In Case Of Amendment To A Patent Specification, The Invention Before & After Amendment Need Not Be Identical: Delhi High Court

[07 July 2022] The Delhi High Court has held that amendments to a patent specification or claims prior to grant ought to be construed more liberally than narrowly. It added that the only consideration that must be kept in mind is that the amended claims are not inconsistent with the earlier claims in the original specification.
A single judge bench comprising of Justice Pratibha M. Singh opined that an 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”. In this case, the Court was primarily considering whether the claims as originally filed could have been amended into method claims by the Appellant or not.
Due to the objections raised by the Patent Office that there was no clarity as to whether the patent was for a product or for a process, the Appellant chose to restrict the patent to the ‘process’ alone. The court opined that the language used in the objections shows that the claims as originally filed were sought for “product or process”. Thus, for the Patent Office to now say that there were no process claims in the original claims and that the method claims are not supported by the description would be contrary to what is stated in the FER and the subsequent objections which were raised. The court also stated that–
“It is common understanding in the field of patents that product claims are much broader claims than process claims. A product claim, if granted, confers a monopoly on the patentee for the product itself, irrespective of the process by which the said product could have been made. However, in the case of a process claim, the exclusivity or the monopoly is restricted to the manner/method by which a particular product is manufactured and if the same product is manufactured or achieved through a different process/method, the exclusivity of the patentee cannot usually extend to such different process or to the product manufactured by the different process. When there are ‘product by process’ claims, however, the extent of monopoly depends upon the reading of the claims in each case.”
As per the court, 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 was 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 opined 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. In effect, the legislative material and the statutory provisions require that nothing new should be permitted to be inserted in the specification or claims. 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.”