The hon’ble IPAB has recently allowed an appeal and granted a patent to Prism Cement Ltd. The order throws some light on what may be considered allowable as an amendment under section 57 read with 59.

The appeal was against a decision of the controller, where the controller did not allow the amended claims filed by the applicant and disallowed the amendment under section 57-59. The controller referred to and objected two main  terms/expression added to the claims:  “open channel” and position of non-return valve.

The IPAB held that though the word “open” is not found explicitly mentioned in the description but once the description and the drawings are read together, it is clear that the one of the channel, “channel (3)-(3)”, as explicitly mentioned in the description, is in fact “open channel”. Therefore, the amendment as per the hon’ble IPAB is well supported by the description when read with the drawings and if the adjective ‘open’ is added to “channel” in the claims, the scope of the word “channel” is narrowed.

It was also held that the second amendment also finds its support in the description when read with the drawings and is well within the scope of original disclosure.

The hon’ble IPAB further elaborated that both the amendments are not forming part of any newly introduced matter in the specification rather they are part and parcel of the original disclosure in the complete specification. The amendments do not attract the provisions of section 57 read with section 59; as they do not go beyond the originally filed specification and were made as ‘explanation’ fulfilling the criterion of amendments as per the teachings of section 57 read with section 59 of the Patents Act, 1970