Amendment of a patent may include amendment of patent application, patent specification or other related documents. In most cases patents are not granted in the way they are filed. An applicant may require certain changes in such documents to comply with the specific statutory provision envisioned in the Act. Thus amendment plays a vital role during the prosecution of patent and post grant of patents. An amendment may be made either before or after the grant of the patent.
AMENDMENT BEFORE GRANT
Section 57 of the Act provides the applicant with an opportunity to amend an application for a patent, the complete specification, or any related document. Such amendments may be made by the applicant, of his own accord or to comply with the directions of the Controller, at any time. It is imperative to note that the request for amendment could only be made in relation to applications that are in existence and not for applications or patents that have lapsed. Such voluntary amendments under section 57 can be made in Form 13 as per Rule 81 of the Patent Rules, 2003.
Amendments pursuant to the direction of the Controller under Chapter IV which includes amendments to comply with the requirements of the Patents Act and the Patents Rules under section 15, amendments with respect to division of application under section 16, amendments on objections on anticipation under 18 and amendments pursuant to objection on potential infringement under section 19.
The Controller may exercise his power under section 78 to correct clerical errors in any patent, specification or other documents without prejudice to the provisions contained in sections 57 and 59, and is subject to section 44 of the Patents Act.
AMENDMENT AFTER GRANT
As per Rule 81 of Patents Rules, 2003 if the amendment is made after grant of patent and the nature of the proposed amendment is substantive, the application shall be published and 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 application. Further, 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 to these amendments.
The amendments after the grant may be made before the Controller or the high court in pending proceedings. Under section 57, the Controller cannot entertain an amendment application where revocation proceedings are pending. Amendments with respect to post-grant opposition under section 25(4), amendments pursuant to an opposition proceeding on the ground of wrongful obtaining under section 26 are some of the post grant amendments. Amendments with respect to 57 and 78 can also be done post grant of patent.
Further, under section 58 in any proceeding before the High Court for the revocation of a patent, the patentee is allowed to amend his complete specification in such manner as the court this fit subject to provisions of section 59. In such cases notice is given to the Controller and he shall be entitled to appear before the 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.
It should be noted that amendments done by way of disclaimer, correction or explanation and those amendments done for the purpose of incorporation of actual fact are only allowed. Those amendments which pertain to widening the scope of patent application by introducing a new subject matter or which does not fall wholly within the scope of a claim of the specification before the amendment are not allowed as per section 59 of the Patents Act, 1970.