Focus keyword- Patent Amendment
Additional keywords- Section 57, amendment of specification, supplementary provisions
Patentees and applicants often make a request to the controller to make a change in the application or specifications or any other documents in relation to it. Such changes are requested to be made to differentiate the product from others during revocation etc. and establish as to how it is superior to the prior dated products. The amendment option and procedure are discussed in various provisions of the Indian Patents Act.
When an application for patent is made to the controller, he can refuse it when it is contradictory to the provisions of the Indian Patent Act. When the application is found to be contrary to the patents act, the controller shall either completely refuse or require the applicant to make amendments to the applications according to his specifications.
After filing an application for patent but before the grant of it, the controller can change the date of filing at the request of the applicant. But the change of date must not exceed 6 months from the actual date of filling.
Under sec 57 of the Indian Patents Act, the controller may amend the application for patent or the complete specification or any document relating thereto to be amended subject upon an application made by the applicant or patentee under this section. Thus, a controller cannot suo moto amend the above mentioned and that the power of the controller to correct the clerical error under sec 78 does not empower him to make amendments. Also, the application for amendment can be made both before the granting of patent and after granting of a patent. But, the power of the controller to make amendments under this section is subject to one important condition that he cannot pass any order allowing or rejecting the application for an amendment if any suit regarding the infringement of trademark or a proceeding for revoking a patent is pending before the High Court.
The application for making an amendment under this section must mention the nature of the amendments proposed to be made and the reason for making such an amendment. When an application requesting to make amendments to the specified documents is filed after the granting of the patent i.e if the application is filed by the patentee, the application along with nature of the proposed amendment is published inviting any interested person to make opposition within the specified time. When the opposition is made within a specified time, the controller shall decide the case after giving an opportunity of being heard to the opponent and the patentee. The nature of the amendment proposed to be made in the complete specification may be with regard to the priority date of the claim.
When there is proceeding going on before the appellate board or the high court with regards to the revocation of the patent, the patentee can make an application to amend the complete specification before the appellate board or the high court before which such a proceeding is pending. When the patentee makes such an application under this section, he shall give notice to the controller and he shall be entitled to appear and to be heard by the court. When the court decided on the application made under this section, its order shall be communicated to the controller who shall make an entry in the register.
The amendment to the application of a patent, or a complete specification or any document relating thereto shall be made only through disclaimer, correction or explanation. Amendment to the above-mentioned documents shall be allowed only for the purpose of incorporation of actual fact and no new facts can be incorporated in the complete specification by making an application under sec 57. Moreover, when an application for amendment is granted post granting the patent, the fact of amending the documents or complete specification must be published as soon as possible. And that the right of the applicant or the patentee cannot be questioned on any other ground other than fraud.
The Controller may correct any clerical error in any patent or application for patent or specification or any other document upon a request in writing by any person interested or on his own accord by giving notice to the patentee or the applicant or any other person who is concerned or interested. He shall make the changes only after giving them an opportunity of being heard. When the proposed change changes the scope or the meaning of the document, shall publish the notice with the nature of the proposed correction. When a request in writing is made to the controller to change something in the document, any person interested can make an opposition to the controller within the prescribed time and the controller shall send a notice of the opposition to the person making the request. He shall decide on the request after giving an opportunity of being heard to both the parties.
RULES REGARDING THE AMENDMENT OF APPLICATION, SPECIFICATION OR ANY DOCUMENT RELATING THERETO
The application for making an amendment in the application or complete specification or any documents relating thereof must be made through Form 13. When the application is filed by a patentee i.e after the granting of a patent, the application along with the nature of the proposed amendment will be published only if it is substantive. After the publishing of the application and the nature of the proposed amendment, any interested person can make an opposition within 3 months via Form 14. If the controller allows the application of amendment, the applicant shall leave an amended copy of the application or complete specification of any other document at any appropriate office if he is required to do so by the controller.
As per Rule 137, any document for the amendment of which no special provision is made in the Act may be amended either at any time during the pendency of application or after grant. The amendment of such a document must not cause harm to the interests of any person. Also, the Controller may direct terms as he thinks fit.
In the case of Aia Engineering Ltd. v. Controller of Patents, wherein the High Court of Delhi drew a distinction between Section 78 which deals with the power of Controller to correct clerical errors and the powers to be exercised under Section 57 regarding the request for amendment of an application made by a patentee. In this case, the learned judge held that while purporting to exercise powers under Section 78 of the Act, there cannot be any amendment of the application for which the procedure of Section 57 must be followed.
In AGC Flat Glass Europe v. AnandMahanjan, the Delhi High Court allowed a post-grant amendment on the grounds that the amendment brought clarification of the scope of the invention. The applicants, in this case, wanted to insert the phrase “a sensitizing material, typically in” to the original claim which read “at least one material selected from the group”, to an invention pertaining to a mirror with no copper layers. The court stated that the addition was only sought to bring clarification to the pre-existing claim as specifying the types of materials did not broaden the scope of the claims.
In Enercon (India) Limited v. Alloys Wobben, the board did not allow the amendment of the word/phrases “a rotor blade” and “which suitably adjust …of other rotor blades” as “each rotor blade” and “the adjusting device of the other rotor blade or the other rotor blades” to an invention pertaining to ‘wind power installation’, as the board believed that the corrections would broaden the scope of the claims. The board believed that the correction expanded its scopes earlier; the adjusting device was construed to adjusting the angle of only one of the rotor blades, whereas, after the amendment, the adjusting device could be construed to adjusting the angles of each one of the rotor blades individually, in-turn expanding the scope of the claims.
In the case of Nippon Steel v. Controller of Patents,filed in Delhi High Court, the applicant tried to disown the first filing date as priority date and requested the Controller to change the priority of the application under Section 57(5) to the filing date of the subsequently filed PCT application. The High Court did not address the issue of whether such a change in priority date was admissible because the application was deemed to have been abandoned due to non-submission of request for examination in the prescribed time period. While the various provisions of Section 11 clearly point out that the priority date of a claim would have to be the earliest date, the question as to whether an applicant may be allowed to disclaim a first filing date and change the priority date to the filing date of a later application by way of the amendment remains to be seen.
The application for patent, specification or any document relating thereto is always amended before it is registered. The above-mentioned documents are very rarely granted or registered without making amendments. In order to distinguish the invention from its prior art, it is imperative to make corrections and explanations while not expanding the scope of the claims. Thus, an applicant needs to proceed with the utmost care to maintain this balance.
Press Metal Corporation Ltd. v. NoshirSorabjiPochkannawalla [AIR 1983 Bom 144] Aia Engineering Ltd. v. Controller of Patents, 2007 (34) PTC 457 Del. AGC Flat Glass Europe v.AnandMahanjan, 2009 (41) PTC 207 (Del.). Enercon (India) Limited v. Alloys Wobben, No. 109 of 2013. Nippon Steel v. Controller of Patents, W.P (C) 801/2011.
Kavitha hails from Sastra University, Thanjavur and she spends most of her time in dancing and playing chess. Her Interest area lies in Constitutional and International Law. For any clarifications, feedback, and advice, you can reach her at firstname.lastname@example.org