(This post has been authored by Shailraj Jhalnia. Shailraj is a third year law student pursuing B.A. LL.B. from National Law School of India University, Bangalore, with a keen interest in IP Law, Arbitration and Criminal Law. His previous posts can be accessed here.)
In what is becoming a familiar storyline at the IP Division of the Delhi High Court, another patent application has been revived and remanded back to the Patent Office after the Court permitted the applicant to amend its claims at the appellate stage. In Albemarle Corporation v The Controller of Patents, the Court set aside the Controller’s refusal of a patent for a “solvent system” for dissolving polyurethane foam. The key to this revival? The applicant, Albemarle, strategically dropped its broader claims for the solvent system (a product) and narrowed its application to cover only the process of using that system.
The High Court, following its own well-trodden path from recent decisions like Nippon A & L Inc. v Controller of Patents and Societe Des Produits Nestle SA v Controller of Patents, found this amendment perfectly acceptable. The reasoning, laid out by Justice Mini Pushkarna, is that such an amendment acts as a “disclaimer,” under Section 59, which prescribes certain conditions for amendment of patents, effectively narrowing the scope of the claims. Since the amendment did not introduce new matter and the resulting process claim fell within the scope of the originally filed claims, the Court held it satisfied the conditions of Section 59 of the Patents Act. The conditions entails a two-pronged test on amendments. First, it prohibits adding ‘new matter’ not found in the original disclosure. Second, it mandates that any amended claim must fall ‘wholly within the scope of a pre-existing claim,’ ensuring the monopoly is not expanded beyond its original boundaries. On the surface, this seems like a pragmatic and efficient way to resolve an impasse between an applicant and the Patent Office. However, as explored earlier, this line of reasoning rests on a judicial interpretation of Section 59 that appears to be at odds with the statute’s “express mandate”.
The primary critique, articulated in the above post by Amit Tailor, is that the Court’s analysis often conflates two distinct requirements of Section 59(1): i) that the amended claim is disclosed in the specification, and ii) that it “fall[s] wholly within the scope of a claim of the specification before the amendment.” It was argued that while a process may be “clearly disclosed in the patent specification,” this does not automatically mean a claim for that process was encompassed within the scope of an original claim for a product. The Court in Albemarle seems to have made a similar leap, focusing on the fact that the claims were narrowed and based on the original disclosure, without a rigorous analysis of the claim-to-claim scope requirement.
Furthermore, the very act of amending a product claim to a process claim is characterised by the Court as a mere “step down.” However, this perspective has been questioned as a “shifting of the centre of gravity” of the invention. While the scope of protection may be narrower, the fundamental nature of the claims changes. Treating this substantive shift as a simple disclaimer, as the Court appears to do in Albemarle, may not align with the strict limitations intended by the legislature.
The Albemarle order, therefore, is not just a standalone decision but the latest block in a jurisprudential tower built on precedents that themselves have been argued to be on shaky ground. These foundational cases have been critiqued for their reliance on foreign authorities like the European Konica decision, which is based on a differently worded statute, and for a selective reading of the Ayyangar Committee Report, which advocated for wider amendments in a pre-publication regime, not the post-publication one we have today.
Ultimately, Albemarle solidifies a judicial trend that prioritises flexibility and the salvage of patent applications through amendment at the appellate stage. But it leaves a crucial question hanging in the air – is this a necessary and pragmatic evolution of patent prosecution, or is the Court carving out exceptions that the plain text of Section 59 does not seem to permit? For now, it appears the door for such amendments remains wide open.