Critical 2022 high court decisions shaping the Indian prosecution landscape

Last year saw many judicial pronouncements from different high courts on various patent law issues in India. The majority of these decisions were influenced by the enactment of the 2021 Tribunal Reforms Act, which abolished the former Intellectual Property Appellate Board (IPAB) – the designated tribunal for hearing, among other things, appeals against patent application refusals and revocation of granted patents. The IPAB’s jurisdiction and its pending cases were transferred to the respective high courts in India. Due to the heavy case burden placed on the high courts, some rights holders and practitioners were sceptical about the success of this reform. However, a series of important judicial decisions in 2022 is proving that the courts are indeed up to the challenge of handling this increased case load.

This article is the first instalment in a three-part series revisiting the important judicial decisions from 2022. The majority of these pronouncements were issued by the Delhi High Court, because it was first to frame its rules for hearing IP cases and to designate special benches to facilitate faster disposal of pending ones. The other high courts are expected to follow suit and frame their procedures to start hearing IP cases soon.

Claim amendments

On 5 July 2022, in Nippon A&L Inc v The Controller of Patents (CA (COMM IPD-PAT) 11/2022), the Delhi High Court addressed the issue of permissible amendments to specifications and claims. Section 59 of the Patents Act states:

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 invention at issue was a copolymer latex. During prosecution, the applicant amended “product by process” claims to “process” claims. The Indian Patent Office (IPO) refused the application, primarily on the grounds that process claims were beyond the scope of the originally filed claims and amendments were not supported by the description. On appeal, the Delhi High Court ruled that process claims would be allowable since they are narrower in scope. The court also delved into legislative history and referred to Justice N Rajagopala Ayyangar’s 1959 “Report on the Revision of the Patents Law” to observe that “the purport and intention of this Report was to give broader and wider permissibility for amendment of claims and specification prior to the grant”. The court further agreed with the report’s observation that: “the invention before and after amendment need not be identical in case of amendment before acceptance so long as the invention is comprehended within the matter disclosed.”

In its reasoning, the court differed from the approach of many IPO examiners. They often insist that support for amendments to claims in the description is insufficient to meet the requirements of Section 59; they should be supported by pre-amended claims as well. The court, on the other hand, took the view that:

So long as the invention is disclosed in the specification and the claims are being restricted to the disclosures already made in the specification, the amendment ought not be rejected, especially, at the stage of examination prior to grant.

The court thus concluded that since process claims are supported by the description and the scope of claims was narrowed through amendments, such amendments made to the claims in the application were acceptable. The court set aside the IPO’s decision and remanded the matter back for further examination.

On 20 January 2023, in Allergan Inc v The Controller of Patents (CA (COMM IPD-PAT) 22/2021), the court gave further clarification with respect to the nature and scope of permissible amendments under Section 59 of the Patents Act. This decision was discussed in detail on the IAM platform (see “Delhi High Court challenges Indian Patent Office’s refusal order in landmark pharma ruling”).

Maintainability of divisional applications

In Boehringer Ingelheim International Gmbh v The Controller of Patents & Anr (CA (COMM IPD-PAT) 295/2022) on 12 July 2022, the Delhi High Court addressed the issue of maintainability of divisional applications. Section 16(1) of the Patents Act outlines that a divisional application can be filed at any time before the grant of a patent either by the applicant of its own volition or in order to overcome an objection raised by the relevant legal authority, on the grounds that claims of complete specification of a parent application relate to more than one invention.

In this particular case, the parent application was related to “Use of DPP IV Inhibitors”. During this application’s prosecution, the applicant made two voluntary amendments to the claims after filing its response to the first office action. The IPO objected to this amended set of claims and a hearing notice was issued, after which the applicant filed a divisional application. This consisted of claims related to a medicament and were based on the two previous amendments incorporated into the parent application. During the divisional application’s pendency, the parent application was refused on the grounds that amended claims did not fall within the scope of the originally filed claims. The IPO objected to the divisional application, indicating that its claims had already been examined – and refused – in the parent application. Following this, the applicant filed an appeal before the Delhi High Court, arguing that since the divisional application’s claims were based on the parent application’s original specification, they can be covered in the divisional application. The IPO, however, contended that a divisional application cannot be filed to cover the scope of claims rejected in the parent application. After hearing the parties’ detailed arguments, the court decided not to set aside the refusal order and opined that in this case, the divisional application was invalid. The court ruled that claims of a divisional application should be based on claims filed originally in the parent application, observing that:

under Section 16, the question of whether the claims of the complete specification relate to more than one invention i.e., a “plurality of inventions” has to be seen from the claims of the parent application. Obviously, the claims in turn, have to be based on the disclosure in the specification. However, if the invention is not contained in the claims of the parent application, the divisional application cannot be permitted to be filed solely on the basis of disclosure made in the specification, in respect of alleged inventions.

Therefore, the Delhi High Court refused to set aside the refusal order. 

Key takeaways

The decisions revisited here clarify some critical and long-standing issues in current Indian patent law practice. While the jurisprudence related to patent infringement is developing slowly, the non-functioning of the IPAB has delayed interpretation of patent prosecution issues for years. These recent judgments will hopefully set the tone for upcoming prosecution matters at the IPO. Stay tuned as we continue to analyse more critical decisions from 2022.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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