In a patent case between Axcess Limited v. Controller of Patents and Designs, the Delhi High Court overturned a decision by the Deputy Controller of Patents and Designs, who had rejected Axcess Limited’s patent application under Section 15 of the Patent Act, 1970. The patent application in question (No. 2427/DELNP/2009) pertained to “Bile Acids and Biguanides as Protease Inhibitors for Preserving the Integrity of Peptides in the Gut,” submitted as a national phase application following a PCT application dated October 1, 2009, with a priority date of October 1, 2008.
The patent had been refused based on Sections 59(1), 3(d), and 3(e) of the Act.
Arguments of Parties
The appellant challenged this decision, arguing that the amended claims fell within the scope of the original specifications and that the Controller had erroneously concluded otherwise. The Controller in response contended that the amendments extended beyond the scope of the original claims, thus falling outside the scope of amendments permitted under Section 59(1) of the Patents Act.
Court’s Decision
In its review, the court analyzed the scope of the original claims and the amendments made. After reviewing both, it determined that the amended claims were within the scope of the original application. Referring to a recent decision in The Regents of The University of California v. Controller General of Patents, Designs & Trademarks, the court held that the amendments were permissible as they were supported by the detailed description in the complete specification.
Accordingly, the court set aside the Controller’s rejection and remanded the case for fresh consideration. The Court directed the Controller to issue a new hearing notice and reconsider the application without being influenced by the earlier decision.
Permissible Claim Amendments
The relevant para in the case relating to permissible claim amendments reads as follows:
“10. Interestingly, recently a co-ordinate bench of this Court while dealing with similar issues qua amendment of claim[s] made in the complete specification in The Regents of The University of California v Controller General of Patents, Designs & Trademarks & Anr. [C.A.(COMM.IPD-PAT) 143/2022 dated 05th February, 2024] has held as under:-
“10. It is, therefore, evident that amendments to the original application can be made only by way of the following:-
i. Disclaimer; or
ii. Correction; or
iii. Explanation.
Additionally, the proposed amendments are tested against the following parameters:
iv. Amendment should serve the purpose of incorporation of actual facts;
v. Effect of the amendment should not allow matter not in substance, disclosed originally or shown in the specification;
vi. Amended claim of the specification should fall within the scope of the original claim of the specification.” “
Applying the same parameters to the facts involved herein, this Court has no hesitation in inferring that the amended claims in the latest complete specification filed by the appellant to the original/ initial claims made by it are well within the scope of the original PCT claims. More so, since the detailed description supports the same amendment concerning the composition as a product.”
Citation: Axcess Limited v. Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 288/2022 (H.C. Delhi Sept. 13, 2024). Available at: http://indiankanoon.org/doc/196300325/, visited on Oct. 4, 2024.
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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