It is imperative to provide an opportunity to the patent applicant to amend an application for a patent or a complete specification or any document relating thereto to meet the objection raised by the Controller during prosecution where such request of the applicant to make an amendment is by way of disclaimer, correction or explanation. Normally such amendments are allowed where applicant submit such amendments are for the purpose of incorporation of actual facts. Such amendments are permitted both during prosecution of the application and even after the grant of the patent. However, the issue of the permissible of amendments to specifications and claims under Section 59 of the Patents Act remained contentious one as such amendments were refused by the Controllers in Nippon A&L Inc (Copolymer latex application and in Allergan Inc (Intracameral implant application) case. On appeal Delhi High Court in both cases quashed the refusal order of the Controller and allowed the amendments sought.
In Nippon A&L Inc v The Controller of Patents (CA (COMM IPD-PAT) 11/2022), the issue before Delhi High Court was whether the conversion of ‘product by process claim’ to a ‘product claim’ is permissible under section 59 which states:-
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.
High court found that Controller refusal of amendment were based on the later part of section 59 which states that
“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.”
Delhi High Court addressed the issue of permissible amendments to specifications and claims under Section 59 of the Patents Act in the following terms:-
- that the process claims would be allowable if they are narrower in scope.
- That amended claims are supported by the description.
- That the amendments are sought before the grant of a patent.
Delhi high court found that on the contrary, stand taken by the Controllers in all such refusal of the amendments was that such amendment should meet the twin limitations set under section 59 viz. that amendment sought must be supported by the description and amended claims should be supported by pre-amended claims. The court junked this reasoning of the Controller and ruled that: -
“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.”
To give clear meaning to this ruling Delhi High court referred to Justice N, Rajagopala Ayyangar’s “Report on the Revision of the Patents Law” (1959) which states that
“the purport and intention of this Report was to give broader and wider permissibility for amendment of claims and specification prior to the grant”.
The court further agreed with the report’s 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.”
In Allergan Inc v The Controller of Patents (Intracameral implant application case) decided on 20 January 2023, (CA (COMM IPD-PAT) 22/2021),the question before the Court was :-
“whether the appellant should be completely foreclosed from seeking a patent in respect of the said implants merely because the original application, as filed by the appellant, sought a patent not for the implants but for the method in which the implants were to be used, whereas the amended claims seek patents for the implants themselves, rather than the method of their usage, even if all details of the implants, and every particular of the amended claims stand completely disclosed in the complete specifications accompanying the original claims.”
The Controller rejected the amendments for the reason that:-
“…… such type of "compositions of intracameral implant" does not have support in the as originally filed claims, and further the same "intracameral implants" has not been claimed either in WIPO (International) claims or while entering in the national phase, so it is of the opinion voluntary amendments made by the applicant/agent are not allowable u/s 59(1) of the Patents Act."
The court found that the implants forming subject matter of the methods for which the claims had originally been filed, with all their peculiarities and characteristics, were indeed disclosed in the complete specifications accompanying the original claims.
The Court ruled in this case that
“Particularly in a case such as this, in which the pre-amended claim was for the method of using certain implants for treating ocular ailments, and all details of the said implants were forthcoming in the complete specifications in the pre-amended claims, and the amendment was only to substitute the method of using the implants with the implants themselves, it would be a travesty, in my opinion, to shut out the appellant from seeking a patent in respect of the implants merely on the ground that the amendment was not permissible under Section 59(1).(emphasis added)
This ruling of the court was supported by the interpretation of the term scope of the claim used in the concluding part of the section 59(1) which states that:-
Taking this point further court ruled that:-
This ruling of the court set a guideline for the Controller to interpret the provisions of section 59 (1) particularly the concluding part for taking into consideration the complete specifications of the pre-amended claim, and not merely a textually cabined reading of the pre-amended claims themselves, de hors the complete specifications.
Position of section 59 after amendment in 2002
It is pertinent to note that the provisions of section 59(1) under The Patent Act 1970 were substantially modified to incorporate certain changes that will help the understanding of the terms on which such amendments would be permissible. The table give below clearly highlight the changes (Bold) made in section 59 in 2002.
. Section 59 (1) Before 2002 Amendments |
Section 59 (1) After 2002 amendments |
No amendment of an application for a patent or a complete specification
shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of correcting an obvious mistake,
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 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.
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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.
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If we read the changes in law made in 2002, we will find that the scope of the permitted amendment was enlarged from mere correction of obvious mistakes. According to the changes made, the amendments that incorporate actual fact were now made permissible with a ridder that such amendments are in substance disclosed or shown in the specification before the amendment instead of mere disclosure earlier. These amended provision in law widen the scope of the consideration for the Controller to allow the amendment sought. The Delhi High court ruling in both of the cases discussed above clarify this position and allowed the amendment sought so long as invention is disclosed (shown) in the specification and the claims are being restricted to the disclosures already made in the specification or shown in the specification. The onus of showing the proposed amendments “in substance disclosed or shown in the specification before the amendment” lies with the applicant. In Allergan case court categorically directed the controller to see that while examining whether the amended claim falls wholly within the scope of the specification in the pre-amended claim and consideration to the complete specifications in the pre-amended claim should also be given.
If we read later part of section 59 we find that in section 59(2) (c) it is stated that “the right of the applicant or Patentee to make amendments shall not be called in question except on the ground of fraud.” Further section 59(3) put a check on the amended specification where it is mandated that “in construing the specification as amended, reference may be made to the specification as originally accepted.” Though the later provision pertains to the amendments after the grant, but such stand can be taken by court where the amendments are allowed before the grant also as the application are being published before the grant now. The amended provisions of section 59 provided the adequate checks for the controller to balances the private interest of the applicant with the public interest safeguards.
Looking forward
Does this mean that the power of the controller is curtailed? If we read the High Court order it only provide a direction to the Controller while refusing amendments sought under section 57 before grant. Delhi High court differ only in the reasons given by the Controller for the refusals of amendments in Nippon and Allegra case. These ruling are persuasive and binding on the Controller. Though Delhi High Court decision on permissibility of the amendments under section 59 have cleared the mist surrounding interpretation of provisions of section 59, a relook on the existing guideline from the CGPDTM on this issue would be helpful for the applicants seeking amendments before the Controller in different location of the IPO to avoid refusal of patents. Nonetheless, it is advisable to seek expert opinion on the proposed amendments before making an attempt to amend the patent specification before the Controller.