In Dupont v Solvay, the Intellectual Property Appellate Board (IPAB) ruled that certain amendments to the specification as proposed by the patentee were acceptable.
In this case, the Controller had made a positive recommendation (acceptable) regarding additional material, which the Board took into account while deciding the petition.
Brief facts: An application for Patent was filed on 12.11.1996 by the petitioner (DuPont) for a patent for an invention relating to a “fire extinguishing composition.” The application was granted patent No. 175594 on 9th February, 1996.
Solvay filed revocation proceedings against the patentee: In its brief before the Kolkata High Court (in a parallel case at the HC), Solvay stated that it intended to sell or market in
a fire-extinguishing agent using the compound HFC – 227 ea [CF3 – CFH – CF3]. These compounds form the basis of the claims of the 594 patent. India
Solvay also stated that it apprehended that the patentee would interfere with its business on the basis of the ‘594 patent.
According to the IPAB, Solvay made a showing that it had a, “[V]alid substantial interest/reasons for making this main revocation petition and being aggrieved by the registration of the impugned patent made a revocation petition relying on the various grounds available under section 64 of the Act.”
Solvay broadly argued that: Because the specification stated that the compounds in independent claim 1 ‘can act as their own propellants’, therefore the patentee could not claim what was already known in the art. Additionally, it cited multiple references having a priority before that of the patent, applicable to the claimed language. Further, the patentee made false representations about a chemical composition/compound to the Controller and that a patent should not have bee granted because of the applicability of sections 3(d) and 3(e) of the patent act.
The patentee denied all allegations made by Solvay and argued that: the application for revocation was brought after a prolonged delay (10 years) and that the respondent proposed to do business in India and fearing infringement action, filed a revocation petition of the ‘594 patent to avoid a possible infringement suit.
Reasons for amendment of the specification: The patentee challenged the revocation petition and brought an application to amend the specification to include data for overcoming the objections made under sections 3(d) & 3(e) of the Act. In the application for amendment, the patentee wanted to clarify that the invention is a synergistic composition, comprising a fire extinguishing agent and a propellant, which are two separate elements and distinct.
Amendment/Additional matter sought to be included: “More particularly, a person of ordinary skills in the art would understand composition of present invention as comprising at least one Fluoro Substituted Propane (HFG227ea) and a propellant being two separate and distinct components each of / which have a synergistic action on the other in the composition so as to achieve the objective of the present invention.”
Additionally, the patentee also submitted evidence that the combination had an unexpected advantage resulting from synergy between its components.
In reply, Solvay claimed amongst other grounds, that the new statement proposed by the patentee would have the effect of claiming or describing the matter not substantially what is disclosed or shown earlier in the specification before the amendment.
Comments from The Controller: The Controller did not object to the amendment and stated that the addition was acceptable. “[A]s regards the proposed amendment which is by way of disclaimer, as far as the composition, of the invention is concerned the proposed disclaimer is within the limits of the principal claim, i.e. Claim (1) as accepted. Therefore the proposed amendment is acceptable to the extent that the present invention comprises at least one fluoro substituted propane and a propellant being two separate and distinct components and further the amendment to that aforesaid extent is explanatory in nature and is therefore allowable.”
The IPAB then analyzed the applicable law (Sections 57-59; Rule 81-83; Form-13) for amendment of a patent.
Post grant, a patentee may apply (in Form-13) for an amendment of the patent, complete specification or any document relating thereto to be amended subject to such conditions, if any, as the Controller thinks fit.
Such a request for amendment must state the nature of the proposed amendment, highlighted in an annexed copy along with the reasons. Additionally, the amendments are allowable only by way of disclaimer, correction or explanation.
These amendments after grant are only for “incorporation of actual fact”, and no amendment is 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 the amended claim(s) do not fall wholly within the scope of claim(s) of the specification before the amendment.
There are three main prongs of the requirements for amending: (i) the amendment can only add an actual fact; (ii) the applicant is not allowed to introduce new matter into the specification; and (iii) Amendments must be of the nature of a disclaimer, correction or an explanation.
The IPAB referred to the decision of SmithKline & French Laboratories Ltd v Evans Medical Ltd [I9891 FSR 561 for determining the guidelines for allowing leave to amend a patent. These guidelines include:
i. the onus to establish that amendment should be allowed is upon the patentee and full disclosure must be made of all relevant matters. If there is a failure to disclose all the relevant matters, amendment will be refused;
ii. the amendment will be allowed provided the amendments are permitted under the Act;
iii. the amendment needs to be sought promptly-patentee to show reasonable grounds for delay;
iv.a patentee who seeks to obtain an unfair advantage from should have known of the need to amend the patent, which he knows or should have known should be amended, will not be allowed to amend; and
v. the court is concerned with the conduct of the patentee and not with the merit of the invention.
In particular, the IPAB analyzed the additional matter sought to be included and focused on the word ‘synergy.’ The IPAB concluded that the addition of the term-‘synergy’ between the components in the description of the specification, was rather existing, but probably was not described and hence the amendment sought through this petition is only a disclaimer and by way of clarification. The Board therefore allowed the proposed amendments.