Introduction
In a recent judgment dated March 19, 2024, in Genomatica Inc vs Controller of Patents and Designs, the Madras High Court overturned a patent refusal order issued by the Controller in respect of patent application No. 201747013084, in which the Controller had rejected the latest amendments to the pending claims, instead opting to examine the earlier set of claims and then rejected them.
This case clarifies that when an applicant amends its claims, the Controller is obligated to evaluate the amended set of claims rather than reverting to the previous ones when making a decision on the patent application.
Facts
Genomatica Inc. entered national phase in India for its invention titled “NON-NATURAL MICROBIAL ORGANISMS WITH IMPROVED ENERGETIC EFFICIENCY” on April 12, 2017. The Applicant entered India with 72 claims, four of which were independent claims. In response to the First examination report (“FER”), the claims were amended and brought down from 72 to 70, with three independent claims.
In the post-hearing written submission, the Applicant further amended the claims, now reducing them from 70 to 68, retaining only a single independent claim. However, the Controller refused these claims on the grounds that they went beyond the scope of the specification and hence, cannot be considered under Section 59 of the Indian Patents Act.
Instead, the Controller chose to fall back on the claims submitted in response to the FER and based on those claims, rejected the application. Aggrieved, the Applicant chose to file an appeal.
Contentions of the Appellant
The Appellant argued that the objection under Section 59 was not part of the hearing notice and that before making a decision, an opportunity for another hearing should have been given to defend their post-hearing claims against Section 59.
The Appellant further contended that the Controller’s decision to issue a final order (of rejection) on the basis of the old claims (submitted in response to the FER) was wrong because the said claims were not before her for consideration.
Issues before the Court
- Should the applicant be granted an additional hearing opportunity if they amend their claims following the initial hearing, specifically when submitting post-hearing written amendments, and if the Controller determines that these amended claims do not meet the requirements outlined in Section 59 of the Act?
- Can the Controller reject the claims submitted in the post-hearing written submission directly if they are deemed to exceed the scope of the specification and are not allowable under Section 59 of the Act? Additionally, can the Controller revert to considering the earlier set of claims to reach a final decision?
Decision of the Court
The Court agreed with the Appellant that refusal under Section 59 was not valid as this objection was not a part of the hearing notice. The Court held that this is a new ground and in fitness of things, the Controller should have heard the appellant again for her objection under Section 59.
The Court further held that if an applicant has amended its claims through its written submission, it implies that it had already communicated to the Controller that it is not falling back on its earlier claims. Therefore, if the Controller intends to fall back on the earlier claims, then he/she must hear the appellant on the same.
The Court also clarified the term “given up amendments”, should not be construed by the Controller as if the appellant had abandoned its earlier claims. After all, when a set of claims undergoes amendments made to the existing claims, the amended claims get superimposed on the previous set of claims, and therefore, it is not permissible for the Controller to read something which is not before him/her.
Our Analysis
This decision specifies that if the Controller finds that amendments made to the claims go beyond what is described in the specifications, the Controller cannot simply choose to fall back on the earlier set of claims to reach a final decision. Instead, the Controller must offer the Applicant another chance of hearing before making a final decision.
Moreover, this ruling serves as a lesson for applicants to instruct their patent agents/attorneys to discuss, either during the hearing or before filing the post-hearing written submissions, any amendments that the applicant intends to make in response to the hearing notice.
Conclusion
In conclusion, the Madras High Court’s judgment in Genomatica Inc vs Controller of Patents and Designs clarifies that when amendments are made to the existing claims, the amended claims get superimposed on the previous set of claims, and therefore, it is not permissible for the Controller to read something which is not before him/her. Further, if the amendments to claims results in new objection which was not raised in the hearing notice, then Controller should convey the same to the Applicant and must provide an opportunity to be heard before making a decision on the application. and must provide an opportunity to be heard before making a decision on
the application.