Amending Patent Claims
Legal Provisionals
Patents can be amended following the procedure stated in sections 57 and 59 of the Indian Patent Act, read with rules 81 and 83 of the Patents Rules 2003. Section 59 states that amendments are permitted only through corrections, explanations, and disclaimers.
Thus an amendment is allowed in the following circumstances :
- to rectify a mistake that has arisen during the drafting of the patent specification that is not an error of judgment;
- to provide further clarity concerning the invention and provide a disclaimer to limit the invention’s scope.
Certain circumstances warrant an amendment to be made, such as; considering objections because of the prior art, meeting the requirement as per sections 3 and 2(1)(j) of the Indian Patents Act, 1970, and the need to rectify an oversight of an omission of a vital claim.
It is important to note that since any amendment to a patent claim has a retrospective effect, patent applicants cannot expand the scope of the original claim or include any other subject matter. This would be unfair to other innovators. Thus amendments that are beyond the scope of the unamended claims are prohibited. The amendment must pertain to a matter previously mentioned in the patent specification.
Section 59 (2) (C ) further states that a patent applicant’s right to make amendments after the patent has been granted cannot be interfered with unless by allegations of fraud. Thus, it may be inferred that the right to amend the patent claim is a well-protected right, the extent of which has been defined under the provisions of the patent act. Thus the provisions concerning amendments of patents are sections 59 and 59 of the patent act, read with rules 81 and 83 of the Patent Rules 2003.
Applicants may file Amendments relating to claims, description, and priority dates can be filed anytime during the application’s pendency to overcome the Controller’s objections, after the grant, and during invalidation proceedings.
Amendment Procedure
Patent claims must be amended using the prescribed Form 13, alongside payment of the prescribed fee. At this juncture, it is essential to note that due care must be exercised while drafting an application to amend a patent claim if it is subsequently proven that the approval to amend the claims was obtained by fraud, the patent that has been granted may be revoked as per Section 64(1) (o) of the Act.
To amend a claim, the applicant must present the amending document containing the modified claim with a complete list of all the initial claims. The claims of the amending document should be characterized with the categories of “Original,” “currently amended,” “previously presented,” “canceled,” “withdrawn,” “new,” or “not entered.” A subject matter that has been added must be underlined, and strike-through should be used to indicate that the material has been deleted.
Filing a patent application in India allows the applicant to file a corresponding application for the same invention as per the Patent Cooperation Treaty. The corresponding application is filed within 12 months from the filing date in India. A PCT national phase application must be filed within 31 from the international filing date or the priority, depending upon earlier. The Patent Cooperation treaty makes it possible to seek patent protection in many countries by filing a single international patent application instead of separate national patents. However, the patent granting depends upon the national phase application assessed per the patent law of that particular jurisdiction. Article 19 and 20 of the treaty provides for the amendment processes of a patent. The national phase is followed by the international stage and consists of reviewing the patent application in the patent offices of specific countries.
Section 57 of the Indian Patents Act allows the Controller to amend the application only upon an application to amend made by the applicant. Section 58 will enable applicants to present their amendment suit before the appellate board or High Court.
Case Laws
AGC Flat Glass Europe vs. Anand Mahanjan – This is an example where the Delhi Court allowed the amendment to occur. The post-grant amendment sought to clarify the scope of an invention about a mirror with no copper layers. The applicants wanted to clarify the invention’s scope by adding the phrase “a sensitizing material, typically in” to the original claim of “at least one material selected from the group.” The court held the amendment as necessary to clarify the pre-existing claims and specifying the type of material did not indicate widening the scope of the claims.
Enercon ( India ) Limited vs. Alloys Wobben– This is an example of a case wherein the IPAB did not allow the amendment. The invention, in this case, pertains to a ‘wind power installation.’ The court did not allow the original claim of “a rotor blade……which suitably adjust … of other rotor blades” to be amended as “each rotor blade” and “the adjusting device… of the other rotor blade or the other rotor blades”.The board was of the opinion that such an amendment would broaden the scope of the claims.
Nippon Steel Corporation vs. Union of India refers to section 57 (5) of the Patents Act. The applicant, in this case, wanted to change the application’s priority date. The Controller was requested to change the application’s priority date under section 57(5) of the Patents Act. An applicant must request an examination(RFE) of the patent within 48 months of the application’s priority date. Upon the expiry of the said 48 months, Section 11B of the Patents Act, read with Rule 24B of the Patents Rules 2003, states that the application will not be examined and treated as withdrawn by the applicant. There was an error in the present case while entering the date of filing the RFE into the database. The request for examination was delayed by eight months.
Thus, the applicants intended to amend the application to change its priority date. The Controller rejected the following proposal of the applicants as the RFE was not filed within the prescribed period of 48 months. Thus, the application stood withdrawn, and no further amendments can be made in the absence of a valid application in law. Imp of this case – stick to the timeline; this judgment was further upheld in Sphaera Pharma, Pte Ltd vs. Union of India. In this case, the court strictly held that the prescribed period of 48 months is mandatory in nature and must be adhered to regardless of any technical error.
Solvay Fluor Gmbh v E. I Du Pont – In this case, the amendments were allowed as they were by way of explanations. Solvay had filed for revocations of Du Pont’s patents based on the non-patentable matter as stated under sections 3(d) and 3 (e) of the Patent Act 1970. To overcome these objections, Du Pont sought to amend the specifications. The amendments proposed were technical advancements through a combination of the elements. The invention was related to a “fire extinguishing composition’. The IPAB allowed for the amendments as they were within the ambit of section 59(1). Imp of this case – amendments are permitted to overcome revocation suits.
Diamcad and SS Borisovich v Sarin Technologies and Controller of Patents and Designs – In this case, the patent application was found to be insufficiently described. To rectify this, the patent applications made several amendments to the description, and the IPAB rejected the amendments as they were not disclosed implicitly in the original specification.
Spice Mobiles and Samsung India Electronics vs. Somasundaram Ramkumar 2012-the specification relating to a “mobile phone with a plurality of SIM cards allocated to different communication networks” was amended to include modified features of the circuitry that accommodated two or more SIM cards and various other features such as headphones and earplugs. These amendments were not allowed as there was no explicit or implied mention of the elements concerning the amendments in the initial patent application’s original specification.
Deleting Claims
To begin with, it must be noted that the deletion of claims and their amendments are distinct acts. Deletion involves removing patent claims, while amendment actions include revising claims, merging claims, and rewriting certain claim specifications. To delete a claim, the provisions of Rule 20(1) of the Patent Amendment Rules 2016 ought to be followed. The proviso to rule 20(1) of The Patent Rules 2003 states that applicants may delete a claim according to the provisions of rule 14.
Per the Patent Amendment Rules 2016, the applicant may directly delete any claim that he wishes to enter India’s national phase. An amendment application to delete a claim is no longer required per the amended rules. Thus, the applicant is not required to pay the excess claim fee for filing the claims intended to be deleted during the national phase of the application. Patent Office Practice and Procedure’s updated manual in 2019 clarifies the procedure for deleting claims as stated in the Patent Amendment Rules 2016.
The manual clarifies that claims against Sections 3 and 4 of the Indian Patent may be removed during the preliminary stage. Applicants are also permitted to delete patent claims granted to bring their application within the purview of the patent provisions of other jurisdictions. However, an amendment for claims must be done by filing a separate request following the previously mentioned sections of the Indian Patent Act 1970.
