Amendments at the Appeal Stage? Delhi High Court says “YES”!
- QUADRIGA DM
- Sep 19
- 2 min read
In a recent judgment (Fresenius Medical Care Deutschland GMBH vs Controller General of Patents, Designs and Trademarks), the Delhi High Court has provided important judicial clarity on Section 58 and Section 59 of the Indian Patents Act, 1970, particularly with respect to the permissibility of claim amendments during appellate proceedings.
Background:
The subject patent application (7493/DELNP/2012) was filed on August 28, 2012, claiming priority from an EP application (10425052.7), filed on March 2, 2010. Said application was for an invention titled “Microvesicles (MVs) derived from adult stem cells for use in the therapeutic treatment of a tumour disease”.
Initially, the application included claims on use of the MVs in treating tumors. The Indian Patent Office refused grant via order dated February 27, 2020. The refusal was based on lack of novelty, lack of inventive step, insufficient disclosure, and non-patentability under Sections 3(e) and 3(i) of the Patents Act, 1970.
Appeal and Amendment Strategy:
The Appellant, during the appeal proceedings, submitted amended claims that aimed to address the objections raised. Notably, the amended Claim 1 introduced specific functional features of the MVs, namely their ability to inhibit tumour cell proliferation and/or induce apoptosis, alongside defining the active cytotoxic agents (doxorubicin or vincristine) and a dosage range tailored to patient body weight.
The amendment, according to the Appellant, is well within the scope of the originally filed specification. Drawing on precedents, the Court reaffirmed that amendments at the appellate stage are permissible provided they conform to Section 59 of the Patents Act, which mandates that such changes be by way of disclaimer, correction, or explanation.
Court’s Observations:
The Court ruled that: The proposed amendments fall within the scope of Section 58(1) and 59 of the Patents Act, 1970. Accordingly, the Court issued directions to:
The Appellant to file the amended complete specification with the Patent Office.
The Patent Office to issue a fresh hearing notice and decide the application within three months.
Key Takeaways:
Claim amendments are allowable at the appeal stage.
With this ruling, not all hope is lost, with regards to amendments, if a patent application is refused. Now, the Appellants get one more bite at the cherry, during the appeal stage.
