Section 59 of The Patents Act, 1970

The claims as originally filed were sought for ‘product or process‘. Due to objections raised by Patent Office, Nippon A&L Inc. chose to amend claims to ‘process alone. It is common understanding, product claims are much broader claims than process claims. In present case, amendment of claims from ‘product by process’ to ‘process’ alone is clearly a step down.

Section 59(1) of The Patents Act, 1970 as it exists came into effect vide Patent (Amendment) Act, 2002 with effect from 20/05/2003. The power to amend has not been abridged or curtailed or narrowed but has been expanded.

Nippon A&L Inc. has sought to rely upon Konica/Sensitizing, [1994] EPOR 142 to argue, amendment of ‘product by process’ claims to ‘process’ ought to be allowed. Konica categorically holds, conversion and change in category of ‘product by process’ claims to ‘process’ claims is admissible.

A perusal of Report on the Revision of the Patents Law (1959) by Justice N. Rajagopala Ayyangar shows, purport and intention of this Report was to give broader and wider permissibility for amendment of claims and specification prior to grant and restrict same post-grant and advertisement thereof.

AGC Flats Glass Europe SA v. Anand Mahajan, 2009 (41) PTC 207 (DEL) clarified, only consideration that must be kept in mind is, amended claims are not inconsistent with earlier claims in original specification. This position of law has been reiterated in Sulphur Mills Limited v. Dharamaj Crop Guard Limited, (2021) 87 PTC 567 (DEL).

Nippon A&L Inc. is amending and narrowing scope of claims and not expanding same. The objection under Section 59(1) is not sustainable. The amended claims are directed to be taken on record and it shall now be examined in accordance with law in an expeditious manner.

Hon’ble Justice Pratibha M. Singh of Hon’ble High Court of Delhi, Nippon A&L Inc v. Controller of Patents, [C.A. (COMM.IPD-PAT) 11/2022] decided on 05.07.2022.

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