Applications must heed: ‘what is not claimed is disclaimed’

By Rajeev Kumar, LexOrbis
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1922

Recently, patent applications have been rejected at the Indian Patent Office where the claims have been amended to change the scope of claim, not necessarily by narrowing or broadening, but by amending and directing the claims to a different invention.

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For example, if the original application contained claims for “use of composition”, then amendment to a claim directed to “composition” was not allowed. Such amendments were rejected especially if the originally filed application did not contain a claim for the said composition.

The basis for such rejections has been “what is not claimed is disclaimed”, citing Electric and Musical Industries et al v Lissen et al (1939).

Patents Act

But if an invention has been disclosed in the specification, is the applicant not allowed to later claim that invention? “What is not claimed is disclaimed” is applicable when a patent right has been granted, and not when the application is still pending. The scope of amendment has been prescribed in section 59 of the Patents Act, 1970. The intent of section 59 can be derived from the Ayyangar Committee Report (1959), which made recommendations for the patents law of India.

In paragraphs 554 to 556, the report clearly distinguished and explained the difference in the scope of amendments permitted at the two stages, i.e., before acceptance and after acceptance. The report considered that “…the scope of an amendment before acceptance ought to be wider than that after acceptance …”, and found two limitations that are not applicable to amendments before acceptance. The first is in regard to the formulation of new claims. The second is a requirement that the invention before and after the amendment should be identical.

New claim formulation

So formulation of new claims ought to be permitted in an application before acceptance, but barred after acceptance. The reasoning for this difference in scope of amendment was attributed to the fact that, after acceptance, the boundary of the patent gets fixed, and other interests and rights start intervening, and so no amendment should be allowed which would alter the scope of protection.

Section 59 of the act provides for an amendment only by way of disclaimer, correction or explanation. Further, an amendment would not be allowed except for the incorporation of actual fact, and also, no amendment would be allowed the effect of which would be that the specification as amended would claim matter not in substance disclosed or shown in the specification before the amendment.

So formulation of new claims is intended within the scope of section 59, subject to the condition that the amendment is by way of disclaimer, correction or explanation, and that the claimed subject matter is disclosed or shown in the original specification.

Within the scope

With respect to amendment of claims, section 59 provides that no amendment would be allowed which had the effect that any claim as amended would not fall wholly within the scope of a claim before the amendment. In paragraph 564 of the report, the requirement that an amended claim should fall within the scope of an unamended claim was only for the post-acceptance stage.

Although section 59(1) of the act does not distinguish between pre-grant and post-grant amendments, it does provide a distinction between amendment of a specification and amendment of a claim.

An amendment of a specification may include any new claim matters disclosed in the specification before amendment, but an amendment in claims cannot go beyond the scope of claims before amendment.

Application pending

During the pendency of an application, an applicant may consider formulating new claims, which were not previously present, but are sufficiently disclosed in the original specification. If the specification discloses more than one invention, and if the originally filed application contains claims for only one of the inventions, then the applicant may consider formulating new claims for the unclaimed invention(s) before the grant of patent.

Such practice would also be in harmony with another provision of the act dealing with more than one invention. Section 16 provides that, if the complete specification relates to more than one invention, a further application may be filed in respect of an invention disclosed in the provisional or complete specification.

Boundary fixed

An applicant ought to be afforded the benefit of the invention that he or she has disclosed in the complete specification, but that he or she could not claim at time of filing.

But once a patent has been granted the boundary is fixed, and then what is not claimed has come into the public domain and is free to be used by anyone. This is the reason why even a divisional application is not allowed to be filed after the grant of the parent application, because then the third parties, or public, would never be sure of the boundary set by the patent rights.

European Patent Convention

The difference in scope of amendment for a pending patent application and a granted patent can also be seen in article 123 of the European Patent Convention. While articles 123(1) and (2) are applicable for both patent application and patent, article 123(3) is applicable only for patent. It states that “The European patent may not be amended in such a way as to extend the protection it confers”, meaning that, subject to the compliance of articles 123(1) and (2), the scope of protection in a patent application may be altered, or extended, which is not allowed in a patent.

Hence, the position that “what is not claimed is disclaimed” would be more appropriate for a granted patent, and not for an application.

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