Andreas Gutzeit v. Controller General of Patents

The Calcutta High Court, in Andreas Gutzeit v. Controller General of Patents  (IPDPTA/7/2024), set aside the rejection of a patent application concerning a “Blood Flow Control System and Method for In-vivo Imaging,” highlighting the necessity for a well-explained decision when assessing claim amendments under Section 59 of the Patents Act.

The patent applicant sought to amend the claims from method claims to system claims following a First Examination Report (FER), citing similar grants in other major jurisdictions.

The Patent Office rejected the application solely on the ground of non-compliance with Section 59, holding that the amendment broadened the scope from a method to a system claim, which is not permissible.

The Court found that:

• The Assistant Controller failed to provide adequate reasons or examine whether the amended claims actually fell outside the scope of the original specification.

• There was no discussion on whether the amended subject matter was in substance disclosed in the original application.

• The order did not explain how the amendments broadened or expanded the original claims, an essential requirement under Section 59.

The Court reaffirmed that amendments are only permissible if they do not introduce new matter or broaden the scope of the original claims. Any change must be supported by the original disclosure.

The rejection order was set aside as unsustainable for want of a well-explained decision. The matter was remanded to the Patent Office for a fresh decision, with a clear direction to provide an opportunity of hearing and decide within eight weeks.

Patent Offices must give detailed, reasoned orders when rejecting or allowing claim amendments, especially under Section 59. Unsupported or unexplained refusals cannot stand.

Andreas Gutzeit v. Controller General of Patents  (IPDPTA/7/2024)

Read the judgement copy here.