Any amendment by way of disclaimer, correction, clarification, or explanation, and for the purpose of incorporation of actual fact is allowed, provided the effect of the amendment is not to broaden the scope of the specification and the amendments which fall within the scope of the unamended claim
Amendment of the patent claims has been one of the most critical and strategic decisions that needs to be made during the lifetime of the patent. Both the pre and post grant amendments can be of strategic importance in determining the economic value of the patent. Indian patent statutes make provisions for the amendment of patent both before and after the grant of the patent. In this article, we shall discuss the extent of amendment of the claims during prosecution phase of the patent application, in light of a recent Delhi High Court order in Nippon A&L INC. Vs. The Controller of Patents1.
The invention before and after amendment need not be identical before acceptance
The issue relating to the amendment of claims having different scope than the originally filed claims came before the Delhi High Court in an appeal challenging the order of the Controller of Patents passed under section 15 of the Patents Act, 1970 in Nippon A&L Inc. patent application bearing no. 201617003704. The Controller rejected the application primarily because the new set of claims was beyond the scope of the original claims. The original claims were ‘product claims’ which were sought to be amended by the Appellant to ‘method/process’ claims. Further, the amended claims lacked inventive step.
The actual issue before the court was whether the ‘product-by-process’ claims as originally filed could have been amended into ‘process/method’ claims or not. Detailed arguments were made by both the parties and a single judge bench comprising Justice Pratibha M. Singh held that the amendments to a patent specification or claims prior to grant ought to be construed more liberally than narrowly. The court further added that the only consideration that must be kept in mind is that the amended claims are not inconsistent with the earlier claims in the original specification.
The court further held that an invention before and after amendment need not be identical in case of amendment before acceptance “so long as the invention is comprehended within the matter disclosed”.
Legal Provisions Regarding Amendment
Chapter X and Sections 57 read with Section 59 deal with the amendment of applications and specifications.
Section 57 of the Patents Act, 1970 provides that all requests for the amendment of application and specification or any document relating thereto must be made before the Controller of Patents along with the statement regarding the nature of the proposed amendment, and the particulars of the reasons for which the application is made. The decision to allow or refuse the amendment is completely the discretion of the Controller.
Section 59 of the Act, provides that the permissible amendment must fulfill the following conditions:
1. The amendment is made by way of disclaimer, correction, clarification, or explanation, and
2. The amendment is made for incorporation of actual fact, and
3. The effect of amendment should not be to amend the specification to claim/describe any matter which was not disclosed in substance or shown in the original disclosure, and
4. The amended claims must fall within the scope of the unamended claim.
Most importantly while construing the specification as amended, reference may be made to the specification as originally filed.
Important Findings Of The Court
Every amendment must comply with the afore-mentioned four conditions provided under section 59 of the Act.
The Court further opined that the phrase in Section 59(1), “except for the purpose of incorporation of actual fact” provides expanded powers to amend the claims. Therefore, any amendment by way of disclaiming certain parts of the claim and claiming only a specific part of the invention is an allowable amendment. The court further held that if the new claims are available in the original description, such amendment is allowable. Therefore, the applicant can change the category of the claims from product-by-process claims to a process claim, provided the process was present in the original disclosure as converting the product claims to process claims amounts to curtailing the scope of the protection sought.
The Court also relied upon the Report on the Revision of the Patents Law (1959) by J. N. Rajagopala Ayyangar (hereinafter “Justice Ayyangar Committee Report”), which specifically mentions that the scope of an amendment before acceptance ought to be wider than that after acceptance because at the former stage, the specification is not disclosed to the public and such amendments are necessary to afford to the applicant, the benefit of the invention which he has disclosed in his complete specification ought to be available to him.
The court further reiterated that if the amended claims define any ‘new’ features, hitherto not defined in the body of the claims, then they should not be allowed but if they are clarificatory or disclaim earlier claimed features, they can be allowed.
The Court concluded that the Ayyangar Committee Report, purported and intended to give broader and wider permissibility for amendment of claims and specification prior to the grant and restrict the same post the grant and advertisement thereof. Court further said that the Report is also categorical in its observation that the invention before and after amendment need not be identical in case of amendment before acceptance “so long as the invention is comprehended within the matter disclosed”.
Strategic advice regarding amendments:
The amendments to a patent specification or claims prior to grant ought to be construed more liberally rather than narrowly
Relying upon this judgment, it is clear now that the amendments to a patent specification or claims prior to grant ought to be construed more liberally rather than narrowly.
However, the legislative material and the statutory provisions require that nothing new should be permitted to be inserted in the specification or claims. So long as the invention is disclosed in the specification and the claims are being restricted to the disclosures already made in the specification, the amendment ought not be rejected, especially, at the stage of examination prior to grant.
Further, where the applicant seeks to narrow down or crystalize the claims, ultimately limiting the scope of invention, the amendment ought to be ordinarily allowed. The only consideration that must be kept in mind is that the amended claims are not in consistent with the earlier claims in the original specification.
This judgment has clarified the position regarding amendments. Any amendment by way of disclaimer, correction, clarification, or explanation, and for the purpose of incorporation of actual fact is allowed, provided the effect of the amendment is not to broaden the scope of the specification and the amendments which fall within the scope of the unamended claim.
Disclaimer – The Legal News expressed in this article are the personal views of the author and are purely informative in nature.
Reference Link: https://www.legaleraonline.com/intellectual-property/intellectual-property-protection-protecting-your-creative-business-ideas-832954?infinitescroll=1