Introduction

The Amendments of a patent applications and patents is one of the most essential features of patent prosecution. Patentees or applicants often request amendments of patent claims or description during prosecuting a patent application or defending a revocation or in responding an objection raised by the Examiner. The main intent of such requests are to clarify the invention better or to differentiate how the invention is different from prior art. The following article shed light into the various provisions of the Indian Patents Act 1970 that deals with the amendments of patent applications and patents. Further, few examples of cases concerning amendments are also provided for clearing the air surrounding the scope of permissible amendments.

Provisions of the Act and Nature of Amendments

Section 57 and 59 of the Indian Patents Act 1970 stipulates ("the Act") 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. Section 59 elaborates these conditions which are as follows, an amendment,

  1. Must be by way of disclaimer, correction or explanation
  2. Must be for incorporation of actual fact
  3. Will not be allowed if it describes matter not in substance or shown in the non amended specification, or any claim of the amended specification does not fall wholly within the scope of a claim of the non amended specification.

Amendments relating to Section 571, 582 and 78:3

  1. Change in name, address, and address for service: Such document/information can be amended at anytime during the pendency of application and also after grant.
  2. Complete Specification including claims, description, and priority date of a claim: Such information/Document can be amended at anytime during the pendency of the application in order to overcome Controller's objections; It is possible to amend the aforesaid either after grant or in invalidation proceeding. It is to be noted that post-grant amendments will be published. Section 78 empowers Controller to correct any clerical error, which may either be requested by any person interested or even without such a request. Amendments under Section 57 and 58 may be sought by only the applicant/patentee whereas amendments under Section 78 may also be requested by an interested person.

Amendments relating to Section 174:

Filing date can be amended as per Section 17 at anytime after filing the application, but before the grant of the patent. Section 17 may also be invoked in case the Controller requires that amendments be made to the specification and if such amendments cannot be allowed without post-dating the application to a later late.

Amendments relating to Rule 137:

As per Rule 137, any document for the amendment of which no special provision is made in the Act may be amended either at anytime during the pendency of application or after grant. The amendment of such document must not cause harm to the interests of any person. Also, the Controller may direct terms as he thinks fit..

Footnotes

1 https://indiankanoon.org/doc/1914819/

2 https://indiankanoon.org/doc/638865/

3 https://indiankanoon.org/doc/672407/

4 https://indiankanoon.org/doc/1284165/

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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.