In a recent decision, the Delhi High Court in Albemarle Corporation vs. The Controller of Patents [C.A.(COMM.IPD-PAT) 19/2022] reaffirmed the permissibility of amending claims during appellate proceedings under the Patents Act, 1970. The Court allowed Albemarle Corporation (“Appellant”) to introduce an auxiliary set of amended claims at the appellate stage, and remanded the matter back to the Patent Office for re-examination.
Background:
The subject application titled “Solvent Systems Having No Flash Point and Methods Using Such Solvent Systems for Dissolving Rigid Polyurethane Foams,” was filed on April 4th, 2012. The Patent Office examined the application and refused the same under Section 15 of the Patents Act, 1970.The refusal was primarily based on lack of novelty over applied prior art D4, lack of inventive step in view of prior art documents D1 to D4, and failure to meet the enablement requirements under Section 10(4) of the Patents Act.
Aggrieved by the refusal, the Appellant filed an appeal before the Delhi High Court. Interestingly, during the pendency of the appeal before the High Court, the Appellant also sought to file an auxiliary set of claims through I.A. 35045/2024. The auxiliary claim set significantly narrowed the scope of the original claims to cover only a process for cleaning polyurethane foam from an article.
Issues before the Court:
- Whether an auxiliary claim set could be introduced during the appellant stage.
- Whether the amended claims satisfy the requirement under Section 59 of the Patents Act.
Key Arguments:
The Appellant contended that the auxiliary set of claim amendments restricted the scope of the claims solely to the process aspect and was entirely within the disclosure of the original application. Opposing the request, the Controller argued that no amendments could be made at the appellate stage.
Court’s Analysis:
The Court observed that the Appellant did not contest the Controller’s refusal order itself, but confined its arguments solely to the maintainability of the auxiliary claim set submitted via I.A. No. 35045/2024. The Court examined the original claims and the auxiliary claim set as filed by the Appellant and noted that the Appellant had reduced the scope of the claim from a solvent system for cleaning polyurethane foam, to only a process for cleaning polyurethane foam from an article. The Court noted that the Patents Act does not impose any express bar on such amendments during appeal. Relying on earlier decisions including Societe Des Produits Nestle SA v. Controller of Patents, Nippon A & L Inc. v. Controller of Patents, and W.R. Grace and Co. Conn. v. Controller of Patents, the Court emphasized that the claim amendments are permissible even after grant or during appellate proceedings, as long as they comply with Section 59 of the Patents Act. Accordingly, the Court concluded that the auxiliary claim set was narrower in scope, consistent with the original disclosure, and fell wholly within the ambit of the original claims.
The Court allowed the appeal to the extent that the auxiliary claim set was permitted to be taken on record. As the Appellant had not pressed any challenge to the original refusal, the Court did not interfere with the merits of the Controller’s decision. However, the patent application was revived and the Court directed the Patent Office to re-examine the application in view of the auxiliary claim set. The matter was accordingly remanded to the Controller for fresh consideration.
Citation: Albemarle Corporation v. The Controller of Patents, C.A. (COMM.IPD-PAT) 19/2022 (Del. HC, July 7, 2025).
Article and Accessibility Reviewed by: Gaurav Mishra
