DELHI HIGH COURT HELD THAT NO BAR ON AMENDMENTS TO PATENT CLAIMS AT THE APPELLATE STAGE

House no. 316, Ground Floor "A" Sector, Yelahanka New Town Bengaluru- 560 064

1203, The Spire-2, Shital Park BRTS, 150 Feet Ring Road,Rajkot - 360007 Phone : +91 281 242 731

203, 2nd Floor, Shriji Palace,Savsar Plot, Main Road, Morbi-363641 INDIA Phone:91 2822225263

312-313, 3rd Floor,
Abhishek Complex, Akshar Chowk, Old Padra Road,
Vadodara 390 020 INDIA
Phone: (0265) 2322015

The impugned order dated 16.10.2017, rejecting Indian Patent Application No. 8139/DELNP/2008 filed by Aethlon Medical, Inc. for “Extracorporeal Removal of Micro Vesicular Particles” under Sections 3(i) and 2(1)(j) of the Patents Act, 1970, was appealed before the Hon’ble Delhi High Court.

The invention relates to a medical device for extracorporeal removal of immune-suppressive microvesicular particles from whole blood to reverse immune suppression in a subject. The Controller refused the application, holding that it lacked novelty and fell within the scope of Section 3(i) as a method of treatment. The Appellant submitted that the impugned order was erroneous in law and on facts, passed in violation of natural justice, as the Controller failed to properly consider the materials and merits of the invention, incorrectly raised the objection under Section 3(i), misinterpreted the provision, and did not clearly demonstrate findings on non-patentability while also failing to properly apply the principles of novelty and inventive step.

The Appellant further submitted that the Respondents raised a new objection regarding the absence of drawings only at the stage of replying to the appeal. It was contended that such an objection could not be allowed to be raised at this belated stage, as it was not part of the original examination record. The Hon’ble Court observed that the impugned order did not contain any such objection, and therefore, the issue relating to drawings ought to have been raised either at the time of issuance of the First Examination Report or during the hearing. Since it was raised only in the reply to the appeal, cannot be allowed to introduce new grounds of refusal.

During the course of proceedings, the Appellant submitted that, without prejudice to the rights and contentions of the Appellant, they may be granted liberty to file an auxiliary request for proposed amended claims before the Court. Accordingly, vide Order dated 12.01.2024, the Hon’ble Court permitted the Appellant to file auxiliary claims. The Appellant thereafter filed the proposed amended claims, stating that the amendments were necessitated to embody the limitations that were incorporated in the corresponding European Patent granted by the European Patent Office (EPO). The proposed amendments were intended to address prior art objections considered by the EPO and to clarify the technical features of the claimed medical device.

In the auxiliary claims, the Appellant deleted the dependent claim and merged its contents into the independent claim. The Court noted that this modification did not broaden the scope of the original claims and the subject matterof the proposed amendment in the Auxiliary Claims were fully supported by the original specification, and the amendments thus complied with the conditions of Section 59(1) of the Patents Act, 1970.

The Court referred to the judgments in Societe Des Produits Nestle SA v. Controller of Patents and Albemarle Corporation v. Controller of Patents, wherein it was held that there is no bar under the Patents Act to allowing amendments even at the appellate stage, provided that such that amendments that narrow down or restrict the scope of the claims to address objections raised by the Patent Office, or facilitate grant, are permissible, if the amendments are within the scope of the patent specification, and the originally filed claims.

After considering the submissions, the Hon’ble Court held that the auxiliary claims complied with the Patents Act, as they did not broaden the original scope and were supported by the specification. The objection on the absence of drawings, raised belatedly, was rejected. The matter was remanded to the Controller for reconsideration of the application in light of the auxiliary claims, with directions to grant a hearing and issue a fresh order within six months.

AETHLON MEDICAL, INC vs CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADEMARKS & ANR.

Pronounced on September 26th, 2025

C.A. (COMM.IPD-PAT) 251/2022

Key Points:

• Amendments to patent claims are permissible even at the appellate stage if they do not broaden the scope of the invention.
• Auxiliary claims narrowing the scope of the invention are acceptable under Section 59(1) of the Patents Act.
• A new objection (such as the absence of drawings) cannot be raised for the first time at the appellate stage.
• Impugned order was set aside and the application was remanded for reconsideration to be completed within six months.