process” defines the novelty of the “product”, thus, the “process” part can never be outrightly negated, especially when the specification discloses the “product” as well as the “process”. It must be highlighted that the “process” steps were also part of the originally filed claims.

 

 

Regarding this, the Guidelines of Examination of Patent Applications in the Field of Pharmaceuticals as issued in October 2014, and also cited during the case, says, “A claim to a product obtained or produced by a process is anticipated by any prior disclosure of that particular product per se, regardless of its method of production. In a product-by-process claim, by using only process terms, the applicant seeks rights to a product, not a process”. Adhering to this, it may be understood that when a “product” of a “product-by-process” claim is infringing an already existing “product” of the same nature and attributes, said infringement should be taken into account irrespective of the nature of the “process” used, to arrive at the same “product” i.e. a submission defending the “product” by the use of a different “process” won’t suffice. This, however, has a little relevance for this case as the the Appellant had willingly surrendered the claim on the “product” and limited their claim on the residual “process” part of the claim, said “process” part was not newly incorporated, rather existed since the claims in the specification was originally filed before the IPO, India. This can be termed as narrowing the scope of the claim to the process, rather than change of scope. Therefore, it may be understood that the effort of changing a “product-by-process” claim to a purely “process” claim should never be equated to a similar effort of changing a “product” claim to a purely “process” claim, or in other words, the distinction between a “product-by-process” claim and a pure “product” claim must be understood. This was substantiated by a cited decision of the European Board of Appeals in Konica/ Sensitizing [1994] EPOR 142, wherein the Board decided that whenever a “product-by-process” claim is amended with a restriction only to the “process”, the said amendment may be allowed Under Article 123 of the European Patent Convention (EPC).

 

 

 

Therefore, in the first aspect, it may be concluded from Justice Pratibha Singh’s judgment that an amendment should only be within the delineated scope of the specification filed with no new matter(s) added.

 

 

Secondly, an amendment may be allowed when an aspect of a claim or claim-set is sacrificed while a residual aspect may be maintained.

 

 

Thirdly and most importantly, a distinction should be drawn while examining a “product-by-process” claim, a “product” claim, and a “process” claim, and although “product-by-process” claims are generally considered as de facto “product” claims, yet the scope of these two types of claims are different as the “process” part adhering to the “product” disclosure may limit the scope of the “product” by allowing protection only to such products derived from the claimed process as described in a “product-by-process” claim. Further, when in a conflict between a patented “product” and the replica of said patented “product” produced by a particular “process” as detailed in a “product-by-process” claim, the former stands firm negating any right to the latter irrespective of detailed disclosure of a particular process or any sort of optimization or standardization thereof.

 

 

However, when a “product-by-process” claim is converted to “process” only, the conversion is allowed subject to “sufficient disclosure” of the “process” in the specification.

 

 

Thus, the takeaway from the judgment may have nothing to do with narrowness or broadness in terms of allowing amendments, but rather assigning a hierarchy concerning the underlying subject for which the patent protection is sought. Applying this logic, it appears that the Hon’ble Court has metaphorically approved that a “product-by-process” claim may be amended to a “process” claim, whereas the opposite seems not a possibility. In this case, the scope of the claim-set has been narrowed down by sacrificing the “product” part outrightly; therefore, the amendment was acceptable to the Hon’ble Court. In sum, the Hon’ble Court has not concluded that the invention before and after amendment need not be identical, rather, sticking to the known principle, it allowed an amendment when the scope of the sought protection is drastically reduced. The Hon’ble Court further merely set aside the Controller’s decision, and directed disposal of the impugned case by or before 6 months from the date of judgment, after a thorough examination of the objections regarding patent-eligibility and patent-ability as per the Act.