IPAB held that “What is not claimed is disclaimed”

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Intellectual Property Appellate Board (IPAB) in its order, OA/12/2020/PT/CHN dated February 1st, 2021, held that “What is not claimed is disclaimed” and directed the Controller of  Patents & Designs, Guindy to grant the patent application no. 4931/CHENP/2012 on the amended set of claims within 3 weeks from the date of filing the amended set of claims against the Controller’s order dated December 31st, 2019 (the impugned order).

patent practice - What is not claimed is disclaimed

FACTS OF THE CASE

The Indian patent application No.:4931/CHENP/2012is a PCT national phase patent application. During prosecution, the patentee has amended one of the claims from “A composition of matter” to “A compound”, among others. The patent application was refused by the Controller stating that the amendment, replacing the phrase, “A composition of matter” with “A compound”, is not allowable under Section 59 of The Indian Patent Act, 1970, provisions as to amendment of application or specification.

CONTENTION OF THE PATENTEE/APPELLANT

 Against the Controller’s decision, the Patentee contended that there is no violation of Section 59 of the Indian Patent Act, 1970 since the ‘Compound’ is within the scope of the ‘Composition of matter. Further, the patentee contended that the claims have been drafted in compliance with the US patent practice since the patent application claims US priority and as per US patent Law, ‘composition of matter’ is one of the four principal subject matters or categories that may be patented. A newly synthesized chemical compound or molecule can be patented as a ‘composition of matter’. Examples of composition of matter include chemical compounds, compositions, etc., Therefore, the patentee argued that the decision to refuse the patent application under Section 59 was issued merely based on the change in the wording of the preamble of the claim.

IPAB’S ORDER

After analyzing the complete specification, IPAB noticed that the complete specification under the heading “summary of invention”, “Detailed Description” and “Examples” describe as “The present invention relates to novel compounds”. In view of this, IPAB says that there was adequate room for the patentee to make claims based on “compound”, right from the beginning, but the patentee does not pursue the same and proceeds with either ‘methods’ or ‘compositions’ or ‘composition of matters’.

IPAB further noticed that the terms, “Compound” and “Composition of matter” cannot be used interchangeably since the claims set include both the “compound” and the “composition”. With respect to the arguments based on US patent practice, the IPAB clarifies that the argument is not convincing since the drafting of a PCT International phase application should be always done keeping in view of the designation countries and not based on the practice prevailing in a single country.

Therefore, IPAB holds that “what is not claimed is disclaimed” and clarifies that the Controller refusal order under Section 59 has valid reasons. However, IPAB holds that for the error in the initial drafting of the claims, no patentee should suffer, and therefore, considering as a special case, IPAB partially allows the claims.

Finally, the IPAB has set aside the impugned order of the Controller of Patents by allowing the appeal of the Patentee and directed the Controller of Patents to grant the patent in respect of the invention as claimed in the amended set of claims of the instant application 4931/CHENP/2012 within 3 weeks from the date of filing of the amended set of claims.

Conclusion:

The present IPAB order clarifies that the PCT patent specification, particularly, claims, has to be drafted very carefully by always keeping in view of the designation countries and not based on the practice prevailing in a single country.

About the author: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

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