4) Amendments & Corrections

Question 1

What is the DL for filing a Inventor Declaration (form 7)?

Answer 1

FD + 16M

Question 2

If you make an error on the Inventor Declaration (form 7) (eg. miss an inventor) can this be rectified?

If yes by when and what do you need to provide?

Answer 2

Yes, but it must be rectified by the end of the original DL (FD+16M)
No evidence is required

Rectify to ensure the info is correct on the publication

Question 3

Can you correct an error in PF7 after DL for filing the form?

Answer 3

Yes, except if the correction is to a Name.

Make this using PF20 instead

Question 4

What is the legal consequence of not filing the Inventor Declaration (Form 7)

Answer 4

No inventors named.
Application is taken to be withdrawn
Never gets published

NB. This is not the same as withdrawn LNRO

Question 5

How can you correct the Applicant’s name?
eg because a mistake was made on filing

Answer 5

Correct PF1 by
(i) filing a R49 request (Correction of name or address) or R50 (Correction of error in register) + provide reasons
(ii) filing a R105 request (Correction of error in app) - needs to be clerical/trans error

Question 6

How can apply to amend the listed Applicant(s)?
eg add, delete or replace Applicant

Company Renaming
Assignment
Death

Answer 6

1. If prior to PF7 filing (max PD+16M), amend by filing a Request to Amendment of app (R31)
2. If after PF7 has been filed, register a transaction by filing PF21

Question 7

Is a request to amend the Title of the invention allowed?

Answer 7

Yes, it is generally allowable

Question 8

What is the difference between the effect of a correction vs the effect of an amendment of an application?

What about the effect of a post-grant amendment (s27) and amendments following ‘proceedings putting Validity at issue’ (s75)?

Answer 8

Corrections to an app are ex tunc (deemed always to have been in the state in which it is after the correction)

Amendments to an app are ex nunc

Amendments to a patent are ex tunc (deemed always to have had effect from the date of grant of the patent)

Question 9

What is the consequence on Infringement of the ex tunc effect of post-grant amendment?

Answer 9

Infringement during the period between grant and the post-grant amendment is based on the scope of the amended patent

If an act would have infringed these amended claims, then infringement took place, even though the patent pre-amendment may not have been infringed…

If the amended claims would not have been infringed then infringement is considered not to have occurred, even though the claims pre-amendment were infringed

Question 10

In what format do s19 (General power to amend application before grant) and s27/s75 (after grant) amendments need to be made?

Answer 10

1. In writing
2. Identify the proposed amendment
3. Provide reasons for seeking the amendment (e.g., prior art recently discovered)

Question 11

What is the period and number of times you can amend Request for grant (PF1)(e.g., change of Applicant name/ address)?

Answer 11

No max number of times
From filing the App up until Grant
NB. different period compared to amending the application

Question 12

Who can request to change a person’s address or address for service?

Answer 12

Only the person’s whose address it concerns.

Question 13

In addition to addressing objections raised by Comptroller, can Applicant voluntarily amend their application? If so, under what conditions/guidance?

Answer 13

Yes, within timings of R31&R66A + must not add matter.

Preferable to:
- Keep voluntary amendments to a minimum
- File as early as possible

Question 14

What is the period in which you can voluntarily amend an Application an unlimited number of times? R31

Is the period different for PCT applications? R66A

Answer 14

Between the issue of UK search report (if GB) or ISR (if PCT) and the issue of 1st Substantive Exam report

Yes, because of the issue of ISR, applicant can amend as soon as PCT apps enters NPE (UK)

Question 15

In the rare situation, where ISR has not been issued by the time the PCT app enters NPE (UK), when would the period within which the applicant may amend voluntarily start?

Answer 15

The period starts from the issue of the UKSR or the ISR, whichever is issued first

Question 16

Can you voluntarily amend the application, once the 1st Substantive Exam Report has been issued? If so, how many times?

Answer 16

Yes, but only once!

Question 17

Can you voluntarily amend the application after the one opportunity is no longer available?

What about after the end of the compliance period?

Answer 17

Any further amendments not required by the examiner:
1. Must be received before issue of the letter informing the applicant that a patent has been granted
2. Are made only with the consent of the Comptroller

If after CP, amendment should only be allowed if it does not necessitate substantial re-examination or further search and would not unduly delay grant
Eg, A request to restrict the claims to avoid late-found prior art <– allowable

Question 18

Can you voluntarily amend the application before the issue of the Search Report?

Answer 18

No, unless the Comptroller requires or consents to that amendment

Question 19

What type of amendments/corrections are published in the A doc @18M? Which ones are not?

Answer 19

Published
Corrections under s.117(1)
Amendment to the claims

Amendments made to the specification are not

Question 20

When must the one instance of request for voluntary amendment be filed? R31

Answer 20

Check if the 1st substantive examination report issued before/after the preparations for publication.

If before publication, requests of amendments possible up until and including the response to OA.

If after publication, request amendment:
(i) When replying to the 1st substantive examination report, if it is a 18(3)
(ii) Within 2M of the notice of grant, if 1st SER is a s18(4)

Question 21

In what scenario would the 1st Substantive Exam Report be issued BEFORE publication? (i.e., allowing you to voluntarily amend a number of times up until the response to OA)

Answer 21

For example, if Combined Search and Examination Report was requested and received

Question 22

If the amendments have decreased the number of excess pages or excess claims and consequently the applicant has overpaid, what happens?

Answer 22

Applicant gets a Refund of the overpayment

Question 23

In what case is the Comptroller allowed to amend the spec of application or patent himself?

Answer 23

For the purpose of acknowledging a registered trade mark (in abstract or spec)

NB. The title should not normally contain a trade mark

Question 24

Can a request to amend the specification of a granted patent be made? If yes, by whom?

For what reason might they want to do this?

Answer 24

Yes, by the Proprietor only

1) To distinguish the invention claimed from any (late-identified) published prior art which might invalidate the patent…

2) If GB and EP(GB) parallels exist, then amend GB to remove the conflict –> avoid revocation

Question 25

What 2 mechanisms exist in UK for limiting a claim post-grant?

What is the advantage of one over the other?

Answer 25

1. s27 Request for Post-Grant Amendment
2. s75 Request for Amendment during a proceeding putting Validity at issue (eg Revocation, Infringement counterclaim, Unj. threat or DNI

s27 are more liberal than s75. So, if not estopped by pending revocation or infringement proceeding, advise client to fix patent validity (using s27) before asserting their right

Question 26

In which situation will a s27 request to amend a granted patent be automatically refused?

Answer 26

If proceedings are pending in which the validity of the patent is being put in issue
eg. Revocation, infringement counterclaim, unjustified threat, DNI…

Use s75 amendments

Question 27

At what date can a Request to make a post-grant amendment be considered?

Answer 27

The date on which:

1. The Notice of Grant of the patent is published in the journal [ if GB ]
   OR
2. Mention of the publication in the EP Bulletin [ if EP(GB) ]

Question 28

If an EP is amended during opposition before the EPO by a decision to maintain the patent in an amended form, what is the effect on EP(GB)?

Answer 28

The amendments automatically apply to the EP(GB).

s27 amendments are not required

Question 29

What Options exist when a s27 amendment or s117 are requested:
i) Before the expiry of the 9M Opposition period
OR
ii) When an Opposition is outstanding?

Answer 29

a) Stay the s27/s117 request until the Opposition period has expired or been settled…
OR
b) Proceed with the s27/s117 request (however the desired amendment/correction may be negated as a result of subsequent amendment before the EPO)

Question 30

What type of objections can 3P raise to post-grant amendments?

Any exceptions?

Answer 30

Amendment must not:
1) Add matter
2) Extend the protection conferred by the patent
3) Introduce any other objections into the specification (e.g., clarity)

NB. The unity of the invention post-amendment cannot be called into question…

Question 31

Can you amend a granted patent to insert an omnibus claim?

Answer 31

NO
Not since April 2017

Question 32

What happens if proceedings in which validity may be put in issue (e.g., revocation, infringement, unjustified threats, DNI) are started while an application to amend under s27 is pending?

Answer 32

The s27 request will be stayed until resolution of the validity issue

Question 33

Who can oppose a post-grant amendment (s27) or correction (s117)?
What must the patentee do in response to the Opposition?
How long does the Opposition period last?
Can it be extended?

Any diffs with s75 amendments during Revocation?

Answer 33

Any person (can be done anonymously)

Must File a counter-statement

4-week Opposition period, starting on the date of the advertisement in the Journal announcing the amendments as open to Opposition

For Amendment during Rev, Opposition period is shorter (14 days)

Not extendable!

Question 34

Can a Opposition to a Post-grant Amendment/Correction be withdrawn?

Answer 34

Yes, however the Comptroller will nevertheless take into account matters raised by the Opponent in deciding whether to allow the amendment/correction

Question 35

What is the EPO-equivalent of post-grant amendments (s27)?

What are the differences?

Answer 35

Central limitation (A105a EPC)

For s27 request,
- a reason for the amendment needs be supplied
- 3P have a opportunity to oppose s27 amendments

Question 36

Why would a proprietor choose A105a Central Limitation over s27 post-grant amendment request?

Answer 36

More cost-effective if he wanted to amend EP(GB) and any other corresponding patents through Europe

Question 37

Are Amendments applied for during Revocation proceedings (s75) or Corrections to a published patent (s117) advertised in the Journal?

Answer 37

It depends, at the Comptroller discretion.

He considers how significant the amendments/corrections are and the likelihood of another party wishing to object.

He may consider that advertisement is not necessary.

Question 38

Are Corrections to an Application (s117) advertised in the Journal?

Answer 38

No, not normally

Question 39

Is it allowable to reformat an unallowable Swiss-type claim/ method of treatment claim into a medical use claim during UK prosecution?

What about once the patent has granted?

Answer 39

Yes, this reformatting does not not add matter (Pre-Grant)

No, this reformatting extends the scope of the claims (Post-Grant)

Question 40

Who can make a request for a s117 correction?

Answer 40

Any person, although usually made by the Applicant/ Proprietor

NB. Comptroller can make corrections on his own initiative

Question 41

What type of errors may be corrected?

What may not?

Answer 41

Errors in translation or copying and other clerical errors in the patent spec or any associated docs/form

You cannot correct an omitted act (eg forgetting to pay a renewal fee)

Question 42

What is the standard for making a correction of the spec?

What is the exception?

Answer 42

The error must be OBVIOUS, in that it is immediately evident that nothing else could have been intended in the original specification.

Except if error was due to a corruption of e-file

NB. Non-obvious errors in other application docs are allowed to be corrected

Question 43

How do you request to correct an error in the translation of a validated EP(GB)?

Answer 43

It depends…

-If the correction of the translation broadens the protection conferred by the patent or application —> s80

-If not –> s117

Question 44

What happens to a request for correction (s117) received received after the issue of a Notice of Grant but before the date of Publication of the patent?

Answer 44

Consideration of the request will be deferred until after publication (i.e., correction of the Granted Patent, not the Application)

Question 45

Can you use s117 to correct a priority declaration in PF1?

Answer 45

Yes, provided UKIPO is satisfied that the discrepancy was due to
1. An error in translation or transcription or
2. A clerical error or mistake

Question 46

Can you correct an error or mistake in a withdrawal of an application? If so, how?

Under what conditions does this request get published? Why is it published?

Answer 46

Yes, providing the app was not withdrawn LNRO. Request the correction in writing.

The Request to correct the withdrawal gets published if the
1) Application was published
2) Request for withdrawing the Application were published

Published to provide 3Ps with legal certainty (i.e., you may be infringing)

Question 47

What is a resuscitation?

Answer 47

Resuscitating a withdrawn application under s117 is basically correcting the erroneous withdrawal

Question 48

Complete Effect of Resuscitation (s117A): Anything done under or in relation to the application during the period between the application being [1..] and its [2..] shall be treated as [3..].

Answer 48

1. Withdrawn
2. Resuscitation
3. Valid

Question 49

In what circumstances do 3P have prior user rights for resuscitated application?

Answer 49

If BEFORE the notice is published of a Request to Correct an error in the withdrawal, the 3P began in good faith,
1. activities
2. serious & effective preps