Summary
In the case of EMD Millipore Corporation vs Assistant Controller of Patents and Designs, the Delhi High Court held that a method for detecting biomolecules using infrared light is not excluded under Section 3(i) of the Patents Act. The Court ruled that the method does not constitute a diagnostic method and permitted the patent to proceed for grant. The Court also upheld the right of the applicant to revert to an earlier set of claims and amend claims during appeal as they fell within the scope of Section 59.
Diagnostic Method Patentability and Claim Amendments on Appeal
EMD Millipore Corporation filed an Indian patent application for a method using infrared spectroscopy to detect biomolecules in liquids such as blood, urine, or saliva. The application was refused by the Controller of Patents on the grounds that the claimed method was a diagnostic method excluded under Section 3(i) of the Patents Act. The applicant appealed to the Delhi High Court and sought to revert to an earlier set of claims while also amending them during the appeal proceedings.
Questions Before the Court
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- Does the invention fall within the exclusion under Section 3(i) of the Patents Act as a diagnostic method?
- Can an applicant amend claims during an appeal under Section 59?
- Can the applicant revert to an earlier set of claims during appeal?
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Arguments Presented By the Parties
Appellant (EMD Millipore Corporation)
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- Submitted that the invention is an analytical tool using infrared spectroscopy and not a diagnostic method.
- Argued that the method can be applied to environmental and industrial samples, not just human fluids.
- Asserted that no diagnosis or medical decision-making is involved.
- Requested to revert to an earlier claim set and amend the claims during appeal.
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Respondent (Patent Office)
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- Argued that detection of biomolecules in bodily fluids amounts to diagnosis, which is excluded under Section 3(i).
- Opposed the request to revert to earlier claims and objected to amendments filed during appeal, citing non-compliance with Section 59.
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Court’s Analysis
On Section 3(i): Not a Diagnostic Method
The court observed that Section 3(i) excludes methods of diagnosis for treatment. It noted that the invention involves a process for detecting biomolecules using infrared radiation, but does not involve interpreting the results or diagnosing a disease. According to the court, the claims do not involve any deductive or clinical steps typically associated with diagnosis. The court referred to international standards, including the EPO’s G 1/04 decision, and concluded that the invention stops at data acquisition and does not involve attributing meaning to the data.
The court stated that the presence of biological samples alone is not sufficient to classify the invention as a method of diagnosis under Section 3(i).
On Section 59: Amendments Permitted on Appeal
The court held that amendments to claims can be made during an appeal under Section 59, provided they do not introduce new matter. According to the court, such amendments must fall within the scope of the original specification and must not add new subject matter.
On Reverting to Earlier Claims
The court recognised the right of an applicant to revert to a previously examined claim set during appeal. It held that there is no restriction under the Patents Act that prohibits reversion to an earlier claim set, especially when the same was on record before the Patent Office. The court also stated that an applicant is not bound to continue with only the last set of claims submitted during prosecution, and that amendments may be made on appeal.
Findings
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- The Court held that the invention is not excluded under Section 3(i) of the Patents Act.
- The Court allowed the applicant to revert to an earlier set of claims filed in 2017.
- The Court held that amendments during appeal are permissible if they comply with Section 59.
- The Court directed that the patent application be taken forward for grant.
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Relevant Paras
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- Para 59: “In the opinion of the Court, the claimed invention… does not involve any attributing of meaning to the test results.”
- Para 65: “The test in Section 3(i) is not satisfied merely because the sample may be a biological fluid.”
- Para 75: “There is no bar in the Patents Act… against reverting to an earlier claim set.”
- Para 83: “The amendments… do not introduce any new matter and are thus compliant with Section 59.”
- Para 85: “The patent application may now proceed for grant in accordance with law.”
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Case Citation: EMD Millipore Corporation v. Assistant Controller of Patents and Designs, C.A. (COMM.IPD-PAT) 7/2021, decided on 9 October 2025. Available on https://indiankanoon.org/doc/81278453/ (Visited on 26 October 2025)
Disclaimer: This case blog is based on the author’s understanding of the judgment. Understandings and opinions of others may differ. An AI application was used to generate parts of this case blog. Views are personal.
