Amending the Specification Before Grant

1Under s 57, an application to amend may be preferred either before or after the grant. As the procedures for carrying out the amendments before and after the grant are different, they are dealt with separately. The following section pertains to the procedure followed for amendments before the grant. The amendments under s 57 are made voluntarily by the applicant or the patentee on an application made in Form 13. (Patents Rules 2003, r 81(1).) The language used in s 57 indicates that the Controller has the discretion to allow or refuse an amendment.

2In Allergan v Controller of Patents (2023) the Delhi High Court held that “The application cannot, however, be thrown out without examination at the very threshold.” (para 40), and that its view “harmonises with paras 53 to 55 of the decision of the Co-ordinate Bench in” Nippon A&L v Controller of Patents (2022), which had held that “amendments to a patent specification or claims prior to grant ought to be construed more liberally rather than narrowly” (para 46).

3In Nippon the Court reproduced the Ayyangar Committee Report, which stated that “I consider that the scope of an amendment before acceptance ought to be wider than that after acceptance because at the former stage the specification is not disclosed to the public.” and that “A mere shifting of the centre of gravity ought not to preclude an applicant from adjusting that centre until the specification is accepted, and is thrown open to public inspection.” (para 52) It recorded that “The IPAB concluded that if the amended claims define any ’new’ features, hitherto not defined in the body of the claims, then they should not be allowed but if they are clarificatory or disclaim earlier claimed features, they can be allowed.” (para 53) It held that “A perusal of the paragraphs of the Ayyangar Committee Report clearly shows that the purport and intention of this Report was to give broader and wider permissibility for amendment of claims and specification prior to the grant and restrict the same post the grant and advertisement thereof.” (para 54) and that “In effect, the legislative material and the statutory provisions require that nothing new should be permitted to be inserted in the specification or claims. So long as the invention is disclosed in the specification and the claims are being restricted to the disclosures already made in the specification, the amendment ought not be rejected, especially, at the stage of examination prior to grant.” (para 55)

4In Syngenta Crop Protection v Assistant Controller of Patents (2024) the Delhi High Court recorded of Nestle that “it was held that an amendment of a patent can be carried out at the appellate stage as well.” and reproduced from that judgment that “There is no provision in the Act, which specifically bars the amendment of a patent specification at the appellate stage.” and that “if the High Court, in appeal is considering the issue of grant of patent, it should necessarily have the same powers as given to the Controller under Section 15 of the Act, which includes power to require amendment.” (para 12) It held that “the proposed amendments sought by the appellant do not alter the nature of the Complete Specification of the subject patent application. In fact, the amendments seek to narrow the scope of the claims.” (para 13)

5Every application for amendment shall seek the leave of the Controller for carrying out the proposed amendment under s 57. The application shall state the nature of the proposed amendment and shall provide full particulars of the reasons for which the application is made. The applicant has to declare in the application that no action for infringement or for the revocation of patent in question is pending before the Appellate Board or the high court, as the Controller cannot entertain an amendment application pending infringement suits or revocation proceedings. (Patents Act 1970, s 57(1).) It is not necessary for the applicant seeking a leave to amend to establish good faith or reasonable skill and knowledge as an essential pre-requisite for the amendment. (See Schwank’s Patent (1958) RPC 53, p 66.) If the leave to amend the complete specification is obtained by fraud, the patent may be revoked under s 64(1)(o) of the Patents Act.

6The applicant has to give full particulars of the reasons for the amendment. As the leave to amend is a discretionary remedy, the applicant will have to establish sufficient reason for amending the specification, failing which leave to amend will not be granted. (See Du Pont de Nemours (EI) & Co’s Application (1952) 69 RPC 246, p 248.) The onus is on the applicant to make a full disclosure of its case for amendment to the satisfaction of the Controller as a failure may lead to the refusal of the application. (See Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] FSR 561, p 569. See also SCM Corpn’s Application (1979) RPC 341 (CA); Du Pont de Nemours and Co (Robert’s) Patent (1972) RPC 545.) But a decision of the Controller not to order a discovery does not mean that the applicant has discharged the onus. (See Hsiung’s Patent (1992) RPC 497, p 523 (CA).) The Controller has the power to require a party to voluntarily produce any document in its possession. (See Petrie & Mc Naught Ltd’s Application [1966] FSR 304, pp 306-7, where discovery was ordered upon an application by the opponent requiring the applicants to disclose document in its possession.) The Controller may refuse the leave to amend if the applicant or patentee does not furnish the full particulars of the reasons for which the application to amend is made. (See Waddingtons Ltd’s Patent (1986) RPC 158, pp 159-60; Clevite Corpn’s Patent (1966) RPC 199.)

7An application made under s 57 before the grant need not be published. Consequently, there is no scope for opposition of such amendments. In contrast, an application under s 57 after the grant must be published under s 57(3) and may be opposed under s 57(4). As any change made by such an application will eventually be published along with the patent, the desired effect of informing the public will be served when the patent is published at a later date. For amendments before the grant, the Controller will have the discretion to allow and stipulate conditions upon which such amendments will be allowed. (Patents Rules 2003, r 81(2).)

8For amendments before the grant, the Controller will have the discretion to allow and stipulate conditions upon which such amendments will be allowed. (Ibid.) The Controller is free to stipulate conditions to the amendment as he may deem fit. The Controller may take into account the extent to which an amendment could adversely affect the interests of other members of the public or applicants who had pending applications related to the same matter. (See Shionogi & Co’s Application (1967) RPC 623.)