Introduction

Amendments of patent applications may involve amending any portion of either the complete specification, or any information pertaining to such patent application. Such amendments may be made at any time during a life cycle of a patent application. These amendments may be made either voluntarily or may be made to overcome objections raised by the Controller, for example through a First Examination Report (FER). The manner in which such amendments may be made are covered in Sections 57 and 59 of the Patents Act, 1970 [The Patents Act 1970, as amended by the Patents (Amendment) Act 2005] (the Act). Besides prescribing the formal procedure for making such amendments, the aforesaid provisions also lay down various conditions that need to be fulfilled for such amendments to be permissible.

Historical Background & Jurisprudence

The amendment provisions have their roots in the Indian Patents and Designs Act, 1911[Indian Patents and Designs Act, 1911 at Section 17], which empowered an Applicant or a patentee to amend a specification ‘at any time’ by submitting a written request to the Controller. The Ayyangar Committee Report [Shri Justice N. Rajagopala Ayyangar, Report on the Revision of the Patents Law (September 1959)] (the Report), noted that where the invention which emerges as a result of an amendment is different from that which was the subject matter of the specification as originally accepted, such an amendment should not be permitted. However, the Report suggested certain changes in the wordings of the statute to bring in clarity to indicate possible amendments before and after acceptance or grant of the patent. The recommendations of the Report formed the basis of Sections 57-59 of the Act.

Scope of amendments

Section 57 of the Act provides the Applicant with an opportunity to amend an application for a patent, the complete specification, or any related document. Such amendments may be made by the Applicant, of his own accord or to comply with the directions of the Controller, at any time. It is imperative to note that the request for amendment could only be made in relation to applications that are in existence and not for applications or patents that have lapsed [Nippon Steel vs Union of India].

Section 59 of the Act basically provides that the amendments may be made:

1. By way of disclaimer, or 2. By way of correction, or 3. By way of explanation

Thus, Section 59(1) can be broadly considered as having two parts. The first part of Section 59(1) mandates that the amendments either in relation to specification or claims can be made if they are by way of disclaimer, correction or explanation. In the second part, Section 59(1) further proposes additional conditions, namely:

1. 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

2. 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-mentioned conditions as such are not additional conditions but have to be read in conjunction with the conditions laid down in the first part. More specifically, the latter portion of Section 59 as such provides the conditions which such amendments (i.e., effected by way of disclaimer, correction or explanation) must conform to. This line of interpretation has been laid down by courts also.

In case of Enercon (India) v Alloys Wobben [Order No. 174 of 2013], the Intellectual Property Appellate Board (IPAB) rejected a request made by the Respondent for amending the claims. The IPAB in their decision held that the conditions provided in the second part of section 59 is to be read with the first part. This is to say, that even though certain amendments are made (say by way of correction), the permissibility of the amendments has to be assessed vis-à-vis the conditions laid down in the second part of Section 59. It is likely that the aspect of scope of permissible amendments, when discussed before higher forums would yield a similar result. Until then, it can be inferred that the amendments even when performed by way of correction, shall satisfy the second part of section 59. The position with respect to interdependency of the two parts of Section 59(1) was also recognized in case of Spice Mobiles and Another v Somasundaram Ramkumar and Others[Order No. 140 of 2012]. In this case, the IPAB observed that the additional descriptive material was added during the prosecution. The IPAB applied various tests and rejected the amendments made to the description by way of explanation. The IPAB observed that the additional descriptive material was not disclosed in the specification even implicitly. Further, the IPAB analyzed the purpose of Section 57(6) and held that the purpose is “not to permit an Applicant to file an application which is defective in its description of the invention, such that the Applicant may subsequently make good that defect by providing additional descriptive material”. Thus, the IPAB maintained that the various conditions in Section 59 have to be read as a whole.

Section 59(1) also provides that when any amendments are made to the claims, such amendments should fall within the scope of the originally filed claims. In patent application number 2584/KOLNP/2007 [2584/KOLNP/2007 - Controller’s Decision in December 2013], the Controller held that the features introduced in the newly added claims did not fall within the scope of the originally filed claims and thus such amendments cannot be considered within the limitations imposed in Section 59, i.e., such amendments are neither by way of correction, explanation, or disclaimer.

Conclusion

An Applicant therefore needs to exercise utmost care while amending a patent application, at any stage. The amendments should be done through the permissible ways as provided in Section 59 and also should not bring in new subject matter or widen the scope of the originally filed application.