By Garima Rai, Sr. Associate
March 2016

Introduction

The amendments of patents are a quintessential feature of patent prosecution. The amendments may be filed voluntarily by an applicant or may be an outcome of objection raised by the Examiner. In the Indian Patents Act, amendment to Patents/Patent applications is governed by Sections 57 to 59[1] of Chapter X of the Patents Act.

The provisions of the Indian Patent Laws stipulate that the amendments can be made only by way of Explanation, Correction or Disclaimer without addition of any new subject matter which has not been taught in the original disclosure. Additionally, Section 78 empowers the Controller to correct any clerical error, either upon a request made by any person interested or even without such a request.

Section 57-59 (Nature and Scope of Amendments)

According to Sections 57-59 of the Indian Patents Act, an applicant is allowed to make amendments to his specification, which he filed at the time of filing the application. The amendment could be before or after grant of patent. The amendments may be voluntary in nature or it may be an outcome of objections raised by the Examiner in the office actions. The extent of amendment is that the amendments could be made in any part of the specification, such as the change in name of applicant or an amendment to patent description, drawings, claims or abstract.

However, the most important issue while making amendments is to understand what could be added or amended? The Indian law allows for amendments when the amendment is made for incorporation of actual fact or for some sort of correction or some sort of explanation. Below is a point by point listing:

1. By way of Incorporation of Actual Fact
2. By way of Correction
3. By way of Explanation
4. Disclaimer

Accordingly, the purpose of the amendments should be limited to the above criteria. One of the important questions arising is to determine the extent to which the amendment is allowed by way of the above criteria?

The scope of amendments that may be allowed actually varies from case to case. One of the criteria could be the field of invention. For example, if an invention is related to sterilizing the surrounding air, then, during prosecution the applicant may add some live experimental information to show the efficiency of the device. Such kind of amendment shall be treated for explanatory purpose because this is actually not changing the scope of original disclosure but providing explanation.

Moreover, when a specification is amended, the provisions of Section 57-59 warrant that the subject matter added in the specification should already be disclosed in substance in the specification and nothing must be added which is beyond the scope of the original disclosure or originally claimed. Accordingly, the Indian requirements also warrant that the applicant could only narrow the scope of originally filed claims, and could not broaden the scope of claims during prosecution.

New Subject Matter Dilemma

Addition of new subject matter to an already filed patent application has always been a matter of discussion. There are various cases which have been rejected by the Examiner for addition of new subject matter. For instance, the patent application no. 3398/KOLNP/2006 in the name of “Cadbury Adams” was granted only after the deletion of new subject matter. In the Controller’s decision for granting the patent, the Controller conveyed that certain claims which were filed during the prosecution stage contained new subject matter. During hearing, the applicant was asked to delete the newly added claims. Thereafter, the patent was granted to the said application.

It has been observed that the law does not allow for addition of new subject matter. However,  if the newly added matter relates to some experimental data for explaining  the claims more accurately then that may be considered as allowable by law. Another example would be addition of reference numerals for elements of the invention in claims are allowable in the eyes of law as amendment. Such kind of amendment is more like explanation to bring out more clarity and accurateness into the claims. This will further make it easier for a person skilled in the art to materialize the invention.

In another case, pertaining to decision for refusal of Controller for application number 1608/CHENP/2008[2], the Controller focused upon the amended claims which were filed in response to the First Examination Report. The Controller alleged that claims 1-60 were related to method of treatment. The applicant amended the claims to process claims 1-41. According to the Controller’s decision, the content of the amended claims were still related to method of treatment. Also, it was further provided by the Controller that the scope of amended claims were not within the scope of the original disclosure. Therefore, patent application was refused by the Controller.

Comparison of IN  practice with US, Japan and European practice

Across the major jurisdictions such as US, EPO and Japan, amendments should lie within the vicinity of the previous disclosure. Further, addition of new subject matter is not encouraged. Hence, it is advisable and recommended that the patent specification must be drafted in a clear and succinct manner.

Type of amendment/Country	India	US[3]	Japan[4]	EP 0 [5]
Addition of new subject matter	No	No	No	No
Broadening of Claims	No	Yes	Yes/ Not allowed after Final Office Action	No
Are amendments allowed before issuance of First Office Action?	Yes	Yes	Yes	Before issuance of European Search Report, applicant may amend the specification
Are amendments allowable after issuance of Office Action?	Yes	Yes	Yes	Yes
Post grant amendment to specification	Yes	Formal amendments may be	Yes	May be allowed
		made after issuance of Notice of Allowance

The patent applicants who are filing patent applications in India through PCT National Phase should be cautious of the Scope of Amendments to the patent specifications. One of the important points that are required to be kept in mind is that broadening the Scope of Claims is usually not allowed at the Indian Patent Office. The Indian laws[6] allow a choice of entering with the original claims, or amended claims in the International Phase. Therefore, the patent applicant should carefully select the set of claims, which he wishes to enter in the PCT national phase. It is suggested that the patent applicants enter the national phase with the broadest claims among the originally filed PCT, Article 19 or Article 34 amendments.

It is also suggested that the applicant should make an attempt to have the claims reviewed by their Indian counsel before entering the national phase. The applicant should pre-advise to their counsels the key features of their inventions on which they would like a patent. Such practice may simplify the patent prosecution and ensure an early grant.

***

CHAPTER X

Section 57

Amendment of application and specification or any document relating thereto before Controller

(I) Subject to the provisions of section 59, the Controller may, upon application made under this section in the prescribed manner by an applicant for a patent or by a patentee, allow the application for the patent or the complete specification or any document relating thereto to be amended subject to such conditions, if any, as the Controller thinks fit:

Provided that the Controller shall not pass any order allowing or refusing an application to amend an application for a patent or a specification or any document relating thereto under this section while any suit before a court for the infringement of the patent or any proceeding before the High Court for the revocation of the patent is pending, whether the suit or proceeding commenced before or after the filing of the application to amend.

• Every application for leave to amend an application for a patent or a complete specification or any document relating thereto under this section shall state the nature of the proposed amendment, and shall give full particulars of the reasons for which the application is made.
• Any application for leave to amend an application for a patent or a complete specification or a document related thereto under this section made after the grant of patent and the nature of the proposed amendment may be published

(4) Where an application is published under sub-section (3), any person interested may, within the prescribed period after the publication thereof give notice to the Controller of opposition thereto; and where such a notice is given within the period aforesaid, the Controller shall note the person by whom the application under this section is made and shall give to that person and to the opponent an opportunity to be heard before he decides the case.

(6) The provisions of this section shall be without prejudice to the right of an applicant for a patent to amend his specification or any other document related thereto to comply with the directions of the Controller issued before the grant of a patent

Section 58

Amendment of specification before Appellate Board or High Court

(I) In any proceeding before the Appellate Board or the High Court for the revocation of a patent, the Appellate Board or the High Court, as the case may be, may, subject to the provisions contained in section 59, allow the patentee to amend his complete specification in such manner and subject to such terms as to costs, advertisement or otherwise, as the Appellate Board or the High Court may think fit, and if, in any proceedings for revocation the Appellate Board or the High Court decides that the patent is invalid, it may allow the specification to be amended under this section instead of revoking the patent

• Where an application for an order under this section is made to the Appellate Board or the High Court, the applicant shall give notice of the application to the Controller, and the Controller shall be entitled to appear and be heard, and shall appear if so, directed by the Appellate Board or the High Court
• Copies of all orders of the Appellate Board or the High Court allowing the patentee to amend the specification shall be transmitted by the Appellate Board or the High Court to the Controller who shall, on receipt thereof cause an entry thereof and reference thereto to be made in the register

Section 59

Supplementary provisions as to amendment of application or specification

(I) No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment

(2) Where after the date of grant of patent any amendment of the specification or any other documents related thereto is allowed by the Controller or by the Appellate Board or the High Court, as the case may be, —

• the amendment shall for all purposes be deemed to form part of the specification along with other documents related thereto;
• the fact that the specification or any other documents related thereto has been amended shall be published as expeditiously as possible; and
• the right of the applicant or patentee to make amendment shall not be called in question except on the ground of fraud.

(3) In construing the specification as amended, reference may be made to the specification as originally accepted

Section 78

Power of Controller to correct clerical errors etc.

• Without prejudice to the provisions contained in sections 57 and 59 as regards amendment of applications for patents or complete specifications or other documents related thereto and subject to the provisions of section 44, the Controller may, in accordance with the provisions of this section, correct any clerical error in any patent or in any specification or other document filed in pursuance of such application or in any application for a patent or any clerical error in any matter which is entered in the register
• A correction may be made in pursuance of this section either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request
• Where the Controller proposes to make any such correction as aforesaid otherwise than in pursuance of a request made under this section, he shall give notice of the proposal to the patentee or the applicant for the patent, as the case may be, and to any other person who appears to him to be concerned, and shall give them an opportunity to be heard before making the correction.
• Where a request is made under this section for the correction of any error in a patent or application for a patent or any document filed in pursuance of such an application, and it appears to the Controller that the correction would materially alter the meaning or scope of the document to which the request relates and ought not to be made without notice to persons affected thereby, he shall require notice of the nature of the proposed correction to be published in the prescribed manner
• Within the prescribed time after any such publication as aforesaid any person interested may give notice to the Controller of opposition to the request, and, where such notice of opposition is given, the Controller shall give notice thereof to the person by whom the request was made, and shall give to him and to the opponent an opportunity to be heard before he decides the case.

Annexure 1

• http://ipindiaservices.gov.in/decision/1608-CHENP-2008-14548/1608-CHENP-2008refusal.pdf
• http://www.uspto.gov/web/offices/pac/mpep/s714.html
• http://www.japaneselawtranslation.go.jp/law/detairprintID=&id=42&re=028zvm=02
• https://www.eposorg/law-practice/legal-texts/htmllepc/2013/e/ar123.html
• Section 10(4A) of Indian Patents Act: In case of an international application designating India, the title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of this Act