Amendment of patents

United Kingdom

You can amend a patent, even if the attack on validity is withdrawn

In Lars Eric Norling -v- Eez-Away (UK) the Court held that, even though the defendants had withdrawn an attack on validity, once validity had been put in issue the Court had jurisdiction to consider amendment of the patents under Section 75(1) Patents Act 1997. This decision has a sounder basis in law than what the Judge said "can fairly be regarded as a judicial dodge" to achieve the same result under the Patents Act 1949.

The Judge also pointed out the anomalies in the law of amendment and suggested that it was high time that they were considered, harmonised and dealt with nationally throughout the countries of the EPC.

Reviewing the prior art cited by the European Patent Office - you don't need to always

In Hoechst Celanese -v- BP the Court considered the procedure to be followed by applicants for patents and their agents when considering reports from the European Patent Office (EPO). Cited documents are identified by the EPO in a number of ways. In particular documents identified as category X are those which the examiner considers are "particularly relevant if taken alone". Documents categorised Y are those thought to be "particularly relevant if combined with another document of the same category".

In this Action a particular document, "Emken", had been found to anticipate some of the claims of the Hoechst Celanese patent. Hoechst Celanese admitted this in the course of the proceedings, and sought to amend.

However, the document had been drawn to Hoechst Celanese's attention in the Search Report provided by the examiner at the EPO.

The question arose as to whether or not the application had been framed by the Patentee with reasonable skill and knowledge. (It was accepted that the application had been framed in good faith, and the applicant had no intention to deceive. His honesty was not attacked).

The Examiner had cited Emken as a category Y document. Neither the patent agents for the applicant nor the applicant's staff involved in the application had considered it. Both the patent agent and the relevant employee at Hoechst Celanese stated that it was not their practice to consider category Y documents at that stage. They regarded such an approach as an unnecessary waste of time and money.

Hoechst Celanese decided to pursue the application and asked for substantive examination. At that stage Emken was not raised by the examiner at all. As might have been expected, the agents did not review Emken.

The Court considered that after the substantive examination report had been received, there was clearly no point in reviewing Emken since the examiners did not regard it as relevant. Accordingly, it was reasonable for the applicant and its agents to conclude that it was not relevant.

The Court then considered the period between receipt of the Search Report and the receipt of the Report on Substantive Examination. As the Court pointed out, citations made in the preliminary report may be abandoned, as with Emken in this case. The Court considered that it was not unreasonable to save professional time and the applicant's money by not reviewing citations in detail until after substantive examination; and this applied both to category X and category Y documents. Most applicants adopted this route. It was entirely reasonable to follow that route; and the applicant had therefore prosecuted his application with reasonable skill and knowledge. Amendment was allowed.