A term that has of late frequently popped up in patent orders by the Indian Court without much explanation is “auxiliary claims”. Most recently, such claims were filed before the Delhi High Court (Immunolight v. Controller) (pdf), where the Court directed the Patent Office to hear the matter afresh in light of the auxiliary claims filed by Immunolight. For the uninitiated, the auxiliary claims refer to an alternative set of claims filed by the applicant when the main/ original set of claims cannot be allowed by the patent office. Seen in cases before the European Patent Office (EPO), these claims are filed before the oral proceedings and are fallback options in case their main claims are rejected. 

It is important to note that the Indian Patent Act does not use the term auxiliary claims anywhere, and neither the Rules nor the Patent Manual use them. So, one may ask, where are these claims coming from? And is the Court justified in allowing the applicants to file them? While it has been argued before the court that such claims, restricting the scope of the application, fall under the scope of Section 59(1) (provisions on amendments), it is true for any amendment and labelling such a request as “auxiliary claims” might needlessly complicate things. This is because unlike the case with an auxiliary claim, the Patent Act doesn’t say anything about claim amendments being filed simultaneously with the original claims as a backup option. To put it simply, in India, an application is filed with just one set of claims and not any backup options. 

The recent orders using this term aren’t particularly helpful. After a quick search on IndianKanoon I was able to find a handful of orders where the applicant filed a set of auxiliary claims. In some of these, the Court is yet to decide on the validity of these claims (see Agro Innovation International vs The Controller Of Patents (pdf), Trident Limited vs Controller Of Patents (pdf)), or has remanded the case back to the Patent Office for fresh determination (Bia Separations D.O.O vs Assistant Controller Of Patents, Baxalta Incorporated vs The Controller Of Patents), or the applicants have withdrawn the appeal (Honda Motor Co vs Controller Of Patents And Designs, Bayer Pharma Aktiengesellschaft vs The Controller Of Patents). But in none of them has the Court ventured to explore where the justification to file these auxiliary claims is coming from. Another interesting fact here is that all of these orders are post-2022 i.e. after the abolition of the IPAB. So in case any reader knows if these claim amendments were being filed as auxiliary claims before the Board as well, please let us know.

Looking at the above situation, my guess is that parties and the Court have been using “auxiliary claims” synonymously with “amended claims”, perhaps owing to the problematic fixation with EPO. In case the deduction is incorrect, perhaps it’s high time that the Courts start to question the usage of this term and reflect on whether the Indian laws permit these claims. 

A Long Walk to Remand 

Another thing that stands out here is the way this case was handled by the Court. The auxiliary claims, in this case, were filed before the Court in August 2024 in an appeal against a 2017 order where the Controller had rejected (pdf) the patent application for the invention titled “Methods And Systems For Treating Cell Proliferation Disorders”. The Controller had held that the invention was not sufficiently disclosed, lacked an inventive step, and was a mere admixture that is not patentable under Section 3(e). Thereafter an appeal was filed before the IPAB and after IPAB was shut down, the matter came up before the High Court. It looks like not a single order from the High Court records the number of the application, the name of the invention, or any other necessary details like the proposed claim amendments! (a copy of the order with claim amendments has been uploaded to the IP India website and interested readers can look at it here (pdf).) In its final order, the High Court order didn’t get into the merits of the amended claims because the Patent Office agreed to have these claims on the record, and instead remanded the matter back to the Patent Office for fresh determination. This approach has been followed by the Delhi High Court in another case (Baxalta Incorporated vs The Controller Of Patents (2024)) where it remanded the matter back for fresh consideration after the respondent didn’t object to having auxiliary claims on the record.

It is pertinent to note that the appeal took 8 years to finally remand the matter back to the Patent Office, directing that it should hear the applicant, consider the matter afresh, and dispose of the application within 3 months! The Court justified this direction by taking into account the fact that the application was filed in 2009, and even if granted, it will effectively have 4-5 years of exclusivity. However, one wonders if this is perhaps the right way to go about adjudicating these cases where the Court puts the Controller back to square one, asking them to hear the applicant again and decide the matter afresh in such a short period. Won’t this impose a needless burden on the Controller and affect its capability to holistically assess the fresh set of claims? Also, importantly, the appellant i.e. Immunolight filed its auxiliary claims in 2024 i.e. 7 years after the original rejection order by the Controller. In that case, regardless of whether the Controller objects to the claims or not, in light of equity should the Court still allow a fresh set of claims so late into the appeal? 

With the matter now back to square one, hopefully, the Controller’s office gives a reasoned order and does not end up opting for the easy way out of simply accepting the amended claims, as we have seen in the past (here and here).  

Thanks to an anonymous reader for sharing this development with us and for their insightful comments.