Amendment of Patent Application in Patent Registration in India
Amendment of Patent Applications and Specifications
The relevant sections and rules on amendment of applications and specifications under the Indian Patent Act are listed below:
Section 57: Amendment of application and specification or any document relating thereto before Controller
Subject to the provisions of Section 59, the Controller may, upon application made under this section in the prescribed manner by an applicant for a patent or by a patentee, allow the application for the patent or the complete specification or any document relating thereto to be amended subject to such conditions, if any, as the Controller thinks fit: Provided that the Controller shall not pass any order allowing or refusing an application to amend an application for a patent registration in Coimbatore or a specification or any document relating thereto under this section while any suit before a court for the infringement of the patent or any proceeding before the High Court for the revocation of the patent is pending, whether the suit or proceeding commenced before or after the filing of the application to amend. Every application for leave to amend an application for a patent or a complete specification or any document relating thereto under this section shall state the nature of the proposed amendment, and shall give full particulars of the reasons for which the application is made. Any application for leave to amend an application for a patent or a complete specification or a document related thereto under this section made after the grant of patent registration in Bangalore and the nature of the proposed amendment may be published. Where an application is published under sub-section (3), any person interested may, within the prescribed period after the publication thereof, give notice to the Controller of opposition thereto; and where such a notice is given within the period aforesaid, the Controller shall notify the person by whom the application under this section is made and shall give to that person and to the opponent an opportunity to be heard before he decides the case. An amendment under this section of a complete specification may be, or include, an amendment of the priority date of a claim. The provisions of this section shall be without prejudice to the right of an applicant for a patent to amend his specification or any other document related thereto to comply with the directions of the Controller issued before the grant of a patent.
Section 58: Amendment of specification before Appellate Board or High Court.
In any proceeding before the Appellate Board or the High Court for the revocation of a patent, the Appellate Board or the High Court, as the case may be, may, subject to the provisions contained in section 59, allow the patentee to amend his complete specification in such manner and subject to such terms as to costs, advertisement or otherwise, as the Appellate Board or the High Court may think fit, and if, in any proceedings for revocation the Appellate Board or the High Court decides that the patent is invalid, it may allow the specification to be amended under this section instead of revoking the patent registration in Chennai. Where an application for an order under this section is made to the Appellate Board or the High Court, the applicant shall give notice of the application to the Controller, and the Controller shall be entitled to appear and be heard, and shall appear if so directed by the Appellate Board or the High Court. Copies of all orders of the Appellate Board or the High Court allowing the patentee to amend the specification shall be transmitted by the Appellate Board or the High Court to the Controller who shall, on receipt thereof, cause an entry thereof and reference thereto to be made in the register.
Section 44: Amendment of patent granted to deceased applicant
Where, at any time after a patent has been granted in pursuance of an application under this Act, the Controller is satisfied that the person to whom the patent was granted had died, or, in the case of a body corporate, had ceased to exist, before the patent was granted, the Controller may amend the patent by substituting for the name of that person the name of the person to whom the patent ought to have been granted, and the patent shall have effect, and shall be deemed always to have had effect, accordingly.
Section 59: Supplementary provisions as to amendment of application or specification.
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. Where after the date of grant of patent any amendment of the specification or any other documents related thereto is allowed by the Controller or by the Appellate Board or the High Court, as the case may be,-
a. The amendment shall for all purposes be deemed to form part of the specification along with other documents related thereto;
b. The fact that the specification or any other documents related thereto has been amended shall be published as expeditiously as possible; and
c. The right of the applicant or patentee to make amendment shall not be called in question except on the ground of fraud.
In construing the specification as amended, reference may be made to the patent specification as originally accepted.
Rule 81: Amendment of application, specification or any document relating thereto.
An application under section 57 for the amendment of an application for a patent or a complete specification or any document related thereto shall be made in Form 13. If the application for amendment under sub-rule (1) relates to an application for a patent which has not been granted, the Controller shall determine whether and subject to what conditions, if any, the amendment shall be allowed.
a. If the application for amendment under sub-rule (1) is made after grant of patent and the nature of the proposed amendment is substantive, the application shall be published.
b. Any person interested in opposing the application for amendment shall give a notice of opposition in Form 14 within three months from the date of publication of the patent application.
c. The procedure specified in rules 57 to 63 relating to the filing of written statement, reply statement, leaving evidence, hearing and costs shall, so far as may be, apply to the hearing of the opposition under section 57 as they apply to the hearing of an opposition proceeding.
Rule 82: Preparation of amended specifications, etc.
Where the Controller allows the application for a patent or the complete specification or any other document to be amended, the applicant shall, if the Controller so requires and within the time to be specified by him, leave at the appropriate office an amended patent application or the specification or the other document, as the case may be, in accordance with the provisions of these rules.
Rule 83: Publication of the amendment allowed.
The amendments allowed after a patent has been granted, shall be published.