In an important order concerning claim amendments, the Controller has recently ruled that any new amendments to the claims cannot exceed the scope of the lastly amended claims. The decision was passed by Dr. S. P. Subramaniyan and concerned the patent application number 9790/ CHENP/ 2011 filed by M/s. Nippon Shinyaku Co. Ltd.
Here, the applicant originally filed 11 claims, with claims 1-3 related to crystal forms I, II, and III; claims 4-8 related to composition/product; and claims 9-11 related to methods for producing crystal forms. Then, after the FER, the applicant amended the claims to just 2- claim 1 relating to crystal form I and a dependent claim 2 relating to composition. After being served with the hearing notice, the applicant further amended the claims from 2 to 7, with claims 1-5 containing a method to produce crystal form I, while claims 6-7 related to a product comprising the crystal obtained by the above method. (Thanks to this LinkedIn post by Pooja Kharb for succinctly breaking down these amendments).
Numerous pre-grant oppositions were filed against the application. Though the order doesn’t specify which opponent raised this argument, it notes that the opponent submitted that the amendment shall fall within the scope of claims as amended last (i.e. claim pertaining to crystal form and the dependent claim) which is supported by the specification. According to them, when the applicant had deleted the method claims 9-11 in the parent application, then this should mean that they have renounced their rights over these claims. Conversely, the applicant argued that as long as the amended claims are within the scope of the originally filed claims, the amendment should be allowed. They also argued that they are not obligated to give reasons under Form 13 (submitted to amend the claims) as long as their claims are “restrictive” in nature.
The Controller was quick to point out that by the first round of amendments, the applicant had forgone the method claims and then by the second round of amendments is seeking to bring back these method claims. The Controller also reiterated that reasons for amending a claim under Section 57 (2) is a must and thus, refused to grant a patent to the applicant.
The decision adds another layer of interpretation to claim amendments after Delhi High Court’s decisions in Nippon, and Allergan (see here). While the above two mostly deal with an interplay between what’s disclosed under specification and the scope of the claim, the Controller’s present order focuses mostly on the latter and clarifies that there are limits to amend a claim and the same cannot exceed the scope of the last amended claims. The controller’s reading thus clarifies that the phrase “scope of a claim of the specification before the amendment” under Section 59 (1) would treat all the amended claims afresh as a new claim and will not allow the applicant to go back to the scope of the originally filed claims.