Amending claims of an Israel patent application patent specification during opposition

Perrigo genentech logo

Genentech’s patent application number 122910 for “Stabile [sic] Isotonic Lyophilized Protein Formation” is a national stage entry of PCT/US96/15221. It eventually was allowed and published for opposition purposes. Celltrion Inc and Perrigo Israel Pharmaceuticals LTD (an Israel generic manufacturer) filed an opposition.

Genentech requested to make some amendments to claims 25, 26, 45 and 46 and to file new dependent claims 47 to 51. Under section 65 of the Israel Patent Law, one is able to amend an application during opposition to correct typos, to clarify something or to narrow the claims. According to claim 66, the Commissioner has to ascertain that the amendment cannot be considered as broadening.

Celltrion and Perrigo objected to the new claims being submitted, arguing that they could, under no circumstances, be considered as narrowing the independent claim. Genentech argued that they were clarifying the nature of the monopoly and since the new claims were dependent, couldn’t be fairly considered as broadening the scope of protection.

Ms Yaara Shoshani Caspi reviewed the relevant law and case-law and ruled that the new claims could not be submitted.

She also had a suggestion for the applicant – to meet them part way. As the amendment was by way of clarification, she suggested making a corresponding clarification to the main claim.

COMMENT

I believe this decision is correct. The effect of adding dependent claims is to indicate that the main claim can fairly be interpreted more widely than the limitations of the dependent claims, as they must encompass more that the dependent claims. Thus the effect of adding dependent claims is to widen the manner in which the independent claim may be construed. I somehow doubt that Genentech will accept her proposal for clarifying te main claim.

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