8 judgments of the Delhi High Court, the Madras High Court and 1 other court applying Patents Act s.59(1), from 2023–2025, each with a headnote by BRB Legal.
Appeal dismissed and a refusal upheld on section 59(1). The unamended claims were directed to a method of treatment, excluded under section 3(i) and failing the industrial application requirement of section 2(1)(j), and the proposed amendments went beyond disclaimer, correction or explanation. The Court distinguished Allergan, where amendment of method of treatment claims to product claims had been allowed, on the footing that the decision there did not address whether the amendment fell within the limited permitted categories and that the amended claims concerned the same disease as the original; here the original claims and specification referred to a specific disease while the amended claims referred to none, so the amendment broadened rather than narrowed the scope.
A refusal under section 59(1) was reversed where the complete specification described the composition as a product as well as its use, so the amended product claims fell within the scope of the original PCT claims. The Regents of the University of California parameters were applied: amendment only by disclaimer, correction or explanation, no matter not in substance disclosed originally, and the amended claim within the scope of the original claim.
A section 59(1) refusal was unreasoned and fell on that ground alone. The objection was taken in the hearing notice, the applicant explained why the amendment did not offend the section, and the Controller then merely endorsed the findings in the hearing notice without discussing the explanation at all. An order that reiterates the hearing notice after an answer has been filed decides nothing.
Refusal set aside where the Controller disallowed, under section 59(1), an amendment narrowing claims from a composition comprising a compound to the compound itself. The Court held that section 59(1) disallows an amendment only where the specification as amended would claim or describe matter not in substance disclosed before the amendment, or where a claim as amended would not fall wholly within the scope of a pre-amended claim. The amendment must be a subset of the original claim, and a compound is a subset of a composition containing it. Claims and the complete specification form an integrated whole and must be read together. Amendments before grant are to be read expansively, the Ayyangar Committee Report favouring a wider scope of amendment before acceptance than after, so an amendment that merely pares down, narrows or chisels down the original claims, disclosing nothing new, is permissible.
Refusal set aside and the application remanded. On section 59 the Controller had concluded that the amendments were not allowable because they were nowhere disclosed in the pre-amendment claims, without giving reasons. Examining the claims itself, the Court found that the amended independent claim combined elements of several original claims and so fell wholly within their scope, and that the other amended claims corresponded to original claims, so the requirements of section 59 were met even on the stricter reading of its limbs. On inventive step the Controller had reproduced passages from the prior art and recorded a conclusion without examining the appellant's extensive reasons in reply to the First Examination Report and in written submissions.
A set of amended claims rejected as going beyond section 59 was restored. A claim recast as a nucleic acid construct might have looked wider than the original claims, but the particulars written into it, a sequence identity threshold, a heterologous promoter and named target pathogens, curtailed rather than expanded its scope, so the amendment did no more than disclaim, correct or explain. The requirement was satisfied even reading the limbs of section 59(1) as distinct compartments.
A route worth knowing. With the appeal pending, the applicant asked for permission to have a further amended set of claims considered, and the Registry on instructions said the Controller was willing to examine them. The order was set aside without any view on its merits and the matter remitted for the limited purpose of considering those amended claims.
Allowed and the refusal set aside for want of natural justice. Three failures were identified: re-examination was ordered under section 13(3) but no Second Examination Report was issued before the refusal; prior art D3 was cited for the first time in the hearing notice; and the application was refused on sections 10(4) and 59(1), neither of which featured in the First Examination Report or the hearing notice, with no opportunity given to address them. The court also held that filing additional documents, data and evidence to meet an objection is permissible, and that non-consideration of corresponding registrations granted in other countries, while not binding, was fatal to the order.
