Amendments to patent applications are very common and can be filed at any stage of the proceedings. An amendment application can be filed either voluntarily or in response to an objection raised in the first examination report.
Patent applications can be amended in the following circumstances:
Under Section 15 of the Act, when the Controller thinks that the application made does not meet the requirements of the Act, he may ask the applicant to amend the application as per his satisfaction.
Under Section 17 of the Act, upon an application made by the applicant, before the grant of the patent, to post-pone the date of the application. However, such a date cannot be postponed to a date later than 6 months from the date on which the application was actually filed.
Under Section 57 of the Act, upon an application made by the applicant to amend the application, however, such amendment must be within the restrictions set out in Section 59 of the Act (discussed below).
Under Section 58 of the Act, before the High Court or the Appellate Board, in a case of revocation of a patent, the applicant may amend his application to the satisfaction of the High Court or the Appellate Board, as may be required.
Under Section 75 of the Act, the Controller has the power to amend the application to correct any clerical errors. However, this power can be exercised only upon an application by the applicant or any other interested party and not suo moto, as held in Press Metal Corporation Limited vs. Noshir Sorabji Pochkannawalla (AIR 1983 Bom 144).
Restrictions on amendment of application as provided under Section 59
amendments can be made by way of disclaimer which will limit the scope of the claim; amendments can be made by way of correction in case of an obvious mistake; amendments can be made by way of an explanation; amendments can be brought only for the incorporation of fact; no amendment shall be allowed which has the effect of broadening the scope of the claim; and no amendments shall be allowed if the amended claim does not fall within the scope of the un-amended claim.
The courts have strictly applied the principles mentioned in Section 59 of the Act while dealing with cases relating to the amendment of patent applications. In Solvay Fluor G.M.B.H vs. E.I. Du Pont de Nemours and Company (M.P. No.36/2009 in TRA/7/2007/PT/KOL), Du Pont sought to amend the specification after Solvay filed for revocation of Du Pont’s patent under Sections 3(d) and 3(e) as non-patentable subject matter. The Intellectual Appellate Board (IPAB) in this case held that “it is possible to make amendments to the specification for overcoming objections raised under Sections 3(d) and 3(e) if the amendments were related to showing technical advance due to the combination of elements and if the amendments complied with the requirements of Section 59, i.e., were either made as disclaimer, correction or explanation.” The IPAB further held that “the amendments made by Du Pont, in this case, fell under the purview of ‘explanation’ of the subject matter and hence the amendments were allowed.”
An application to amend a patent application/ specification can be filed using Form 13, alongside payment of the prescribed fee. The amendment application must state the nature of the proposed amendment, and the reasons for which such application is made.
Special care must be taken while drafting amendment applications to ensure that the proposed amendment does not have the effect of broadening the scope of the claim. In case any party tries to obtain an amendment by fraud, the patent may be revoked under the provisions of Section 64 of the Act.