Statutory guidance

Directions on submitting post-grant amendments by e-mail

Published 1 April 2003

© Crown copyright 2003

This publication is licensed under the terms of the Open Government Licence v3.0 except where otherwise stated. To view this licence, visit nationalarchives.gov.uk/doc/open-government-licence/version/3 or write to the Information Policy Team, The National Archives, Kew, London TW9 4DU, or email: psi@nationalarchives.gov.uk.

Where we have identified any third party copyright information you will need to obtain permission from the copyright holders concerned.

This publication is available at https://www.gov.uk/government/publications/submitting-post-grant-amendments-by-e-mail/directions-on-submitting-post-grant-amendments-by-e-mail

1. Submitting post-grant amendments by e-mail

Under rule 35 of the Patents Rules 2007 anyone wishing to propose an amendment under section 27 or 75 is required, if reasonably possible, to deliver the amendment (and where applicable the reasons for making the amendment) to the comptroller electronically. For section 75 this applies to proposals to amend before the courts of England and Wales [footnote 1] as well as before the comptroller [footnote 2]

2. Delivery

Electronic delivery should be made either by e-mail to litigationamend@ipo.gov.uk or on an electronic carrier (such as floppy disc or CD-R) delivered to the Patent Office and accompanied by an identifying letter.

3. Filing by e-mail

The Patent Office will not accept an e-mail for these purposes at any e-mail address other than those given above. The e-mail should be a plain text message (RFC822-compliant). We will not accept MS-TNEF/RTF format messages or HTML format messages; nor will we accept messages that are encrypted or digitally signed.

The e-mail should be entitled “Proposal to amend under s75 before the courts [or the comptroller]” or “Proposal to amend under s27” as appropriate.

The text may be provided as an attachment to the e-mail.

4. IT requirements

Since, among other reasons, business under sections 27 and 75 is of relatively low volume, the Patent Office intends to adopt an open approach to formats and carrier media and not, at this early stage at least, to impose restrictions. Well known word processing packages such as Microsoft Word and WordPerfect (“Microsoft” and “WordPerfect” are registered trade marks), and carriers such as floppy discs and CD-R (ISO 9660) will be accepted. We will also accept documents in PDF format. However, if the Office is unable to read the text, it will be treated as not delivered, and in these circumstances the applicant will be contacted by the Office with a view to making alternative arrangements.

5. Setting out the amendments

We would encourage applicants to use conventional word processing features such as markup, coloured text and strikeout/strikethrough to set out the amendments on the original version of the text in a way that makes it easy for the reader to appreciate the changes.

6. Enquiries

Enquiries concerning these directions should be directed to:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom
Telephone: +44(0)30 0300 2000
Telephone: +44(0)16 3381 4000
Minicom: +44(0)30 0020 0015

A Brimelow
Comptroller-General of Patents, Designs and Trade Marks
1 April 2003

The reference in these Directions to the ipo.gov.uk domain name was introduced by a Direction effective from 2 April 2007.

These Directions were amended by a Direction effective from 17 December 2007 to bring them into line with the Patents Rules 2007.

  1. The Civil Procedure (Amendment No 2) Rules 2002 (SI No 2002/3219) ↩

  2. The intention to make these directions, together with explanatory notes on procedures to be followed, was announced in the Patents and Designs Journal on 12 March 2003 (PDF, 929 KB) ↩

Back to top