Article
Disclaimers – A credible way of amendment in patent claims and specification
By Dr. P. Mahalakshmi and T. Srinivasan
One of the permissible ways of amendments to claims and/or specification is to incorporate suitable disclaimers during the patent prosecution and at the post grant stage. The article in this issue of IPR Amicus aims to bring down the perspectives of the use of disclaimers as a provision to amend claims and/or specification. It focusses on provisions available under Section 59 of the Patents Act, 1970 and a glimpse on such provisions in major jurisdictions such as US and EU that are of greater interest. According to the authors, disclaimers shall be allowed provided they comply with the requirements pertaining to patentability, clarity, conciseness, support and sufficiency as set forth in each of the jurisdiction. They also state that the use of disclaimers is not forbidden but the disclaimers need to be prudently used to satisfactorily protect the invention and to hold a valid patent.
Ratio decidendi
- Patent – Amendment of claim – Section 59 is not to be used for wrong understanding of language – Madras High Court
- Patent – Similarity of transmission of sensor data in prior art – Difference in the manner in which data transmitted is relevant for claim – Madras High Court
- Patentability – Exclusion by Section 3(c) will only apply to process of finding a hitherto undiscovered non-living substance by identifying and isolating it from nature – Madras High Court
- Patent – Objections under Section 10(4) on incomplete specifications in patent claim – Controller to provide detailed exposition of non-compliance specifics – Delhi High Court
- Trademark – Defendant’s plea of invalidity of registration of plaintiff’s trademark not necessarily to be taken only in written statement – Madras High Court
News Nuggets
- Patent for invention to enhance appetite in animals is not deniable citing Section 3(i)
- Patent – Controller is required to scan through written submissions of inventor meticulously
- Trademark – Non-compliance of Rule 33 of Trademark Rules, 2002, relating to submission of translation, is not fatal
- Trademark – Word mark ‘TAXTAM’ is similar to ‘TAXTIM’
- Trademark – Term ‘KARAIKUDI AACHI BRIYANI MANDI’ is similar to ‘AACHI’
- Trademark – Word ‘Jindal’ cannot be monopolized – Registrant of mark lacking inherent distinctiveness is powerless to restrain others
