Summary
In a recent ruling, the Calcutta High Court set aside a rejection order concerning patent claim amendments, focusing on changes to systems, methods, and use claims. The Court criticized the Patent Office's narrow interpretation of Section 59 and emphasized the need for a substantive, claim-by-claim assessment.
Claim amendments under section 59 of the Indian Patents Act are a common part of patent prosecution strategies adopted by Patent Applicants. The Patent Office (“IPO”) has, however, generally adopted a narrow interpretation of this section time and again. In yet another such instance, the Calcutta High Court set aside an order by the Controller General of Patents that rejected a patent application titled “Blood Flow Control System and Method for In-vivo Imaging and Other Applications”. The Court held that the Controller’s rejection, based on a narrow interpretation of Section 59 of the Patents Act, was unsustainable, and that the matter clearly required fresh adjudication.
Background
Andreas Gutzeit filed an application before the Indian Patent office on 1 January 2016 with the Application No. 201637000002. The application claimed priority from a Swiss PCT application dated 14 October 2014, relating to a system and method for improving imaging quality by controlling the distribution of contrast agents using respiratory resistance devices. The invention integrates contrast dye administration with respiratory control during imaging procedures, such as CT and MRI scans, to enhance image clarity of blood flow and internal body structures.
The claim set filed before the IPO included a method, a system, and a use—submitted under independent claims 1, 18, and 26 respectively. A patent for the same invention had already been granted in five major jurisdictions including EU, China, Brazil, USA, and Russia at the time of prosecution of the application before the IPO.
The IPO issued a First Examination Report (FER) on 9 November 2020, and the Applicant responded to the FER along with amendments to the claims. Pursuant to a hearing in 2023, the application was rejected on 1 April 2024 by the IPO on the ground that the amendments violated Section 59 of the Act and that the amended claims fell outside the scope of the original disclosure.
A copy of the original claims and the amendments submitted by the Applicant may be viewed here.
Applicant’s arguments
The Applicant argued that:
- The amendments were filed in accordance with the Act and warranted re-examination, which the Controller failed to undertake.
- Although the Controller referred to “significant changes” and “new features,” the refusal order did not substantiate these observations.
- Original claims 18 and 27 clearly indicated that the system was “for use in a method according to any of the preceding claims,” establishing a contextual and substantive link to the original method claims.
- The Controller’s assertion that the amendments transformed a method claim into a system claim was not backed by a technical assessment of the amended claims in light of the original disclosure.
Patent Office’s Arguments
The IPO defending the refusal order contended that:
- The amendments were an attempt to transform a method claim into a system claim, which altered the scope of the invention.
- Section 59 prohibits amendments that expand or introduce subject matter not substantively disclosed in the original specification.
Court’s Analysis
The Court undertook a detailed analysis of the scope of Section 59, referring to key precedents such as Nippon A & L Inc. v. Controller of Patents, Open TV Inc. v. Controller of Patents, and AGC Flat Glass Europe SA v. Anand Mahajan. The court noted that the cases clearly established that:
- Amendments are permissible if they constitute a disclaimer, correction, or explanation.
- The amended claims must not exceed the scope of the originally filed claims.
- Broadening amendments or those that introduce entirely new matter are impermissible.
Importantly, the Court emphasized that the essence of the inquiry under Section 59 is whether the proposed amendments teach the skilled person anything materially new about the invention. The court took note of the observations made in Richardson-Vick Inc’s Patent and Vector Corp v. Glatt Air Techniques Ltd., (1995) RPC 568 to underline the principle that a third party should be able to ascertain the full extent of the claimed monopoly from the original application itself.
The Court therefore observed that the Controller had failed to:
- Examine whether the amended claims fell within the substance of the originally disclosed invention.
- Conduct a claim-by-claim comparative assessment between the original and amended specifications.
- Provide cogent reasoning on how the amendments allegedly expanded the scope of the claims.
The Court concluded that mere nomenclature changes (e.g., method vs. system) cannot form the sole basis for rejection. The intrinsic features and disclosed elements must be evaluated substantively, and not superficially.
Conclusion
Holding that the refusal order suffered from serious procedural and analytical infirmities, the Court remanded the matter to the Patent Office for reconsideration. It directed that the Controller provide a reasoned order within eight weeks, after granting the Applicant a fresh hearing.
Citation: Andreas Gutzeit v. The Controller General of Patents, IPDPTA/7/2024 (H.C. Calcutta May 15, 2025). Available at: https://indiankanoon.org/doc/10262255/.