Patent

The Challenging Pursuit of Patent Claim Amendments in India


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We’re pleased to bring to you a guest post by Durgesh Mukharya and Meenakshi Chotia, examining the Patent Office’s practice of allowing amendments in claims of a patent application. Durgesh is a Partner and Meenakshi is a Senior Associate at the Bangalore office of the IP law firm, K&S Partners. They have backgrounds in biotechnology and biochemistry, and are part of the Life Sciences – Patents team of the firm. They both are registered Patent Agents and their work primarily revolves around patent drafting, prosecution and advisory work, including on issues discussed in this post. The views expressed in this post are personal.

The Challenging Pursuit of Patent Claim Amendments in India

Durgesh Mukharya & Meenakshi Chotia 

Amendments to patent applications are a regular feature of patent prosecution worldwide. From requiring the title to conform with claims in India, to conforming the whole description in Europe, different jurisdictions have their own requirements. However, since claims determine the value of a patent, it is important that claim amendments are treated with caution. It is essential to ensure that the language of claims which get granted, is in sync with the business objective of a patentee. This post reviews the practice of allowing amendments in claims of a patent application by the Indian Patent Office (IPO) and looks at some of the gaps that may need to be filled.

Need for Amendments Post Filing of Patent Applications

To begin with, let us first look at some of the reasons that may necessitate an amendment in claims:

  • Addressing objections in view of prior art;
  • Obtaining protection commensurate with commercial interest of the applicant, which may have evolved post filing of the application;
  • Maintaining uniform stand across jurisdictions. Countries, like the US and Europe, allow claim amendments (including addition of new independent and dependent claims) as long as they are supported by the as-filed specification (not restricted to as-filed claims). Applicants often desire making similar amendments in India;
  • Meeting requirements under Sections 3 or 2(1)(j) of the Indian Patents Act, 1970 ( ‘the Act’). The IPO mandates reliance on the published version of the PCT application. Hence, applicants cannot file a National Phase (NP) application with claims already amended in conformity with Indian patent laws. This warrants amendment of the claims post filing the application, based on the as-filed specification;
  • Remedying an error/oversight that resulted in an inadvertent omission of a critical claim or feature from a claim set, despite its presence in the specification.

Thus, the provisions in patent laws which provide for claim amendments, play a critical role in maintaining the patent ecosystem. In India, Section 57, read with Section 59(1) of the Act governs amendment of claims. In practice, the latter is of essence to determine the nature of amendments that can be carried out in India.

Section 59(1) and its Intent

Section 59(1) of the Act reads as follows:

“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.”

From a plain reading of the section, the following kinds of amendments seem to be permitted for incorporation of an ‘actual fact’:

  • Disclaimer;
  • Correction; or
  • Explanation,

provided that the amendment is supported by either the original specification or the original claim, and not necessarily both. This intention of the legislature appears to be clear from the insertion of the word ‘OR’ that bifurcates the second half of the provision to present a dichotomy.

Skewed Interpretation by the IPO

Unfortunately, the IPO often appears to employ a restrictive interpretation of this section, thereby limiting the kind of amendment an applicant can carry out. This is further elaborated below:

a) While the IPO accepts deletion of claims, addition of a new claim, though supported by the original specification, is usually impermissible on the ground that the language of the section does not permit an ‘addition’.

This is illogical as the language of the section does not explicitly permit a deletion as well. Rather, such an addition could be viewed as a provision to ‘correct’ the scope of the claims and incorporate an actual fact, which was missed out from the original claim set.    

In one instance, to ensure that embodiments fully describing a pharmaceutical product are explicitly stated in claims, and to add clarity, an applicant wanted to introduce dependent claims for an independent claim directed to a composition. While this is a universal approach to ensure that the granted claims accurately reflect the commercialised product, the IPO declined this request.

In another instance, to address an objection by the IPO on the term ‘preferably’ in as-filed claims, an applicant’s request to delete the preferred embodiments from the claims and include them in new dependent claims was declined.

In a third case, an applicant missed including claims regarding a method of manufacturing a novel compound, despite detailed description of the same in examples and embodiments. A request to add the same was rejected.

The importance of allowing such amendments is further highlighted by situations where the original claims are impermissible under Section 3 of the Act. For example, an applicant of a NP application, having only method of treatment claims, wanted to amend the claim set to include a product claim of a novel and inventive kit which was missed out in the as-filed claims. Though supported by the as-filed specification, the IPO disallowed the amendment, forcing the applicant to abandon the application. It is unimaginable if this were to happen to inventions related to kits for pandemics such as Covid-19, which has highlighted the significance of innovation in the current times.

b) Even though the section does not bar an amendment to the preamble of a claim, as long as it is supported by the as-filed specification, the IPO often rejects this on ground that it alters the scope of the as-filed claims. As applicants must abide by sections such as 3 and 2(1)(j) of the Act, an incomplete interpretation of Section 59(1) leaves them with limited options, or worse, forces them to abandon the application despite patentable merit in the invention disclosed therein.

For instance, a NP application had an independent claim only on ‘Use of a composition in an industrial method…’. While most foreign jurisdictions allow use claims (or allow amendments to conform them with their local laws), use claims are not patentable in India under Section 2(1)(j) of the Act. Had the preamble of the claim been – ‘A process of conducting the industrial method by employing the said composition…’, rather than as originally worded, the claim would likely surpass Section 2(1)(j). The scope and crux of invention in either format of claims remains essentially the same.

Similarly, amendment in the claim of a NP application from a typical swiss type claim, ‘Use of a specific modified component for preparing a medicinal product…’ to, ‘A process of preparing a medicinal product containing a specific modified component’, was desired by an applicant for similar reasons.

However, the IPO did not allow the amendments in both these cases, despite appropriate support in the specification.

c) Though amendments to include disclaimers (whether positive or negative) squarely fall within the purview of Section 59(1), the IPO is often hesitant to allow negative disclaimers.

It is possible that some of these interpretations of Section 59(1) by the IPO is based on subjective reading of some past judicial precedents (see here, here, here, here and here). Further, dearth of interpretation of the nuances of this section from the Intellectual Property Appellate Board (IPAB) and courts also impedes the understanding of permissible amendments.

The Way Forward

Section 59(1) is the most important provision which provides applicants an opportunity to correct the scope of the claims or to explain an existing claim better. The sanctity and the intent with which this section was incorporated into the Act must be preserved and the extent to which it allows for amendments in claims and/or specification must be carefully contemplated.

Consequently, the IPO can issue detailed guidelines for amendments under Section 59(1), as differences in understanding the permissibility of amendments under the section are leading to inconsistent outcomes and commercially unviable options for the applicant. For a uniform approach, the IPO may also consider regular training of examiners on accurate interpretation of the section along with best international practices in this area.

Moreover, the current patent laws already include provisions that restrict patentable subject matter in India. Applicants also have limited options in pursuing intended claim amendments by way of a Divisional Application, which has prerequisites of its own. Thus, providing clarity and leveraging on possible amendments under Section 59(1) will only encourage applicants to file more patent applications in India, and benefit the patent ecosystem of the country.

12 comments.

  1. AvatarA C Mathur

    There is no clarity as to whether the authors are talking about amendments to claims either before issue or after issue of the patent.
    If it is before issue, the business objectives of the applicant are totally irrelevant.
    The IPO should only be looking at the invention disclosed in the application.

    Reply
    1. AvatarDurgesh & Meenakshi

      Thank you for your comment. The article pertains to amendments in patent applications prior to their grant. While a patent can be enforced only upon its grant, the scope of protection that a patentee gets is determined by the language of the claims that get granted, which in turn is directly impacted by the amendments that take place during the prosecution of the patent application (i.e. before grant). Thus, it is important that business objectives are always kept in mind while prosecuting patent applications, to allow for obtaining meaningful Patents.

      Further, while considering allowability of claim amendments, we agree that the IPO should be looking only at the invention disclosed in the application, which includes the specification as whole. Thus, amendments in claims must be allowed as long as they are supported by the specification, regardless of them being captured by the as-filed claims.

      Reply
  2. AvatarAmit Tailor

    The discussion aptly highlight the ‘enhanced’ scrutiny by the Patent Controller’s in India and the hardships being faced by the applicants (and their agents) now a days. The applicants are forced to abandon genuine inventions for petty technical reasons as highlighted by the authors. The things get even worse when the applicant would ‘surrender’ to the rejections to amended claims and files a divisional application with the desired claims, then there is always a likelihood that the same might be declared ‘improper’ or ‘unallowable’ divisional by the patent office for having ‘identical’ claims as the parent application.

    Reply
  3. AvatarVenkat

    Good article, what is the percentage of applications getting rejected on these grounds, are there cases which gets amended succesfully too. Numbers on these would help to understand better

    Reply
    1. AvatarDurgesh & Meenakshi

      Thank you, we appreciate your comment. In response to your query, while providing exact numbers would be difficult, there are cases which do get successfully amended under Section 59(1). However, the same is at the discretion of the Controller examining the patent application. Not all Controllers read section 59 as detailed in the article, and amendments based on the specification do get allowed at times. However, there is lack in uniformity of approach in this regard.
      Thus, there is a need for a holistic understanding of the possible amendments under Section 59(1) and guidelines from the IPO on its interpretation would be helpful for applicants dealing with such situations.

      Reply
    2. AvatarDurgesh & Meenakshi

      Thank you, we appreciate your comment. In response to your query, while providing exact numbers would be difficult, there are cases which do get successfully amended under Section 59(1). However, the same is at the discretion of the Controller examining the patent application. Not all Controllers read section 59 as detailed in the article, and amendments based on the specification do get allowed at times. However, there is lack in uniformity of approach in this regard.

      Thus, there is a need for a holistic understanding of the possible amendments under Section 59(1) and guidelines from the IPO on its interpretation would be helpful for applicants dealing with such situations.

      Reply
  4. Avataranonymus

    One of the reasons for seeking amendment is quite amusing,namely
    “Maintaining uniform stand across jurisdictions. Countries, like the US and Europe”.Amusing because the scope of granted claims in US and EP differ many times in reality.

    Reply
  5. AvatarSB

    I couldn’t agree more with the author. Applicants are forced to give up valuable subject matter because of rigid interpretation of this section. Examiner’s often rely on the last statement in sec 59(1) “that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment” to deny any claims being amended beyond the originally filed claims even though there is support in the specification. In my view, this strict interpretation is warranted only in those cases where patent is already granted and Patentee files for post grant amendments. This makes sense from a broader policy perspective because after the grant there is an element of certainty attached to the claim scope and this will prevent Patentee from amending the claims beyond the originally granted claims. But during the prosecution, Applicant should be allowed to amend the claims so long as there is support in the specification.

    Reply
  6. AvatarDr V SHANKAR

    I agree that in some cases the interpretation could be unfavorable to applicants. Going through the discussion in page 182 (para 554) of the Ayyangar Committee report, the intent of the Patent Office seems to be to exclude any claim that would not be within the scope of the already published patent application, on the grounds that granting any claims not originally claimed in the original application would not be fair to “third parties”. However, since India does not allow “continuation” applications, the applicant loses the opportunity to claim after the first application. It would require a fundamental reorientation of the patent office’s approach to consider allowing claims during prosecution that were not originally claimed.

    Reply

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