4) Amendment and Correction Flashcards
Section 19 + Rule 21
General Power to Amend Application Before Grant
The applicant may amend his application as much as he wants between the search and first examination reports.
If the first exam report is a s18(4) report, then the applicant is given two months to make one more amendment.
If the first exam report is a s18(3) report, then the applicant can make an amendment when filing his response to the report. If the 18(3) was sent prior to publication, then he can file as many amendments as he likes before he sends his response to the report, but if it was sent after publication, then he can only amend as part of his response and not before.
Further amendments can be allowed at any time if the Comptroller consents (the applicant must give reasons for the amendment).
The above only applies to the specification of the patent application. The actual request for grant (i.e., PF1) can also be amended at any time so long as the Comptroller consents (the applicant must also give reasons). [This can be useful for changes of applicant and the like.]
NB any of the above amendments must be requested in writing from the Comptroller.
Section 27
General Power to Amend Specification After Grant
(1) The proprietor can request amendment of his granted patent [in writing to the Comptroller and providing reasons for the amendment (R35)]. The Comptroller can accept at his discretion, subject to any conditions he sees fit. [The Comptroller must advertise the amendment request in the journal. (R75)]
(2) No amendments are allowed where any proceedings are pending that may end up questioning the validity of the patent (e.g., infringement proceedings) [as in this case use s75 instead].
(3) Any amendment under this section will be retroactive to the date of grant.
…
(5) Third parties can oppose any such amendments and the Comptroller will consider the opposition when making his decision.
(6) The Comptroller will consider the EPC when making his decision [which effectively means that he will generally allow it].
[If an EP(GB) spec was published in French or German, the proprietor must provide English translations of the original and amended portions of text. The Comptroller can ask for a full translation of the spec if he thinks it’s necessary. (R35)]
Section 75
Amendment of Patent in Infringement/Revocation Proceedings
Basically the same rules as s27 except replace “Comptroller” with “court” where the proceedings are before the court.
Although NB in the case where proceedings are before the court, the Comptroller may appear at court if they so wish or are directed to.
Section 76
Added Matter and Claim Broadening
(1) New applications filed in respect of matter disclosed in an earlier application or granted patent shall not proceed to grant if they contain added matter over the parent specification as filed.
(1A) Where an application was filed in reference to relevant earlier applications, the application shall not proceed to grant if its description (once eventually filed) contains added matter over said relevant earlier applications.
(2) An application cannot be amended to disclose added matter over the application as filed.
(3) A granted patent cannot be amended to disclose added matter over the application as filed, or to extend the scope of protection (i.e., to broaden the claims).
Section 117 + Rules 49 & 105
Correction of Errors in Patents and Patent Applications
The Comptroller may correct errors in translation, transcription or other clerical errors or mistakes in the specification of a patent or a patent application or in any associated documents or forms.
Any correction request must be made in writing except unless someone wants to correct his name on an application, in which case he must use the form.
Corrections will not be allowed to the specification unless they are obvious (i.e., it is immediately evident that nothing else could have been intended). However, this does not apply if the error was due to corruption during electronic transmission.
Normally, the correction request would have to be advertised in the journal, but if the Comptroller thinks there is no reasonable objection to the correction he does not have to advertise it. If it is published, then anyone can oppose the request and the Comptroller will consider the opposition when deciding whether to allow the request or not.
If the Comptroller is requested to correct an error in the withdrawal of a patent application, and that application and details of its withdrawal were both published, then he shall also publish notice of the correction request in the journal. [NB correction of withdrawal errors normally comes in when someone requested withdrawal of the wrong application by accident.]
Section 117A
Effect of Resuscitating a Withdrawn Application via s117 (Erroneous Withdrawal)
If an erroneous withdrawal is corrected under s117 and the application is therefore resuscitated, then anything done in relation to the application between withdrawal and resuscitation is valid.
If the Comptroller published notice of the request for resuscitation, then any repetition of a previously infringing act (the repetition being committed between withdrawal and resuscitation) shall be an infringement.
Usual third party rights for anyone acting in good faith between withdrawal and said published notice.
