Amendment Before the Controller

1The amendments before the grant of a patent can be made only before the Controller. In AIA Engineering v Controller of Patents (2006) the Delhi High Court held that “while purporting to exercise powers under Section 78 of the said Act, there cannot be any amendment of the application as in that eventuality the procedure of Section 57 r/w Section 59 of the said Act must be followed” (para 41). The Patents Act provides for the following kinds of amendments before the grant:

(a) Amendments pursuant to the direction of the Controller under ch IV;
(b) Amendments before the grant initiated by the applicant under s 57; and
(c) Amendment of clerical errors before the grant under s 78.

2Section 57 deals with voluntary amendments made by the applicant or the patentee before the Controller. The said section provides for the amendment of the application of the patent as well as any documents filed therewith. Sub-section (6) excludes from the ambit of s 57 the right of an applicant to amend his specification or any other document to comply with the directions of the Controller issued before the grant. This would include a direction to amend issued under s 15 of the Patents Act. Thus, the amendments made before the grant may pertain to amendments made pursuant to the directions of the Controller passed under ch IV as well as amendments made under s 57. The powers of the Controller under s 57 would exist without prejudice to his power of amendment under ch IV.

3If a complete specification is amended under the provisions of the Patents Act before the grant of the patent, the same shall be examined and investigated (under ss 12 and 13) in the like manner as the original specification. (Ibid, s 13(3).) In an amendment made in the pre-grant stage, it will be immaterial whether such amendment resulted in widening or narrowing the scope of monopoly claimed. However, the amendment should not alter the claims in such a way as to claim a different invention from that which was disclosed in the application. (See AC Edwards Ltd v Acme Signs & Displays Ltd (1990) RPC 621, p 640.)

Amendment claims need to be examined afresh for patentability

4In Allergan v Controller of Patents (2023) the Delhi High Court directed that “The amended claims of the appellant (as set out in para 3 supra) are remanded to the learned Controller for consideration of their patentability afresh, keeping in mind the Patents Act and all principles applicable in relation thereto.” (para 48)

5Amendments under ch IV are made in compliance to the directions issued by the Controller. Unlike the amendments under s 57, they are not initiated by the applicant. These amendments are required to comply with the requirement under the Patents Act or the Patents Rules. (See, for instance, Patents Act 1970, s 15.) The amendments under ch IV are usually done pursuant to the report of the examiner and after giving the applicant an opportunity of being heard. (Patents Act 1970, s 14.) Such amendments may also result as a consequence of an order in pre-grant opposition passed under s 15. Under ch IV, the Controller has the power to require amendments in the following cases:

(a) Amendments to comply with the requirements of the Patents Act and the Patents Rules under s 15; (The above provision includes an amendment pursuant to pre-grant opposition under r 55(5).)
(b) Amendments pursuant to division of application under s 16(3);
(c) Amendments pursuant to objections on anticipation under ss 18(1)(b) and 18(2)(b); (Patents Rules 2003, rr 28, 29 and 30.)
(d) Amendments pursuant to objection on potential infringement under s 19(1)(b).

6The amendments after the grant may be made before the Controller [like amendments pursuant to opposition after the grant under s 25(4)] or before the high court in pending proceedings. Under s 57, the Controller cannot entertain an amendment application where revocation proceedings are pending. All amendments made after the grant shall be published. (Patents Rules 2003, r 83.) The powers of the Controller to amend after the grant will include:

(a) Amendments pursuant to post-grant opposition under s 25(4);
(b) Amendments pursuant to an opposition proceeding on the ground of wrongful obtaining under s 26;
(c) Amendments pursuant to the death of an applicant under s 44;
(d) Amendments after the grant under s 57;
(e) Amendments pursuant to a revocation of an invention relating to atomic energy under s 65;
(f) Amendment of clerical errors after the grant under s 78.