In a landmark ruling on the allowability of claim amendments under Section 59 of the Patents Act, in a case argued by Remfry & Sagar, the Delhi High Court set aside a refusal order of the Indian Patent Office that had rejected a patent application on the grounds that the amended claims did not fall wholly within the scope of the originally filed claims. The amendment in question related to changing claims directed to method for treating an ocular condition using an implant, to the intracameral implant itself. The Patent Office’s position was that Section 59 should be read narrowly and amendments should be construed within the confines of the original claims.

The court has disagreed and held that the claims and the specification are to be read as a whole when evaluating scope of the amendments. The court observed that it “is also required to keep in mind public interest, being one of the cardinal aims of patent law, especially where the patent is pharmaceutical or therapeutic in nature.” Therefore, if the Patent Office’s interpretation was accepted, then “the result would be that the appellant would be foreclosed from seeking a patent in respect of the implants which, according to it, are a result of the appellant’s own inventiveness and which are intended to cure a wide variety of ocular ailments.” The court, after exhaustive analysis, held that sufficient proof had been put forth by the applicant to establish that the amendments were supported by the originally filed specification and claims. The matter has been remanded back to the Patent Office to accept the amendments and render a decision on novelty and inventiveness.

You can read a more detailed update here.