01 May 2020

Reducing Excess Claims During PCT National Phase Entry in India and Voluntary Amendments

Introduction

When a PCT National Phase application is filed with Indian Patent Office (IPO), the applicant may wish to file claims in-line with the claims which have been submitted with other countries such as US, EP and these claims may have been granted/allowed during prosecution in US/EP etc. Therefore, in order to make the prosecution process smooth and faster, the applicant could decide to submit voluntary amendments in claims and also reduce excess claims which are not patentable or delete such claims which are not found worth filing at India Patent Office by the applicant.

Recent Amendment in Indian Rules – PCT National Phase Entry

Till the recent amendment came into force, it was mandatory to file amendment of PCT Application under Article 19 or Article 34. If any amendment of claims was desired by the applicant, applicant could then request for voluntary amendments involving additional fee or in another way where the applicant need to wait till First Examination Report (FER) is issued. This situation was not helpful for both the applicant and the Indian Patent Office.

When the recent amendment rules i.e. Patent Amendment Rules 2016 came into force i.e. 16 May 2016, the Patent Rules had come with few new beneficial provisions. One of the beneficial rule related to PCT Application which got substituted is as follows:

Rule 20(1):

An application corresponding to an international application filed under Patent Cooperation Treaty may be made in Form 1 under sub-section (1A) of section 7.

Explanation – For the purpose of this rule, an application corresponding to an international application means an international application as filed under Patent Cooperation Treaty which includes any amendments made by the applicant under Article 19 and communicated to Designated Office under Article 20 or any amendment made under sub-clause (b) of clause (2) of Article 34 of the Treaty:

Provided that the applicant, while filing such application corresponding to an international application designating India, may delete a claim, in accordance with the provisions contained in rule 14.

This new rule clearly reveals that while making PCT National Phase entry in India, the applicant may only delete one or more claims. This provision seems very useful provision in reducing excess claim fee as now it is around INR 1600 per additional claim beyond 10 claims as there are only 10 claims allowed in India. This rule is only restricted to deletion of claims while filing PCT National Phase entry and no other amendments such as merger of claims, changing claim language is allowed at this entry stage. All types of such desired amendments would be possible through voluntary amendment after filing the PCT National Phase Application before the Examination Report is issued.

Another option may be to delete undesirable claims at the PCT National Phase entry stage and then wait for issuance of FER for desired amendments into claims such as merger of claims etc.. In this option, there would be no further fee as the applicant states that he/she would be doing such claim amendments in order to respond the FER.

The applicant should delete claims related to non-patentable subject matter having such words/ sentences such as method of treatment, software etc. while filing PCT National Phase application into India. It may be noted that the Sections 3 and 4 of the India Patents Act discloses non-patentable subject matters. Also, claims which do not direct towards a product or a process are not allowed in India, therefore it would be advisable to delete such claims at this stage. Furthermore, other type of claims such as omnibus claims and software based claims are not allowed in India. All such claims may be deleted at the time of National Phase Entry in order to avoid excess claim fees.

What are Voluntary Amendments?

The amendments which are done by applicant in order to make the patent prosecution smooth and which are not waited until the examination report are known as voluntary amendments. These amendments are not done in response to any cited objections as raised in the examination report. In many cases, these are done to comply with the patent laws applicable to specific jurisdictions. Voluntary amendment may be done in claims known as “voluntary claim amendment” and can also be done in the complete specification.

Voluntary Claim Amendment

The applicant files voluntary claim amendment along with the associated fee until the examination report is issued. The current practice as per Indian Patent Law does not allow the following:

  • Substitution of claims that are currently on file
  • Incorporation of new independent claims or dependent claims
  • Deleting a limitation from a claim
  • Substitution of a term or phrase in the claim with a broader term or phrase.

The above points lead us to ask a question: what type of claim amendments are permissible? The answer to this question is in Section 59 (1) of the Patents Act 1970, which states:

No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.”

Thus, Section 59 clearly describes that no amendments would be allowed if the amended claim does not fall within the scope of the non-amended claim. Also, Section 59 depicts the scope for amendment in the complete specification of a patent application. Further, this section allows amendments to state clarity related to existing claims by way of: (a) incorporation of a disclaimer which could limit the scope of the claim, (b) by correction where there is any obvious mistake, or (c) by providing additional explanation or description of a feature or a unique characteristic, which leaves no chance for broadening the scope of the claims. The Indian Courts have also strictly adhered to this principle in most of the patent litigation cases/suits.

The ‘disclaimer’ means amending a claim to limit its scope to a sub-combination which should be within the scope of original claims. The ‘correction’ means rectifying an obvious mistake in a claim such as spelling errors or translation errors. Further, ‘explanation’ means incorporation with a more description to a claimed feature to further explain and clear an ambiguous term or cited prior art.

Claim amendments should be done ideally for incorporating the actual facts. The applicant should indicate all the amendments done in a marked copy and also illustrate the page, paragraph and line numbers of the original filed specification on which amendments have been made.

It is to be noted that an amended claim should fall within the scope of original claims filed earlier. In cases where there is any unclaimed subject matter in the specification filed earlier, then the applicant should file a divisional application rather than adding new claims.

Further, merging a dependent claim with a corresponding independent claim is allowed, as it would

be narrowing the scope of a claim. Other type of amendments such as incorporation of reference numerals, rectifying clerical errors and substitution of a term or phrase in a claim with a narrower word or phrase are allowed as per the Indian Patent Law. Therefore, amendments in the claims should be carefully made so as to not violate the Section 59(1) as it may be established later that “amend claims” were obtained by fraud and the same action might lead to grounds for revocation of granted patents.

Conclusion

Voluntary claim amendment provision and provision related to reducing excess claims provide efficient and effective method for smooth patent prosecution in India. Therefore, in order to facilitate grant and taking examination report positively in favor of the applicant, our recommendation is to file voluntary claim amendments. Special attention should be taken while making amendment in claims in compliance of Section 59 of Indian Patent Act.

Authors

Dr. Amit Goel (Director) can be reached at amit.goel@effectualservices.com  and Jyoti Chauhan (Manager).

For any query related to Reducing excess claim and voluntary claim amendment provisions in India, please feel free to contact at info@effectualservices.com.

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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