Controlling costs: deletion versus amendment of claims

By Vidisha Garg, Anand and Anand

India has been rising on the list of the World Bank’s ease of doing business rankings, from 100 in 2017 to 63 in 2019, and has become one of the top 10 countries for foreign investment. Patent filings in India have also increased, from 47,854 patent applications in 2017-18 to 50,667 in 2018-19. The national-phase filings constitute at least 60% of the total filings. Considering India has become such an important jurisdiction, the cost of filing patent applications has become a concern.

vidisha garg anand and anand patent claims
Vidisha Garg
Anand and Anand

As per rule 20(1) of the Patent Rules, 2003, for entering national phase into India, the filed Patent Co-operation Treaty (PCT) international application, along with amendments made under article 19 and/or 34 (if any), are considered as “application corresponding to an international application”. Therefore, the number of pages of the specification and claims in the PCT application have a significant role in determining the official fee of the application. This may sometimes be a huge amount of money, particularly when specifications run into hundreds and thousands of pages. Claims with each additional page over 30 pages cost about US$11, and additional claims over 10 pages cost about US$23.

Such fees cause a financial burden on the applicant and are waste of money, as not all the claims may be patent-eligible. Indian patent laws have certain peculiar sections, particularly sections 3 and 4, which define what are not patent-eligible subject matters, for example, claims directed to second medical use, method of treatment, methods of agriculture, computer-related inventions, etc. Paying fees for claims that will eventually have to be deleted during the prosecution phase, without any provision of refund of the claim fee, is an unnecessary burden on applicants.

Any act of deletion of such claims was considered as an amendment, and the applicants had to file a request for amendment of claims and pay an additional fee for such amendments. Further, the controller had to examine the amendments in accordance to the provisions of sections 57 and 59.

Rule 20(1) of the Patent Rules 2003 was amended in the Amendment Rules 2016, and provided much-desired relief for the applicants. As per the amended rules: “(1) An application corresponding to an international application filed under the PCT may be made in form 1 under sub-section (1A) of section 7.

In other words for the purpose of this rule, an application corresponding to an international application means an international application as filed under the PCT, which includes any amendments made by the applicant under article 19 and communicated to the 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 an application corresponding to an international application designating India, may delete a claim, in accordance with the provisions contained in rule 14.”

Therefore, now it is possible for applicants to control the cost of filing in India by not paying the fee for the claims that they do not want to pursue. The claims that are not patentable, or do not have any commercial value in India, may be deleted during the national-phase entry. The applicant has to clearly show the claims that are being deleted by way of a marked-up copy.

However, it is to be noted that deletion of claims under rule 20(1) and amendment under section 57 are totally distinct acts, and should not be mixed together. Deletion involves only removing the claims that need not be pursued, while amendment involves acts such as revision of the claims, merging of one or more claims, rewording of claim language, or deletion of some of the claims. Sometimes, in order to expedite the prosecution, applicants prefer to file claims allowed in other jurisdictions, which is considered a voluntary amendment. Therefore, one needs to be very clear whether they want to delete or amend the claims. Deletion will not require filing of any request or official fee, whereas amendments have to be accompanied with the request for voluntary amendment and a US$107 fee.

It is therefore advisable to review the claims prior to filing patent applications. If the application contains claims that relate to non-patentable subject matter, as provided in sections 3 and 4 of the act, such claims should be deleted to cut down unnecessary costs.

In the case of corresponding patent applications that have been examined, and claims that have been amended to overcome certain prior parts or to remedy the examiner’s objection, these claims can also be amended in India to expedite the prosecution process. However, it is not necessary to amend claims at the time of filing the applications. Amendments can be filed any time before the examination of the application.

Further, if the number of claims increases in the amended set of claims, additional fees will have to be paid. Last but not least, all the amendments have to be strictly in accordance with the provisions of section 59 of the act.

Whether and when to file claim amendments have to be decided judiciously depending upon the nature of amendments. If the amendments are critical and can expedite prosecution, then pre-examination amendments should be filed. Otherwise, amendments can be filed in response to the office action. Therefore, chose carefully to control costs.

Vidisha Garg is a partner at Anand and Anand

patent Pravin Anand,Managing Partner,Anand and Anand

Anand and Anand
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