Madras High Court: In a transfer civil miscellaneous appeal filed under Section 117-A of the Patents Act, 1970, praying to set aside the order of the Deputy Controller of Patents & Designs and to direct the Controller to grant the patent, N. Seshasayee, J. while remanding the matter to Controller of Patents for a de novo consideration of the amended claim of the appellant, said that beyond the choice of words which an applicant for patent may consider appropriate, the Controller has to look into the substance of the claim. Section 59 is not intended to be used for wrong understanding of the language employed by an applicant, since an applicant will also be a person of science and not of language. Thus, the Court could not find anything therein which may indicate that the amended claim goes beyond the original claim.
The appellant has sought a patent for its invention which relates to the use of thermoplastic polymers for the preparation of injection-molded articles and to the molded articles thus obtained.
The Court said that the Controller appears to have made short of his responsibility by merely extracting the priors he relied on but had not thought it fit to consider the explanations. The ground for rejection founded on Section 2(1) (ja) has to fail and it deserves to be reconsidered.
Turning to the other ground of rejection founded on Section 59 , the Court said that the Controller appears to have focused more on the semantics of the language employed by the appellant in stating its claim. It noted that the original claim says with an expression “the use of a lubricated polyamide for the preparation of articles by injection molding…” and the amended claim reads “a method of preparing an article, the method comprising injection molding the article using a lubricated polyamide..”.
The Court said that the Controller has understood the original claim as involving only the use of lubricated polyamide and has understood the amended claim as a method in using the same substance. In his perspective, the word ‘method’ expands the scope of whatever the word ‘use’ conveys. After perusing the original claim as well as the amended claim, the Court found that the original claim used the word ‘use of lubricated polyamide’ whereas, the amended claim conveyed the idea that it relates to method of using the same substance.
While remarking that a Controller is essentially a man of science and not of language, the Court said that beyond the choice of words which an applicant for patent may consider appropriate, it has to look into the substance of the claim. Section 59 is not intended to be used for wrong understanding of the language employed by an applicant, since an applicant will also be a person of science and not of language. Thus, the Court could not find anything therein which may indicate that the amended claim goes beyond the original claim.
Thus, while remanding the matter to Controller of Patents for a de novo consideration of the amended claim (1 independent claim and 17 dependent claims that was made post hearing) of the appellant, directed some other Controller of Patents to consider the petitioner’s claim.
Since the appellant’s application is of 2012, the Court directed the Controller of Patent, to speed up passing its final orders under the application and dispose of the same, at the very earliest, at any rate, not later than six months from the date on which he takes cognizance of the matter
[Techpolymers Industria E Comercio LTDA v. Deputy Controller of Patents and Designs, 2024 SCC OnLine Mad 189, decided on 08-02-2024]
Advocates who appeared in this case :
For Appellant: Vindhya S.Mani
For Respondent: Special Panel Counsel J. Madhanagopal Rao
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