Background

In patent applications, precise and accurate claims are vital, as they define the boundaries of protection the patent will offer. Yet, clerical errors occasionally appear, ranging from minor spelling or grammatical mistakes to misstatements in technical parameters. Correcting these errors is crucial because they can impact a patent’s scope, and sometimes even its enforceability. In India, the Patents Act provides two primary options for rectifying these errors: filing a request for voluntary amendment or a request specifically for clerical corrections.

Understanding when to use each option is essential for applicants, as the type of error and its potential impact on the claim scope determine the appropriate route. For instance, a simple typographical error can be handled as a clerical correction, but errors affecting the technical content or scope of the claims often require a voluntary amendment. This blog will explore the provisions governing both approaches and offer guidance on how to select the right path for ensuring compliance and maintaining the integrity of patent claims.

Relevant Sections and Rules

Voluntary Amendments under Sections 57 and 59

According to Sections 57 and 59 of the Indian Patents Act, 1970 (the ‘Act’), an applicant can amend claims voluntarily at any time before or after the patent is granted. However, such amendments are subject to certain limitations:

• Conditions: Amendments are allowed by way of disclaimer, correction, or explanation, for incorporating factual information, provided they don’t broaden the scope beyond the originally disclosed matter. Any amendment that would introduce new subject matter or extend the claim’s boundaries is not allowed.
• Application Process: Amendments under Sections 57 and 59 must be requested using Form 13 with the prescribed fee, as per Rule 81 of the Indian Patents Rules, 2003 (the ‘Rules’).

Clerical Corrections under Section 78

Section 78 allows the Controller to correct clerical errors without prejudice to Sections 57 and 59. According to this section:

• Scope: The Controller may correct clerical errors in any patent, specification, or document filed during the application process, as well as in entries in the patent register.
• Application Process: A request for correction of clerical errors under Section 78 requires submission of Form 30 along with the official fee, as per sub-rule (2) of Rule 8.

Options for Correcting Clerical Errors

Thus, the Indian Patents Act offers two primary avenues for rectifying errors in patent claims: filing a request for a voluntary amendment or a specific request for correcting clerical errors. The choice of one over the other hinges on the nature and impact of the error on the claim’s scope, as well as legal interpretations of the provisions governing each type of correction.

For instance, if a claim contains a minor spelling or grammatical error, a correction request under Section 78 of the Act might suffice. However, if correcting the error could alter the claim’s scope—such as correcting a range from “76-100” to “75-100″—a more nuanced approach is needed to ensure the correction is legally valid without risking scope expansion or unintentional overlap with the prior art.

[Case study]

Relevant Case Laws

Judicial Interpretation of Voluntary Amendments

The Delhi High Court has provided guidance on permissible amendments under Sections 57 and 59 in various cases. In Nippon A&L Inc. v. The Controller of Patents [1], the court held that amendments to patent specifications or claims prior to grant should be interpreted liberally to allow applicants to narrow their claims within the disclosed scope. However, new subject matter cannot be added. Similarly, in Allergan Inc. v. The Controller of Patents [2], the court ruled that amendments at a pre-grant stage, even when narrowing the claim, should not be outrightly rejected if they align with the original disclosure.

These cases highlight that voluntary amendments, especially those aimed at narrowing the claims, are generally accepted provided they fall within the initially disclosed scope. Thus, a request for clerical correction in the claims under Sections 57 and 59 should ideally be supported by the initial disclosure in the specification.

Judicial Interpretation of Clerical Corrections under Section 78

Recent judgments have also clarified the extent of clerical corrections permitted under Section 78:

• In Iritech Inc. v. Controller of Patents [3], the Delhi High Court ruled that Section 78 allows the correction of clerical errors that inadvertently affect the application’s procedural status. In this case, an error in form-filing led to the application being considered “abandoned.” The court ordered the restoration of the application, emphasizing that clerical corrections are permissible if they do not alter the application’s substance.
• In Nippon Steel Corporation v. Union of India [4], however, the court ruled that Section 78 cannot be used to extend statutory deadlines or reinstate applications that have been deemed withdrawn due to missed deadlines. Here, the applicant attempted to correct the priority date to avoid a missed examination request deadline. The court ruled that Section 78 cannot apply retroactively to bypass procedural requirements, underscoring the limitation that clerical corrections cannot alter timelines or procedural obligations.

Our Analysis

Correcting clerical errors in claims can involve either filing a request for amendment under Sections 57 and 59 (using Form 13) or a request under Section 78 (using Form 30). The choice depends on the nature of the error:

• Scope-Impacting Errors: If the clerical error relates to a technical feature or range that might alter the claim’s scope, it should be corrected using Form 13 under Sections 57 and 59, provided the corrected claims are supported by the initial specification and fall within the original scope.
• Non-Substantive Errors: For minor errors, such as spelling or grammar, a correction request under Section 78 using Form 30 is suitable.
• Timing and Fees: While the official fee for filing either request is the same before grant, fees for voluntary amendments double post-grant. As such, early corrections are generally more economical for amendments.

Conclusion

Accordingly, while the Indian Patents Act allows the Applicants to correct the errors in the claims, a self-analysis is required to consider under which ‘Form’ the corrections may be sought. An adequate analysis may be required while seeking a correction of clerical errors made in the claims of a Patent application in India. The corrections in the claims can be sought during the pendency or after the grant of the Patent. It is very important to always check the claims on record since the claims in a patent application define the overall scope of protection granted by the patent.

References

[1] C.A.(COMM.IPD-PAT) 11/2022

[2] C.A.(COMM.IPD-PAT) 22/2021

[3] W.P.(C) 7850/2014

[4] W.P. (C) 801 of 2011