Question of claim amendments by patentee in India

We would discuss hereinbelow the various scenarios when the patentee can seek amendment of the specification and claims of his patent. Further, this Article would examine as to when and when not the patent amendment should be allowed during the pendency of patent infringement suit. The Author, in the end, presents a hypothetical case to raise questions unanswered by Indian courts at the moment.

The statutory provisions containing amendment of patent applications/patents are contained in sections 57 to 59. Section 57 explains that an Application for Amendment can be filed to the Patent Office any time after the grant of the patent, subject to the condition that the Controller would not pass any order of refusal or acceptance during the pendency of a patent infringement suit or patent revocation proceedings. Further Section 58 points out that the High Court or Appellate Board instead of revoking a patent in a revocation proceeding may allow the patentee to amend the specification or claims in case the patent is held to be invalid. All these amendments must be by way disclaimer, correction, or explanation and without going beyond the scope of the unamended specification (Section 59).

So the two scenarios seem to be clear:

  1. One is when the Patentee can file Application of Amendment at any time after the grant of the patent.
  2. Second is when patentee can amend his specification or claims after Application for revocation is filed against him and his patent (first independent claim) is held to be invalid.

We would now discuss the third scenario that is the amendment by the patentee during the pendency of a patent infringement suit. In one case before the Delhi High Court in 2009, the patentee (plaintiff) filed an application for amendment (under section 58) of claim 1 during the pendency of patent infringement suit. (AGC Flat Glass Europe SA Vs Anand Mahajan and Ors) The patentee added words “a sensitizing material, typically tin” in claim 1 on a mirror without a copper layer in its coating.

The question was whether this amendment was allowable or not. The defendant contended that this amendment changes the scope of the original invention. On this, the court referred to UK decisions and divided such amendments into two categories: “the first one is a situation where the patentee has been apprised of the prior art by an opponent and amendment is undertaken to overcome the prior art; the second is a situation where the patentee himself has been aware of the prior art but has never taken steps to amend the patent on his own. UK Courts have held the second situation as being inexcusable, where the patentee must not be allowed to amend his patent”. The second category did not apply to this case. The amendment was held to be allowable in this case.

The Court pointed that the amendment was within the scope of the invention as the description clearly mentioned the presence of a sensitizing process as one of the three stages in the manufacture of mirrors and patentee’s amendment is by way of explanation.

Till now it becomes clear that the Court may allow the patentee to amend his specification or claim during the pendency of infringement proceedings, of course, subject to the conditions of Section 59. However, there are no existing decisions upon certain other facts which I would like to bring here by way of a hypothetical case. Suppose, a patent has been granted to an Applicant in 2008 in India whose equivalent United States patent was granted in 2009. The Indian patent’s first independent claim says,

  1. A composition comprising “A” and “B” in weight percentages of “x to y” % and “p to q” %.

Consider “A” and “B” as two broad classes of compounds. The dependent claims claim the specific compounds in narrowed concentration ranges.

The first independent in the US has been narrowed down by the Applicant to the specific compounds contained in those classes following the rejections of novelty by USPTO in light of the closest prior art Z. The US equivalent’s first claim is:

  1. A composition comprising “A1” and “B1” in weight percentages of “x1 to y1” % and “p1 to q1” %.

Now suppose a competitor company launched a product in India containing the specific compounds A1 and B1. The patentee (patentee) filed a suit for infringement of its patent. The competitor company (defendant) files a counter-statement invalidating the patent’s first independent claim in light of the prior art Z. The Patentee then files an application of amendment amending its claim 1 by bringing the claim limitations of dependent claims into claim 1 to overcome the prior art cited.

Now the question is, should patentee be allowed to do this claim amendment at this stage? From our understanding of the precedents, we believe that the patentee should not be allowed to make such a claim amendment. Delhi High Court in the previously discussed case clearly referred to UK decisions on claim amendment issues which point that the second is a situation where the patentee himself has been aware of the prior art but has never taken steps to amend the patent on his own. UK Courts have held the second situation as being inexcusable, where the patentee must not be allowed to amend his patent.

In this hypothetical case that we are discussing, it is clear that the patentee had a clear knowledge of the prior art Z since the US patent was granted but he did not take any steps to amend the Indian Patent after that. Further, isn’t the patentee under a continued obligation under section 8 to keep the Controller updated of the office actions in other countries till the grant of the patent which the patentee failed to do so in this case. The Indian Patent was granted after the US patent grant. I believe the patentee should feel the brunt now for not amending the claim earlier and in this case, the patent should not only be revoked on grounds of anticipation, but also wrongful obtainment of patent Section 64 (1)(c). Further, if such claim amendment is allowed, the patentee, as a precedent, would always get a free hand to amend his claims anytime during the patent life, and to draft the first claim unreasonably broad, knowing fully well of the invalidation actions that can be put on in front of him post the grant of the patent.

About the Author: Meenakshi Khurana, Patent Specialist at Khurana & Khurana, Advocates, and IP Attorneys.

Leave a Reply

Your email address will not be published. Required fields are marked *

18 + 19 =

Archives

  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • October 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010