Dr. Dewan: Absolutely Ashima! It’s much required!

Ashima: Ok Sir! Then please clear my doubts about some differences.

Dr. Dewan: Sure!

Ashima: Sir, for a PCT national phase entry, what are requirements to summary of invention?

Dr. Dewan: There is no formal requirement of the summary, but it is good practice to include summary, so that all features of the claims are fairly based in the specification (at least twice), in the summary and in the detailed description. As a matter of practice, we do not amend the summary, if the claims are amended during or immediately after the PCT national phase entry.

Ashima: What are restrictions/requirements for amendments when entering PCT national phase? May enter with PCT original/ PCT amended claims under PCT rule 19/34, or with another set of claims by amendments to replace PCT claims?

Dr. Dewan:  In India, it is possible only to delete claims to save on official fees at the time of national phase entry; however we cannot amend/merge claims. Reduction of claims by way of deletion will of course reduce the official fees. As per the Indian patent law, the national phase application must exactly correspond with the up-to-date information available on WIPO.

Ashima:  What are the restriction requirements for Voluntary amendments after entering PCT national phase and before receiving action from PTO? Reciting related article of law or rules to explain if possible.

Dr. Dewan:  There are no restriction requirements for Voluntary amendments after entering PCT national phase excepting that new matter cannot be added in the claims. Amendments can be made to remove clerical errors, by way of explanation or by including disclaimers.

Ashima:  What are the restriction requirements for amendments when response to Office Action? Any related article of law to explain this?

Dr. Dewan: The same restriction requirements for amendments apply when responding to an office action. You must read Section 59 for further clarification. It says “No amendment of an application for a patent or a complete specification or any document related 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”

Ashima: What are the restriction requirements for amendments when file an appeal/ review against decision of rejection?

Dr. Dewan: The same restriction requirements for amendments apply when responding to an office action. Please read Section 59 and 58 of Indian Patents Act 2007. Section 59 (2)(c) states “the right of the applicant or patentee to make amendment shall not be called in question except on the ground of fraud”. Section 58 states “….In any proceeding before the Appellate Board or the High Court for the revocation of a patent, the Appellate Board or the High Court, as the case may be, may, subject to the provisions contained in section 59, allow the patentee to amend his complete specification in such manner and subject to such terms as to costs, advertisement or otherwise, as the Appellate Board or the High Court may think fit, and if, in any proceedings for revocation, the Appellate Board or the High Court decides that the patent is invalid, it may allow the specification to be amended under this section instead of revoking the patent”

Ashima: What are the restriction requirements for amendments after receiving NOA and before registration?

Dr. Dewan: The same restriction requirements for amendments apply when responding to an office action. Refer Section 59 of IPA-2007, particularly sub-section 59(2). It says “No amendment of an application for a patent or a complete specification or any document related 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”

Ashima: What are the restriction requirements for amendments after grant of a patent application?

Dr. Dewan: The same restriction requirements for amendments apply when responding to an office action. See Section 59 of IPA-2007, particularly sub-section 59(2). It says “No amendment of an application for a patent or a complete specification or any document related 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”

Ashima:  What are the restriction requirements for amendments during the procedure of opposition/invalidation?