Honble Sri S. Chandrasekaran, Technical Member: This is the miscellaneous petition numbered as M.P.36/2009 filed in connection with the application for revocation of a patent filed in the Honble High Court of Calcutta under section 64 of the Patents Act, 1970 (hereinafter referred to as the Act) and transferred under section 117G of the Act and numbered as TRA/7/2007/PT/KOL in respect of the Patent No.175594 granted to the applicant above, who has filed this petition for amendment in the patent specification.
2. An application for Patent with a complete specification was filed on 12.11.1990 by the petitioner for a patent for an invention relating to a fire extinguishing composition. The patent was subsequently sealed after the due process of the examination by the Patent office and the patent is granted a No. 175594 on or about the 9th February, 1996.
3. The respondent herein and the petitioner in the main revocation petition, is a company duly formed under the laws of Germany having its principal place of business in Germany. This respondent carries on all business, inter-alia, of manufacture and sale of various chemicals including HFC 227 ea [CF3 CFH CF3] which is a compound suitable for use as a fire extinguishing agent in pressurized systems. This respondent is part of International Solvay Group which is one of the worlds leading chemical and pharmaceutical company in marketing specialized chemical for example fluoro chemical & fluorine materials. The respondent intends to sell or market in India a fire-extinguishing agent using the compound HFC 227 ea [CF3 CFH CF3], which compound is forming the basis of the claims of the impugned patent and apprehends that the petitioner herein, will interfere with the business of the respondent, based on the patent rights granted to him on the impugned patent. Thus the respondent showed that he has valid substantial interest/reasons for making this main revocation petition and being aggrieved by the registration of the impugned patent made a revocation petition relying on the various grounds available under section 64 of the Act.
4. The following were the main & brief points towards the grounds of revocation of the impugned patent by the respondent in their main revocation petition: -
1) In the complete specification of the impugned patent it is mentioned that the heptafluoropropanes HFC-227ea and HFC-227ca, can act as their own propellants in the hand held fire extinguishers and that the other materials having lower vapor pressure may also be propelled from a portable fire extinguisher or fixed system by the usual propellants, i.e. nitrogen and carbon dioxide.
2) Such admission in the patent specification amounts to that the propellant of claim 1 is already a known element existing before the date of the patent. In other words, the claim seeks to protect the fluoro-substituted propane compounds such as HFC-227ea plus a known propellant, CO2 or N2. In the alternative, what is claimed in the claim 1 is a fire extinguishing compound comprising at least one fluoro-substituted propane and propellant, then as per the above admission that if HFC-227ea and HFC-227ca, can act as their own propellants, would amount to that, the claim 1 is actually containing one fluoro-substituted propane only and not the combination of one fluoro-substituted propane and a propellant or in other words the use of a separate propellant may be dispensed with; i.e. the claim seeks to protect only fluoro-substituted propane compound such as HFC-227ea per se which would show that the subject of the claims is not a patentable invention within the meaning of the Act.
3) Citation of an US patent No. 2,494,064 to show that the alleged use of fluoro-substituted propanes has been described as having utility as fire extinguisher fluids.
4) Citation of an UK patent No. 902590 in which the compound CF3- CFH-CF3, referred to as heptafluoropropane therein, has been stated to be useful as a propellant and as a gaseous dielectric.
5) Consequently the fluoro-substituted propane is known in the prior art as a fire extinguishing agent and it can also be used as a propellant.
6) Further there cannot be any novelty in the selection of a percentage volume of fluoro-substituted propane and it is mere a choice of range made arbitrary, unsupported by any explanatory description, but with such an open-ended range gives a picture that choice of any amount below that range of fluoro-substituted propane would evidently lose its efficacy as fire extinguisher.
7) The specification does not disclose any explanation about at least
4 volume percentage of the fluoro-substituted propane for the fire extinguishing composition. The specification fails to describe as to what advantages are derived by such selection of the particular range prescribed and further the claim 2 of the impugned patent is about the use of additive in the composition of claim 1, but the purpose of using the said additive with the composition has not been fully and clearly disclosed in the specification.
8) From the wording of claim 1, it would seem that the alleged invention works without the additive. The specification does not explain anything about the at least 1 % of the Halogenated hydrocarbon (the additive) in the description of the impugned patent and the claim 2 shows about selection of 1% of the additive, Halogenated Hydrocarbons and in addition the claim 2 also contains at least 5 of the hepta fluoro propane, including CF3-CFH-CF3 or HFC-227ea; again the specific proportion of the additive has not been sufficiently and fairly described in the specification, which amounts to insufficiency or unfair description.
9) A patent was obtained prior to 2005, for a compound per se by making a false representation that the invention related to a chemical composition, whereas the claimed invention virtually related to a chemical compound per se. Claim 1 in the impugned patent comprises of at least one fluoro-substituted propane and a propellant and the specification states that the fluoro-substituted propanes can act as their own propellant. If this is the case, the alleged invention claims a composition comprising only a fluoro-substituted propane compounds per se and nothing else. The compound specified in the claim 1 is known and their properties are already documented. Even if admitted that some of the properties are not documented, under section 3(d) of the Act, no patent can be granted for the discovery of any new property or for finding any new use of a known compound. That under the current amended law which permits the grant of patent for the claims for a chemical compound per se, such compound has to be new, i.e. not known. Even if supposing the fire extinguishing or propellant property of any of the claimed compound is found to have not been disclosed in any document, prohibitory clause of section 3(d) will not allow the grant of patent for such an invention. 10) The claim is for a fire extinguishing composition comprising first component having known compounds and fire extinguishing property and a second component comprising known propellants and it is admittedly known that a propellant has to be added to the fire extinguisher for the purpose of extinguishing the fire in an enclosed space. Therefore such an addition would surely result in a mere admixture exhibiting the aggregation of the properties of its components which would be attracting the provisions of section 3(e) of the Act rendering the claimed composition non patentable. 11) In page 11 of the specification of the impugned patent, a reference is made to the unexpected effects of the fluoro propanes which is patently misleading and the efficacy of the fire extinguishing composition is well documented in the cited US064 patent.
5. The petitioner denied all the allegations made by the respondent and then replied as below: -
1) A valid question, arises as to when the Patent was applied for in the year 1990 November and the patent was finally granted in the year 1996 February, immediately why an opposition to the grant of patent under section 25 or a revocation under section 64 of the Act has not been made.
2) There is no valid reason for making a petition for revocation of the patent granted much earlier and now seeking a revocation after a gap of
10 long years, raises another interesting point as to the nature of Locus Standi, because now the respondent proposes to do business in India and fearing infringement action, is the outcome or a voluntary petition for revocation of patent to avoid a possible infringement suit.
3) The US064 patent does not disclose HFC-227ea and HFC-227ca as a fire extinguishing composition, because the US064 patent was unconcerned with the field of fire extinguishing compositions.
4) Similarly the UK590 patent is entirely silent to any other use of HFC- 227ea other than propellant and gaseous dielectric and makes no mention of the use of HFC-227ea as a fire extinguisher. Moreover the UK590 patent does not refer to HFC-227ca at all.
5) The suggestion in US064 patent of the range potential utilities depending on the boiling point, etc, provides no direct indication as to the suitability of any specific fluorocarbon hydride encompassed by any specific formula as a fire extinguishing fluid such as the specific and verifiable formulae CF3-CHF-CF3 and CHF2-CF2-CF3. The compound that is useful as a fire extinguisher is dependent on several factors apart from the boiling point of the particular compound, such as its toxicity and impact on oxygen depletion whereas the US064 patent does not disclose any such compound that has a utility as a fire extinguishing fluid based on boiling point or any such criteria. So the US064 patent fails to anticipate the claim 1 of the impugned patent as alleged and therefore US 064 patent does not anticipate any of the claims directed to the fire extinguishing compositions containing a fluoro-substituted propane compound or a blend of a fluoro-substituted propane and at least one halogenated hydrocarbon.
6) The claim1 of the impugned patent has not been anticipated by the UK590 Patent. The UK590 patent is entirely directed to the method of producing heptafluoropropane compound and but for a solitary statement that this heptafluoropropane is useful as a propellant and as a gaseous dielectric the UK590 patent is silent to any other use for HFC-227ea other than as a propellant gaseous dielectric, and makes no mention as to the flammability of HFC-227ea or the use of HFC-227ea in a fire extinguishing composition and thus UK590 patent does not anticipate the claims of the impugned patent. Further the UK 590 patent does not describe a composition of any sort, let alone any fire extinguishing composition, but this patent discloses a single compound HFC-227ea for use as an anesthetic in mice and therefore UK 590 patent does not anticipate any of the claims directed to the fire extinguishing compositions.
7) The CFC Chemicals substitutes international committee report is directed towards the conservation of then current commercial CFCs (chlorofluorocarbons), CFHCs (chlorofluorohydrocarbons), FHCs (fluorohydrocarbons) and brominated analogues (Halons) and continued that HFC-227ca is not identified as a substitute for Halons, such as Halon 1211 and 1301 which are the only compounds identified in the said report as fire extinguishing agents and the said report does not disclose HFC-227ca as a fire extinguishing agent and therefore the said report fails to describe a composition of any sort, let alone any fire extinguishing composition claimed in the impugned patent.
8) Further the respondent is not a person interested within the scope and ambit of section 64 of the Act as he only proposes to start a business in India now.
6. The application is filed to challenge the grounds of objection taken by the respondent / applicant in the main revocation application, which states that the applicants invention falls within the purview of the provisions of sections 3(d) & 3(e) of the Act and the invention is not a composition but merely a compound, which was known before the date of the patent. The petitioner wanted to clarify that the invention is a synergistic composition, comprising a fire extinguishing agent and a propellant, which are two separate elements and distinct. Therefore, the petitioner wants to amend the specification by way of a disclaimer in the 2nd para in page 11 of the specification. The petitioner has now made the amendment as below: More particularly, a person of ordinary skills in the art would understand composition of present invention as comprising atleast one fluoro propane and propellant, the fluoro substituted propane and a propellant being two separate and distinct components each of which have a synergistic action on the other in the composition so as to achieve the objective of the present invention
7. Reply to this petition was filed by the respondent on 29December 2009 and the details of the reply are as follows:-
1. This present application is an abuse of process by the petitioner.
2. Present petition is highly time barred and being filed at the last year of the life of the patent. Gross delay in filing deserves outright rejection.
3. Objection by the respondent was known to the petitioner herein since filing of the revocation petition, and always been defended by the petitioner stating that it was a product patent for a compound.
4. Patent is due to expire on 11 November 2010 and the petitioner is using all tactics to delay the progress of the hearing of the case on its merits by seeking adjournments on several occasions mainly to delay the adjudication of the case showing clear case of abuse of the process of the Court which needs to be dealt with strongly.
5. Petitioner/patentee enjoyed the patent for a long time, despite being clearly aware of the lacunae in the patent, which was under challenge legally, and the petitioner cannot be permitted to make any amendments in the specification at this stage merely to overcome the challenge to its patent, more so when there is a challenge pending for many years.
6. Patent being a time bound right, Honble Appellate Board is requested to adjudicate earlier and maintain the purity of the register of patent.
7. No documents are produced / enclosed to show the authority of the deponent.
8. Submitted that the fact of Fluoro substituted propane being used as a fire extinguishing compound was known to the whole world. A propellant was always used, even prior to the present patent in a fire extinguisher to propel the fire extinguishing compound to extinguish the fire. Therefore what is claimed is a known feature and method and the product claimed is only a compound and not a composition.
9. Respondent/petitioner relies upon the submissions made earlier and states that this amendment cannot be done at this stage.
10. Amendment stated herein is not a disclaimer and addition of the new statement makes the patent different and new from the original patent which deserves to be rejected.
11. Addition of new statement is beyond the scope of what is described or claimed earlier in the specification before the amendment.
12. Addition of new statement would have the effect of claiming or describing the matter not substantially what is disclosed or shown earlier in the specification before the amendment.
13. Addition of new statement falls beyond the scope of the claim of the patent.
14. Amendment does not meet any of the conditions of section 59 of the Act.
15. Amendments sought are not bona fide or in the interest of justice or necessary for the proper adjudication of the issues in controversies between the parties
16. The petitioner/respondent has failed to make any reasonable grounds for allowing the amendment. Finally respondent ended with a prayer for rejection of the amendments proposed.
8. The petitioner filed their rejoinder to the reply filed by the respondent as below:- (1) Petition has been filed in the last year of the term of the patent is not denied for being it is a matter of record, but rest of the contents under reply are denied for being false. Provisions relating to amendments under the Patents Act are special provisions that contemplates and allows amendment of the patent specification at any time during the life of the patent. Further the amendment can be effected even during the proceedings of infringement instituted before a Civil Court by a patentee or in a rectification proceedings or on appeal. It is brought to the attention of this Honble Appellate Board that the Delhi High Court had set a precedent (AGC Flat Glass Europe SA vs. Anand Mahajan & Ors. C.S. (OS) No.593/2007) in this regard which is relied upon herein.
2. The petitioner vehemently denied that the petitioner has defended their patent stating that they had a product patent for a compound. The petitioner has always claimed statutory monopoly in a composition which comprises of atleast one fluoro substituted propane and a propellant. But it was never the case of the petitioner that the invention resides solely in the compound fluoro substituted propane. The petitioner has made a clear and consistent stand always that the invention in the impugned patent is in respect of a composition comprising fire extinguishant and propellant. The scope of the claim was known to the respondent in 2006 through the patent specification which was affirmed by the affidavits of the expert of the petitioner. Therefore, the allegation that the amendment by way of clarification and explanation in the description cannot be considered as being belated. It is submitted that the claim construction connotation under the law, the word comprises is open ended which implies addition of two or more integers and reliance is also placed upon the expert affidavits filed on behalf of the petitioner which has clarified that the patent is for a composition and not a compound. Further the amendment effected by the petitioner is only by way of clarification and explanation and that too in the description ie. the amendment in the body of the specification is only to correct what are perceived as ambiguities in the said part and there has been no alteration in the scope of claims of the patent. Therefore, the petitioner has rightly applied for the amendment and it is indeed strange that the narrowing down is being opposed by the respondent besides the merits of the amendment cannot be seen except to the extent of the requirements of section 59 which has been totally complied with.
3. Denied that the present petition is merely to delay the adjudication process. But in fact submitted that the respondent herein has brought a very belated challenge to the validity of the patent and has voluntarily lost substantial time and thus cannot be aggrieved by the present petition. Finally, the petitioner submitted that the present petition ought to be allowed for proper adjudication of the controversies in the present proceedings.
4. Denied that the fact of fluoro substituted propane being used as a fire extinguisher along with propellant synergistically, was known in the art and the petitioner has claimed only a compensation and not a mere compound.
5. The amendment, in addition to being a clarification and explanation is of the nature and infact the said amendment narrowing down the scope of the claims to a composition rather than claiming as per respondent allegation and understanding of claiming a compound. The incorporation of the new statement does not make the patent different and new from the original patent and the new statement has a clarificatory effect on the scope of the patent in order to clear all the ambiguities borne in the mind of the respondent. Also denied that the new statement would have the effect of claiming and describing the matter not substantially disclosed or shown in the specification before the amendment. Also denied that new statement falls beyond the scope of the claim of the patent and amendment sought falls squarely within the purview of sections 58 and 59 for the Patents Act.
9. Comments of Controller (1) As far as the M.P. No.36/2009 is concerned with respect to the first 6 paragraphs which is particularly with respect to the patentability of the subject matter there are no comments to offer as this is an issue beyond the jurisdiction of the patent office at this stage. With respect to para 7 and 8 petitioner had proposed to amend the specification by way of disclaimer and explanation and without prejudice to the main proceedings which is relating to the patentability of the subject matter. But as regards, the proposed amendment which is by way of disclaimer, as far as the composition of the invention is concerned the proposed disclaimer is within the limits of the principal claim, ie. Claim (1) as accepted. Therefore the proposed amendment is acceptable to the extent that the present invention comprises at least one fluoro substituted propane and a propellant being two separate and distinct components and further the amendment to that aforesaid extent is explanatory in nature and is therefore allowable.
2. However, as regards, the functional aspect of the amendment ie. whether each of the components of the composition has a synergestic action are not is something which is presently under dispute before the Honble Appellate Board and is allowable subject to the final determination of the patentability by the Honble Appellate Board.
10. The matter in respect of the petition for amending the specification and allowing the same was listed before us and both the counsel for the petitioner and respondent argued as below:- The counsel for the petitioner argued that the amendments sought now are fully in compliance with the requirements of the Section 58 of the Act. The counsel narrated the particular portion of section 58 as below:
58. (!) In any proceeding before the Appellate Board or the High Court for the revocation of a patent, the Appellate Board or the High Court, as the case may be, may, subject to the provisions contained in section 59, allow the patentee to amend his complete specification in such manner and subject to such terms as to costs, advertisement or otherwise, as the Appellate Board or the High Court may think fit, and if in any proceedings for revocation the Appellate Board or the High Court decides that the patent is invalid, it may allow the specification to be amended under this section instead of revoking the patent. (2) Where an application for an order under this section is made to the Appellate Board or the High Court, the applicant shall give notice of the application to the Controller, and the Controller shall be entitled to appear and be heard, and shall appear if so directed by the Appellate Board or the High Court. (3) Copies of all orders of the Appellate Board or the High Court allowing the patentee to amend the specification shall be transmitted by the Appellate Board or the High Court to the Controller who shall, on receipt thereof, cause an entry thereof and reference thereto to be made in the register..
11. The counsel quoted the section 59 (1) of the Act which reads as follows: 59(1) No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.
12. The counsel for the petitioner said that the Controller is fully satisfied and says that these amendments propose to amend the specification by way of disclaimer and explanation only and hence come within the purview of the section 58 & 59 of the Act and so they are allowable. The counsel for the petitioner referred to the para 6 of the Judgment of Justice Manmohan Singh in Honble Delhi High Court case AGC Flat Glass Europe SA vs. Anand Mahajan & Ors. I.A. No.13519/2007 in CS (OS) No.593/2007, and said that the amendment proposed herein also satisfies all the requirements of section
59 of the Act, by way of explanation clarifying the scope of the invention and the amendment pertains to the mater already disclosed in the specification and does not fall outside the scope of the unamended specification. The counsel also referred to the amendment portion which is sought to be introduced in the line 5 of original page 11 (serial page 34 of the pleading) of the specification and this amendment is by way of clarification only and the composition mentioned there comprising at least one fluoro substituted propane and a propellant falls within the ambit and scope of the claim 1 claimed in the specification. Hence he said that in view of the Delhi High Court judgement, the amendment suggested now are allowable and the Honble Appellate Board shall exercise the power and discretion under the section 58 & 59 of the Act and allow the same. The counsel also said that what is claimed in the claim 1 is fire extinguishing composition comprising at least 4 volume percentage of at least one fluoro substituted propane selected from the group mentioned along with a propellant. This claim is for a composition and not for a compound per se of fluoro substituted propane. Hence the amendment also falls with in scope of the claim 1 of the complete specification and finally ended with a prayer that the documents may be taken on record and the amendments sought may kindly be allowed.
13. The counsel for the respondent submitted that the amendments are fully contrary to what is disclosed in the specification and the petitioner is trying to introduce a new invention in the claim as well as in the description by bringing in the synergism effect in the amendment sought now.
14. The counsel for the respondent submitted that as per original page 7 of the complete specification, the petitioner has indicated clearly in the description, the hepta fluoro propane HFC-227ea, HFC-227ca are also characterized by an extremely low boiling point and high vapour pressure which permits them to act as their own propellants in the hand-held fire extinguishers. This also further continued in the same paragraph bridging the page 7 & 8 of the complete specification HFC-227ca and HFC-227ea may also be used with other materials having low vapour pressure and alternatively they may be used with usual propellants namely nitrogen or carbon dioxide. These information has given the proof to prove that, without the use of the propellants, the HFC-227 can function itself as fire extinguisher which is then a mere compound per se. The petitioner claim the same when the objection was raised by the respondent about the synergism between the two components in the fire extinguisher compensation.
15. The counsel for the respondent submitted that the summary of invention in original page 5 of the specification does not contain any information particularly synergism between the components of the fire extinguisher composition named in the impugned patent and the same para does not contain any information about the propellant either. And from the page 7 of the specification, it is their own original admission by the petitioner that no extra propellant is required as the hepta fluoro propane itself case act as their own propellant. Now having come with a question about this particular property of synergism and no information or description about the propellant in the specification, after a period of almost 5 years, the petitioner has come out with an amendment which is completely beyond the scope of the invention claimed in the impugned patent, the description is completely silent about the synergistic action between the components of the fire extinguisher composition. Hence, this amendment is not by way of disclaimer or explanation and this should not be allowed.
16. The counsel for the petitioner again referred to the Delhi High Court case namely AGC Flat Glass Europe vs. Anand Mahajan & Ors. And referred to the paragraphs 15, 17, 24 & 25 of the judgment and then they also said, no letter in the form of a cease and desist notice or any other threat notice has been issued to the respondent. Then the counsel referred to paragraph 15 of the Delhi High Court judgment wherein it is held in Chrome-Alloying Company Limited vs. Metal Diffusions Limited (1962) RPC 33 that where there is no evidence to indicate either that the patentee was aware of the defect in his specification or that he made use of an unjustified wide monopoly resulting from the defect, the court may not refuse leave to amend. Similarly, in this case, the counsel for the respondent contended that the different components of the composition has no synergistic effect and that has not been brought out clearly in the specification and hence by way of explanation and clarification the said amendment were brought in the specification. Likewise, the counsel added that few experiments were conducted as recently as in May 2009 to establish the effectiveness of the fire extinguisher composition in preventing, controlling and extinguishing fire and to show the discharge time and to make it clear that fluoro substituted propane alone without any propellant a discharge time of 33 seconds was recorded, whereas, the same fluoro substituted propane with a propellant, the discharge time observed was as low as 8 to 9 seconds. Hence, the requirement of amendment in the specification by way of clarification, explanation, simultaneously, keeping in view that the amendment does not fall beyond the scope of the invention described in the specification before the amendment.
17. The counsel for the respondent referred to Glaverbal SA vs. British Coal Corporation & ors. (1994) RPC 485 & 486 wherein it is mentioned that it is not permissible to construe the claims by reference to subjective thoughts performances and opinions of the patentee after the grant of patent and hence such experiments or disclaimers are not allowable.
18. We have heard the arguments of both the counsel and have gone through the petitions and the replies filed thereon. The amendments suggested must comply with the requirements of section 59 of the Act.
19. Hence from the above section 59 of the Act, what are permissible amendments are as follows:-
1. Amendment must be by way disclaimer, correction, clarification or explanation;
2. The amendment must be for incorporation of actual fact;
3. The effect of amendment should not enable the specification as amended to describe any matter not in substance disclosed or shown in the specification before amendment;
20. The counsel for the petitioner has referred to the case laws as below:-
1) AGC Flat glass Europe SA Vs. Anand Mahajan and ors. DELHI High Court Case I.A No.13519/2007 in CS (OS) No. 593/2007- before Justice Mr. Manmohan Singh
2) Smith Kline & French Lab. Vs. Evans Medical Limited, [1989] FSR 561 Mr. Justice Aldous
21. Referring to the Delhi High Court case where the Judge held, that, amendments proposed may be allowable, so long the amended claim may not be larger than the original claim and it also falls within its scope ; In the same case law the Judge has also quoted- Baker Perkins Ltd. Application (1958) RPC 267 decided by Justice Lloyd Jacob .and held that referring to AMP incorporated Vs. Hellerman Ltd., [1962] RPC 55 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 has also quoted further referring to Chrome-Alloying Co.Ltd., Vs. Metal Diffusions Ltd., (1962) RPC 33 and held where there is no evidence to indicate either the patentee was aware of the defect in his specification or that he has made use of an unjustified wide monopoly the court may not refuse leave to amend. Referring the second case mentioned above Smith Kline & French Lab. Vs. Evans Medical Limited Mr. Justice Aldous held that, no amendment is permitted except by way of disclaimer, correction or explanation.
22. So we have to see whether the amendment sought now is only for the purpose of incorporation of any actual fact. It is very clear from the statute that an amendment cannot be allowed if the specification as amended describes matter not in substance disclosed or shown in the specification before the amendment or amended claims does not fall wholly within the scope of a claim of the specification before the amendment. Here the respondent has raised the non patentability issue and the petitioner filed evidences before us to prove that how it is a patentable subject matter by way of experiments conducted and shown in the evidences before us.
23. The purpose of making an amendment to a patent is to avoid a finding of invalidity in a revocation proceeding. Of course, amendment may be made at any time during the life of the patent. There is an another requirement, that the applicant for the amendment should state the nature of the amendment and give full particulars of the reasons for which the amendment is made as per section 57(2) of the Act. Further leave to amend can be refused by the Court if the applicant does not give the full particulars of the reasons for the amendment. See Waddingtons patent [1986] RPC 158. In this Waddingtons patent case, the amendments proposed to distinguish the invention from the prior art was refused as the applicants for the amendment did not furnish the full particulars of that prior art and reasons therein.
24. We find here from the petition M.P No. 36/2009, Mr. Daniel Mark Maloney, the in-house senior counsel of the petitioners company has deposed in his affidavit clearly as to why the petitioner is making the amendments, the reasons for the same and the nature of the amendment. By this petition the petitioner wanted the following amendment to be added in the page 11 of the description of the patent specification. More particularly, a person of ordinary skills in the art would understand composition of present invention as comprising at least one Fluoro Substituted Propane (HFC227ea) and a propellant being two separate and distinct components each of which have a synergistic action on the other in the composition so as to achieve the objective of the present invention.
25. Section 58 of the Act, gives the court the power, in revocation proceedings in which the validity of a patent is put in issue, to allow the proprietor of the patent to amend the specification of the patent "in such manner, and subject to such terms ... as the court ... thinks fit". Plainly seen, this is a wide statutory discretion. The general principles on which how such discretion should be exercised were summarised by Aldous J in Smith, Kline & French Laboratories Ltd v Evans Medical Ltd [1989] FSR 561 as follows: "First, the onus to establish that amendment should be allowed is upon the patentee and full disclosure must be made of all relevant matters. If there is a failure to disclose all the relevant matters, amendment will be refused. Secondly, amendment will be allowed provided the amendments are permitted under the Act and no circumstances arise which would lead the court to refuse the amendment. Thirdly, it is in the public interest that amendment is sought promptly. Thus, in cases where a patentee delays for an unreasonable period before seeking amendment, it will not be allowed unless the patentee shows reasonable grounds for his delay. Such includes cases where a patentee believed that amendment was not necessary and had reasonable grounds for that belief. Fourthly, a patentee who seeks to obtain an unfair advantage from a patent, which he knows or should have known should be amended, will not be allowed to amend. Such a case is where a patentee threatens an infringer with his unamended patent after he knows or should have known of the need to amend. Fifthly, the court is concerned with the conduct of the patentee and not with the merit of the invention."
26. Accordingly checking these principles before exercising such discretion, we find that the onus has been established by the petitioner, who is the patentee, making full disclosure of the experiments and relevant particulars, as to why it is done, thus meeting the requirements of the provisions of law in force. The patent was filed in 1990 and granted in 1996. The revocation petition was filed only in 2005 raising the question of patentability under the law and the patentee who is the respondent in the revocation petition has immediately within a reasonable period, has sought necessary amendments to avoid such patentability issue, but the necessity of which never arose until the same was challenged by the respondent herein now. In fact during the hearing, the petitioners counsel confirmed that they had never issued any threat notice or letters to the respondent, but it is the respondent himself as per his own version in the main revocation petition, fearing that he may be sued if he does the business in India selling the chemical used in this patented fire extinguishing composition, has filed this revocation petition.
27. In the hearing, the respondent cited Glaverbel SA Vs. British Coal Corp. and another [1994] R.P.C443, to show that the Court construes the specification objectively through the eyes of the person to whom it is addressed and to whom the common general knowledge is imputed. The specification is notionally addressed to such a person. We have considered this citation made and would like to consider the following citation as well while arriving at the decision. The general test for examining whether an amendment involves the addition of subject matter was stated by Aldous J in Bonzel v Intervention (No3) [1991] RPC 553 at 574: "The decision as to whether there was an extension of disclosure must be made on a comparison of the two documents read through the eyes of a skilled addressee. The task of the Court is threefold: (a) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application. (b) To do the same in respect of the patent as granted. (c) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition.
28. The comparison must be strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly. Here from the citations given above and after perusing the comments received from the Learned Controller of Patents, for the problem as depicted in the patent specification, the fire extinguishing compositions available as of the relevant date namely the date of the patent were not suitable for the reasons as below:
1. Brominated halo carbons are
i. Expensive or high cost (page4, para 2)
ii. Toxic to human health (cardiac sensitization at low level)
iii. Depletion of stratospheric ozone
2. Chloro fluoro carbons are ozone depleting
3. Perfluoro carbons as suggested by Hugget (US 3715438) are not supposed to have ODP (ODP, i.e. ozone depleting potential) they are believed to have green house effect. This effect is caused by the accumulation of stable perfluoro carbons which create a shield that acts against heat transfer and therefore causes green house effect (global warming)
29. Solution to the problem pointed out: - The present invention provides a composition of:
1. Hepta fluoro propanes and along with a propellant. as seen in the claim 1 The effectiveness of the composition is shown in Table 1 which shows that lesser concentration of perfluoro carbons, e.g., HFC-227 ea (7.3), HFC-236 ea (10.2), HCFC 235 cb (6.2) are required when compared to CF4 (20.5). However, with respect to other fire extinguishers like C2F6 (8.7), CF3Br (4.2), CF2ClBr (6.2) these compositions are not that efficient (all figures with respect to heptane as fuel, corresponding figure where methanol is fuel may be seen). Table 2 shows the ODP. The ODP of the Hepta Fluoro Carbons is much less (0) with respect to other agents. Exceptions : ODP Fire extng. Composition (Table 1) CF4 0 20.5 C2F6 0 8.7 H1301 10 4.2 CHF2Cl 0.05 13.6 H1211 3 6.2 The main objections of the respondent / petitioner are:
i.The petitioner (who is the Patentee) misled the controller by suppressing the existence of earlier prior art and prior use of the invention
ii.The patentee misled the controller in that the composition of the fire extinguishants as claimed are not true composition claims but are compound claims under the disguise of the composition and product claims (as many of them were already known in the art)
iii.The patent lacks novelty and inventive step
iv.The claims fall within section 3(d) in that the subject invention as claimed is a mere new use of a known substance
v.The claims lack any synergy and fall within section 3(e)
vi.Also they have alleged that they are also the manufacturers of some of the compounds like HFC-227 ca, HFC227 ea.
30. As seen in Ralston v. Smith 11 H.L.C. 223 Lord Cranworth, at p. 252-3 said: -"... It is quite clear that the object of a disclaimer cannot be 'to create any new right not included in the original specification. It "cannot be (as it is called) to extend the specification.
31. We could see now from the language and wordings of the amendment proposed, the petitioner has brought in only the new word synergy between the components that too in the description of the specification, rather that was existing, but probably was not described, has bow been brought in the description, by way of amendments, and also clearly to show that what is claimed is a composition and not a mere compound. The next aspect comes before us is that the point of delay which was also raised by the respondent. As we have seen in the proceedings, the application has been filed in November 1990 and the patent is granted in 1996. The revocation application has been filed in 2005 i.e. a few years before the term of the patent comes to an end and when the petitioner in the main revocation petition raised the issue that the composition claimed is not a composition but it is only a compound because the patentees own narration in page 7 of the description in the specification, that the heptafluoropropane HFC-227ea and HFC-227ca are also characterized by an extremely low boiling point and high vapor pressure i.e. above 44.3 and 42.0 psig at 210 C respectively, which permits HFC-227ea and HFC-227ca to act as their own propellants in hand held fire extinguishers, is a clear case to show that HFC-227ea and HFC-227ca can function without any propellant and then it is only a compound which has been claimed, thus attracting the provisions of section
3 of the Act. Now with a view to disprove their objection, the patentee has come out with a few experiments done with and without propellant in a fire extinguishing composition and filed a request for amendment in the specification by way of disclaimer and explanation in December 2009. This period of 3 or 4 years is very reasonable and the matter has to come to a steady level after the pleadings have been completed, the stage of filing the evidences by way of affidavit.
32. In this connection, we would like to see this case law, Matbro Ltd v Michigan (Great Britain) Ltd [1973] RPC 823, 833 where Graham J said: "It was I think accepted by all parties that mere delay is not, of itself, necessarily sufficient to justify refusal of amendment. There must have been or be likely to be some detriment to the respondents or to the general public caused by such delay before it can be an effective bar to relief. Such detriment will normally in the case of respondents be the subject of evidence. In the case of the general public there may also well be evidence present from which the court can draw an inference of detriment, but such an inference may, it seems to me, also be drawn by the court without evidence in a proper case."
33. From this case law, it is to be seen that, in cases where delay is alleged, it is to be checked accordingly whether the opponent or the public has suffered any detriment as a result of the delay. If detriment is established, then the permissible period of delay has to be shorter than in a case where no such detriment has been established. Here we do not see any detriment has been established by the respondent to these petition nor any thing has been pointed out to us. Moreover, as Aldous J pointed out in Smith, Kline & French Laboratories Ltd v Evans Medical Ltd [1989] FSR
561 a lapse of time during which the patentee knows about the prior art in question but believed, on reasonable grounds, that his patent was valid will not count as unreasonable delay, if it counts as relevant delay at all. So what is an acceptable period of delay is plainly a question of fact; and will depend on all the circumstances. In Smith, Kline & French Laboratories Ltd v Evans Medical Ltd case itself, a delay of eight years was held to be too long, even though no prejudice to the opponent or the public had been established. But it is very clear, all these action can be taken only after issue is raised by the respondent who filed the revocation petition and then the patentee needs the time to formulate an experiment and check and come out with a reasonable amendment which would be like a disclaimer, so that the same gets allowed without any question or any further altercation it.
34. Last point we would like to touch and consider is the synergy. If a synergistic effect is to be relied on, it must be possessed by everything covered by the claim, and it must be described in the specification. The petitioner / patentee has submitted through his another petition some evidence that the combination had an unexpected advantage resulting from synergy between its components which is outside the scope of the matter listed before us for our consideration. It is sometimes possible that a patent may be saved from a finding of obviousness or patentable issues if a combination otherwise obvious has some unexpected advantage, and, in particular, an advantage caused by an unpredictable cooperation between the elements of the combination. There is no doubt that a surprising technical benefit or some unexpected technical advantage can be regarded as an indication of inventive step. But whether it does so or not depends upon all the circumstances of the case. But as far as this amendment sought through this petition is only a disclaimer and by way of clarification. So, we are convinced that the amendments proposed are allowable and we hereby order that the amendments shall be carried out in the patent specification and the Controller shall take the necessary steps and procedures in this respect in the prescribed manner. The parties will bear their own costs. (S. CHANDRASEKARAN) (S. USHA) TECHNICAL MEMBER VICE-CHAIRMAN Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.
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