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Recently, the Delhi High Court, while setting aside a refusal order of the Patent Office, held that, inter alia, the Patents Act, 1970 (“the Act”) does not bar amendment to patent claims at the appellate stage, as long as the amendment fulfils the requirement of Section 59 of the Act.

Societe Des Produits Nestle SA (“Nestle”) had filed a patent application titled “Composition for use in the Prophylaxis of Allergic Disease”, which was objected on the ground that, inter alia, the claims in the application defined a method for “treatment of human body” and hence, was a non-patentable subject matter under section 3(i) of the Act.

To overcome the objection, Nestle had sought to amend the claims, which in fact, broadened the scope of protection. Hence, the Patent Office rejected the amendment request, and consequently, refused the application as well.

The Court, in the appeal filed by Nestle, considered the language of the originally filed as well as the amended claims, and noted that the subject claims are directed towards (defining) a composition and not towards of the process of treatment. The Court further noted that neither of the original or amended claims were towards the method of treatment. Since the amended claim broadened the scope of protection, the Court offered the appellant an opportunity to resort back to the originally filed claims prior to the proposed amendments, which Nestle was happy to oblige.

While the Patent Office questioned the Court’s power to allow amendment at the appeal stage, the Court observed that since, firstly, the does not bar amendment to patent claims during appeal stage, if the amendment fulfils the requirement of Section 59 of the Act, secondly, the Court hearing appeal against an order of the Patent Office has all the power of the Patent Office, including power to direct amendment, and lastly, resorting to the original claim does not amount to amendment.

The Court, accordingly, set aside the refusal order, and allowed the application to proceed further for grant.

Judgment dt. February 3, 2023 in C.A.(COMM.IPD-PAT) 22/2022 titled Societe Des Produits Nestle SA vs. The Controller of Patents and Design & Anr

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