Sujit Thakur; Naveen Varma and Hina Kapoor, Zeus IP
On June 4 2010, the Intellectual Property Appellant Board (IPAB) handed down a landmark judgment on the issue of amendment of specification after the grant of a patent.
The case is Solvay Fluor Gmbh vs EI Du Pont De Nemours And Company & Another [MP no 23 & 24/2008 & 35 & 36/2009 in tra/7/2007/pt/kol & tra/7/2007/pt/kol (aid no 3 of 2005)].
The legal provisions enumerating the amendment procedure referred to by the IPAB are laid down under Sections 57 to 59 of the Patents Act and Rules 81 to 83 of the Patents Rules, 2003 (as amended).
In the year 1996, the Indian Patent Office granted patent 175594 to Du Pont for an invention relating to a fire extinguishing composition comprising fluoro-substituted propanes (heptafluoropropanes HFC-227ea and HFC-227ca) and propellants. Du Pont was enjoying the monopoly based on the ‘594 patent until a petition to revoke it was filed by Solvay, which manufactures and sells various fluoro chemicals including HFC-227e.
Solvay relied upon the non-patentable provisions of the Act relating to “mere new form of known substance” and “mere admixture”. Specifically, Solvay stated that claims of the ‘594 patent relate to a “fire extinguishing composition having fluoro-substituted propane and a propellant”, whereas the specification mentions that “the fluoro-substituted propanes can act as their own propellants”. Solvay argued that the claims of the ‘594 patent merely disclose the fluoro-substituted propane per se under the term “composition”.
In response, Du Pont filed an application for leave to amend the specification of the patent along with evidence to clarify that the invention is a synergistic composition comprising a fire extinguishing agent and a propellant. Solvay opposed Du Pont’s application for the leave to amend. However, the IPAB, after hearing to both Solvay and Du Pont, held that Du Pont’s proposed amendments are permissible under section 57, as they exist in the form of “disclaimer, correction or explanation; represent an actual fact; and fall within the scope of the claim of the earlier filed specification”.
This judgment means that post-grant amendments of specification may be allowed to overcome objections raised against patentability. A patent owner needs to provide appropriate reasoning and evidence to support the amendments, which should be introduced in the form of a disclaimer, correction or explanation, for incorporating an actual fact, and in substance with the specification disclosed. An invention objected to under on the grounds of non-patentability based on sections 3(d) and 3(e), may be salvaged by explaining that the invention entails a combination of elements or substances where the combination has significant advantages and results in an unforeseen improvement of the properties of the elements.