Amendments to a patent application are an essential element in demarcating the scope of inventions. In India, claim amendments are governed by Sections 57 to 59 of the Patents Act, 1970. Amendments in patent applications are a general feature of patent prosecution worldwide. From requiring the title to conform with claims in India to conforming to the whole description in Europe, different jurisdictions have their own requirements. However, since claims determine the value of a patent, it is important that claim amendments are treated with discretion. It is essential to ensure that the language of claims which get granted, is in sync with the objective of the applicant.
Patent claims must be amended using the prescribed Form 13, alongside payment of the prescribed fee. To amend a claim, the applicant must present the amending document containing the marked-up claim highlighting the amendments in the original claims. A subject matter that has been added must be underlined, and strike-through should be used to indicate that the material has been deleted.
Importance and requirements of amendments in claims:
Claims form an important part of a patent specification as they determine the boundary or extent of protection granted to an applicant/patentee. As stated under Section 10(4) of the Act that 'Every complete specification shall: © end with a claim or claims defining the scope of the invention for which protection is claimed.' Therefore, they are indispensable in laying out the scope of monopoly rights claimed.
Claim amendments are widely acknowledged across several jurisdictions and have been part of the Indian patent system since 1911. An Applicant can modify the scope of the protection being asserted by amending the claims. However, an applicant/patentee does not have an unbridled right of claim amendment. The assessment of whether an amended claim is allowable is done by comparing the proposed amendment with the claims before the amendment and depends on the assessment of the Controller. The amendments must fall within the scope of the claims as they existed before the amendment and must not expand the scope of the invention.
Since amendments outline the scope of protection of the invention, it is important to understand the legal provisions underlining claim amendments.
Need for Amendments:
Some of the following reasons to necessitate amendments are:
- To address objections raised in FER by the Examiner;
- Obtaining protection with the commercial interest of the applicant, which may have evolved post-filing of the application.
- Maintaining uniform stand with parallel jurisdictions (mainly the US and EP prosecution).
- Amending an error/oversight that resulted in an inadvertent exclusion of a critical claim or feature from a claim set, despite its presence in the specification.
- For meeting requirements under Section 2(1)(j) or 3 of the Indian Patents Act, 1970.
Thus, the provisions in patent laws that provide for claim amendments, play a critical role in maintaining the patent ecosystem. In India, Section 57 http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps57.html, read with Section 59(1) of the Act governs amendment of claims. In practice, the latter is of essence to determine the nature of amendments that can be carried out in India.
Section 59(1) of the Patent Act and its Intent:
1Section 59(1) of the Act reads as follows:
"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."
The above interprets that amendments can be permitted for incorporation of an 'actual fact by way of Disclaimer, Correction or Explanation;
provided that the amendment is supported by either the original specification or the original claim, and not necessarily both. This intention of the legislature appears to be clear from the insertion of the word 'OR' that bifurcates the second half of the provision to present a dichotomy.
However, the IPO often appears to employ a restrictive interpretation of this section, thereby limiting the kind of amendment an applicant can carry out. The Controllers at IPO accept deletion of claims, the addition of a new claim, though supported by the original specification, is usually rejected or is quite difficult to contest.
2Deletion involves removing patent claims, while amendment actions include revision of claims, merging of claims, and rewriting certain claim specifications. To delete a claim, the provisions of Rule 20(1) of the Patent Amendment Rules state that applicants may delete a claim according to the provisions of rule 14. As 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 as 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 further clarifies the procedure for deleting claims as stated within 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.
Section 59(1) is the most important provision which provides applicants an opportunity to correct the scope of the claims or to explain an existing claim better. The sanctity and the intent with which this section was incorporated into the Act must be preserved and the extent to which it allows for amendments in claims and/or specifications must be carefully contemplated.
3Consequently, the IPO can issue detailed guidelines for amendments under Section 59(1), as differences in understanding the permissibility of amendments under the section are leading to inconsistent outcomes and commercially unviable options for the applicant. For a uniform approach, the IPO may also consider regular training of examiners on accurate interpretation of the section along with best international practices in this area.
Moreover, the current patent laws already include provisions that restrict patentable subject matter in India. Thus, providing clarity and leveraging on possible amendments under Section 59(1) will only encourage applicants to file more patent applications in India, and benefit the patent ecosystem of the country.
Claim amendments form a crucial role in delineating the extent of monopoly rights that a patentee is granted in an invention. Sections 57 and 59 of the Act provide an important safeguard in reducing the scope of misuse and unjust expansion of claims. However, there must be a consistent interpretation of these provisions. Interpreting them restrictively and disallowing legitimate amendments shall unduly affect the interests of a genuine applicant/patentee, creating room for possible infringement of rights.
With time and evolving jurisprudence, we hope that more decisions in the matter can help protect the rights of the applicant(s) effectively.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.