Full Text
Date of Decision: 8th May, 2023 C.A.(COMM.IPD-PAT) 480/2022
SONY GROUP CORPORATION ..... Appellant
Through: Mr. Vineet Rohilla, Mr. Rohit Rangi, Mr. Debashish Banerjee and
Mr.Ankush Verma, Advocates.
Through: Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and
Mr.Alexander Mathai Paikaday, Advocates.
Mr. Aditya Gupta, Advocate (amicus curiae).
JUDGMENT
1. The present appeal has been filed under Section 117-A of the Patents Act, 1970 impugning the order dated 28th June, 2022 passed by the Assistant Controller of Patents and Designs in the patent application NO. 4334/DELNP/2013 (hereinafter “subject application”) titled “Data Processing Device and Data Processing Method” (hereinafter “subject invention”). Subject invention relates to data processing method and device that can easily process control data that is required for performing demodulation during digital video broadcasting and has its PAPR (Peak-to- Average Power Ratio) improved.
2. Brief facts relevant to decide the present appeal are as follows: 2.[1] The appellant had filed the subject application on 15th May, 2013 at the Patent Office, New Delhi as a national phase application of PCT (Patent Corporation Treaty) application PCT/JP2011/076173 dated 14th November 2011 and claimed priority from JP Patent Application no. 2010-259665 dated 22nd November, 2020. 2.[2] On 16th October 2014, the appellant filed a request for examination of the subject application. However, it was only in November 2018 that the Patent Office examined the subject application and the First Examination Report (FER) was issued by the respondent on 26th November 2018. 2.[3] Subsequently, a detailed response along with the supporting documents was filed by the appellant to the aforesaid FER on 26th August, 2019, wherein the appellant dealt with all the objections raised in the FER. 2.[4] On 9th November, 2021, the respondent issued a hearing notice fixing the date of hearing in the subject application for 30th November 2021. At the oral hearing, the appellant made submissions with regard to the objections raised in the hearing notice and subsequently, the written submissions were filed on 15th December, 2021 along with amended claims 1 to 8. 2.[5] On 16th February, 2022, the appellant filed further amended claims 1 to 8, in terms of which, the amended independent claims 1 and 4 BANSAL corresponded with the independent claims 4 and 10 of the corresponding European Patent (EP) Divisional application. European Patent no. EP3429084 (B[1]) was granted on a EP divisional application out of main EP application no. EP2645579, which is counterpart application to the subject application.
3. The impugned order dated 28th June, 2022 was passed by the respondent rejecting the subject application on the ground that the amended claims are beyond the scope of the claims as filed and hence, not allowable under Section 59(1) of the Act. The relevant portion of the impugned order is set out below: “The Applicant, vide communication dated 16/02/2022, filed a subsequent submission stating that the claims have been amended to be in line with the granted EP claims. However, it has been observed that the claims (filed on 16/02/2022) correspond to the granted EP claims of the divisional application and not the corresponding EP application of the instant application. In addition, the claim amendments presented on 16/02/2022 are voluntary and differ from the claims of the instant application (claims filed along with the written submission) in the following aspects:
1. The feature “dummy data” has been replaced by “zero padding bits”.
2. The feature “creating a frame containing the postshortening LDPC code data (Npost) and multiplexing the frame into a DVB-T[2] signal for transmission with one or more other frames, wherein the frame contains a preamble, which preamble includes a symbol including information identifying that the frame comprises the postshortening LDPC code data (Npost) containing the BANSAL scrambled control data (Ksig(s)).” has been added to the principal claim. The above mentioned amendments are beyond the scope of the as filed claims and not allowable under section 59(1) of the Patents Act, 1970. Further no support for amendments in the specification has been indicated in the marked up copy of claims. Thus, the amended claims are beyond the scope of the as filed claims and hence not allowable u/s 59(1) of The Patents Act,
1970. In view of the above facts and findings, the undersigned, under the provisions of the Act, refuses to proceed further with this application for patent application No. 4334/DELNP/2013 and hence this application is refused under section 15 of the Patents Act, 1970.”
4. On behalf of the appellant, it is submitted that the respondent has wrongly rejected the subject application on the ground that the amended claims filed on behalf of the appellant on 16th February, 2022 corresponded to the EP claims of divisional application and not to the corresponding main EP application of the subject application.
5. Counsel for the appellant submits that this cannot be the ground for rejection of the subject application. The original application filed on behalf of the appellant corresponded to both, the main EP application as well as the EP divisional application. Subsequently, the appellant gave up its claim corresponding to the main EP application and chose to proceed only with the application corresponding to EP divisional application. It is further submitted that making the aforesaid amendments, the appellant has actually limited the scope of the principal claim rather than expanding it.
BANSAL
6. Taking into account the important issues involved in the present appeal, vide order dated 20th February, 2023, Mr. Aditya Gupta, Advocate, was appointed as the amicus curiae to assist the Court.
7. Learned amicus curiae has filed written submissions in which it has been explained as to how addition of a feature to a principal claim can result in limiting the scope of the claim. He has also placed on record judgment of this Court in AGC Flat Glass Europe v. Anand Mahajan and Others, 2009 SCC OnLine Del 2826, wherein this Court has accepted the proposition that addition of limitation to certain features in the original claim can result in limiting the scope of the claim and held that in such circumstances, the addition of such a limitation to the feature in the original claim acts as a disclaimer and the same can be allowed. This recourse of disclaimer is adopted by the patentees in order to clarify the exact scope of the invention, once they are faced with the invalidity of their patents. The relevant observations of the said judgment are set out below: “14. I have gone through the documents filed by both parties as well as their rival submissions. It is settled law that if an amendment is put forward to overcome a possible objection to validity based upon a prior publication it may be relevant to consider whether the amendment propounded meets the objection arising out of such prior publication. If it does not, the amendment should be refused. If the patentee has known of the objection on the prior publication for many years, delay in applying for amendment will itself be ground for refusal. Further, an amendment having the effect of converting a nonessential element into an essential element should not allowed as held in Windsurfing v. Tabur, (1985) RPC 59 at 82(CA). It would not be out of place here to state that previously, ‘tin’ was nowhere mentioned in Claim 1. However, in Baker Perkins Ltd.’s Application, (1958) RPC 267 and AMP BANSAL Incorporated v. Hellerman Ltd., (1962) RPC 55 it has been observed that amendments which limit the scope of the specification to a sub-combination which was within the original claim would be a disclaimer (which can be allowed), and the absence of an appendant claim in the original document to such sub-combination cannot of itself be a reason for refusing the amendment.” xxx xxx xxx
18. Of course, the law operates differently when it comes to narrowing down or crystallizing the claims and apportioning those claims/subjects which are irrelevant and ultimately making it narrow and limiting the scope of the invention. An amendment under these circumstances is allowed and the excluded portion is disclaimed and the amendment becomes what is called a ‘disclaimer’. The disclaimer doctrine thus means that a right holder is delimiting the scope of the invention by narrowing down the claims to its inconvenience in a way which makes the amended claims not inconsistent with the earlier claims in the original specification. This recourse of disclaimer is adopted by the right holders in order to clarify the exact scope of the invention, once they are faced with the invalidity of their patents.”
8. Per contra, the counsel for the respondent has made submissions defending the impugned order.
9. I have heard the counsels for the parties and the amicus curiae and perused the record of the case.
10. In Nippon A&L Inc. v. The Controller of Patents, 2022:DHC:2434, it has been held that amendment to claims prior to the grant ought to be construed more liberally, so long as the claims are being restricted to disclosure already made in the specification. The relevant extracts from the said judgement are extracted as under: BANSAL “54. A perusal of the paragraphs of the Ayyangar Committee Report clearly shows that the purport and intention of this Report was to give broader and wider permissibility for amendment of claims and specification prior to the grant and restrict the same post the grant and advertisement thereof. The Report is also categorical in its observation that the invention before and after amendment need not be identical in case of amendment before acceptance “so long as the invention is comprehended within the matter disclosed.
55. When this standard, as contemplated by the Ayyangar Committee Report, is applied to Section 59 of the Act as it stands today, it becomes clear that amendments to a patent specification or claims prior to grant ought to be construed more liberally rather than narrowly. The purport and spirit of Article 123 of the European Patent Convention is not too different. In effect, the legislative material and the statutory provisions require that nothing new should be permitted to be inserted in the specification or claims. So long as the invention is disclosed in the specification and the claims are being restricted to the disclosures already made in the specification, the amendment ought not be rejected, especially, at the stage of examination prior to grant.”
11. In light of the above, I do not accept the observations made by the respondent that by replacing “dummy data” with “zero padding bits” and adding a separate feature to the original claim is beyond the scope of the original claim and not allowable under Section 59(1) of the Act.
12. It is noted that the aforesaid amendments are well-supported by the specifications filed with the subject application. In the present case, the addition in the principal claim is in effect an additional limitation to the said claim. The said additional limitation is also supported by the disclosure provided in the complete specification of the subject patent application. Therefore, the nature of the amendment is to make the scope of the patent BANSAL more specific and clearer and allowable under Section 59 of the Act.
13. In my considered view, the appellant having filed the subject application in respect of two inventive concepts, which was permissible in terms of Section 10(5) of the Act, was at full liberty to give up claims in respect of one of the inventions and only pursue one of them that corresponded with the divisional application of the European patent.
14. Therefore, no negative inference can be drawn against the appellant on account of the fact that amended claims correspond to the granted EP claim of the divisional application. It is an undisputed position that both the European Patent, main as well as divisional, corresponded to the subject application filed in India. Further, both the patents have been granted in Europe.
15. In view of the above, the impugned order passed by the respondent is set aside. The matter is remanded back to the respondent to consider the amended claims of the appellant filed on 16th February, 2022 and take a decision thereon, on any pending objections preferably within four months from today. If required the respondent may also order a fresh hearing to the appellant by giving proper hearing notice, to ensure that the appellant gets a fair chance to address any pending objections.
16. It is made clear that in the current appeal, enquiry has been restricted to the objection under Section 59 of the Act. The questions of lack of inventive step and non-patentability as also any other objections raised by the Controller would remain to be decided by the Patent Office. It is clarified that I have not given any opinion on the merits of the other objections.
17. The appeal stands allowed in the aforesaid terms.
BANSAL
18. This Court appreciates the assistance offered by learned amicus curiae, Mr. Aditya Gupta. AMIT BANSAL, J. MAY 8, 2023 BANSAL