The determination of the fee to be paid for patent applications and the denial of amendment at the entry stage into the National Phase in India are procedural aspects vested with the Central Government under Section 142 of the Patents Act, 1979.

1. The petitioner, who is stated to be an Advocate, Law Teacher, Mediator and Registered Patent, seeks to assail the impugned notice dated 2.7.2012 with a direction to the respondents to allow the amendment of original application while entering Patent Co-operation Treaty (PCT) National Phase Application in India as per Articles and Regulations prescribed under the PCT.

2. The public notice deals with filing of PCT National Phase Applications in India and is stated to have been issued to simplify the process of filing of the said application. It is issued by the Office of the Controller General of Patents, Designs and Trade Marks and is stated to be a coordinating effort between the Indian Patent Office (IPO), International Bureau (IB) of the World Intellectual Property Organization (WIPO) to acquire online access to PCT International Applications and relating documents available with the IB. The objective of this is stated to be that redundant processes would be eliminated qua the stakeholders and, thus, multiple copies of documents already available with the IB can be utilized by the IPO. Thus, instructions have been issued as per the circular, but are to apply only to the PCT National Phase Applications entering India, which do not claim priority of any PCT National Phase Application filed previously in India.

3. The grievance of the petitioner is with Note (ii) to paragraph (1), which reads as under:

“ii. It is clarified that the IPO does not allow an Applicant to amend the specification or the related documents before he actually enters National Phase in India. These directions are in consonance with the aforementioned practice.”

4. The aforesaid provision has to be read along with Paragraph (2), which reads as under:

“2. The documents filed by the Applicant should exactly correspond with the up-to-date information available on the record of IB on the date of filing of the PCT National Phase Application in India. The said information must have been notified/published by the IB in accordance with the PCT and the Regulations made thereunder. Any request pending with the IB shall be of no consequence and should not be reflected in the documents. If any such request is reflected in the documents, the information notified/published by IB shall prevail.”

5. The aforesaid is in the context of Chapter II of the Patents Act, 1979 (hereinafter to be referred to as “the said Act”), which deals with inventions not patentable. Section 3 of the said Act stipulates what are not inventions, while Section 4 provides inventions relating to atomic energy are not patentable.

6. The learned counsel for the petitioner states that the grievance with the circular is that though Section 57 read with Section 59 of the said Act permit amendment of application and specification or any document relating thereto and provide supplementary provisions as to amendment of application or specification, that right is being denied at the entry stage into the National Phase in India. The relevant portion of Section 59 of the said Act reads as under:

“Section 59. Supplementary provisions as to amendment of application or specification.-

(1) 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.” (emphasis supplied)

7. The submission, thus, is when Section 59 of the said Act permits disclaimer, correction or explanation, there is no reason why this should not be permitted at