Delhi High Court explains the legal interpretation of Section 59 within the context of a disclaimer
In the world of patents, the importance of claim specifications cannot be overstated. These claims define the boundaries of the invention for which protection is sought. An applicant can adjust the scope of protection by modifying the claims, but they don't have unlimited freedom to do so. The legendary Ayyangar Committee Report from 1959 lays down the ground rules, stating that an amendment to the claims should be evaluated by comparing the scope before and after the amendment. It's crucial to remember that an amended claim should not broaden the scope of the original claim.
It's often assumed that adding limitations to certain features in the original claim narrows its scope. In such cases, adding these limitations to the original claim's features serves as a disclaimer, and it's acceptable to allow. Conversely, it's not accurate to say that adding features to the claims will always broaden the scope, making it disallowable in all situations.
Recent rulings from the Delhi High Court reinforce this perspective while interpreting provisions of Section 59 of the Act. In a momentous decision on May 8, 2023, the court allowed certain features to be added to the principal claim, effectively limiting the claim's scope. This ruling set aside the Controller's rejection under Section 59(1) of the Act.
The case in question involves a data processing device and method application filed by Sony Corporation in May 2013. The application was a national phase of an international application, and it claimed priority from a Japanese patent application. The First Examination Report was issued in August 2019, prompting the applicant to file a detailed response and modify the claims in line with the corresponding EP application.
During the oral hearing, the applicant further amended the claims. On February 16, 2022, the applicant made additional amendments to claims 1 to 8, aligning them with the independent claims 4 and 10 of the corresponding European Divisional Patent. European Patent no. EP3429084 (B1) was granted on a EP divisional application derived from the main EP application, which is a counterpart to the subject application.
Initially, the original Indian application corresponded to both the main EP application and the EP divisional application. However, after the final amendment, the applicant decided to abandon claims corresponding to the main EP application and solely pursue claims corresponding to the EP divisional application. The Controller rejected the application, arguing that the amended claims exceeded the scope of the original claims, primarily because the amended claims resembled the divisional EP patent rather than the parent EP patent, which is the Indian application's counterpart.
The Controller's decision was appealed before the Delhi High Court, and Judge Amit Bansal ruled in favor of the applicant. The judge confirmed that no negative inferences could be drawn against the applicant because the amended claims resembled the granted EP claim of the divisional application. When an invention encompasses multiple inventive concepts permitted under Section 10(5) of the Act, the applicant has the freedom to either discard or file a divisional application, choosing one of the inventive concepts.
The Delhi High Court's ruling echoes the observation made in the AGC Flat Glass Europe case (2009) that amendments limiting the scope of the specification to a sub-combination that was within the original claim would be a disclaimer (which can be allowed), and the absence of an appendant claim in the original document to such sub-combination cannot, in itself, be a reason for refusing the amendment.
In essence, the law treats the narrowing or crystallization of claims differently, granting more latitude for claims to be made more specific and precise. This decision is significant because it reaffirms the judiciary's stance on claim amendment through the doctrine of disclaimer, reinforcing an applicant's right to add new features to the claims from the disclosure if such addition narrows the claimed invention's scope. This ruling will also serve as valuable legal precedent for applications in various stages of prosecution facing similar claim amendment issues.
- In the world of patents, the importance of understanding claim specifications, which define the boundaries of the invention for protection, is crucial.
- An applicant can adjust the scope of protection by modifying the claims, but they don't have unlimited freedom to do so, as per the Ayyangar Committee Report from 1959.
- Adding limitations to certain features in the original claim can narrow its scope, serving as a disclaimer, which is acceptable.
- Conversely, adding features to the claims may not always broaden the scope, making it disallowable in all situations.
- In the realm of business and technology, recent rulings from the Delhi High Court have reinforced this perspective, allowing certain features to be added to claims, effectively narrowing the claim's scope.
- Education and self-development in the field of science and medical-conditions can benefit from general news about how the law treats the narrowing or crystallization of claims differently, providing more latitude for claims to be made more specific and precise.
