INTRODUCTION
In the case of Allergan Inc. v. The Controller of Patents, the hon’ble Delhi High Court addressed important issues regarding amending patent claims under Indian law. The court’s ruling emphasized the need for modifications to adhere strictly to statutory requirements while complying with the legal requirements, a broad interpretation that promotes innovation. This ruling is significant for understanding the boundaries and flexibilities within which patent claims can be revised and interpreted under Indian patent Act.
OVERVIEW OF THE CASE
In the present case, the dispute centred around Allergan’s application for a “method of treatment” involving an intracameral implant. Initially, the application encountered objections under Section 3(i) of the Indian Patents Act (hereinafter referred to as the ‘Act’), leading to an amendment focusing on the implant as a product. However, the amended claim was rejected under Section 59 of the Act, as it did not align with the scope of the original claim.
Section 3(i) of the Act
“Any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products”.
Section 59 of the Act
(Supplementary provisions as to amendment of application or specification)
(1) No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.
(2) Where after the date of grant of patent any amendment of the specification or any other documents related thereto is allowed by the Controller or by the Appellate Board or the High Court, as the case may be, —
(a) the amendment shall for all purposes be deemed to form part of the specification along with other documents related thereto;
(b) the fact that the specification or any other documents related thereto has been amended shall be published as expeditiously as possible; and
(c) the right of the applicant or patentee to make amendment shall not be called in question except on the ground of fraud.
(3) In construing the specification as amended, reference may be made to the specification as originally accepted.
KEY TAKEAWAYS FROM THE DELHI HIGH COURT DECISION
1. Requirements for Patent Amendment:
The Court observed that the original patent application, already granted in the US, had to adhere to Section 138(4) of the Act. This section requires the international patent application to be included in the nationalized specification in India. As a result, any amendments to the patent application had to conform strictly to Sections 57 and 59 of the Patents Act, as method of treatment claims are not patentable under Section 3(i).
2. Scope of the Original Claim:
The Delhi High Court emphasized that the composition of the implant, as articulated in the amended application, was explicitly mentioned in the original claim. The Court highlighted the importance of both the claims and the complete specifications should be read together to determine whether the amended claim remains within the original scope.
3. Liberal Interpretation of Patent Law:
The Court advocated for a liberal interpretation of patent law to promote innovation. It referenced the Ayyangar Committee Report, which recommended a more flexible approach to pre-grant amendments in patent specifications or claims before grant, to support inventive progress.
CONCLUSION (AMENDING CLAIMS IN INDIA):
Amending patent claims in India requires a careful balance between following procedural regulations and promoting innovation. The present case of Allergan Inc. v. The Controller of Patents highlights the necessity for amendments to comply with specific provisions of the Indian Patents Act, including Sections 57 and 59 of the Act. Additionally, the amendments should be based on the original application as per Section 138(4). Therefore, when adjusting claims, it is essential to ensure that the modifications align with the original scope and intent, while considering the judiciary’s support for innovation and technological advancements.
