Amendments to Specification and Claims

15 October 2012

The Indian Patents Act allows amendments to patent applications anytime during its pendency period, even after the patent is granted.

Amendments to the patent application can be carried out under Section 57 (1), (2), (5) and (6) and Section 59(1) of the Patents Act, and Rule 81 (1) & (2) and Rule 82 of the Patents Rules.

As per Section 59 (1) on the amendment of an application for a patent, complete specification or any document relating thereto is limited to following purposes:

 Disclaimer: For example, an Applicant can limit claims by disclaiming some of the elements for the purpose of establishing novelty, either while filing the application in view of the objection to the novelty raised by the Examiner in the first or subsequent Examination Reports, or in view of any anticipating document discovered by the Applicant himself or cited in office actions of Patent Offices of other jurisdictions.

 Correction: The correction may include the correction of any obvious typographical errors, or may correct errors which occurred during the translation, however the corrections must be verified by the Applicant.

 Explanation: For example, an explanation can be used to define any specific term or to bring in clarity or make descriptions consistent in view of the amended claims or to provide explanation of the drawing by amending the description or by amending the drawing for the purpose of explaining the amended specification, where without such amended drawing the amended specification cannot be explained.

There are no official definitions or guidelines, clarifications or specific examples for the terms disclaimer, correction or explanation. Following is case law referred to in the draft Manual of Patent Practice and Procedure, published by India’s Patent Office in 2008.

In Orissa Cement (applicant) v. Belpahar Refractories (opponent) for Opposition of Patent No. 133689, it was held that Under Section 59 of the Patents Act, 1970 an applicant for a patent may at any time apply to amend the complete specification by way of disclaimer, correction or explanation. Unless the amendment is for the purpose of correcting an obvious mistake, the following conditions must be fulfilled:

“The amended specification must not claim or describe matter not in substance disclosed in the specification before the amendment; and everything covered by an amended claim must have fallen within

the scope of at least one claim prior to the amendment. In other words any amendment should be allowed if the amended claims cover matter disclosed "in substance” in the original specification, whether or not originally claimed; and nothing outside the scope of the original claims comes within the amended claims.”

The above limitations with regard to the amendments are further bound by the following conditions:

(a) The amendment should be for incorporation of actual facts;

(b) The amended specification must not claim or describe matter not in substance disclosed in the specification before the amendment; and

(c) Everything covered by the amended claim must have fallen within the scope of at least one claim prior to the amendment. In other words, any amendment should be allowed if:

(i) The amended claims cover matter disclosed “in substance” in the original specification , whether or not originally claimed; and

(ii) Nothing outside the scope of the original claims comes within the amended claims.

An amendment of the granted patent is further governed by Section 59 (2) and (3). As per Section 59 (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:

(a) The amendment shall for all purposes be deemed to form part of the specification along with other documents related thereto;

(b) The fact that the specification or any other documents related thereto has been amended shall be published as expeditiously as possible; and

(c) The right of the applicant or patentee to make amendment shall not be called in question except on the ground of fraud.

For submitting amendments either at application stage or after grant of the patent, Form 13 is required to be filed under Rule 81 (2), giving reasons for the amendments along with the prescribed fee. The request should state the nature of the proposed amendment, highlighted in an annexed copy. Such request may also be made for amendment of the priority date as well.

If any suit for infringement is pending before a Court or any proceeding for revocation of the Patent is pending before the High Court, the Controller will not pass any order allowing or refusing the application for amendment.

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