International report - De-coding the law: nature of claim amendments allowed in India 22 Feb 17
LexOrbis - India
Most patent applications in India are granted after amendments are made to the patent claims; there are few cases in which patent applications are allowed with no claim amendments. To speed up the examination process, claims can be amended on a voluntary basis or in response to objections raised in an examination report. This means that applicants can either file a request for voluntary amendment along with the associated fee or wait until the examination report is issued.
It is generally believed that the provisions in India relating to claim amendments are stricter than those in other major jurisdictions (eg, the United States and the European Union). This can be evidenced from some of the orders issued by the Indian Patent Office, wherein the controllers have not allowed certain claim amendments – as in the following cases:
- In Patent Application 888/CHE/2007 the applicant amended the independent claim to widen its scope. The controller stated that the amended claim would not fall wholly within the scope of the independent claim before the amendment.
- In Patent Application 5478/CHENP/2008 the applicant amended the claims and specification by adding experimental data which was not previously disclosed in the specification. The controller refused the application, stating that the amendments extended the scope of claims and specification, which is not allowed. The controller further stated that this ground alone is sufficient to refuse the patent application.
- In Enercon (India) Limited v Aloys Wobben (Order 109/2013) the applicant broadened the scope of the independent claim by replacing a narrower phrase with a broader phrase and deleting a limitation from the independent claim. The IP Appellate Board did not allow this amendment.
The current practice in India is to not allow:
- the replacement of claims that are currently on file;
- the addition of new independent or dependent claims;
- the deletion of a limitation from a claim; or
- the replacement of a term or phrase in the claim with a broader term or phrase.
This leads to the question: what claim amendments are allowed? The answer lies in Section 59(1) of the Patents Act 1970, which prescribes the amendments that can be carried out in claims:
“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.”
It can be gathered from this section that claims should be amended only by way of disclaimer, correction or explanation. In this context, ‘disclaimer’ means amending a claim to limit its scope to a sub-combination which was within the scope of original claims, ‘correction’ means correcting an obvious mistake in a claim (eg, a translation error or spelling mistake) and ‘explanation’ means adding a further description to a claimed feature to clarify an ambiguous term or cited prior art.
Claim amendments should be made only for the purpose of incorporating actual facts. As such, any element that is not a fact cannot be included in a claim.
An amended specification should not claim a matter which in substance is not supported by the original specification. Otherwise, it will be considered as an added subject matter. To ascertain this, the Indian Patent Office generally asks the applicant to clearly identify the amendments carried out in a marked copy and indicate page and line numbers of the original specification on which these amendments are based.
Most importantly, an amended claim should fall wholly within the scope of original claims. This is so even if the matter included in the amended claim is in substance disclosed in the original specification. Because of this clause, it is unclear whether new claims can be added to the patent application. Therefore, if there is any unclaimed subject matter in the specification, filing a divisional application can be a wiser option than adding new claims, particularly with regard to new independent claims.
In short, merging a dependent claim into a corresponding independent claim is allowed, as is narrowing the scope of a claim by bringing in limitations from specification. Amendments such as the addition of reference numerals, correction of clerical errors and replacement of a term or phrase in a claim with a narrower term or phrase are also allowed. Hence, due care must be taken while amending patent claims in India so as to avoid violating Section 59(1), because if it can be established that leave to amend claims was obtained by fraud, the same can be taken up as a ground for revocation of granted patents.
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