Calcutta High Court Sets Aside Patent Rejection Over Claim Amendment | Controller Failed To Explain How Amendments Broadened Original Claim | Orders Fresh Decision within Eight Weeks
Safiya Malik
The High Court of Calcutta Single Bench of Justice Ravi Krishan Kapur held that the impugned order rejecting the appellant’s patent application was unsustainable and set it aside. The Court directed the Controller of Patents to decide the matter afresh within a period of eight weeks from the date of communication of the order and after granting an opportunity of hearing to the appellant. The Court clarified that there had been no adjudication on the merits of the claim and that all points were left open.
The present appeal arose against an order dated 1st April 2024, which rejected a patent application titled "Blood Flow Control System and Method for In-vivo Imaging and Other Application" under Section 15 of the Patents Act, 1970. The patent application, numbered 201637000002, was initially filed on 1st January 2016, carrying an international filing date of 14 October 2014 from application no. PCT/CH2014/000151, claiming priority from Switzerland. An earlier related application numbered 1787/2013 had been filed on 18 October 2013.
The invention pertained to blood flow control systems and imaging technologies intended for human body diagnostics, particularly for x-ray and tomographic imaging systems. The appellant contended that such imaging techniques require improved detection of blood flow-related conditions, typically enhanced by the administration of contrast media. The invention further proposed a novel method involving a respiratory resistance device to control and standardize the distribution of substances in the human body during imaging procedures.
The appellant asserted that independent claims nos. 1, 18, and 26 related to the method of operation, the system applying the method, and the system’s use, respectively. It was contended that the subject patent had already been granted in five jurisdictions: the European Union, China, Brazil, the USA, and Russia.
The appellant submitted that the claim was amended, and a response to the First Examination Report (FER) was duly filed. However, the patent application was rejected solely on the ground of non-compliance with Section 59 of the Act. According to the appellant, the impugned order failed to properly assess whether the amended claims fell within the scope of the unamended claims. The appellant argued that despite the Controller acknowledging references to a contrast dye system in the original claim, the impugned order did not address this issue. It was further contended that the original claims 18 and 27 expressly stated that the system was "for use in a method according to any of the preceding claims."
Conversely, the respondent contended that the amendment attempted by the appellant was not permissible under Section 59 of the Act. The amendment sought to convert a method claim into a system claim, which would fundamentally alter the nature of the original claim and broaden the invention's scope. The respondent maintained that such a change was expressly prohibited and that the impugned order did not warrant any interference.
Section 59 of the Patents Act restricts amendments to applications by way of disclaimer, correction, or explanation, provided that the amended claims fall wholly within the scope of the claims before the amendment. The respondent argued that the proposed amendments violated these statutory provisions.
The Court noted, "On a perusal of the original claims filed by the appellant, it appears that the claim was directed towards the steps involved in image requisition and the claim was a method claim." The Court referred to the originally filed claims and the proposed amendments, stating the key differences.
Quoting directly from the judgment, Justice Kapur stated, "Whether system to method or product to process, one has to examine the original specification and ascertain the intrinsic worth of the invention vis-a-vis the proposed amendment." The Court observed that the impugned order lacked reasoning and failed to examine whether the proposed amendments broadened the scope of the original claims.
The Court referred to several precedents, including Nippon A & L Inc. vs. Controller of Patents (2022), Open TV Inc. vs. The Controller of Patents and Designs (2023), and AGC Flat Glass Europe SA vs. Anand Mahajan (2009). It was observed that the settled legal position is that while narrowing down a claim is permissible, any broadening or expansion of claims is not.
Justice Kapur recorded, "The impugned order does not decide whether the invention is comprehended within the matter disclosed or not. There can be no straight jacket formula in such cases." The Court further held that the Assistant Controller did not provide any reasoning for concluding that the conversion of a method claim into a system claim was beyond the scope of the original claims.
The Court stated that the question of whether the proposed amendments introduce new matter or merely provide clarification should be evaluated on the facts and circumstances of each case. Referring to the decision in Richardson-Vick Inc’s Patent (1995), it was recorded, "I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification."
The Court noted that the impugned order did not engage with this test or provide any analysis of how the proposed amendments impacted the scope of the original claims.
The Court concluded, "In view of the above, the impugned order is unsustainable and is set aside. The matter is remanded to the Controller to be decided afresh in accordance with law within a period of eight weeks from the date of communication of this order and after granting an opportunity of hearing to the appellant."
The Court clarified that "there has been no adjudication on the merits of the claim and all points are left open."
Advocates Representing the Parties
For the Appellant: Mr. Adarsh Ramanujan, Advocate; Ms. Survi Mahajan, Advocate; Mr. Abhishek Sikdar, Advocate; Mr. Sahil Dey, Advocate; Ms. Sayanika De, Advocate.
For the Respondents: Mr. Ajay Gaggar, Advocate; Ms. Preeti Jain, Advocate.
Case Title: Andreas Gutzeit vs. The Controller General of Patents, Designs and Trademark and Anr.
Case Number: IPDPTA/7/2024
Bench: Justice Ravi Krishan Kapur
[Read/Download order]
