Madras High Court
Commonwealth Scientific And vs The Assistant Controller Of ... on 4 October, 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 04.10.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(PT)/14/2023
(ORA/41/2020/PT/CH)
1.Commonwealth Scientific and
Industrial Research Organization,
Scientific and Industrial Research of Limestone Avenue,
Campbell, Australian Capital Territory, 2612,
Australia.
2.University of Zurich of Unilectra,
Technology Transfer Office,
Scheuchzerstrasse 21, Ch-8006 Zurich,
Switzerland ... Appellant
vs.
The Assistant Controller of Patents and Designs,
The Patent Office, IPR Building,
SIDCO Plot, GST Road,
Guindy, Chennai - 600 032. ... Respondent
PRAYER: Transfer Civil Miscellaneous Appeal (Patents) filed
under Section 117-A of the Patents Act, 1970, praying to (i) allow
the present Appeal and set aside/quash the impugned order dated
1/17
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24.01.2020 passed by the respondent in Indian Patent Application
No.2072/CHENP/2011;(ii) allow the said Indian Patent
Application No. 2072/CHENP/2011 and direct grant of patent in
respect thereof.
For Appellant : Mr.Shatadal Ghosh
Mr.Abhishek Jan
Mr.K.Muthuselvam
for M/S.K and S Partners
For Respondent : Mr.Rajesh Vivekanandan
Deputy Solicitor General
***********
JUDGMENT
The appellants impugn an order dated 24.01.2020 by which
amended claims 1 to 11 were rejected on the ground that they are
beyond the scope of Section 59 of the Patents Act, 1970 (the Patents
Act) and, consequently, Indian Patent Application
No.2072/CHENP/2011 was rejected.
1. The above mentioned patent application was submitted by
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the appellant along with 39 original claims. Under the First
Examination Report (FER), objections were raised under
Section 2(1)(j), various clauses of Section 3, and Sections
10(4)and 10(5) of the Patents Act. In response, the appellant
amended its claims and submitted amended claims 1 to 26
(the first set of amended claims). Significantly, original claim
1 relating to a transgenic plant and claims dependent thereon
were deleted. The first set of amended claims were based
largely on original claims 13, 14, 18 and 20. In the hearing
notice, objections were raised, once again, under Sections
2(1)(j), 3 and 10(4) and 10(5) of the Patents Act. Thereafter,
the appellant submitted 11 further amended claims (the
current set of amended claims). These claims were rejected
as being beyond the scope of Section 59 of the Patents Act.
Hence, this appeal.
3. Learned counsel for the appellant submitted that the
current set of amended claims fall squarely within the scope of the
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original claims. By inviting my attention to original claims 13, 14,
18 and 20, learned counsel contended that the current set of
amended claims are not only within the scope of the above
mentioned original claims but have considerably narrowed down
the width of the original claims. In addition, learned counsel
submitted that the said claims are well within the scope of the
complete specification. By inviting my attention to the summary of
the invention at page 43 of the appeal paper book, learned counsel
pointed out that the amended claims are described therein in
substance. Similarly, by drawing reference to page Nos.45, 53 and
65 of the appeal paper book, learned counsel contended that all the
elements of the current set of amended claims are described in
substance in the complete specification. In particular, learned
counsel pointed out that nucleic acid constructs and elements
which operably connect a promoter or enhancer element to a
transcribable polynucleotide were referred to expressly at page 65
of the paper book.
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4. Consequently, learned counsel submitted that the rejection
of the current set of amended claims by referring to Section 59 of
the Patents Act is completely untenable. With regard to the
interpretation of Section 59, learned counsel relied upon a
judgment of the Delhi High Court in Allergan Inc v. The Controller
of Patents (Allergan), 2023/DHC/000515.
5. In response to these contentions, Mr.Rajesh
Vivekanandan, learned Deputy Solicitor General, contended that
amended claim 1 of the current set of amended claims expands the
scope of original claim 18 by drawing reference to nucleic acid
construct comprising a polynucleotide. By comparing and
contrasting amended claim 1 with claim 18 of the original set of
claims, Mr.Rajesh Vivekanandan submitted that original claim 18
was limited to an isolated and/or exogenous polynucleotide
whereas amended claim 1 pertains to a nucleic acid construct
comprising a polynucleotide. Besides, Mr.Rajesh Vivekanandan
submitted that the original set of claims were amended pursuant
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to the FER by deleting reference to the promoter, whereas the
rejected claims make reference to the polynucleotide being linked
to a heterologous promoter. Therefore, learned counsel submitted
that the impugned order contains no infirmity and that it is in
conformity with Section 59 of the Patents Act.
6. By way of rejoinder, learned counsel for the appellant
pointed out that amended claim 1 should be read as a whole. If so
read, it is evident that the monopoly claim is restricted to a nucleic
acid construct comprising a polynucleotide, wherein the
polynucleotide is operably linked to a promoter and wherein the
pathogens (puccinia graminis f. sp. tritici, puccinia striiformis or
puccinia recondita f. sp. Tritici) are named. Thus, learned counsel
submitted that the monopoly claim has been considerably whittled
down in amended claim 1.
7. The case turns largely on the interpretation of sub-section
(1) of Section 59, which is set out below:
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59.Supplementary provisions as to
amendment of application or specification-
(1) 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.
Sub-section 1 may be divided into three limbs. The first limb
contains the overarching limitation that an application for a patent
or a complete specification or any document relating thereto shall
not be amended except by way of disclaimer, correction or
explanation subject to the further caveat that it shall be permitted
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only for the purpose of incorporation of an actual fact. The ambit
of the first limb is wide and applies to all amendments relating to a
patent application, including to documents filed in relation thereto.
The second limb is focused on amendments to the specification
and does not permit amendments which claim or describe matter
not in substance disclosed or shown in the specification prior to
the amendment. The third limb is focused on the claims in the
specification and restricts amendments to those that would fall
wholly within the scope of the claims prior to such amendment.
8. In Allergan, the Delhi High Court interpreted this
provision and concluded that the second and third limbs, as
described above, should not be interpreted as water-tight
compartments. In effect, the Delhi High Court concluded that an
application for amendment should be allowed provided the
amended claims fall in substance within the scope of the complete
specification.
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9. Turning to the facts of the present case, original claims 13,
14, 18, and 20 are as under:
“13. A substantially purified and/or
recombinant adult plant pathogen resistance
polypeptide.
14.The polypeptide of claim 13 which
comprises amino acids having a sequence as
provided in SEQ ID No:1, a biologically active
fragment thereof, or an amino acid sequence
which is at least 40% identical, or at least 80 %
identical, or at least 90% identical, to SEQ ID
No:1.
18.An isolated and/or exogenous
polynucleotide comprising nucleotides having a
sequence as provided in SEQ ID No:2, a sequence
which is at least 40 % identical to SEQ ID No:2,
a sequence encoding a polypeptide according to
any one of claims 17 to 23, and/or a sequence
which hybridizes to SEQ ID No:2.
20.The vector of claim 19, wherein the
polynucleotide is operably linked to a promoter.”
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10. The current set of amended claims, include independent
claim 1, which is as under:
“1. A nucleic acid construct comprising a
polynucleotide encoding an adult plant pathogen
resistance polypeptide which comprises amino
acids having a sequence as provided in SEQ ID
No.1, or an amino acid sequence which is at
least 95% identical to SEQ ID No.1, wherein
the polynucleotide is operably linked to a
heterologous promoter, and wherein the
pathogen is Puccinia graminis f. sp. tritici,
Puccinia striiformis or Puccinia recondita f. sp.
tritici.”
11. Both from the impugned order and the contentions of
Mr.Rajesh Vivekanandan, it is clear that the objection is focused on
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the above amended claim; therefore, it is necessary to compare
and contrast current amended claim 1 with original claims 14, 18
and 20. In addition, it is also necessary to consider relevant
portions of the complete specification. Original claim 13 pertained
to a substantially purified and/or recombinant adult plant
pathogen resistance polypeptide. Original claim 14 dealt with the
polypeptide of claim 13 which comprises amino acids having a
sequence as provided in SEQ ID No.1, a biologically active
fragment thereof, or an amino acid sequence which is at least 40%
identical, or at least 80 % identical, or at least 90% identical, to SEQ
ID No:1. Original claim No.18 pertained to an isolated and/or
exogenous polynucleotide comprising nucleotides having a
sequence as provided in SEQ ID No:2, a sequence which is at least
40 % identical to SEQ ID No:2, a sequence encoding a polypeptide
according to any one of claims 17 to 23, and/or a sequence which
hybridizes to SEQ ID No.2. Original claim 20 pertained to the
vector of claim 19, wherein the polynucleotide is operably linked
to a promoter.
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12. The summary of the invention at lines 20 to 25 of page 43
of the paper book refers to an embodiment of the invention,
namely, polypeptide comprising amino acids having a sequence as
provided in SEQ ID No.1. At page 45 of the paper book, the said
summary draws reference to an isolated and/or exogenous
polynucleotide comprising nucleotides having a sequence as
provided in SEQ ID No.2. The expressions polypeptides/peptides
are described at pages 53 and 54 of the paper book and, at page 65,
the specification deals with nucleic acid constructs, including
operably connecting a promoter or enhancer element to a
transcribable polynucleotide.
13. The current amended claim 1 refers to a nucleic acid
construct comprising a polynucleotide. Without the insertion of
particulars that constrict its scope, it could have been contended
that it is wider than the original claims. Current amended claim 1
specifies, however, that the polynucleotide encodes a polypeptide
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which comprises amino acids with a sequence identical to or at
least 95% identical to SEQ.ID No.1. The target pathogens are also
expressly named. Thus, the specificity incorporated in current
amended claim 1 curtails rather than expands the scope of the
original claims. Consequently, it cannot be said that the
amendments go beyond disclaiming, correcting or explaining the
original claims. When the above original claims and descriptions
in the complete specification are compared to the current
amended claim 1, it certainly cannot be concluded that current
amended claim 1 is beyond the scope of the original claims read
with the complete specification. In fact, in substance, it appears
that it falls wholly within the scope of and, indeed, whittles down
the width of the original claims. Thus, even if the second and third
limbs of sub-section 1 of Section 59 of the Patents Act were to be
construed as distinct compartments, the appellant has satisfied the
requirements thereof.
14. The impugned order of rejection was entirely on the
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ground that the current set of amended claims are beyond the
scope of Section 59. As a consequence of the above discussion,
such conclusion is untenable and, therefore, the impugned order is
hereby set aside. It is needless to say that no opinion is being
expressed on the merits of the claimed invention. As a corollary,
the matter is remanded for reconsideration of the patent
application on the basis of the current set of amended claims (i.e.
claims 1 to 11). In order to preclude the possibility of pre-
determination, such reconsideration shall be undertaken by an
officer other than the officer who issued the impugned order by
providing a reasonable opportunity to the appellant. A reasoned
decision shall be issued within a period of four months from the
date of receipt of a copy of this order.
15. T(CMA)(PT)/14/2023 is disposed of on the above terms.
Consequently, the connected miscellaneous petition, if any, is also
closed.
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04.10.2023
Index : Yes/No
Internet : Yes/No
Neutral Citation: Yes/No
Sli
To:
The Assistant Controller of Patents and Designs,
The Patent Office, IPR Building,
SIDCO Plot, GST Road,
Guindy, Chennai 600 032.
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY,J
sli
(T)CMA(PT)/14/2023
(OA/41/2020/PT/CHN)
https://www.mhc.tn.gov.in/judis
04.10.2023
https://www.mhc.tn.gov.in/judis
