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Judgment
AMIT BANSAL, J. (ORAL)
I.A. 9714/2024 (under Section 58 of the Patents Act, 1970)
The present suit has been filed seeking relief of permanent injunction restraining the defendant from infringing the plaintiff’s Indian Patent No.410993 (‘hereinafter subject patent’), along with other ancillary reliefs.
To be noted, a counter claim has been filed on behalf of the defendant seeking revocation of the subject patent under Section 64 of the Patents Act, 1970.
This application has been filed by the plaintiff under Section 58 of the Patents Act, 1970, seeking amendments to the claims of the granted subject patent.
The invention in the subject patent outlines a method for preparation of an adhesive by blending modified starch and caustic soda and mixing it with soapstone powder, dry talc powder, or bentonite powder in order to effectively strengthen bonds between layers of papers.
BRIEF FACTS
Brief facts necessary for the adjudication of the captioned application are set out hereinafter:
On 24th March, 2022, the plaintiff submitted the patent application comprising of ten (10) claims including the method for preparing the adhesive and the resulting adhesive thereof.
The final granted claims to the Plaintiff are extracted in the table below:
| Claim No. | Particulars |
| 1 | A method of preparing an adhesive (100) comprising: a) combining modified starch (101) and caustic soda (102) into a fine bend; b) adding the above blend into soap stone powder, or dry talc powder, or bentonite powder (103); and c) combining the above mixture by further adding the water (104) to form a homogenous mixture wherein the ratio of water is added to form a smooth blend with required viscosity. |
| 2 | The method of preparing an adhesive (100) as claimed in claim 1, wherein the step (a) of combining comprises combining one portion of modified starch 90% (101) with 1/9th portion of caustic soda 10% (102) into a fine blend. |
| 3 | The method of preparing an adhesive (100) as claimed in claim 1, wherein the step (b) of adding comprises adding one portion of soap stone powder, or dry talc powder, or bentonite powder (103). |
| 4 | The method of preparing an adhesive (100) as claimed in claim 1, wherein the step (b) of adding comprises adding two portions of soap stone powder, or dry talc powder, or bentonite powder (103). |
| 5 | The method of preparing an adhesive (100) as claimed in claim 1, wherein the step (b) of adding comprises adding three portions of soap stone powder, or dry talc powder, or bentonite powder (103). |
| 6 | The method of preparing an adhesive (100) as claimed in claim 1, wherein the step (b) of adding comprises of adding four portions of soap stone powder, or dry talc powder, or bentonite powder (103). |
| 7 | The method of preparing an adhesive (100) as claimed in claim 1, wherein the step (b) of adding comprises adding five portions of soap stone powder, or dry talc powder, or bentonite powder (103). |
| 8 | An adhesive (100) formed using a method comprising the steps of: a) combining modified starch (101) and caustic soda (102) into a fine bend; b) adding the above blend into soap stone powder, or dry talc powder, or bentonite powder (103); and c) combining the above mixture by further adding the water (104) to form a homogenous mixture wherein the ratio of water is added to form a smooth blend with required viscosity.” |
By way of the present application, the plaintiff seeks to amend claim 1 and claim 8 of the final claims.
Mr.Unmukt Gera, counsel appearing on behalf of the plaintiff submits that the purpose of the amendments sought is to narrow the scope of both the process and product claims, restricting the adhesive as claimed to one wherein the ratio of modified starch to soapstone powder, dry talc powder, or bentonite powder varies within the range of 1:1 to 1:5.
It is further submitted that the proposed to be amended claims are supported by the complete specifications. Therefore, no new material is being added.
Notice in this application was issued vide order dated 1st May 2024 to the defendant as well as the Office of the Controller of Patents in accordance with Section 58(2) of the Patents Act, 1970.
A short reply has been filed on behalf of the Controller of Patents, wherein it has been admitted that the proposed amendments are narrowing down the scope of the claims and therefore, the application can be allowed in termsof the Patents Act, 1970.
Counsel appearing on behalf of the defendant opposes the amendment of claims. It is submitted that by way of the present application, the plaintiff is trying to cover up the lacuna in this case and the objective of this application is to set up a new case.
ANALYSIS AND FINDING
I have heard the counsel for the parties and examined the material on record.
A reading of Section 58 of the Patents Act, 1970 would show that a patentee can seek amendment of the complete specification before the High Court in proceedings for revocation of patent and the High Court may permit such amendment subject to terms.
However, any amendment made under Section 58 is subject to Section 59 of the Patents Act, 1970. These provisions act as a ‘check and balance mechanism’ to ensure that no new subject matter is introduced and that the scope of the claims is not broadened. The consideration to be kept in mind is that the amended claims must remain consistent with the original claims and specification.
In the present case, a counter claim has been filed on behalf of the defendant for revocation of the subject patent under Section 64 of the Patent Act, 1970. Therefore, on a bare reading of the aforesaid sections, an application for amending the specific claim of the patent can be filed in the present proceedings. However, it should be subject to conditions prescribed in Section 59 of the Patents Act, 1970.
In this regard, reference may also be made to the judgment of the Coordinate Bench in AGC Flat Glass Europe SA v. Anand Mahajan & Ors, 2009 SCC OnLine Del 2826. The relevant observations are set out below:
“25.The law which emanates from the authorities cited is quite akin to the law of amendment. The jurisdiction necessary to allow the amendment of a claim in the specification vests with the High Court, once the validity of the patent has been challenged in a patent infringement suit. The claims can be amended and such amendment may be allowed provided that it is clarificatory or elaborative in nature and also, that it does not alter the scope of the claim or introduce any new claim in the invention which was not present in the original invention. Thus, the scope of enquiry in relation to amendments in the patent claim is limited to the extent as to whether it introduces any new claim which extends the scope of the monopoly rights of the patentee.
26.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.”
In view of the aforesaid observations, the Court allowed the amendment of the patent claim holding that the amendment did not attract the rigours of Section 58 and 59 of the Patents Act, 1970.
Now, a reference may be made to the proposed amendments sought by the plaintiff which are set out below:
| Claim No. | Particulars |
1 A method of preparing an adhesive (100) comprising: a) combining modified starch (101) and caustic soda (102) into a fine blend; b) adding the above blend into soap stone powder, or dry talc powder, or bentonite powder (103); and c) combining the above mixture by further adding the water (104) to form a homogenous mixture wherein the ratio of water is added to form a smooth blend with required viscosity. wherein the step (a) of combining comprises combining one portion of modified starch 90% (101) with 1/9th portion of caustic soda 10% (102) into a fine blend and, wherein the step (b) of adding comprises adding one portion of soap stone powder, or dry talc powder, or bentonite powder (103). Or wherein the step (b) of adding comprises adding two portions of soap stone powder, or dry talc powder, or bentonite powder (103). Or wherein the step (b) of adding comprises adding three portions of soap stone powder, or dry talc powder, or bentonite powder (103). Or wherein the step (b) of adding comprises of adding four portions of soap stone powder, or dry talc powder, or bentonite powder (103). Or wherein the step (b) of adding comprises adding five portions of soap stone powder, or dry talc powder, or bentonite powder (103).
2 An adhesive (100) formed using a method comprising the steps of: a) combining modified starch (101) and caustic soda (102) into a fine bend; b) adding the above blend into soap stone powder, or dry talc powder, or bentonite powder (103); and c) combining the above mixture by further adding the water (104) to form a homogenous mixture wherein the ratio of water is added to form a smooth blend with required viscosity. wherein the step (a) of combining comprises combining one portion of modified starch 90% (101) with 1/9th portion of caustic soda 10% (102) into a fine blend and. wherein the step (b) of adding comprises adding one portion of soap stone powder, or dry talc powder, or bentonite powder (103). Or wherein the step (b) of adding comprises adding two portions of soap stone powder, or dry talc powder, or bentonite powder (103). Or wherein the step (b) of adding comprises adding three portions of soap stone powder, or dry talc powder, or bentonite powder (103). Or wherein the step (b) of adding comprises of adding four portions of soap stone powder, or dry talc powder, or bentonite powder (103). Or wherein the step (b) of adding comprises adding five portions of soap stone powder, or dry talc powder, or bentonite powder (103).
In terms of the proposed amendments above, claims 2 to 7 are to be deleted and incorporated into claims 1 and 8. Therefore, the elements that are being added to the two claims had already been mentioned in the complete specification as well as the dependant claims in the finally granted claims of the subject patent.
In my opinion, the amended claims narrow the scope of both the process and product claims. The granted claims 1 and 8 are open ended claims, therefore, defining the ratio of modified starch to soapstone powder, dry talc powder, or bentonite powder within the range of 1:1 to 1:5 will result in making the scope of these claims definite. Further, no new material is being added to the claims which are being amended.
The reply filed on behalf of the office of Controller of Patents also confirms the position that that the proposed amendments are narrowing down the scope of the claims. The relevant extracts from the aforesaid reply are extracted below:
“7.The granted claims 1 and 8 are open-ended claims making claims 1 & 8 infinite, therefore, defining the proportion of the 'stone powder, or dry talc powder, or bentonite powder' will result in making the scope of these claims definite.
8.Furthermore, the complete specification supports the proposed amendments as the complete specification on pages 5-8 (Pg. 16-19 of the Plaintiffs Document) deals with the different proportions of the 'stone powder, or dry talc powder, or bentonite powder'. It is, therefore, submitted hat the proposed amendments are allowable under the Patents Act, 1970.”
In light of discussion above, I am of the considered view that the amendments in the claims sought by the present application are within the scope of Section 58 and Section 59 of the Patents Act, 1970. Accordingly, the plaintiff is permitted to amend the claims of subject patent as set out in paragraph 9 of this application.
In light of the amendment being allowed, a fresh certificate be issued by the patent office in favour of the plaintiff.
List before the Patent office on 13th January 2025 for completion of formalities, including filing of any necessary forms for amendment of specifications.
The Registry is directed to supply a copy of the present order to the office of the Controller General of Patents, Designs & Trademarks of India on the email [email protected] for compliance.
The application is disposed of.
CS(COMM) 255/2023 with CC(COMM) 2/2024, I.A. 8165/2023, I.A. 46005/2024 and I.A. 46006/2024
List the suit before the Joint Registrar for completion of pleadings on 13th February 2025.
List the suit and the counterclaim along with the pending applications on 15th April 2025.