Delhi High Court adopts purposive interpretation while allowing amendment of ‘Method’ Claims to ‘Product’ Claims

On 20 January 2023, in the matter of Allergan Inc. v The Controller of Patents [C.A.(COMM.IPD-PAT) 22/2021], the IP Division of Delhi High Court, while setting aside an Order of the Controller of Patents, adopted a purposive interpretation to expand the scope of claim amendments under the Patents Act and allowed the amendment transforming ‘method’ claims to ‘product’ claims.

In this matter, a PCT National Phase Application (No. 7039/DELNP/2012) was filed in India with 20 claims – all method claims for treatment of ocular condition (glaucoma) using biodegradable sustained release implants. All 20 claims relate to ‘method for treatment’ of the ocular condition in human beings. Claims for method of treatment are not considered an invention and therefore not allowed in India under Section 3(i) of the Patents Act. Accordingly, during the examination of the application, the Controller raised an objection refusing all the claims under Section 3(i) of Patents Act. To overcome the objection, the Applicant filed a request for voluntary amendment of the claims wherein 20 method (for treatment) claims were reduced to 5 product claims for an “intracameral implant”. The Controller relied upon Section 59(1) of the Patents Act to refuse the request for amendment of ‘method’ claims to ‘product’ claims on the ground that the amended (product) claims do not fall wholly within the scope of the unamended (method) claims. Section 59(1) of the Patents Act, in the relevant part, reads as below:

Section 59(1): “[N]o 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.” (emphasis supplied)

While refusing the request for amendment, the Controller also pointed out that the product claims (for “intracameral implants”) had not been claimed either in the PCT Application or while entering national phase in India. Accordingly, since the amendment was not allowed, the Controller refused the patent application on this ground only (viz. without discussing other grounds of objection). The Applicant filed an appeal against the Order of the Controller before IP Division of Delhi High Court.

In the appeal, the Applicant submitted, inter alia, that the claimed method for treatment of ocular conditions involved the use of intracameral implants and since these implants have unique compositions and constituents, they are themselves inventive and should be allowed to be protected. The Applicant also placed reliance upon the relevant parts of the complete specification which specifically disclosed and described these implants, independently of the method, and provided support for the amended (implant) claims. The Controller’s counsel, on the other hand, while placing reliance on Section 59(1) submitted that where the amendment sought is of the claims, all that has to be seen is whether the scope of amend claims falls squarely within the scope of the original (unamended) claims, and that the amendment cannot be allowed merely because the amended claims are within the scope of the pre-amended complete specification.

While preferring a purposive interpretation over literal construction as the golden rule of interpretation, the Court ruled against dichotomizing the claims and the accompanying specifications. While rejecting the Controller’s view on Section 59(1) as “hyper-technical”, the Court observed that “claims and complete specifications in a patent have to be read together and as a whole. The claims have to be understood in the light of the complete specifications. They form an integrated whole, and cannot be treated as two distinct parts of one document.” The Court further held that the “scope of a claim” in the concluding part of Section 59(1) would require “taking into consideration the complete specifications of the pre-amended claim, and not merely a textually cabined reading of the pre-amended claims themselves, de hors the complete specifications.” Accordingly, as per the Court, the complete specification needs to be read in conjunction with a claim to identify the scope of the claim under Section 59(1).

The Court further observed that in this case the amended claims were in respect of the very same implants for the method of use of which the original claims were filed and every detail of the implants, as contained in the amended claims, was disclosed in the original claims as well as in the complete specification originally filed. In light of this, the Court opined that if the implants are indeed inventive, the Applicant ought to be given a chance to have the implants patented, and the Controller should not shut out the Applicant on the tenuous ground under Section 59(1).

While addressing Controller’s contention of product claims not being included in the PCT Application, the Court observed that: “Different countries have, however, different patent regimes, and it would be impractical, nay impossible, to expect that the claims in the original PCT application, as filed (in this case, in the US), would be patentable in every designated country.” The Court further observed that since as per Section 138(4) of the Patents Act the PCT Application designating India (with its title, description, claims and drawings) is deemed to have the effect of filing patent application in India, there is no occasion for the Applicant to insert the product claims at the time of entering national phase either. Accordingly, the Court also rejected this as ground for refusing the amendment. Accordingly, after allowing the amendment of claims, the Court remanded back the case to the Controller for examining the patentability of the amended claims.

Earlier, in July 2022, in another similar matter (of appeal from an order of Controller)[1], the Delhi High Court had allowed amendment of product-by-process claims to process claims under Section 59(1) of the Patents Act. In that matter, the Delhi High Court observed that even though the subject matter of claims is changed from product to process, since the amendment resulted in narrowing the scope of the claims (instead of expanding), the amendment satisfies the requirement under Section 59(1) of the Patents Act.

In a more progressive move in the present matter, the Court specifically adopted the purposive interpretation of the claim amendment provisions, which will inherently expand the scope of claim amendments available to inventors under Section 59 of the Patents Act. Also, the observations made by the Court in the order will also pave the way for inventors to adopt more meaningful, constructive, and expansive strategies towards amendment of claims while prosecuting patent applications in India.

[1] Nippon A&L Inc. v The Controller of Patents, C.A.(COMM.IPD-PAT) 11/2022.