You can amend a patent, even if the attack on validity is
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held that, even though the defendants had withdrawn an attack on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
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