Section 27: General power to amend specification after grant
Sections (27.01 - 27.33) last updated: April 2023.
27.01
(s.77(1) is also relevant)
This section is concerned with the amendment, at the request of the proprietor, of the specification of a granted patent, including a European patent (UK), provided that there are no proceedings pending in which the validity of the patent may be put in issue (see 27.21). (Amendments where the validity of the patent may be put in issue are covered by section 75). Prescribed regulations are set out in r.35 and Part 7 (Proceedings heard before the Comptroller). (For the distinction between amendment and correction see 19.03-19.04)
27.02
Amendment during revocation proceedings initiated by the comptroller is effected under s.73 and is not governed by the rules relating to amendment under s.27 or s.75 (see also 27.05.2 and 73.10).
| Section 27(1) |
| Subject to the following provisions of this section and to section 76 below, the comptroller may, on an application made by the proprietor of a patent, allow the specification of the patent to be amended subject to such conditions, if any, as he thinks fit. |
Initial procedure
27.03
r.35(1) is also relevant
An application to the comptroller for leave to amend the specification under this section must be made in writing. The proposed amendment should be identified and the applicant must also state the reasons for seeking the amendment (see 27.07). In particular, if the amendments are intended to distinguish the invention claimed from any published prior art which might invalidate the patent, this should be disclosed and the prior art identified. A copy of any document referred to by the applicant, or a translation thereof, may be called for. Where the amendments are intended to distinguish the invention from prior use, an outline of the nature of the prior use and when the proprietors became aware of it should be disclosed, but more detailed information regarding the prior use is not normally required.
27.03.1
r.35(2) is also relevant
If it is reasonably possible, the proposed amendment and the reasons for it shall be set out and delivered to the comptroller in electronic form or using electronic communications. Directions prescribing the form and manner for electronic delivery of applications to amend under s.27 were published in the PDJ No. 5938 on 12 March 2003, and came into force with the Patents Act 1997 (Electronic Communications Order) 2003 (S.I. 2003 No. 512) on 1 April 2003. Electronic delivery should be made either by email to litigationamend@ipo.gov.uk entitled “Proposal to amend under s.27”, or on an electronic carrier (such as floppy disk or CD-R) delivered to the Office and accompanied by an identifying letter. Text produced using well-known word processing packages or filed in PDF format will be accepted, and if filed by email, this may be provided as an attachment. It is preferable for the text to use conventional word-processing editing features to set out the amendments on the original version of the text to distinguish the changes to the text. If the text cannot be read by the Office, it will be treated as not delivered, and the applicant will be contacted with a view to making alternative arrangements. The Office will not accept email messages for the purpose of amendment under s.27 at any email address other than that given above, neither will email messages in MS-TNEF/RTF or HTML formats nor messages that are encrypted or digitally signed be accepted. It is expected that where word-processing facilities are available and have been used for preparation of patent specifications, it will be “reasonably possible” for amendments under s.27 to be submitted by electronic delivery.
[ The application to amend is examined in Restoration and Post Grant Section (RAPS) to see that it is formally in accordance with the Act and Rules. This examination includes checking:
(i) that reasons for making the amendment have been given;
(ii) that any prior art referred to has been adequately identified;
(iii) whether the Office is aware of any pending proceedings in which the validity of the patent may be put in issue.]
[ RAPS should report any formal defects to the applicant and request copies of any documents referred to which have not been provided and which are not available to the Office. A translation of any document not in English should also be requested under r.113. A period of one month should be allowed for reply. ]
27.04
s.25(1), s.77(1) is also relevant
An application to amend under this section cannot be considered until the date on which the notice of the grant of the patent is published in the journal, or, in the case of a European patent (UK), is mentioned in the European Patent Bulletin, and the proprietor should be so informed if an application is received before that date.
27.05
r.35(3),r.35(4) is also relevant
Where it is considered necessary for clarity, the Office may request the filing of a copy of the unamended specification on which the amendment is shown marked up. In the case of a European patent (UK) specification published in English by the EPO, the general procedure is the same as for a UK specification. Since the authentic text is in English translations of any amendments to the claims into French or German will not be required, and will not be advertised or published. If the EP(UK) specification is instead in French or German, translations into English of the part of the specification proposed to be amended and of the part as proposed to be amended are also required. The comptroller may require a translation of the entirety of the specification if this is necessary to determine allowability of the amendments. Where no full translation has been filed or called for the applicant should be advised by RAPS that a translation of the whole specification may be required later, for example during any opposition proceedings to the amendment (see 77.13-77.15).
27.05.1
If a European patent which designates the UK is amended during opposition proceedings before the EPO, and the decision of the EPO is that the patent should be maintained in its amended form, the amendments automatically apply to the European patent (UK), see 77.08-09. Action under s.27 with regard to those amendments is not required. Where amendment under s.27 of a European Patent (UK) is sought before the nine months allowed for opposing the patent has expired or when there is an opposition outstanding, the possibility exists that the specification may be amended before the EPO. In such circumstances the proprietor or agent is given the option of either (a) staying the request until the opposition period has expired or the opposition proceedings have been settled or (b) proceeding with the request under s.27 on the understanding that the desired amendment may be negated as a result of subsequent amendment before the EPO.
[ Where an application is made to amend a European patent (UK) RAPS should ascertain on COPS or the European Patent Register whether (a) the period for opposing the patent has expired and whether any opposition has been entered and (b) whether any application for central amendment of the patent at the EPO has been made and whether any amendment has been allowed. Where necessary the proprietor or agent will be given the option of staying the request.
[Deleted]
27.05.2
Where a European patent designating UK relates to the same invention as a UK patent, amendments to the UK patent may be submitted under s.27 in order to remove the conflict and so avoid revocation of the UK patent under s.73(2). Furthermore, in Henry Reed v Sir James Laing & Sons Ltd (BL C/74/96) Laddie J allowed amendment of the European patent (UK) under s.27 to avoid s.73(2) conflict even though the EP(UK) patent had lapsed - see 73.10.
27.06
s.118(1) is also relevant
A preliminary notice is inserted in the Journal giving only the publication number and title of the specification and the proprietor’s name. The preliminary notice will state that, unless the application to amend is abandoned, a further notice will be made which will announce the amendments as open to opposition, and that meanwhile the proposed amendments may be inspected in the Office.
[ RAPS should arrange for preliminary advertisement of the application, and should then refer the case to the Group Head in charge of the subject matter to which the specification relates. ]
Examination of the amendments
Exercising discretion
27.07
The examiner to whom the application is referred should determine whether the reasons given for making the amendments are sufficient. The reasons must be such that it can be established that the amendments effect a proper cure for any defect they are intended to rectify. The allowance of amendments under s.27 is a matter for the discretion of the comptroller and the onus is on the patentee to make full disclosure of all matters material to the exercise of this discretion (Hsuing’s Patent [1992] RPC 497). Thus, unless full particulars of legitimate reasons are given (see 27.03) discretion should not be exercised in favour of allowing the amendments. The comptroller is entitled to know before making their decision whether it is mere whim or necessity which has driven the proprietor to seek leave to amend (Clevite Corporations Patent, [1966] RPC 199). Although the Clevite judgment was under the 1949 Act, its relevance under the 1977 Act has been confirmed by the hearing officer in Waddingtons Ltd’s Patent [1986] RPC 158. The hearing officer also supported the view that the allowability of a request to amend under s.27 is discretionary and compliance with s.76 is not itself necessarily sufficient and where amendments are proposed to distinguish the invention from prior art it is necessary for the comptroller to have particulars of that prior art so that they may take it into account in the exercise of their discretion. He held that the omission from s.27 of any specific requirement for full particulars does not therefore mean that such particulars can never be demanded.
27.08
s.27(6) is also relevant
In considering whether to allow an application to amend, the examiner or Group Head considering the application shall have regard to relevant principles under the European Patent Convention (see 27.32 and 27.32.1). For example, the EPO do not consider the behaviour of the patent proprietor when exercising discretion in allowing amendments. According to s.27(6), the behaviour of the patent proprietor will therefore no longer be an issue to be considered in the UK when deciding whether to allow an amendment to be made under section 27. This effect was explicitly confirmed by Floyd J in Zipher Ltd v Markem Systems Ltd & Anr [2008] EWCH 1379 (Pat):
It follows that if I am to have regard to the principles applicable under the EPC, the discretion which I have to refuse amendments which comply with the Act has been limited. Considerations such as those formerly considered relevant to the discretion, such as the conduct of the patentee, are no longer relevant.
Allowability of the amendments
27.09
When the amendments are proposed to distinguish the invention from specified prior art they must be such that the invention is both novel and involves an inventive step having regard to the specified prior art when considered in the light of common general knowledge and of the prior art taken into account during examination of the application for the patent.
27.09.1
In BL O/531/16 (PDF, 108KB), the hearing officer stated that case law establishes that an opponent cannot advance arguments which challenge the validity of the patent beyond that suggested by the patentee (see 27.28). The hearing officer also reinforced the view that an examiner is allowed to take into account their own background knowledge when deciding whether to exercise the comptroller’s discretion to allow the amendments and is entitled to take into account the prior art cited during examination of the application.
27.10
[Deleted]
27.11
s.76(3) is also relevant The amendments must not add matter nor must they extend the protection conferred by the patent (see 76.24). Nor must they introduce any other objection into the specification; for example the description and claims must continue to be clear. Although s.14(5) does not provide grounds for revocation of a patent once granted, objections to non-compliance with s.14(5) can be raised if the patentee applies to amend their claim judgment of Dillon LJ in Genentech Inc’s Patent [1989] RPC 147 (PDF, 6.0MB) at pages 248-249). Objection is however not raised against proposed amendments on the ground that the claims as amended would lack unity of invention (see 26.02). An application under s.27 to amend the specification of a granted European patent (Philips Electronic and Associated Industries Ltd’s Patent [1987] RPC 244) by (a) deleting French and German translations of the claims, (b) deleting reference numerals in the claims and (c) adding an omnibus claim to bring the specification into conformity with UK practice was opposed as regards (b) and (c) on the grounds that these amendments would extend the protection conferred by the patent, contrary to s.76(2)(b) of the Patents Act 1977 at the time (now s.76(3)(b)). The hearing officer considered that the law under the 1949 Act, whereby reference numerals in claims are to be regarded as helpful, rather than restrictive, is unchanged in the 1977 Act, and that deletion of the numerals did not give rise to objection under s.76(2)(b) of the Patents Act 1977 at the time (now s.76(3)(b)) (see also 14.135). He also held that with the functional form of claim 1 in the present case, there was a distinction over that in Rotocrop International Ltd v Genbourne Ltd [1982] FSR 241 in which it was held that an omnibus claim, even though tied to claim 1, covered obvious modifications of the illustrated structure. The addition of an omnibus claim of independent form was not objectionable in this case. As regards (a), since the authentic text of the claims in this case was the English version, the translations fulfilled no useful function in the UK and there was no reason to refuse to delete them. Hence changes (a) and (b) which concerned only presentational matters were allowed at the same time as substantive amendment (c); but whether presentational changes alone would have been allowed as amendments under s.27 was undecided.
27.11.1
Since 6 April 2017 it has not been possible to amend a granted patent to insert an omnibus claim (see 14.124). However the presence of an omnibus claim in a granted patent will not be a ground for revocation.
Procedure
27.12
Any objections to the amendment should be reported to the applicant. Where amendments consequential to those proposed appear necessary this should be pointed out in the report. Two months will be specified for reply. The examination of proposed amendments to EP(UK) specifications is based on the English text.
[ The examiner should report in a minute whether the reasons given for making the amendments are sufficient and whether the amendments are allowable (or -strictly speaking - prima facie allowable, since the amendments are subject to advertisement and opposition; see 27.24-27.31). The examiner should then send a PDAX message to the Group Head in charge of the subject matter. The Group Head will forward the case to RAPS who will contact the applicant. Each amendment or group of amendments should be dealt with separately. If any amendment or group of amendments is not regarded as prima facie allowable the objection should be stated in a form which is suitable for inclusion in an official letter, which will be sent over the signature of a member of RAPS but will give the name and telephone number of the examiner. RAPS will inform the applicant of the latest date for response and will deal with requests for extensions of time periods. The letter may include PC1 advising the patentee of the form in which any further amendments should be submitted. ]
27.13
Where the further amendment proposed is of a simple nature and small in amount, it may be submitted in a letter and (in appropriate cases) incorporated by the examiner in the original amended copy or the agent may call at the Office to effect the further amendments. In these circumstances the further amendments should be in a different colour and the copy should be annotated e.g.: “further amendments in green effected by examiner (or agent) on (date)”. When the further amendment is extensive, a published copy, showing the whole of the amendments, should normally be provided. If the specification is heavily amended or lengthy and the further amendment only affects some of the pages, these pages only need be submitted. The date of filing should be annotated on each page. Further amendments to EP(UK) specifications that are not in English should be submitted in accordance with 27.05. Where amendments have initially been submitted electronically, further amendments should also be filed by electronic means.
27.14
s.101 is also relevant
If the examiner considers the amendments not to be allowable, and agreement is not reached a hearing should be offered. If a hearing is to be offered the Group Head should inform RAPS who will contact the applicant. If some but not all of the proposed amendments appear to be allowable, this should be reported to the applicant, who must be given an opportunity to decide whether to proceed with the allowable amendments or to withdraw all of the proposed amendments (again, subject to the offer of a hearing). If the applicant requests to be heard they should be informed that an ex parte hearing will be appointed subject to advertisement in the Journal of notice of the proposed amendment and absence of opposition (see 27.17).
[ A Deputy Director takes any ex parte hearing. ]
27.15
The comptroller has discretion to allow withdrawal of an application to amend (Upjohn Co (Beal’s) Patent, [1973] RPC 77) but the application cannot be withdrawn after the determination of the allowability of the amendments by the comptroller (Emulsol Corporation’s Application, 57 RPC 256). The point of “determination” is taken to be the date of issue of the letter informing the applicant that the amendments are either allowed (after the amendments have been effected or a new specification has been provided -see 27.18), or refused. If some but not all of the proposed amendments appear to be allowable, this should be reported to the applicant, who must be given an opportunity to decide whether to proceed with the allowable amendments or to withdraw all of the proposed amendments. Prior to this point, the comptroller has discretion to accept a withdrawal request. However, where they are of the view that the amendments submitted cure a defect that has been identified, discretion is likely to be exercised to refuse the request to withdraw. Where withdrawal of an application to amend has been refused, the amendments submitted do not cure the defect in the patent and the applicant fails to submit alternative amendments which will cure the defect, the application to amend must also be refused. The fact that the patentee has sought to withdraw their application to amend and that this withdrawal request has been refused should be recorded in the register, in addition to the normal entries relating to the application to amend and refusal to allow the amendment. Where amendments submitted do cure the defect, the applicant should be informed that the amendment application will progress as usual notwithstanding their wish to withdraw.
[ Suitable wording for the additional register entry concerning refusal to allow withdrawal should be provided by the examiner. ]
27.16
r.75 is also relevant
When the examiner considers that the amendments appear to be allowable (subject to any opposition) the actions set out in 27.12 should be taken. RAPS will arrange for a notice to be made in the Journal declaring that the amendments are now open to opposition. The notice will state that copies of the amendments and the reasons for it are available by application to the RAPS, and, if amendments have been filed electronically, details of the amendments can also be viewed through the website.
27.17
If on the other hand no agreement has been reached and the matter is to be decided at a hearing, notice of the proposed amendments may be advertised in the Journal, the advertisement making clear that the question of the allowability of the amendments has not yet been determined, but that if it proves to be acceptable in the form proposed, a further advertisement will not be made. If no notice of opposition is received within the prescribed period (see 27.25) an ex parte hearing will be held. If the proposed amendments are accepted essentially unchanged they should be effected without further delay, but if the amendments approved differ materially from those originally proposed, a further notice announcing a new opposition period will be made, and the decision is an interim one see 27.29 If the decision of the hearing is to refuse the amendments this fact must be advertised.
Final procedure
27.18
r.35(6) is also relevant
When, either in the absence of opposition or following the conclusion of opposition proceedings, the form of the amendments to be accepted is decided upon, either the amendments may be effected in the original specification in the Office, or the applicant may be called upon to provide, within a specified period, a new specification complying with Schedule 2 to the Rules and incorporating the amendments, including any amended drawings. Such a new specification should be required whenever the amendments are extensive or confusing. In the case of a EP(UK) specification, the amendments are entered in the file copy onto the authentic text (and also onto the translation of the claims if the authentic text is not in English) by RAPS if this is practicable. However if the amendments are extensive or would be confusing bearing in mind that the file copy will have been printed in comparatively small print a new specification as amended and prepared in accordance with Schedule 2 to the Rules should be required under rule 35(6). Once the amendments have been effected or a new specification has been provided, the applicant for amendment should be informed by letter that the amendments are allowed.
[ RAPS will decide whether or not to require a new specification under r.35(6). If the amendments are to be effected in the Office, this should be done by RAPS. ]
27.19
Where a fresh specification has been supplied as referred to in paragraph 27.18, the original specification is not cancelled but certificates are placed on the dossier for both old and new specifications. The certificate relating to the old specification will read:
This specification has been amended under Section 27 of the Patents Act, 1977, the proprietor of the patent having been notified of the decision to allow the amendment on [date] and the present form is shown in a new specification attached hereto, filed under rule 35(6).
The certificate relating to the new specification will read:
This specification, filed under rule 35(6), is a true copy of the specification as amended under Section 27 of the Patents Act, 1977, the proprietor of the patent having been notified of the decision to allow the amendment on [date].
If the amendments are instead effected in the original specification this will bear a certificate reading:
The amendments shown on pages …….. of this specification, were made under Section 27 of the Patents Act, 1977, the proprietor of the patent having been notified of the decision to allow the amendment on …………. …………………
[ RAPS should prepare the certificate(s) for the signature of the Group Head. Where a new specification has been filed, RAPS should also check that it is in fact an exact copy of the specification as amended, and create a minute to confirm that the check has been made and to point out any apparent discrepancies. The final responsibility lies with the Group Head who should, when satisfied, confirm that the signed certificate(s) may be placed on file. Should allowability be determined at a hearing, the date on which the application to amend was allowed will be the date of the decision.]
27.20
When the specification has been amended, that fact is advertised in the Journal. When the advertisement appears or shortly thereafter, the amended specification is published accompanied by a front page carrying a “C” designation and including the bibliographic data (updated if necessary) of the B specification together with an endorsement that the patent has been amended or, in the case of an EP(UK) specification, amended for the UK. Any orders for copies of the amendments received before the C document is available are retained and dealt with when it becomes available. If further amendments lead to second and further C publications, these carry designations C2, C3, etc. In the case of an amended EP(UK) specification, the country code given at the top of the C front page is EP/UK.
[ On forwarding an amended specification to Publishing Section, RAPS will indicate any changes in the bibliographic data from those on the front page of the B specification. RAPS also indicate the date on which the amendment(s) is/are allowed. In preparing the C front page, Publishing Section should take the relevant data from the front page of the B document unless RAPS have indicated a change. A suitable footnote should be provided to indicate any changes. In the case of an amended EP(UK) specification the layout of the C front page is changed from that of the front page of the B document and is instead much the same as that of the front page of the B or C document of a domestic patent. ]
| Section 27(2) |
| No such amendment shall be allowed under this section where there are pending before the court or the comptroller proceedings in which the validity of the patent may be put in issue. |
27.21
Proceedings in which validity may be put in issue are defined in s.74(1) (see 74.03), and while they are pending amendment can only be made under s.75. It was decided in Lever Bros’ Patent [1955] RPC 198 that proceedings are “pending” until the period for appeal has expired and any appeal has been determined. Where the proceedings are concluded by a consent order, they are normally “pending” until the court approves the order (Critchley v Engelmann [1971] RPC 346); see also 75.12.1. Proceedings are not regarded as pending merely because a writ has been issued, but are considered to have begun only when it has been served (Foseco International Ltd’s Patent, [1976] FSR 244). For the situation where amendment under s.27 of a European Patent (UK) is sought before the nine months allowed for opposing the patent has expired or when an opposition is outstanding, see 27.05.1.
[ A check is made as part of the formal examination of the application to amend. See 27.03.1 ]
27.21.1
If proceedings in which validity may be put in issue are instituted while an application to amend under s.27 is pending, the application to amend should normally be stayed pending resolution of those proceedings. However, where an opposition to the application to amend has been filed and the applicant has not filed a counter-statement within the prescribed period, the application should normally be treated as withdrawn rather than stayed (see 27.26).
| Section 27(3) |
| An amendment of a specification of a patent under this section shall have effect and be deemed always to have had effect from the grant of the patent. |
27.22
Hence the issue of infringement between grant and amendment is to be decided upon the claims of the amended patent (but see s.62(3)). If an act would have infringed these claims then infringement may be considered to have taken place, even though the patent before amendment may have been invalid; conversely if the amended claims would not have been infringed then infringement is considered not to have occurred, even though the claims before amendment may have been both valid and infringed.
| Section 27(4) |
| The comptroller may, without an application being made to him for the purpose, amend the specification of a patent so as to acknowledge a registered trade-mark. |
27.23
Under the Trade Marks Act 1994, a reference to a registered trade mark includes a service mark. If it comes to the notice of the Office that a term used in the specification of a patent is a registered trade mark and this fact has not been acknowledged in the specification, the proprietor should be so informed and advised that before a decision is made whether to amend the specification they have a period of two months in which to submit any comments. If the proprietor replies that the term is not in fact a registered trade or service mark the matter will have to be determined, but the validity of the mark is not material.
[ See under 14.70 for the procedure to check whether a word is a registered mark. The necessary acknowledgement of the registered trade or service mark should be effected by amendment in the original specification by RAPS. The procedure set out under 27.18 to 27.20 should be followed. ]
| Section 27(5) |
| A person may give notice to the comptroller of his opposition to an application under this section by the proprietor of a patent, and if he does so the comptroller shall notify the proprietor and consider the opposition in deciding whether to grant the application. |
27.24
Any person may oppose an amendment; there is no need for an opponent to show a locus standi (Braun AG’s Application [1981] RPC 355), nor even for an agent to identify an opponent for whom they are acting (Sanders Associates’ Patent BL O/89/81).
27.25
Notice of opposition should be given on Form 15 which should be filed in duplicate within four weeks of the date of the advertisement in the Journal announcing the amendments as open to opposition (see 27.16, 27.17). Except where proceedings are pending before the court or comptroller in which validity is put in issue (see 27.21 – 27.21.1, this period may not be extended. The notice should be accompanied by a copy thereof and a statement of grounds (in duplicate). This starts proceedings before the comptroller, the procedure for which is discussed at 123.05 – 123.05.13.
27.26
If, having been notified of the opposition, the applicant for amendment does not file a counter-statement they will under r.77(9) be treated as supporting the opponent’s case. In that event, the applicant for amendment should be informed in an official letter that, subject to comments within a specified period (normally 14 days), the applicant will forfeit the right to take any further part in the opposition proceedings. A copy of the official letter should be sent to the opponent. In Norsk Hydro’s Patent [1997] RPC 89 (decided under r.40(4) of the Patents Rules 1995 which required the applicant to file a counter-statement if he wished to continue with the application) it was held that the comptroller had jurisdiction to allow a request for extension to the period retrospectively as a matter of discretion. In the particular instance it was not appropriate to exercise that discretion because at the material time (the end of the specified period) it was not evident that N did not wish the application for amendment to be withdrawn.
[Tribunal is responsible for sending the respective copies to the applicant and the opponent]
27.26.1
Any offer of alternative amendments should be made in the counter-statement, with the applicant for amendment making it clear whether the offer is a firm one or is conditional upon an adverse finding on the originally requested amendments. Such alternative amendments should be submitted in accordance with the procedure set out in 27.13.
27.27
r.82 is also relevant
The comptroller may give such directions as they think fit with regard to the subsequent procedure. Thus, if the alternative amendments are significantly different from the original ones, a further notice announcing a new opposition period should be made in the Journal (see 27.17, making it clear whether they supersede or are conditional upon the refusal of the amendments previously open to opposition. In any case, the opponent(s) to the amendments as originally requested should be given the opportunity to file a supplementary statement opposing the new amendments and setting out the grounds for so doing. Any objection to the alternative amendments by the Office should also be reported as outlined in 27.12. If a form of amendment acceptable to the parties and the Office is not arrived at, the matter will need to be decided at a hearing (see 27.29).
[ The alternative amendments offered should be referred to a Deputy Director in charge of the subject matter to which the specification relates. When these amendments are significantly different from those originally requested, the Deputy Director should defer their consideration until after the new amendments have been advertised. Hearings on opposed s.27 proceedings must be taken by a Deputy Director or above. ]
27.27.1
Following the hearing officer’s decision in Intel Corporation’s Patent [2002] RPC 48, the evidence rounds are generally reversed, so that the applicant for amendment will normally have the first evidence round. The hearing officer - while accepting that in opposed amendment proceedings both sides have a substantial onus to discharge - could see no good reason why the evidence rounds should differ from the normal procedure in the Patents Court for opposed amendments under s.75. He also made clear that the possibility remains of requiring the opponent(s) to go first if circumstances justify that, or of requiring the first two evidence rounds to be conducted in parallel. ]
27.28
s.74(2) s.26 is also relevant
Both in the notice of opposition and supporting statement and in any subsequent proceedings the opponent must address themselves solely to the allowability of the proposed amendments, and may not attack the validity of the patent as it would be after amendment, except that if the amendments have been sought in order to remove an admitted defect casting doubt on the validity of the patent, the opponent may argue that the proposed amendments are not adequate to remove the defect (James Gibbons Ltd’s Application [1957] RPC 158, Bridgestone Tire KK’s Patent - BL O/166/92). The opponent may not object that the proposed amendment would introduce plurality of invention (see 26.01).
27.29
The fact of allowance or refusal of the amendments is advertised in the Journal. If the form of the amendments eventually found acceptable differs materially from the original form, the decision allowing them should be an interim one, and an advertisement announcing the provisionally allowed amendments as open to opposition should be made. In Clear Focus Imaging Inc. v Contra Vision Ltd (Patents Court, 16 November 2001, unreported) Jacob J emphasised that the decision to re-advertise or not is pre-eminently a matter of discretion of the hearing officer. Furthermore, he noted that re-advertisement is not ordered in the interests of any existing opponent to the amendment; it is done to alert other potential opponents. Neither is it ordered to account for latecomers who, had they known, might have wished to oppose the amendments from the outset.
27.30
Under the 1949 Act the opponent was not normally required to pay costs, whatever the outcome of the opposition (see BTH Co Ltd’s Patent, 53 RPC 255). However the ordering of an opponent to pay costs is clearly envisaged by section 107 in view of the specific reference to section 27(5) in section 107(4)(c) which provides that an opponent who neither resides or carries on business in the United Kingdom may be required to give security for costs.
27.31
Where an opposition to the amendments has been properly launched by the filing of Form 15 accompanied by a supporting statement, but the opponent subsequently withdraws at any stage, the comptroller nevertheless takes account of matters raised by the opponent in deciding whether discretion to allow amendment should be exercised (Ministry of Agriculture, Fisheries and Food’s Patent, BL O/11/92). If no agreement is reached with the applicant, an ex parte hearing is held as described in 27.17.
[ The matters raised by an opponent prior to the withdrawal of an opposition should be considered by the hearing officer, if one has been appointed (see 27.14), or otherwise the Group Head originally charged with the assessment of the amendments (see 27.12. ]
| Section 27(6) |
| In considering whether or not to allow an application under this section, the comptroller shall have regard to any relevant principles under the European Patent Convention. |
27.32
Section 27(1) confers on the comptroller discretion to allow or refuse an amendment to the patent. Articles 105a(1) and 123 EPC also confer on the EPO discretion to allow or refuse an amendment of the European patent. The comptroller continues to have discretion to allow or refuse an amendment, but in exercising that discretion, section 27(6) requires the comptroller to have regard to any relevant principles which are applicable to amendment or limitation proceedings under the EPC. These may include relevant regulations made under the EPC, any relevant guidelines produced by the EPO, and decisions of the Opposition Division and Boards of Appeal. This should ensure that, as far as possible, there is consistency in approach as regards post-grant amendment in national proceedings and before the EPO. The EPO do not consider the behaviour of the patent proprietor when exercising discretion in allowing amendments. The intended effect of section 27(6) is that the behaviour of the patent proprietor will no longer be an issue to be considered in the UK when deciding whether to allow an amendment to be made under section 27. This effect was confirmed by Floyd J in Zipher v Markem (see 27.08 and below).
27.32.1
In Zipher Ltd v Markem Systems Ltd & Anr [2008] EWCH 1379 (Pat), Floyd J summarised the position under the EPC as follows:
i) in opposition proceedings, appropriateness of the amendments to the proceedings, their necessity and procedural fairness are the main, perhaps only, factors considered relevant to the discretion to allow amendment;
ii) in central amendment proceedings, compliance with the procedural requirements gives rise to a right to have the patent limited in accordance with the request.
These are therefore the factors which should be taken into account when considering whether or not to allow an amendment under this section.
27.33
In central limitation before the EPO it is only necessary to meet the procedural requirements in order for a patent to have its claims centrally limited. There is no assessment of novelty or inventiveness of the proposed claims in this process and it has been argued that these aspects should not be considered for amendments under section 27 since section 27(6) requires the comptroller to have regard to relevant principles under the EPC. However, amendment under section 27 in the UK is still subject to the comptroller’s discretion and although central limitation is a similar process to amendment under section 27 it is not an identical process. The main differences between the two processes are that i) no reason need be supplied for central limitation at the EPO while rule 35(1)(c) requires a reason to be provided for amendment under section 27, ii) there is no opportunity for third party opposition to central limitation while section 27(5) provides for third party opposition to the proposed amendments and iii) the EPC requires that the claims are a limitation of the granted claims while section 27 does not have such a requirement (though section 76 essentially means that they must be). Section 27 still gives the comptroller discretion to allow or refuse an amendment provided they have had regard to the relevant EPO principles. As long as they have exercised their discretion reasonably and judicially there is no reason why they should not exercise that discretion. Having given regard to the principles of the EPC with respect to central limitation and having sufficiently distinguished the two processes, the reasonable conclusion is that the lack of discretion for the EPO to refuse a central limitation request meeting the formal requirements does not limit the comptroller’s discretion to refuse an amendment under section 27 on the basis of lack of novelty or inventiveness of the proposed amendment.