QUESTION: Section 57 to 59 deals with amendment of a patent specification, what is the difference between the amendment made in pursuance of these sections and the amendment made under section 15 of the Patents Act?
ANSWER: The simple answer to this question lies in one document, form 13. When you file an amendment under section 57 to 59 of the Patents Act, you initiate it by filing a form 13. So it is a request that the applicant makes in pursuance of a need to amend the patent specification and section 57 sub-section 6 tells us that the amendment can be done either before the patent is granted or even after the patent is granted. So form 13 is the distinguishing factor in understanding these 2 types of amendments, form 13 because it is applicant initiated we understand the amendments under 57 to 59 as being amendments initiated by the patent applicant or the patentee after the application has been granted and a patent materializes. Section 15 is a completely different procedure, where the satisfaction of the controller is the critical point. If the controller is not satisfied that a patent can be granted on this or if the controller feels that there are reasons why a patent should not be granted then the controller will raise those objections and one way to get over the objection is by way of an amendment. So we understand a section 15 amendment as an amendment that is triggered by the objections raised by the controller and to get over the objections you can file an amendment. Now what would be the course by which you would do that, you could still file a form 13 and submit the amendment but the reason or the distinction between these two section is how the amendment arises, under section 57 to 59 it covers both the cases where a person can voluntarily file an amendment or the amendment is filed in pursuance of an objection. That is section 57 to 59 tells us the details on how to do it, but in section 15 an amendment is done to save the patent, because if a controller raises an objection and if the applicant is not successful in answering those objections that leads to the rejection of the patent, so a section 15 amendment is done to get over an objection that the controller has raised whereas a section 57 to 59 amendment at the instance of the applicant or the patentee as the case may be. Sections 57 to 59 deals with the procedure of amendment, how do you do an amendment, what are the forms to be filed and what are the nature of the amendment. You can’t broaden the scope of an invention by an amendment you can only narrow down the scope of the invention, the amendment has to be based on the disclosure made, all these details are there between sections 57 to 59, but section 15 amendment is an amendment to save a patent. The controller is not satisfied that certain requirements of the law has not been met and he raises an objection saying that this patent has to be rejected. So to get over that objection you can amend the patent, you would obviously be using form 13 and the procedure under sections 57 to 59 to get over it, but nevertheless we are on the issue of how the amendment starts, in section 15 amendment results out of an objection raised by the controller whereas in sections 57 to 59 it can be at the instance of the applicant or patentee.