{"id":130900,"date":"2025-05-26T08:00:26","date_gmt":"2025-05-26T02:30:26","guid":{"rendered":"https:\/\/www.bananaip.com\/intellepedia\/?p=130900"},"modified":"2025-05-26T02:47:19","modified_gmt":"2025-05-25T21:17:19","slug":"patent-claim-amendments","status":"publish","type":"post","link":"https:\/\/www.bananaip.com\/intellepedia\/patent-claim-amendments\/","title":{"rendered":"Patent Claim Amendments \u2013 Court\u2019s observation of amendments to systems, methods and use claims"},"content":{"rendered":"

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 (\u201cIPO\u201d) 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 \u201cBlood Flow Control System and Method for In-vivo Imaging and Other Applications\u201d<\/em>. The Court held that the Controller\u2019s rejection, based on a narrow interpretation of Section 59 of the Patents Act, was unsustainable, and that the matter clearly required fresh adjudication.<\/p>\n

Background<\/strong><\/h2>\n

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.<\/p>\n

The claim set filed before the IPO included a method, a system, and a use\u2014submitted 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.<\/p>\n

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.<\/p>\n

A copy of the original claims and the amendments submitted by the Applicant may be viewed here<\/a><\/strong>.<\/p>\n

Applicant’s arguments<\/strong><\/h2>\n

The Applicant argued that:<\/p>\n