If you amend your claims during prosecution, you are entitled to be refused — or granted — on those claims, not the ones you abandoned. That sounds obvious. Yet it is breached often enough that the Delhi High Court has a name for it. In President and Fellows of Harvard College v. Controller General of Patents [C.A.(COMM.IPD-PAT) 493/2022], the Court set aside a refusal rendered on a superseded claim set and labelled the omission a “glaring error.”
From a composition to the cells themselves
The application (no. 201617000758, “SC-β Cells and Compositions and Methods for Generating the Same”) concerned non-native pancreatic beta cells derived from stem cells, intended for treating diabetes. As examined, the claims were to a composition comprising the cells with pharmaceutically acceptable carriers, and the FER raised objections under Sections 3(j), 3(e) and 10(4) and 10(5). After the Section 14 hearing, Harvard filed amended claims that changed the invention from a composition to the non-native β cells per se. The Controller, however, refused on the original composition-claim framework — repeating composition-specific objections such as the absence of components, amounts or synergy data.
The “glaring error”
The Court did not touch the merits of the Section 3 or Section 10 objections. Its point was narrower and sharper: once amended claims are on record — especially where they change the nature of the invention from a composition to a product (cell) claim — the Controller must examine their impact on the objections. Recording the amended set as a mere “alternative set of claims” and then deciding on the old claims will not do; as the Court observed, the “entire basis” of the refusal may change once the live claims are considered. Relying on Jitendra Kohli v. Controller and Akebia Therapeutics v. Controller, it held that failing to consider amended claims is a “glaring error,” and remanded for fresh consideration on the amended claims — expressly leaving the substantive objections open.
Why it matters
The “live claims” principle is simple but consequential: amendment is a right, and an amendment that genuinely shifts the invention resets the analysis. For applicants, the lesson is procedural hygiene — put amended claims squarely on record, flag that they supersede the earlier set, and explain why each objection no longer bites. For the Office, it is a reminder that the claims to be adjudicated are the ones currently alive, not the ones that have been amended away. Read with this blog’s note on Wirtgen, a pattern emerges in the recent appeals: refusals are being set aside less for getting the science wrong than for getting the process wrong.
Sources & further reading: Harvard College v. Controller; Section 3(j); Section 3(e); Section 10(4); amendment under Section 57.
Educational note: This case summary is general information, not legal advice.