Amendment of patent applications and patents in India
By Amit Koshal
The Indian Patents Act, 1970 (“the Act”) provides for amendment of an application for a patent or a complete specification or any related document, at any time either before or after grant of the patent, if the Controller so thinks fit and subject to certain conditions. In general, amendments to patents and applications are governed by Sections 57 and 59 of the Act, which stipulate that such amendments can be made only by way of disclaimer, correction or explanation without addition of new subject matter. Additionally, Section 78 empowers the Controller to correct any clerical error, either upon a request made by any person interested or even without such a request.
In the case of Press Metal Corporation Ltd. v. Noshir Sorabji Pochkannawalla [AIR 1983 Bom 144], it was held that while Section 78 empowers the Controller to correct clerical errors, it does not empower the Controller to make an amendment suo motu. Thus, amendments have to be necessarily made under Section 57 only.
This position was reiterated in the case of Aia Engineering Ltd. v. Controller of Patents [2007 (34) PTC 457 Del], wherein the High Court of Delhi drew a distinction between Section 78 which deals with power of Controller to correct clerical errors and the powers to be exercised under Section 57 regarding 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.
The nature of amendments that are admissible was considered by the Intellectual Property Appellate Board (IPAB) in Solvay Fluor Gmbh v. E.I. Du Pont. In this case, Du Pont sought to amend the specification after Solvay filed for revocation of Du Pont’s patent under Sections 3(d) and 3(e) as non-patentable subject matter. IPAB, in its order, mentioned that it is possible to make amendments to the specification for overcoming objections raised under Sections 3(d) and 3(e) if the amendments were related to showing technical advance due to the combination of elements and if the amendments complied with the requirements of Section 59, i.e., were either made as disclaimer, correction or explanation. According to the IPAB, the amendments made by Du Pont in this case fell under the purview of ‘explanation’ of the subject matter and hence the amendments were allowed.
The extent to which amendment would be allowed by way of explanation remains to be seen. For example, if an element or process step is depicted in the drawings, but not described in the specification, would the applicant be allowed to amend the specification to include the corresponding description for explanation? Also, would incorporation of test results or details of prototypes in the specification be allowed at a later stage by way of amendment, especially after grant, considering that under Section 59(2)(c), the right of a patentee or applicant to make an amendment after grant cannot be questioned except on the ground of fraud. For answering such questions, courts will have to take into account the requirement of Section 59(1) that the amendments can be made only for the purpose of incorporation of actual facts without adding new subject matter. In particular, when the specification is amended, the subject matter added in the specification should already be disclosed in substance in the specification and nothing must be added which is beyond the scope of the subject matter disclosed. Similarly, when the claims are amended, the amended claims should fall wholly within the scope of the original claim. Hence, it would be noteworthy to see how the courts set out the boundary conditions for amendment of specification.
Interestingly, Section 57(5) specifically allows the amendment of a priority date of a claim. In essence, it provides an applicant with the opportunity to correct the priority date if the patent application had been filed with a wrong priority date. However, in the case of Nippon Steel v. Controller of Patents [W.P (C) 801/2011] 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 amendment remains to be seen.
[The author is an Associate, IPR Division, Lakshmikumaran & Sridharan, New Delhi]