Akhil PATENT DRAFTING

AMENDMENT OF A PATENT AND PATENT OF ADDITION

Submitted by: Akhilendra Patel B.Sc. LLB (7TH SEM.) CUSB1513115003

UNDER THE SUPERVISION OF: Dr. P.K.Das (Assistant Professor)

ACKNOWLEDGEMENT

I hereby take the opportunity thank Dr.P.K. Das sir, for his consent and the inspiration that he radiates. His jovial behaviour and ease making attitude eased my tension and the initial doubts that I had about my potentialities. I also want to thank my friends who helped me a lot in preparing this project. I have also taken help from several books and websites for doing this. Ultimately, I once again thank Dr. Das sir , who made indelible impact on me which shall go beyond the pages of this project and reflect in all my endeavours of life. Hoping Acceptance and Appreciation from you, I hereby submit this project.

CONTENTS

1. INTRODUCTION.....................................................................................04 2. PROVISIONS UNDER THE INDIAN PATENTS ACT, 1970................05 3. CRITERION FOR FILING PATENT OF ADDITION...........................6-8 4. CONTINUATION – IN-PART UNDER US PATENT SYSTEM.............09 5. AMENDMENT OF A PATENT............................................................9-10 6. AMENDMENT BEFORE HIGH COURT OR APPELLATE BOARD...10 7. SCOPE OF AMENDMENT......................................................................11 8. STUDY OF RELEVANT CASES.......................................................11-15 9. CORRECTION OF CLERICAL ERRORS..............................................15 10. AMENDMENT BY CONTROLLER’S PERMISSION...........................16 11. CONCLUSION..........................................................................................17

AMENDMENT OF A PATENT AND PATENT OF ADDITION

INTRODUCTION

After arriving at an invention and obtaining patent on it, there remains a scope of improvement or modification of such invention. The improvements or modifications may take place as an ordinary process of improving an invention, or as a result of feedback received from the market or from the industry. In such a scenario, where the invention is already protected by a patent, the improvement or modification over the original patented  product or process may be protected by a "Patent of Addition" in India. Patent application, granted patent, or any other document, may be amended by the applicant or the patent holder at any point of time during the patent lifecycle by filing an application for amendment. The patent application, complete specification, or any other document, can be amended only if it is in the form of a disclaimer, correction, or explanation. The amendment will be allowed only if the Controller is satisfied with the reasons for the amendment. An application for amendment that is filed after the patent is granted will be published if the  proposed amendment is aimed at altering the specification, application, or any other document in a substantive manner. A Patent of Addition enables the applicant to apply for an improvement or modifications made on the invention disclosed in the complete specification 1. The improvement must be something more than a mere workshop improvement 2. The term for a Patent of Addition shall not exceed the term of a regular patent, and shall not be granted prior to the date of grant of a  patent for the main invention. A Patent of Addition cannot be questioned on the ground that the invention ought to have been the subject of an independent patent 3.

1Sec.54 (1) Patents Act, 1970 2 Biswanath Prasad Radhey Shyam v. Hindusthan Metal Industries, AIR 1982 SC 144 3 Sec.56 (1) Patents Act, 1970

PROVISIONS UNDER THE INDIAN PATENTS ACT, 1970

As per the Indian Patents Act, 1970, Sections 54, 55, 56 deals with the Patent of Addition, filing and prosecution related thereto. The provisions are illustrated below: Section 54: Patents of Addition:

(1) Subject to the provisions contained in this section, where an application is made for a  patent in respect of any improvement in or modification of an invention described or disclosed in the complete specification filed therefore (in this Act referred to as the "main invention") and the applicant also applies or has applied for a patent for that invention or is the patentee in respect thereof, the Controller may, if the applicant so requests, grant the  patent for the improvement or modification as a patent of addition. (2) Subject to the provisions contained in this section, where an invention, being an improvement in or modification of another invention, is the subject of an independent patent and the patentee in respect of that patent is also the patentee in respect of the patent for the main invention, the Controller may, if the patentee so requests, by order, revoke the patent for the improvement or modification and grant to the patentee a patent of addition in respect thereof, bearing the same date as the date of the patent so revoked. (3) A patent shall not be granted as a patent of addition unless the date of filing of the application was the same as or later than the date of filing of the application in respect of the main invention. (4) A patent of addition shall not be granted before the grant of the patent for the main invention. Section 55: Term of patents of addition

(1) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as has not expired, and shall remain in force during that term or until the previous cesser of the patent for the main invention and no longer: Provided that if the patent for the main invention is revoked under this Act, the court, or, as the case may be, the Controller, on request made to him by the patentee in the prescribed manner, may order that the patent of addition shall become an independent patent for the remainder of the term for the patent for the main invention and thereupon the patent shall continue in force as an independent patent accordingly.

(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent  becomes an independent patent under sub-section (1), the same fees shall thereafter be  payable, upon the same dates, as if the patent had been originally granted as an independent  patent. Section 56: Validity of patents of addition

(1) The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any  publication or use of   —  (a) The main invention described in the complete specification relating thereto; or (b) any improvement in or modification of the main invention described in the complete specification of a patent of addition to the patent for the main invention or of an application for such a patent of addition, and the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent. (2) For the removal of doubts it is hereby declared that in determining the novelty of the invention claimed in the complete specification filed in pursuance of an application for a  patent of addition regard shall be had also to the complete specification in which the main invention is described. CRITERION FOR FILING PATENT OF ADDITION

Indian Patents Act provides provisions relating to filing and granting a special type of patent application i.e. 'Patent of Addition'. If the applicant or the patentee so desires, he can file a separate application in a prescribed manner for any improvement or modification for the invention in respect of which he has already filed or holds a patent which is in force. Section 48 of the Indian Patents Act, 1970 states that rights conferred by patent of addition are same as those for other patents. In short, a patent, as a patent of addition can be secured in respect of any improvement in or modification of an earlier invention called the main invention or  parent invention for which a patent can be granted and is in force or an application for the said invention has been made and is pending.

The main criterion for filling an application for patent of addition is stated below: 1. Application for patent of addition would not be examined unless the Controller of Patents is requested to examine the parent application. Application for patent of addition would not  be accepted unless and until parent or main patent application is accepted. 2. The applicant for the patent of addition should be same as that of the earlier application or the patentee, as the case may be. The inventor(s) may not necessarily be the same. That is  patent of addition can neither be an innovation patent nor can have innovation as parent  patent. 3. If the patent of addition is in respect of a patent application then the parent application should be pending before the Controller. 4. If the patent of addition is in respect of a patent, the patent should be in force. 5. If parent patent is ceased then patent in addition would not be accepted or granted. Patent of addition would cease if one fails to renew t he parent patent (Non-payment of annuity). 6. Patent in addition would run concurrently and terminate with the main invention. 7. In case of patent of addition, Rule 13(3) of the Patents Rules states that each such patent of addition shall include a reference to the main patent or the application for the main patent and also include a definitive statement that the invention is an improvement or modification of the invention claimed in the complete specification of the main application. 8. Each Patent of Addition is clearly an independent patent in view of Section 54 and 55 of the Indian Patents Act, and therefore

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rendered a new Application Number,

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requires a separate request for examination to be filed,

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is published after 18 months, and

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Undergoes separate examination.

In addition to the above conditions, the date of filing of the application in respect of the  patent of addition has to be the same or later than the date of filing of the main /parent patent application. Further, the following points also need consideration in this regard:

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The yard stick to determine whether an invention is a subject matter of a patent of addition is that the claims should not relate to distinct invention and should constitute a single invention.

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The novelty should be clearly specified in the main invention of patent of addition or the main invention could be cited by the Examiner as a reason for rejection of the Patent of Addition for lack of novelty. However, the examiner cannot reject the Patent of Addition for lack of an inventive step in the view of the, main invention. Section 56 of the Patents Act clarifies that a main application/ patent cannot be cited to establish lack of inventive step in the patent of addition but can be cited to establish novelty in the patent of addition.

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A patent of application has the same priority date as that of the main invention and also it expires with the main patent. An economic benefit of patent of additions is that that one does not have to pay/ submit a separate renewal fees but if the parent patent is revoked and the patent of addition is an independent patent then there would be a requirement for the payment of annuity.

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Patent of addition too can be subject matter of a PCT application. PCT application as defined under Article 2 of the Patent Co-operation Treaty "application" means an application for the protection of an invention; references to an "application" shall be construed as references to applications for patents for inventions, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, and utility certificates of addition; references to a "patent" shall be construed as references to patents for inventions, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, and utility certificates of addition.

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The above definition clarifies that a Patent of Addition too can be the subject matter of a PCT application. With the filing of an application for Patent Of Addition, the complete specification should have a specific reference to the patent number of main  patent or the application number of main patent, and the invention is improved or modification of the invention applied for.

CONTINUATION – IN-PART UNDER US PATENT SYSTEM

In many ways, the provision of Patent of Addition under the Indian Patent System is more  beneficial to the applicant than the Continuation-in-Part (hereinafter "CIP") under the US  patent system. For example: a CIP is only filed when the main application is pending whereas Patent of Addition can be filed any time during the term of the patent. A separate annuity is to be paid for maintenance of a CIP application whereas there is no maintenance for a Patent of Addition separately. The maintenance of Patent of Addition is required only when the  parent patent is revoked and the Patent of Addition is a separate and independent patent. In CIP application, claims must have varying priority dates based on the priority date of the first application in which the specification of the subject matter was disclosed. Despite the varying date, the patent would expire in 20 years; the tenure is same as the Patent of Addition.

AMENDMENT OF A PATENT

Patent application, granted patent, or any other document, may be amended by the applicant or the patent holder at any point of time during the patent lifecycle by filing an application for amendment4. The amendment will not be allowed if an infringement or revocation  proceeding relating to the patent or patent application 13 pending before a court or the Appellate Board5. The application for amendment of a patent, or patent application, or any other document, must be filed in Form 13 6. While filing an application for amendment, the  patent holder or the applicant must state the nature of the proposed amendment and the reasons for such amendment 7. The amendment will be allowed only if the Controller is satisfied with the reasons for the amendment. An application for amendment that is filed after the patent is granted will be published if the proposed amendment is aimed at altering the specification, application, or any other document in a substantive manner 8. The Controller has the discretion to determine whether an amendment is substantive. On publication of the application to amend, any interested person will get an opportunity to oppose the proposed 4

 Sec.57 (1) Patents Act, 1970  ibid 6  Rule 81(1), The Patent Rules, 2003 7  Sec.57 (2) Patents Act, 1970 8  Rule 81(3), The Patent Rules, 2003 5

amendment9. An interested person can file an opposition to the amendment by filing a notice of opposition within three months from the date of publication of the amendment application10. On receiving a notice of opposition to the amendment, the Controller will notify the same to the patent holder or the patent applicant, and will decide the case after giving an opportunity of being heard to the parties 11. The process relating to notice of opposition, written statement, evidence, and hearing that is followed for opposition of a patent grant, will be followed for opposition procedure for amendment also 12. The Controller may allow any amendment of a  patent application as requested or may subject the amendment to certain conditions he deems fit13. Amendment before High Court or Appellate Board

The high court or the Appellate Board may allow the amendment of a patent when a revocation proceeding is pending before it 14. In such a case, the high court or the Appellate Board may impose conditions relating to costs, adv ertisement, and so on, while allowing such an amendment 15. If a high court or the Appellate Board decides that a patent is invalid, it may allow the patent holder to amend the patent in order to avoid the invalidity instead of revoking the patent 16. For example, if a high court holds a claim of a patent to be invalid in the light of prior art, the applicant may amend the claim in order to avoid the prior art. On filing an application for amendment before a high court or Appellate Board, the applicant must inform the Controller 17. After being informed, the Controller will get an opportunity of  being heard by the high court or the Appellate Board before a decision on the amendment is made18  after allowing an amendment, the high court or the Appellate Board will communicate the order of amendment to the Controller, who will ma ke an entry regarding the amendment in the patent register 19.

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 Sec.57 (3) Patents Act, 1970. 10  ibid. 11  ibid. 12  supra note,8. 13  Rule 81(2), The Patent Rules, 2003. 14 Sec.58 (1) Patents Act, 1970. 15  ibid 16  ibid 17 Sec.58 (2) Patents Act, 1970. 18  ibid 19 Sec.58 (3) Patents Act, 1970.

Scope of Amendment

The patent application, complete specification, or any other document, can be amended only if it is in the form of a disclaimer, correction, or explanation 20. The amendment will be accepted only if it relates to incorporation of an actual fact 21. Any amendment of a complete specification or claim must fall within the scope of the initial disclosure in the specification22. Addition of new material that is not present in the initial disclosure will not be allowed. The amendment may also relate to the priority of the patent application 23. Once an amendment is made, the amended application, specification, or other documents, must be submitted by the applicant for amendment to the Controller 24. The amendment will  be deemed to form part of the specification along with other documents 25. Once submitted to the Controller, the fact of amendment of the specification or any other document will be  published expeditiously26. The right of the applicant or patentee to make an amendment cannot be questioned based on any ground except fraud 27.

Study of Relevant Cases

 AGC Flat Glass Europe SA v. Anand Mahajan and Ors The patent holder in the case, AGC Flat Glass Europe SA (AGC), acquired a patent relating to a mirror with no copper layer and process for manufacturing the same 28. AGC filed a suit against Anand Mahajan and others (Anand) stating that Anand’s mirrors infringe its patent29. Response, Anand claimed patent invalidity based on anticipation in the light of prior art 30.

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Sec.59 (1) Patents Act, 1970.  ibid 22  ibid 23 Sec.57 (5) Patents Act, 1970. 24 Rule 82, The Patent Rules, 2003. 25 Sec.59 (2) Patents Act, 1970. 26  ibid 27  ibid 28  ibid, at para 2. 29  ibid, at para 4. 21

30

 ibid, at para 5.

After reviewing the prior art, AGC filed an application. Before the court for amending a claim in the patent31. The relevant portion of the claim proposed to be amended by AGC read as follows: 1. A Mirror with no copper layer comprising: i) a vitreous substance, ii) at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,32 AGC proposed to amend the claim to insert ‘a sensitizing material, typically tin’ in Clause (ii) of the claim33. After reviewing the application of AGC, the court allowed the amendment in the form of a clarification or disclaimer. ‘ The court started its analysis by stating that an amendment made to overcome an objection  based on prior publication would be acceptable only if it overcomes the said objection34. It  pointed out that the amendment would not be acceptable if the patent holder was a ware of the  publication for a long period of time before applying for the amendment35. Furthermore, the court stated that an amendment having the effect of converting a non-essential element into an essential element would not be allowed 36. It went on to observe that amendments which limit the scope of the specification to a sub-combination, which was within the original claim, would be a disclaimer that might be allowed 37. As per the court, the absence of an additional claim in the original document to the subcombination would not by itself be a reason for refusing an amendment 38. Furthermore, in the court’s view, a patent holder who had chosen to make his claim in a wide and sweeping form and who has had the advantage of the claim stated in that form for some years, might not be allowed to limit his claim by amendment to make his patent more secure 39. In a situation where a patent holder knew the defect in the specification and did not seek to amend the 31

 ibid, at para 6.  ibid, at para 3. 33  ibid, at para 6. 34  ibid, at para 14. 35  ibid. 36  ibid, citing Windusfing v. Tabur (1985)RPC 59 at 82 (AC). 37  ibid.,citing AMP Incaporated v. Hellerman Limited (1962) RPC 55. 38  ibid. 39  ibid., at para 15. 32

specification but successfully insisted on retaining it in its original form, the court pointed out that it might be a ground for rejecting an amendment at a considerably later date, when the validity of the patent was attacked by proceedings for revocation 40. Further, where there was no evidence to indicate either that the patent holder was aware of the defect in his specification or that he made use of an unjustified monopoly resulting from the defect to seek undue advantage from his competitors, the court stated that it might not refuse an amendment41. Considering the provisions under the Patents Act, the court stated that the claims in a patent can be amended before the High Court when a plea for revocation is raised provided that the amendment is clarificatory or elaborative in nature, and does not alter the scope of the claim or introduce any new claim in the invention which was not present in the original invention 42. It then stated that the scope of enquiry in relation to amendments in the patent claim would be limited to the extent as to whether it introduces any new claim which extends the scope of the monopoly rights of the patent holder 43. According to the court, the patent holder might disclaim a portion of his invention by narrowing down or crystallizing the claims and apportioning the claims which are irrelevant, and ultimately make a claim narrow and limit the scope of the patent 44. Disclaimer, as per the court, means that a right holder is delimiting the scope of the invention by narrowing down the claims to its inconvenience, in a way which makes the amended claims not inconsistent with the earlier claims in the original specification45. After going through the specification of the patent, sought to be amended by AGC, the court observed that the invention worked upon a three step process, which includes: 1. Sensitizing process; 2. Activating process; and, . 3. Silvering process. As the addition of the five words ‘a sensitizing material, typically tin’ in the claim, related to the first process of the invention and did not in any way lie outside t he scope of the invention, 40

ibid., citing Fargenindustrie A.G’s Patent (1930) 47 RPC 289.  ibid., at Chrome-Alloying Co. Limited v. Metal Diffusion Limited (1962) 42  ibid, at para 17. 43  ibid 44  ibid, at para 18. 45  ibid 41

the court stated that the amendment by AGC is a clarificatory one. The court stated that the amendment to the claim falls within the scope of the invention in the Specification, which could be clearly understood on reading claim 1 with claim 9 of the patent 46. In the light of its analysis, the court held that the amendment proposed by AGC was merely a clarificatory, or elaborative one, or a disclaimer, and does not alter the scope of the invention and, therefore, would be allowed 47. It stated that the decision on whether it is a clarification or disclaimer would be made at a later stage. The court went on to state that it would not go into merits of whether the amendment brings tin, which was in the public domain, within the scope of the patent claim as that would be decided while dealing with the plea of invalidation and not while making a decision on allowing the amendment 48. It further stated that the merit of the case is immaterial and could not be looked into while considering an application for amendment 49. As per the court, the correctness and falsity of the amendment could not also be visited at the stage of deciding on allowance of the amendment50. Secretary, Department of Atomic Energy, Government of India v. The Controller General of  Patents, Designs and Trademarks and Ors; The petitioner, the Department of Atomic Energy, acquired a patent for a process of treating exhaust gas emission, produced during the combustion of coal in a coal combustion plant, for reducing suspended particulate matter 51. The patent was opposed after its grant and the  petitioner filed an application for amendment of the patent52. The Respondent, Controller of Patents, decided to hear the opposition before taking up the amendment application filed by the petitioner 53. Therefore, the petitioner filed a writ petition before the High Court of Kolkata praying for orders directing the Controller to deal with the amendment application  before hearing the opposition. . After reviewing the facts of the case, the court directed the Controller to refrain from hearing the opposition until the petitioner’s appeal regar ding the amendment is decided54. It stayed the opposition hearing for a period of eight weeks or until 46

 ibid, at para 22.  ibid, at para 25. 48  ibid, at para 23. 49  ibid., citing Lanka Ram Sharma v. Balar Marketing Private Limitad,MANU/SC/0711/2003:(27)PTC 175 (SC). 50  ibid,. citing Rajesh Kumar Aggrwal and ors v. K.K. Modi and ors, MANU/SC/8043/2006 :(2006) 4 SCC 385. 51  ibid, at para 1. 52  Iibid 53  ibid, at para 2. 47

54

 ibid, at para 39.

the amendment issue is heard, whichever is earlier, and stated that the Controller may  proceed with the opposition if the petitioner failed to convince the Appellate Board regarding the amendment of the patent 55.

Correction of Clerical Errors

Any clerical errors in a' patent, patent application, specification, or any other document, may  be corrected by the Controller 56. Such correction may be made by the Controller on his own accord or in furtherance of a request made by an interested person 57.If the Controller decides to make a correction on his own initiative, he will give a notice to the patent holder or patent applicant, or any other relevant person about the proposed correction 58. The Controller will finally decide on the correction only after giving an opportunity of being heard to the  parties59. On receiving a request for correction from an interested person, the Controller will review the material nature of the proposed correction. The Controller will publish the proposed correction if he believes that the correction will materially alter the meaning or scope of the document in which correction is proposed 60. If the correction is material, the applicant for correction will be required to send copies of his application to persons deemed by the Controller as interested in the patent or patent application61. Any person may oppose the correction by filing a notice of opposition after publication ‘ of the request for correction62. Such notice of opposition must be filed in Form 14 within three months from the date of publication 63. On receiving such a notice, the Controller will notify the applicant for correction about the notice and will decide on the correction after giving an opportunity of being heard. The procedure for filing notice, written statement, evidence, and hearing, will be same as the procedure for opposition to grant of a patent 64. On acceptance of

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 ibid, at para 40. Sec.78 (1) Patents Act, 1970. 57 Sec.78 (2) Patents Act, 1970. 58 Sec.78 (3) Patents Act, 1970. 59  ibid 60 Sec.78 (4) Patents Act, 1970. 61 Rule 123, The Patent Rules, 2003. 62 Sec.78 (5) Patents Act, 1970. 63 Rule 124(1), The Patent Rules, 2003. 56

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Rule 124(4), The Patent Rules, 2003.

the correction requested, the correction will be made in the document and the applicant for correction and the opponent will be notified 65.

Amendment by Controller’s Permission

The Controller may permit any person to amend any document or correct any procedural irregularity for which no special provision exists under the Patents Act 66. Such an amendment or correction may be permitted only if it is not detrimental to the interests of any person. Such an amendment or correction must be made in accordance with the terms deemed fit by the Controller.

65 66

Rule 125, The Patent Rules, 2003. Rule 137, The Patent Rules, 2003.

CONCLUSION

At the end, it can be concluded that the Patent of Addition is an added advantage to the applicant in order to secure new modification in the invention or improvement and in case of amendment of patents provide assistance to the patentee to any further form of a disclaimer, correction, or explanation. In the course of working of patent, new inventions or improvement or modifications in the invention can be claimed and rights can be acquired over the same via filing of Patent of Addition; however, the subject matter in the Patent of Addition must disclose over and above the main application or parent patent application and not merely claim over the same specification as of parent application. The amendment will be accepted only if it relates to incorporation of an actual fact. Any amendment of a complete specification or claim must fall within the scope of the initial disclosure in the specification. Addition of new material that is not present in the initial disclosure will not be allowed. The amendment may also relate to the priority of the patent application. Henceforth, if the claims do not suitably cover the invention, the same cannot be corrected by filing a Patent of Addition.