Delhi High Court Reaffirms Scope of Section 59 – Product Claims Cannot Be Smuggled in via Post-Filing Amendments. In AbbVie Biotherapeutics Inc. v. Assistant Controller of Patents & Designs [C.A. (COMM.IPD-PAT) 44/2023], the Delhi High Court upheld the Controller’s rejection of a national phase patent application, under the Indian Patent Act, for an anti-cMet antibody-drug conjugate (ADC), originally claimed solely as a method of treatment.
The application was refused under Sections 2(1)(j), 3(i), and 59(1) of the Patents Act, 1970. The applicant attempted to amend the method-of-treatment claims-inadmissible in India under Section 3(i)-into standalone product claims during prosecution.
Scope of Section 59 Patent Act India in Claim Amendments
However, the Court held that such post-filing amendments were not in the nature of disclaimer, correction, or explanation as required under Section 59(1). Rather, the Court found that the amendments enlarged the claim scope substantially, which is statutorily impermissible.
Notably, the original PCT application and national phase claims focused exclusively on treatment regimens for cMet-overexpressing cancers (e.g., NSCLC), including dosage schedules and diagnostic markers. There was no standalone claim for the ADC molecule itself. Attempting to introduce product claims at a later stage was deemed a “clever drafting move” to circumvent Indian patentability restrictions-an approach firmly rejected by both the Controller and the Court.
The decision reiterates three key principles: Section 3(i) bars method-of-treatment claims in India. Section 59(1) prohibits amendments that broaden the original claim scope beyond what was originally filed. Section 2(1)(j) mandates industrial applicability, which method-oftreatment claims typically fail to demonstrate under Indian law.
This ruling reminds us that patent strategy-requires foresight at the PCT stage itself. Attempting to pivot claim types post-filing may not survive statutory filter on claim amendments.
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