New claims, Old claims, and Claim Amendments: Section 59 of the Patents Act

In an interesting case, the Madras High Court recently clarified that when an Applicant makes amendments to claims in a patent application, the amendments do not mean that the Applicant has abandoned its earlier claims. However, the Controller is required to consider the amended set of claims, and not the old, unamended claims to make a decision on the patent application.

Facts of the case

Genomatica Inc., a US-based company filed an appeal under section 117A of the Patents Act, challenging a refusal order issued by the Controller on 5th July 2021. The Applicant filed a patent application before the Indian patent office on 12th April 2017 as a PCT national phase application bearing number 201747013084 and titled “NON-NATURAL MICROBIAL ORGANISMS WITH IMPROVED ENERGETIC EFFICIENCY”

The Application contained a total of 72 claims, of which four claims were independent. A First Examination Report (FER) was issued by the Controller on 14th January 2020. The FER contained objections under Sections 2(1)(j), 2(1)(ja), 3(b), 3(d), 10(4), and 10(5) of the Patents Act, along with six prior arts. In response to the FER, the Applicant amended the claims and reduced the total number of claims to 70, while canceling one of the independent claims and retaining three independent claims.

The Controller subsequently issued a hearing notice on 17th October 2021 in which the Controller retained the same set of objections and also relied on the same set of prior arts. The Applicant attended the hearing and submitted further amendments to the claims. In the amendments, the Applicant reduced the total number of claims to 68 and amended the independent claims in such a manner that they would depend on claim 1 of the Application, effectively retaining only one independent claim.

The Controller however refused the application stating that the amendments made to the claims exceeded the scope of the specification and were not allowable u/s 59 of the Act. Aggrieved, the patent applicant appealed.

Court’s Analysis and Findings

The Court agreed with the contentions put forth by the Appellant and noted that a refusal under Section 59 was not valid because no objection under the section was part of the hearing notice. If Section 59 were to be invoked after the final set of amendments were made by the Appellant, the right course of action would have been to issue a fresh hearing notice, and not to refuse the patent application.

The Court also observed that once the Appellant had amended the claims through its written submissions, it was implied that the applicant had communicated to the Controller that it was not falling back on its earlier claims. Therefore, if the Controller intended to make a decision on an earlier set of claims, an opportunity for a hearing should have been given to the Appellant. Ideally, the Controller should not make a decision based on a set of claims that have been amended by the patent applicant.

The Court was also quick to clarify that the term “given up amendments”, should not be construed by the Controller as if the Appellant had abandoned its earlier claims. After all, when a set of claims undergoes amendments made to the existing claims, the amended claims get superimposed on the previous set of claims, and therefore, it would not be permissible for the Controller to read something that was not before him/her.

Conclusion

In view of the above findings and observations, the Court allowed the appeal and directed the matter to be considered afresh by a different Controller and dispose the application expeditiously.

Citation: Genomatica Inc vs Controller of Patents and Designs, CMA(PT) No.4 of 2023

Authored by Gaurav Mishra, Patents Team, BananaIP Counsels

Disclaimer

The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.

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