Amending and deleting patent claims – the view from India

The Indian Patent Act sets out clear provisions on how to amend patent claims, while the Patent Amendment Rules 2016 allow claims to be deleted under certain circumstances. However, further clarity from the IP office and appellate board are needed to develop a fully uniform practice.

Filing amendments is a common feature in patent procedures and amendments can be filed at any stage of the proceedings. An application for amendment can be filed either voluntarily or in response to an objection raised in the first examination report, depending on the nature of the amendments. However, amendments at the post-grant stage are uncommon and subject to more restrictions.

The Indian Patent Act has a chapter dedicated to amending applications and specifications, wherein the applicant can, subject to certain provisions, file an application to amend the specification and/or claims. Amendments to the patent application can be carried out under Sections 57 and 59 of the Act, read with Rules 81 to 83 of the Patents Rules 2003.

Section 59(1) of the Act states that:

No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, 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.

A simple reading of this section makes clear that amendments must only be by way of:

· disclaimer, to limit the scope of the claim;

· correction of an error; or

· explanation or description of a term, feature, drawing or a unique characteristic to explain the claim better.

In addition, the proposed amendment should be wholly within the scope of the original claims.

Since amending a specification has a retrospective effect and the purpose of a patent specification is to strictly define the scope of the invention claimed, which also determines the value of the patent, it is not possible to expand the scope of claim or include additional subject matter. This is mainly because it would be unfair to third parties.

In the authors’ experience, controllers of the Indian Intellectual Property Office and the courts strictly adhere to the requirement of Section 59 to determine whether an amendment might result in broadening the scope of the claims. Moreover, an applicant must exercise due care while drafting an application to amend patent claims since, if it can be established that leave to amend claims was obtained by fraud, it may lead to the revocation of the grant under Section 64 (1)(o) of the Act.

In practice, amendments are generally permissible in cases of:

· amendments with regard to the name and address of the inventor/applicant, or the priority date of a claim or title;

· amendments in the specification to incorporate an actual fact, including to correct typographical errors and translation-related errors;

· the incorporation of reference numerals;

· the substitution of a term in a claim with a narrower term to restrict the scope of the claim;

· addressing an objection based on prior art;

· addition of feature from specification considering that amendment is within scope of original filed claims;

· combining a dependant claim into an independent claim or merging two claims;

· providing uniformity in claims across jurisdictions; and

· clarifying the meaning of a claim.

An application to amend a claim can be filed using Form 13, alongside payment of the prescribed fee. Further, according to the Patent Manual 2019, the application must “state the nature of the proposed amendment, highlighted in an annexed copy along with reasons”.

Deleting claims

An applicant can delete a claim under the proviso to Rule 20(1) of the Patent Amendment Rules 2016 at the time of national phase entry of an international application filed under the Patent Cooperation Treaty, without filing a request for amendment or paying an additional fee – only fees in terms of the claims which are filed need to be paid. The revised Manual of Patent Office Practice and Procedure issued in 2019 clarifies the provision for deleting claims. This has provided much-needed relief for applicants since claims that are not patentable, that fall squarely within the given provisions of Sections 3 and 4 of the Act or that are of no commercial value in India can be cancelled at a preliminary stage, thereby allowing the applicant to avoid an excess claim fee. Moreover, applicants can delete claims to bring their application into line with patent claims filed or granted in other jurisdictions. Voluntarily removing claims in this way makes the process smoother, quicker and more cost efficient. Initially, such deletion was considered to be an amendment and was scrutinised as such under Sections 57 and 59. However, under the new provisions, only the deletion of claims is permissible, and the applicant cannot make any other amendment (ie, addition, revision, merger or modification). This provision has prospective effect and applies only to national phase applications filed after the rules came into effect on 16 May 2016.

Going forward

The stance taken by the Indian Intellectual Property Office regarding claim amendments is in accordance with Indian law, which seeks to provide a balance between the rights of inventors and those of third parties. Thus, special care must be taken when drafting patent claims and any amendment must have support in the original specification. Further clarity from the IP office and more decisions from the IP Appellate Board are necessary to adapt a uniform practice in interpreting the language of Section 59 of the Indian Patent Act, and any guidelines regarding such are eagerly awaited.

For any questions, you may write to Ms. Saumya Kapoor at saumya.kapoor@iprattorneys.com.

The article was originally published on www.iam-media.com on November 11, 2020 and can be accessed here.