The Delhi High Court, in a recent ruling dated May 21, 2024, vindicated Honeywell International Inc.’s appeal challenging the refusal order issued by the Assistant Controller of Patents and Designs on the grounds of contravening principles of natural justice and arbitrariness.
In its decision, the Court emphasized the need to consider claims in conjunction with the complete specifications as outlined in Section 59(1) of the Patents Act, 1970. The amendments made by Honeywell were found to be within the boundaries of the original claims, leading the Court to overturn the refusal order. This decision underscores the importance of fairness and adherence to legal principles in patent matters. It sets a precedent for thorough examination and consideration of claims, ensuring that applicants are treated justly and that decisions are based on merit.
Brief Facts of the Case
The patent application No. 3150/DELNP/2010, seeking protection for “Organic Fluorescent Compositions,” was filed by the appellant on May 5, 2010. The Patent Office (the Respondent) issued a first examination report (FER) on July 16, 2015, asserting that the claimed invention was non-patentable under Section 2(1)(ja), Section 3(d), and Section 3(e) of the Patents Act, 1970.
In response to the FER, the appellant submitted an amended set of claims on November 20, 2015. Subsequently, a hearing notice was issued by the patent office on December 10, 2016, objecting to the amended set of claims under Section 3(e) of the Act, stating that said claims define a mere admixture. The appellant responded by submitting a fresh set of amended claims, wherein the appellant amended the original claims from ‘composition comprising a compound’ to just ‘the compound,’ deleting the aspect of composition.
Considering the claim amendments, the patent office issued the impugned order on April 28, 2017, refusing the application on the grounds that the scope of the amended claims was beyond the originally filed claims. The patent office asserted that Form-13 filed by the appellant for said amendment also did not fall within the scope of claims before the amendment, since the subject matter of the original claims prior to amendment related to composition. The patent office further stated in the refusal order that the objection in the hearing notice was based on ‘composition claims’ rather than ‘compound claims’ and that “a composition of a compound cannot be considered to be the same as the compound itself.”
Issues
- Whether the amendments made by the appellant fall within the scope of the originally filed claims?
- Whether the impugned order refusing the amended claims was sustainable?
Court’s Analysis
While addressing this matter, the Court initially conducted a thorough comparison of the claims both before and after the amendment. The Court observed that the appellant had originally claimed a composition comprising an organic compound, as part of a product patent. The appellant had filed Markush claims, claiming a composition comprising an organic fluorophore having a structure according to formula I. The subsequent claims, as originally filed, further detailed the various components of Formula I. The comparison of claim 1 before and after amendment showed that the original claim for a composition comprising the organic compound had been simply narrowed down to the claim for the organic compound itself. It was observed that formula I was the same and therefore the compound itself, and there was no different compound that had been claimed. Just the word “composition” had been deleted. It was observed that the deletion of the word “composition” by the appellant was merely to provide clarity to the claim. Upon further analysis, it was noticed that claim 1 delineated a single organic compound through its several different components that were chemically linked together. The Court further observed that said claim clearly did not involve mixing different compounds and therefore, it did not fall within the vice of Section 3(e) of the Act.
Further, the key issue to examine was whether the “organic fluorophore” referred to in the original claims and the “organic compound” in the amended claims were identical.
The provision under Section 59(1) of the Act clearly states that allowed amendments are those that remain within the scope of the original claims and do not introduce new subject matter beyond what was already disclosed in the complete specification prior to the amendment. For ease of reference, Section 59(1) is extracted as under:
“59. 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.”
The court referred to Allergan Inc. v. The Controller of Patents, 2023:DHC:515, wherein it relied upon the landmark decision of the Supreme Court in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, wherein the following observations were made:
“42. The exact ambit of the scope of a claim in a patent has been the subject of judicial decisions, to which I have already adverted. As I have already noted, the 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 claim by itself, and de hors the complete specifications which accompany it, cannot convey, to the Court, the exact scope of the claim. 43. The very use of the expression “scope of a claim” in the concluding part of Section 59(1) would, therefore, in my considered opinion and keeping in mind the avowed purpose of the Patents Act, 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. 44. While, therefore, examining whether the amended claim falls wholly within the scope of the specification in the pre-amended claim, therefore, the Court, in my opinion, cannot eschew, from consideration, the complete specifications in the pre-amended claim.”
Since it is firmly established in legal precedent that when interpreting the “scope of a claim” as outlined in Section 59(1) of the Patents Act, claims must be considered in conjunction with the entire specifications, collectively and comprehensively. The court, while addressing this issue, meticulously scrutinized the claims (particularly claim 4) in the context of the complete specification (specifically para [0020]) to ascertain the precise scope. Para [0020] of the specification reads as follows:
“[0020] In some embodiments, the composition is a pigment and consists essentially of the fluorophore (i.e., the composition does not contain solvents, carriers, or other compounds that would materially affect the composition’s luminosity or physical appearance). In certain other embodiments, the composition is a pigment and comprises the fluorophore and further comprises one or more solid additives such as a stabilizing agent, particulate matter, and processing aid including solid lubricants (e.g., magnesium stearate).”
Taking into account the provision under Section 59(1) of the Act which essentially mandates that an amendment must fit within the boundaries of the original claim and not surpass them, the Court observed that the amended claim was clearly for the compound that was part of the original claim, which described a composition including that compound.
The Court observed that amendments made in this case are only a paring down/narrowing down/chiseling down of the original claims and do not disclose any matter that was not disclosed in the original claims or specifications. Considering these facts and circumstances, the court concluded that the Assistant Controller’s statement “a composition of a compound cannot be considered to be the same as the compound itself” is counterintuitive and unsustainable.
Consequently, the impugned order was set aside, and the subject application of the appellant was remanded back for fresh consideration of the claims as amended, to be assessed on their own merits.
Conclusion
The Court issued an order with a directive that the application should be examined within three months from the date of the receipt of the order. A hearing is to be provided to the appellant within the said period.
Authored by Dr. Rukaya Amin Chowdery, Patents Team, BananaIP Counsels
Citation: Honeywell International LLC v. The Controller of Patents, C.A.(COMM.IPD-PAT) 396/2022, decided by Delhi High Court. Pronounced on 21st May 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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