Teva Pharmaceuticals filed an Opposition proceeding to Schwartz’ Pharma’s patent number 149567 titled “Stable salts of novel derivatives of 3-3 diphenylpropylamines”. In response, Schwartz cancelled a dependent claim and filed a new dependent claim.
During opposition proceedings the applicant is allowed to delete claims and to narrow the scope of the claim set, but is filing a new dependent claim permissible narrowing, is it prohibited?
This question is addressed by the Adjudicator of Intellectual Property, Ms Shoshani Caspi, in an interim decision.
During patent examination in Israel, the applicant has a lot of leeway in amending the claims. Providing the amendments are fairly supported by the specification, the applicant can widen the claim set and can change their focus. Prior to publication for opposition purposes, divisional applications may be filed for inventive material supported by the specification but not otherwise claimed.
During the opposition period, when, after allowance, the patent publishes and, for three months, third parties may file oppositions, in response to an opposition, the applicant may narrow the scope of the claimed invention.
According to section 65, after issuance, the applicant may file amendments to clarify or to correct a mistake may be made, or the claims may be narrowed. Section 66 requires the Commissioner to ascertain that the amendment does not add new material not supported by the specification and does not widen the scope of protection.
The applicant narrowed claims 1-5, 8-11 and 16, by specifying the preparation in more detail, narrowed claims 1,3 8 and 10 by defining a group R as being specifically isopropyl, and deleted claim 17. These changes are certainly narrowing individual claims, or deleting them and were allowed.
The applicant also wished to delete allowed claim 6 and file a new claim 6 claiming the salts of the preparations of the independent claim.
The question addressed by Shoshani Caspi is whether the new claim 6, that adds a limiting feature to independent claim 1 is considered permissible as it does not widen the scope of protection of the patent, but merely adds a limitation to that claimed in the main claim, or is it considered inadmissible as it is not clearly a restriction to the scope of any claim – since claim 1 is still on record, and this is a dependent claim?
Essentially the issue is whether adding additional claims that could be opposed on their merits and could create new fallback positions, but don’t necessarily widen the scope of protection requested, can be filed during opposition proceedings, or whether the only amendments allowed are those designed to narrow the argument and are to be allowed if they are giving up of monopoly rights without a fight.
Judicial review Officer Shoshani Caspi framed the question as to whether Sections 65 an 66 should be considered together, or whether the applicant could file an amendment claiming that the scope of the claim set was not widened and the Commissioner should then check that this is the case.
The opposer’s position was that stepwise analysis of section 65 followed by section 66 was required, and each amendment should be classified as a correction, clarification or narrowing of a specific claim, whereas the applicant considered this overly formalistic and the question to be addressed was whether the scope of the claim-set was widened – which would not be allowed.
Despite noting precedents for such amendments, Shoshani Caspi ruled that the amendment was inadmissible and that henceforth amendments during oppositions should clearly fall into one or other category and any narrowing of the claim set should be clearly narrowing the scope of a specific claim.
The allowed amendments were restricting the range of species listed in Markush type claims. The Claim 6 amendment was not allowed. Costs of NIS 8000 were awarded to Teva.