In JFC Steel Corporation v. The Controller of Patents, the appellant was challenging the Controller’s decision to refuse the patent application (279/DEL/2015) for lack of inventive step u/s. 2(1)(ja). The patent application related to a “method of activating a continuous annealing furnace for continuously annealing steel sheets”, thereby shortening the time period taken to stabilize the dew point of the in-furnace atmosphere.
Among other objections raised, the Controller argued that the claims submitted by the appellant were “broad” which were not substantiated by the specifications of the patent. As a result, the claims failed to adequately disclose the best method of performing the invention, which would enable a PSITA to practice the invention. (Sec. 10)
Under Section 10, a patent can be declared invalid due to insufficient disclosure or lack of enablement. (here) Patent bargain, as Swaraj and Praharsh explain, requires that a patentee, in return for the monopoly provided, discloses the invention so that the society can benefit from it after the expiry of the monopoly period.
The Court, finding merit in the Controller’s submission, observed that the specifications in the patent application did not support the broad claims relating to hydrogen concentration. Therefore, the present invention suffered from insufficient disclosure or lack of enablement. The Court allowed the appellant to amend the application and adduce additional data and evidence in support of the claims.
The Court made detailed observations on the guiding principles for amendment to claims. It observed that an amendment to a patent application can only be made to refine the claims or provide clarity on the scope of the invention. However, such amendments cannot be used to add “new matter” or extend the original scope of the application. It has to be strictly clarificatory and not additory, tending to broaden the original scope of the invention.
Praharsh, in this post, discussed an order of the Controller which had held that- “any new amendments to the claims cannot exceed the scope of the lastly amended claims.” There, he pointed out two earlier decisions of the DHC on claim amendments- Nippon and Allergan. In Nippon, the Court said that an amendment u/s. 59 to a pending application has to satisfy four conditions-
- amendment is by way of disclaimer, correction or explanation;
- amendment has to be for the purpose of incorporation of actual facts;
- the amendment ought not be to amend the specification or describe any matter which was not disclosed in substance or shown in the originally filed specification; and
- amended claims have to fall within the scope of claims as originally filed
Citing the Ayyangar Committee report, Nippon observed that the report supported “broader and wider permissibility for amendment of claims” as long as it was consistent with earlier application.
In Allergan, the scope of the third condition (extracted above) was discussed. It held that u/s. 59(iii), when an amended claim does not fall within the scope of the pre-amended claim, it will not be allowed. The Court observed that there is a distinction between amendment to an application pre-grant and post-grant. Pre-grant amendments, it held, ought to be construed more liberally whereas an amendment post-grant should be construed ‘narrowly.’ Another decision of the DHC, Boehringer, also observed that it is settled law that amendments beyond the scope of the claims and specifications are not permissible.
However, the debate has been around what should be considered “beyond the scope”.
This post highlighted how the jurisprudence on claim amendments is ‘confusingly evolving.’ On one hand, it pointed out, Nippon and Boehringer refused to allow any amendment which was not mentioned in the claims even if it was well-supported in the specifications. On the other, Allergen allowed amendments which at least found support in the specification. The amendment, according to Allergen would be allowed as long as the details of the amendments were forthcoming in either the claims or specifications.
This case does not implicate these complicated questions. Here, the appellant’s amendments are limited to providing additional evidence and data in support of the claims. A simple additive amendment to add further support for the claims is hardly going beyond the scope of the original applications. Therefore, in terms of jurisprudential value, the case hardly adds any value to the debate on claims amendment.
As highlighted, in the present case, the appellant made broad and wide claims which were not supported by the specifications. An earlier case of the DHC, though not entirely relevant to this case, made interesting observations on the issue of filing wide and sweeping claims. In AGC Flat Glass Europe SA Vs. Anand Mahajan, the Court observed that a patentee, who makes wide and sweeping claims and thereby enjoys monopoly over such claims, cannot be allowed to later amend the claims and make the patent more secure. Further, if it could be proven that the patentee was aware of such an objection but still did not amend to rectify the defect, an amendment later will not be allowed. However, if there is no evidence that the patentee was aware of the defect or that he made use of an unjustified wide monopoly to gain an unfair advantage, the amendment will be allowed.
Although, in this case, the patentee did not have an opportunity to exploit the monopoly over the claims (the application was refused), AGC Flat Glass provides a word of caution against unduly wide claims which might later lead to invalidity of the patent.