Posted On: May 30, 2022

AMENDMENT OF PATENT APPLICATIONS

Best Patent Consultants in India

INTRODUCTION
Indian Patents Act allows making amendments to any application or documents relating to filing of patents at anytime before or after the grant of patent provided Controller is satisfied regarding fulfillment of specific conditions. At Knowledgentia Consultants, we have one of the best patent consultants in India, who are well versed with all aspects of amending patents and applications filed during the whole process. Our global IPR protection services are well known among our clients not just within India but across borders as well.

PROVISIONS RELATING TO AMENDMENT
“Chapter X” of the Patents Act, 1970 along with “Chapter IX” of the Patents Rules, 2003 specifically regulate the amendment of applications and specifications.  Section 57 of the Patents Act further sets out the criteria for amendment of application and specification [or any document related thereto] before controller as mentioned below:

  1. U/s 57(1), the controller is required to allow the amendment of the application, made by the applicant in a prescribed manner (i.e., via Form-13). However it is subjected to the condition that the controller cannot allow or refuse an application for amendment if any suit of infringement or revocation proceedings are pending before the High Court pertaining to that patent.
  2. U/s 57(2), every application for amendment of patent is required to state the nature of the proposed amendment and the reason for making the application for amendment.
  3. U/s 57(3), it is mandatory for the application for amendment to be published if it relates to a patent that has already been granted.
  4. As per the section 57(4), any person interested can file for the opposition of patent in a prescribed manner (via Form-14) within the prescribed time (i.e., within 3 months from the date of publication of proposed amendment).
  5. The amendment also includes the amendment of the priority date of a claim.
  6. It is the right of an applicant to amend the complete specification in order to comply with the directions of the controller during its prosecution stage.

Section 58 of the Patents Act further allows the amendment of a granted patent during the revocation proceedings. If the court has decided that the patent is invalid, then it may allow the specification to be amended instead of revoking the patent.

Section 59 of the Act is a peculiar provision that relates to the “supplementary provisions as to amendment of application or specification”.

  1. The amendment is to be made only by way of disclaimer, correction or explanation, and an amendment is only allowed for the incorporation of actual fact. Any amendment which results in the addition of a new subject matter which was not substantially present before the amendment of the patent or the claims which does not fall wholly within the scope of a claim of specification before amendment is not allowed under the act.
  2. In case where an amendment is allowed after the grant of patent, then: the amendment is considered to form the part of specification and other related document.

The amended document(s) are required to be published as expeditiously as possible, and the right of applicant/patentee to make amendment to the application can only be questioned on the ground of fraud.

Under section 78 of the Patents Act, 1970, the Controller is empowered to correct the clerical errors, on or without a request being made by any person interested to the controller. The controller is required to provide a notice of proposal to the patentee, applicant or any other concerned person before making any amendment.

CASE LAWS

  1. AIA ENGINEERING LTD. VS CONTROLLER OF PATENTS AND ANR (MIPR 2007 (1) 257, 2007 (34) PTC 457 DEL)

In this case, the applicant requested to replace the word “roller” with “pad”, under Section 78 for rectification of obvious and clerical errors, and the same was allowed by the Assistant Controller before the grant of patent on the application. However, the Delhi high court stated that the Controller does not have the power to make any amendment suo motu, and while making any amendment the procedure of Section 57 r/w Section 59 of the Patents Act must be followed.

  1. AGC FLAT GLASS EUROPE SA VS ANAND MAHAJAN AND ORS. (I.A. NO. 13519/2007 IN CS (OS) NO. 593/2007)

In this case, an amendment was allowed after the grant of the patent. Here, the plaintiff averred that the amendment sought satisfies the conditions mentioned under Section 59 of the Patents Act, 1970 as it is by way of an explanation clarifying the scope of the invention in the light of prior art. The court allowed the amendment as merely a clarificatory/ elaborative in nature and the one which does not alter the scope of the invention.

  1. ENERCON (INDIA) LIMITED VS ALOYS WOBBEN (ORA/41/2009/PT/CH):

In this case, patent no. IN2015538 was ordered to be revoked as the amendments that were carried out were found to be beyond the scope of the original claims, and the amendments were not allowed under section 59 and 10(4) of the Patents Act, 1970.

Under section 17, the applicant can file for the post dating of the application, and the Controller may allow it if the application is made in the prescribed manner (Since there is no specific form for post-dating of the application, Form-30 is to be filed along with the prescribed fee). Under 18(1)(b) and 18(2)(b), if it appears to the Controller that the applicant’s invention can be anticipated by prior art, then may allow the applicant to amend the complete specification to his satisfaction, or he may direct for the insertion of a reference in the complete specification (under rule 31 of the Patents Rules, 2003). However, in cases where the reference has been made to another patent on direction of the controller, and the other patent, gets revoked or cease to in force, the relevant claim of other application is removed, or it is found that the relevant claim of the other application is invalidated or not infringed by the applicant’s invention, then in such case the applicant can make a request to controller for removal of reference to the other patent.

CONCLUSION
The Patents Act gives ample scope for amendment not only at the stage of patent prosecution but also after the grant of patent. In case of amendments, it is very well defined by the act, what can and what cannot be classified as an amendment along with how the amendments are to be made. However, it should be understood that most of the amendments are done at the prosecution stage of the patent. Although, there are many cases pertaining to the post-grant amendment of patent, more decision and interpretation are to required to clearly mark the lines that differentiates it from amendments at the prosecution stage. Knowledgentia Consultants, is your one-stop solution for all kinds of legal, compliance and supplemental matters concerning patents. In case of any query regarding this matter you may email us at info@knowledgentia.com or visit our website –https://knowledgentia.com/.

Aparna Jain
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