Provision related to amendment of patent application under Section 59 (1) of the Indian Patent Act states: 1 "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"
However, there are times when Controller objects when a claim is amended using support from the figures of the specification.
The amendment provisions have their roots in the Indian Patents and Designs Act, 1911[Indian Patents and Designs Act, 1911 at Section 17], which empowered an applicant or a patentee to amend a specification 'at any time' by submitting a written request to the Controller. The Ayyangar Committee Report [Shri Justice N. Rajagopala Ayyangar, Report on the Revision of the Patents Law (September 1959)] (the Report), noted that where the invention which emerges as a result of an amendment is different from that which was the subject matter of the specification as originally accepted, such an amendment should not be permitted. However, the Report suggested certain changes in the wordings of the statute to bring in clarity to indicate possible amendments before and after acceptance or grant of the patent. The recommendations of the Report formed the basis of Sections 57-59 of the Act.
Section 57 of the Act provides the applicant with an opportunity to amend an application for a patent, the complete specification, or any related document. Such amendments may be made by the applicant, of his own accord or to comply with the directions of the Controller, at any time. It is imperative to note that the request for amendment could only be made in relation to applications that are in existence and not for applications or patents that have lapsed [Nippon Steel vs Union of India].
Section 59 of the Act basically provides that the amendments may be made:
1. By way of disclaimer, or 2. By way of correction, or 3. By way of explanation
Therefore, Section 59(1) can be broadly considered as having two parts. The first part of Section 59(1) mandates that the amendments either in relation to specification or claims can be made if they are by way of disclaimer, correction or explanation. In the second part, Section 59(1) further proposes additional conditions, namely:
1. 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
2. Any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.
5 The above-mentioned conditions as such are not additional conditions but have to be read in conjunction with the conditions laid down in the first part. More specifically, the latter portion of Section 59 as such provides the conditions which such amendments (i.e., effected by way of disclaimer, correction or explanation) must conform to. This line of interpretation has been laid down by courts also.
6 In case of PRISM CEMENT LTD vs The CONTROLLER OF PATENTS AND DESIGNS [Order No. OA/7/2016/PT/MUM], the Intellectual Property Appellate Board (IPAB) accepted a request made by the Appellant for amending the claims. The IPAB, in their decision, held that the conditions provided in the second part of section 59 is to be read with the first part. This is to say, that even though certain amendments are made (say by way of explanation), the permissibility of the amendments has to be assessed vis-à-vis the conditions laid down in the second part of Section 59. It is likely that the aspect of scope of permissible amendments, when discussed before higher forums would yield a similar result. Until then, it can be inferred that the amendments even when performed by way of explanation, shall satisfy the second part of section 59. The IPAB applied various tests and accepted the amendments made to the claims by way of explanation. The IPAB observed that the amendments in claims were disclosed in the specification and figures. Further, the IPAB analyzed that the drawings were an integral part of the specification and disclosure of the feature of the open channels in the drawings sufficiently supported the amended claims. Thus, the IPAB allowed the amendment of the claims so far as it relates to "open channel".
An applicant needs to exercise utmost care while amending claims of a patent application, at any stage. The amendments should be done through the permissible ways as provided in Section 59 and also support for the amendments to claims can be shown from the specification and drawings.
3 Order No. OA/7/2016/PT/MUM
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