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A cautionary tale of amendments to patent specifications in India

August 20, 2021
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This article is written by Ananya Singh, pursuing a Diploma in Intellectual Property, Media, and Entertainment Laws from Lawsikho.com.

Introduction

It is a turbulent and exciting time for patent practice with the Indian Patent Office (IPO) beginning to streamline its service and patent guidelines; innovators being all the way more aware to engage with the Intellectual Property (IP) system to enforce their patent rights followed by the rise of opposing originator’s patents by generics. In the course of these developments, one ongoing concern that regularly emerges is amendments of patent specifications. 

In the majority of the applications, patent specifications are amended before being granted, to either clarify and/or distinguish concerned inventions from the prior art. The applicant can suo moto make the request to amend his/her provisional patent specification prior to filing the final specification. The controller can also raise objections to the specifications in the First Examination Report (FER), and to overcome the same the applicant must make amendment(s). In India, the prerequisite to make such amendments is that the title must always conform with the claims made in the specification. Since the value of a patent is determined by the claims, it is imperative that the process of making claim amendments is handled with great caution. However, due to the lack of clarity relating to the nature and the extent to which amendments are permissible, these requests frequently run the risk of being refused. With this in mind, this article will discuss the practice of permitting specification amendments in a patent application by the IPO, analyse recent cases, and shed light on the gaps that need to be filled. 

Important provisions and analysis

The Patents Act, 1970 (the Act) read with the Patent Rules, 2003 (the Rules) provides for amendment option and procedure in various provisions, as mentioned below:

Types of documents and information that could be amended

Relevant Sections and Rules

Time period

Remarks

Changes to name, address, and address for service.

Sections 57, 58, 78

  • At any point during the pendency application.
  • At any point after the grant of patent.
 

Entire specification including description, claim and priority date of a clam.

Sections 57, 58, 78

  • At any point during the pendency application.
  • At any point after the grant of patent.
  • To overcome objections raised by the controller. 
  • During an invalidation proceeding. 
  • Amendments under Sections 57 and 58 are requested only by patentee/applicant. 
  • Amendments under Section 78 may be sought by any interested party.
  • Post-grant amendments are published.

Filing date

Section 17

At any point after filing the application but prior to the patent grant.

The controller may also invoke this section to make amendments in the specification and the said amendments can only be made by post-dating the application. 

Any document may be amended even if no special provision is made in the Act.

Rule 137

  • At any point during the pendency application.
  • At any point after the grant of patent.
  • The amendments to such documents should not prove detrimental to any interested person.
  • The controller may also include terms that he/she deems fit.  

 

Section 59 (1) of the Act talks about the three kinds of permissible amendments (as mentioned in Table 2) for incorporating an ‘actual fact’:

Kinds of amendments

Relevant sections

Scope

Disclaimer

Section 59

For removal of doubts and limiting the invention.

Correction

Sections 59,78

Correction of a mistake made while preparing the specification and not merely making a correction relating to an error of judgement.

Explanation

Section 59

Clarifying the invention without the addition of any new subject matter or broadening the scope of claims.

 

The proposed amendment(s) has to be supported either by the original claim or the original specification, however, not necessarily both. The legislative intent can be derived by the careful insertion of the word “or” in Section 59(1) that divides the second half of the provision from the first half. It reads as follows: “….and 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 that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.”

However, the approach followed by the IPO in interpreting Section 59(1) appears to be extremely restrictive in nature. It resultantly signals limitations on the nature of amendments an applicant can carry out. For example, when an applicant wanted to add clarity and ensure that embodiments completely describing its pharmaceutical products are explicitly captured in the claims, the applicant’s request for bringing independent claims for an independent claim relating to composition was rejected by the IPO, even though universal approach directs towards ensuring that all the granted claims must accurately reflect the commercialized product. In another example, when an applicant requested to delete the preferred embodiments from the claims and include the same in a new set of dependent claims, to overcome the objection raised by the IPO, its request was rejected. 

Moreover, it has been observed that IPO accepts deletion of claims; nonetheless, the addition of a new claim despite being supported by the original specification in most cases is refused. The rationale provided for doing so is that Section 59(1) does not provide for an ‘addition’. Following the same logical scheme, it can be said that the same section does not provide for ‘deletion’ either. Still, IPO accepts deletion with no reservations. It is suggested that such additions while interpreting Section 59(1) should be viewed as a ‘correction’ relating to the scope of claims and incorporation of a fact, as a result of being missed out in the original claims.  

Similarly, even when Section 59(1) does not explicitly or implicitly bar an amendment to the preamble of a claim if it is supported by the initially filed specification, the IPO frequently rejects these kinds of amendments stating that it alters the scope of as-filed claims. This leads to an incomplete interpretation of this section by the IPO and, by extension, leaves applicants with limited options despite abiding by Sections 3 and 2(1)(j) of the Act. When it comes to disclaimers, be it a positive disclaimer or a negative disclaimer is permissible under the scheme of Section 59(1), however, the IPO seldom allows to include negative disclaimers. 

The reasons behind the restrictive interpretation of Section 59(1) could also be because of the scare discourse available particularly for this section from the Intellectual Property Appellate Board (IPAB), high courts, and the supreme court. The limited number of judicial precedents results in inconsistent outcomes and when combined with a subjective reading by the IPO further leads to the practice of restrictive interpretation. 

Legal precedents 

The IPAB also pondered on the issue: “Does Section 57(6) permit an applicant to file an application which is defective in its description of the invention in order that he may subsequently make good that defect by providing additional further descriptive material?” while deciding the case.  It stated that: “In considering the whole question of discretion in respect of amendments under Section 57 (6) it is also necessary to take into consideration the nature and extent of the amendment, when they are primarily for explanation and it is in the public interest to allow them, in absence of very compelling reasons to the contrary. However, amendments, in any case, cannot be stretched beyond the limitations imposed by Section 59. The purpose of Section 57(6) is not to permit an applicant to file an application which is defective in its description of the invention in order that he may subsequently make good that defect by providing additional further descriptive material.”

Suggestions and conclusion

It goes without saying that the legislative intent with which Section 59(1) of the Act was drafted should be preserved and great caution should be exercised while rejecting or allowing an amendment(s) either in a claim(s) or a specification(s). It is so because this is the only provider that allows an applicant to explain their claim in a better manner or correct the scope of claims. It is suggested that the IPO may frame detailed guidelines relating to amendments and its application under Section 59(1) by incorporating best international practices in this area, and conduct training programmes for examiners for the same to have consistent interpretations. This approach may help in curbing down commercially unviable options and inconsistent outcomes for the applicants. 


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