Litigation Manual (online version)

Chapter 17: Application to amend the specification under section 27

Sections (17.01 to 17.89) last updated: March 2016.

Introduction

17.01

This section is concerned with the amendment of the specification of a granted patent on an application made by the proprietor of a patent. The detailed provisions are set out in The Patents Rules 2007 and Section 27 of the Manual of Patent Practice. Section 76 sets out limits on what may be allowed as an amendment. Sub-section 76(3)(a) and (b) indicate that no amendment of the specification of a patent is allowed under Section 27(1) if it:

  • results in the specification disclosing additional matter, or
  • extends the protection conferred by the patent

Making an application

17.02

For proposals to amend under Section 27, applicants need to file the application identifying the amendment and stating the reasons for it. If reasonably possible to do so, the proposed amendment and the reasons for it should be set out and delivered to the comptroller electronically.

Amendments to EP and GB patents are processed electronically on PDAX. For amendments to an EP(UK) the A3 will contact Index & Scanning Section to request a dossier to be set up. The Section 27 application to amend is recorded on the Exparte Post Grant SharePoint List.

If an EP paper case already exists, this is requested from NMP and scanned onto the dossier along with the application for amendment by Index and Scanning section. If no paper file exists, a BDOC is requested and is scanned onto the dossier along with the application for amendment.

EPC 2000 – Central Limitation Process

17.03

Following the introduction of the central limitation process, an EP (UK) patent may now be amended centrally at the EPO as well as in each individual contracting state. On receipt of a new S27, the Register Plus website should be checked to determine whether there is a request to centrally limit an EP (UK) patent. If so, the A3 should establish whether the applicant wishes to stay the UK proceedings until the conclusion of the EPC process or wishes to proceed. A standard letter is issued offering these options. (see Annex 8 - Letter relating to central limitation process).

A file note should be prepared as follows:

O/L issued on XX.XX.XX. B/F for 1 month (always to a Wednesday). Update Diary EX2 task list within Outlook.

Directions for the electronic delivery of applications

17.04

Electronic delivery of amendments should be made by e-mail to litigationamend@ipo.gov.uk and accompanied by an identifying letter.

By e-mail

17.05

The Office will not accept an e-mail for these purposes at any e-mail address other than that given above. The e-mail should be a plain text message.

The e-mail should be entitled “A proposal to amend under s27”

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

If the Office is unable to read the text, the email will be treated as not delivered, and in these circumstances the A3 should contact the applicant with a view to making alternative arrangements.

Setting Out The Amendments

17.06

Applicants are encouraged 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. However, if the amendments are extensive, replaced pages are required. (see Annex 7 - Letter requesting replacement specification)

Action on receipt of the amendments

17.07

The A3 should undertake checks to ensure that all appropriate details are provided.

Initial action - formalities checks

17.08

On receipt of an application the A3 will:

  • arrange for the application to be indexed and scanned as a PDAX case. Ensure that a date stamp is applied to the amendments.
  • enter the application on the Exparte Post Grant SharePoint List
  • make a free text entry on OPTICS using REG ENT – Application to amend the specification under Section 27 filed on DD MMM YYYY

17.09

The new case will be placed by Index and Scanning in the Litigation team mailbox to be actioned by a member of the ex parte team.

17.10

The A3 carries out formalities checks to ensure that the relevant patent rule has been complied with (rule 35). Once any defects in the application have been resolved with the applicant, an initial advert is prepared for the Journal. (see Annex 10 - Publishing referral template). The advert is prepared whether or not formalities are complied with. This advert should be copied to SharePoint and a copy placed in the Journal file. The advert will appear in the Journal 3 weeks from the last Wednesday after the advert is prepared and submitted to Publishing. The case should then be referred to the appropriate Head of Examination Group who will report on the proposed amendments. The dossier should be minuted with any actions taken. A file note is created on PDAX. Advert is created and imported on PDAX (doc code is ADVERT).

Formalities

17.11

The application for amendment is checked to ensure:

  • the applicant’s name is on the application, refer to 17.34
  • a current address for service is provided in the UK, an EEA state or the Channel Islands, if the AFS provided does not match the register, refer to 17.35
  • documents referred to in the application have been submitted, refer to 17.36
  • it identifies the proposed amendments and reasons for the amendment are given, refer to 17.38
  • for EP patents, EP opposition period has expired or no opposition pending, refer to 17.41
  • the application is correctly applied for as an amendment and not a correction, refer to 17.48 (see Annex 11 - Letter informing applicant that the Request should be a correction and not an amendment)
  • the patent has been granted, refer to 17.49
  • there is no outstanding revocation or infringement action, refer to 7.58
  • that any documents given as supporting evidence and not published in English are accompanied by a translation, refer to 17.62
  • patent is not ceased, refer to 17.67
  • for EP patents, the specification on the dossier is the latest version - use Register Plus, refer to 17.03
  • for EP patents, there are no central limitation proceedings ongoing, refer to 17.03
  • for requests to amend the specification, ensure the relevant documents on the dossier are annotated “P” and “working copy”, then check that the correct version of the specification is being utilised. If not, refer to the Index and Scanning manager to action
  • save the amendments within PDJ Store on SharePoint under “amendments to be advertised”

Formalities complied with

17.12

The following procedure relates to an amendment where all formalities have been complied with. A file note is created on PDAX as follows:

New S27. Formalities complied with, initial advert prepared for PDJ xxxx (Dated xxXXxx).

Advert is created and imported on PDAX (doc code is - ADVERT) and is annotated ‘Initial Advert PDJ xxxx dated xxXXxx’.(see Annex 9 - Initial advert)

Referring the Application

17.13

Once all formalities have been complied with, the application should be referred to the Head of Examination Group in charge of the subject matter to which the specification relates. A minute should be prepared for the dossier as follows:

Case referred for report under section 27 of the 1977 Patents Act (MoPP 27.07 refers)

To refer a case to the DD, create a minute on PDAX, then create and send a “PSM – New S27” message

Section 27 Application Derived from Section 73(2) Conflict

17.14

If both the GB and the EP patents require amendment in order to remove any conflict, the GB patent is amended under S73(2) and the European patent is amended under S27.

When the amendments are received, carry out formalities checks as per standard process. When any issues have been resolved, refer both sets of amendments to the Head of Examination Group of the S73(2) examiner and explain that amendments have been proposed to both the GB and EP patent.

Once it has been determined that the combination of the two sets of amendments remove the conflict and hence avoid revocation of the UK patent, the EP(UK) amendments are advertised for opposition and the amendments to the UK patent will be stayed until the opposition period has expired. (If a third party opposes the amendment, the conflict is not removed and revocation action is still outstanding.)

The amendments are only applied to both patents and a modified Decision 1 is prepared once the S27 opposition period has expired and it is confirmed that no opposition has been filed.

Head of Examination Group’s Report For GB & EP (UK) Patents

17.15

The amendments must comply with Section 76(3) i.e. - amendments must not add matter, nor must they extend the protection conferred by the patent. The reasons for the amendments have to be sufficient and the proprietor is under an obligation to show that they meet all the legal requirements.

Amendments are prima facie allowable

17.16

The Head of Examination Group will report that he/she considers that the amendments appear to be prima facie allowable, that they are to be advertised, and that the applicant is to be informed. If the report states that the amendments are not allowed, refer to 17.74 or if not to be proceeded with, refer to 17.79.

The A3 Litigation Officer should:

The opposition period lasts four weeks from the date of the published advert in accordance with Section 27(5) and rule 75

Advert is created and imported by using the Manual Import function on PDAX (doc code is ADVERT). Letter created, locked and imported from PROSE.

17.17

All electronic filed amendments are located on SharePoint under PDJ Store. These are checked and prepared so that the team compiling the web adverts can clearly identify the correct amended copy before sending to Webmaster.

17.18

Webmaster will then arrange a link from the journal notice to the full details of the amendment (electronic amendments only). Where the amendments have been filed in paper form only, full details will be available from Litigation Section upon request. These should be issued on request by fax or post as appropriate.

17.19

A copy of the advert is placed on the dossier and in the Journal file. The advert is then annotated on PDAX as ‘Opposition Advert PDJ XXXX dated xxXXxx’.

17.20

A file note should be prepared as follows: Opposition advert prepared for PDJ XXXX (dated xxXXxx.) Letter issued to attorney xxXXxx B/F for four weeks and 1 week from the date of advert for opposition. (Always to a Wednesday).

File note is created on PDAX. Update Diary EX2 task list within Outlook.

17.21

If opposition is filed, refer to 17.85. The application will then be progressed as an Inter Partes case. If no opposition is filed proceed to amend the specification.

Apply amendments and certificates

Where no opposition has been received or opposition proceedings concluded, the proposed amendments should be applied to the original specification.

17.22

For amendments to GB specifications

The description, claims and drawings annotated “P” and “working copy” are copied from PRE-GRANT into the LITIGATION section of the dossier. The amendments are then applied using the assemble and enhance functions. The amended sections of the specification are annotated “C” and “working copy” along with any copied sections not amended. The references to “P” and “working copy” in the original copied documents are deleted. This enables Publishing Section to extract all the documents required to produce a “C” specification.

For amendments to EP specifications

For amendments to EP patents, if the amendments cannot be applied using enhance or assemble, a copy of the BDOC should be printed from the dossier and the amendments applied manually. The amended BDOC should then be scanned onto the dossier.

17.23

If the amendments are extensive and no replacement specification has been filed, one may be requested from the attorney. Issue letter S27(f) (see Annex 8 - Letter relating to central limitation process).

Letter created, locked and imported from PROSE.

17.24

Where a GB or EP complete Replacement Specification has been filed the A3 will ensure that the amendments made are in fact the same as those allowed by the Head of Examination Group. A file note is created on PDAX as follows:

Specification checked. Please confirm that the amendments incorporated into retyped specification are as advertised and allowed.

17.25

Once the patent is amended or the amended EP BDOC is scanned onto PDAX, the amended patent should be referred to the appropriate Head of Examination Group. A file note should be prepared as follows:-

No opposition filed to the amendment under section 27. The amendments have been applied to the description/claims/drawings.

The description, claims and drawings have been annotated C and working copy in order for publishing to produce a C specification.

Please confirm that I can now add your signature to the appropriate certificate.

Create a minute on PDAX, then send a “PSM – S27 Amends applied and confirm certificate” message.

Case returned from head of examination group with authorisation

17.26

Once a message is received from the Head of Examination Group, an appropriate certificate should be created and an signature applied. This should then be passed into a word document and imported into the dossier using manual import on PDAX (doc code: CERTIFICATE). The certificates are located on SharePoint and depend upon whether the proprietor’s amendments are for a replacement specification, amendments to the claims/description/drawings or replacement pages.

Clear records – amendments allowed

17.27

Once the amendments are allowed, clear records action may be undertaken. A final advert should be prepared for the Journal and the Exparte Post Grant SharePoint List and OPTICS are all updated as detailed below. A clear records proforma is used as a checklist and to inform Publishing Section of the actions to be taken.

A File note is created on PDAX to clear records.

Final advert

17.28

A final advert should be prepared for the PDJ. This advert should be copied to SharePoint - PDJ Live library and a paper copy placed in the Journal file. The advert will appear in the Journal 3 weeks from the first Wednesday after the advert is prepared and submitted to publishing.

Advert is created and imported using manual import on PDAX (doc code is ADVERT). This is then annotated on PDAX as ‘Final Advert PDJ xxxx dated xxXXxx’.

Exparte Post Grant SharePoint List

17.29

The relevant entry on the Exparte Post Grant SharePoint List under Section 27 should be updated to show the outcome of the application and the date of the clear records action.

OPTICS entry

17.30

A free text entry should be made on OPTICS indicating the outcome of the application. Use the REG ENT option as follows:- Application to amend the specification under Section 27 filed on XX.XX.XX allowed on XX.XX.XX. File referred to Publishing Section/Index and Scanning

17.31

If the amendments have been allowed, a request is made to Publishing Section for a ‘C’ specification. The amended document (s) should be annotated “for publishing purposes”. If the ‘C’ specification was amended, then a ‘C2’ is requested.

17.32

To refer a case to Publishing, a detailed minute should be prepared for publishing (see Annex 12 - Letter informing applicant of the proposed amendments to an SPC will be advertised) and also a “PSM – S27 allowed, please prepare a C spec” message to the Publishing Team Mailbox. Publishing Section will then prepare a letter notifying the applicant that the amendments advertised have been allowed and attach a copy of the ‘C’ specification.

File returned to Litigation for Clear Erratum

17.33

When the Publishing team has produced a ‘C’ specification, they will notify Litigation section for erratum purposes. The A3 should review the revised specification and ensure that the amendments have been applied correctly.

Formalities not complied with

Applicant does not match registered proprietor

17.34

The application should be cross-referenced with the OPTICS register. Where there is a discrepancy, the attorneys should be contacted to check proprietorship.

New attorneys

17.35

If new attorneys have been mentioned on the application, a Patents Form 51 is required. However, if they are only authorised to act with regard to the amendment, no form is necessary. Only correspondence relating to the amendment will be sent to the attorney named on the request and the address for service on the register will remain the same.

Copies of documents

17.36

Copies of any documents referred to in the application, but not supplied, should be obtained. If any of the documents referred to are not available in the Office, the applicant should be asked to supply copies in accordance with rule 82(1)(a) of the relevant patent rules, before the application is referred to the Head of Examination Group. A period of one month should be given for reply.

17.37

The Patent Rules provide an additional automatic extension of two months for periods not specified in the rules. This may be applied for retrospectively. As a result, the case should be diaried for one month and a further two months from the date of the letter. Letter created, locked and imported from PROSE. File note is created on PDAX. Update Diary EX2 task list within Outlook.

Proposed amendments identified and reasons for amendment given

17.38

The A3 should check that the amendments proposed have been identified and the reasons for amendment have been given before referring the application to the Head of Examination Group. If these have not been supplied, the attorney must be contacted and requested to file the necessary documents.

EP opposition period

17.39

An EP patent has a nine month opposition period during which opposition proceedings may be taken out and the patent may be amended before the EPO as part of the proceedings. The opposition period begins once the patent is mentioned in the European Patent Bulletin. This date can be found on OPTICS. To determine the status of opposition proceedings a print is obtained from the EP on-line register.

17.40

If an EP patent which designates the UK is amended during opposition proceedings before the EPO, and the EPO’s decision is that the patent should be maintained in the amended form, the amendments automatically apply to the European patent (UK) (MOPP 27.05.1). Therefore action under Section 27 with regard to those amendments is not necessary.

Opposition Period has not expired and/or opposition proceedings are pending

17.41

Where the EPO opposition period has not expired or when EPO opposition proceedings are pending, amendments can proceed under Section 27. This is due to the fact that opposition proceedings may take some time to resolve, in which time the European patent (UK) may be invalidated due to infringement or revocation in the UK before the Office or the courts, before the EP opposition amendments are allowed. An applicant may write to inform us that he is aware of the situation but wishes to proceed regardless. Applicants are usually aware that the amendments may be negated as a result of subsequent amendment before the EPO. The file note should be prepared as follows:- New S27. Formalities not complied with, initial advert prepared for PDJ xxxx (dated XX.XX.XX) Although the opposition period has not yet expired/the opposition proceedings are pending (delete as appropriate), the attorneys state in their letter dated XX.XX.XX, that they wish to proceed regardless. Case referred for report under Section 27 of the 1977 Patents Act. (MoPP 27.07 refers).

17.42

Where the applicant has not sent us a letter acknowledging that the opposition period has not yet expired and/or opposition proceedings are pending, a standard letter S27C (see Annex 1 - Letter informing that the opposition period on a European Patent has not expired) is issued giving the applicant the option of either:

staying the request until the opposition period has expired or the opposition proceedings have been settled or proceeding with the request under Section 27 on the understanding that the desired amendment may be negated as a result of the subsequent amendment before the EPO.

17.43

The minute should be prepared on PDAX as follows:- Official letter issued to attorney on XX.XX.XX. B/F for 1 month (always to a Wednesday).

17.44

The case should be diaried for one month and a further two months from the date of the letter. Diary EX2 should also be updated within Outlook.

Response To Official Letter - Opposition Period

17.45

The response to the Official letter should be referred to the Head of Examination Group with one of the following minutes according to the nature of the reply:

If the applicant wishes to stay:

17.46

A minute should be prepared for the dossier as follows:

Attorneys have replied to Official Letter dated XX.XX.XX and have asked to stay the proceedings until the opposition period has expired or the proceedings have been settled. See A/L dated XX.XX.XX

On return from the Head of Examination Group, B/F the case until the expiry date of the opposition period, or until the opposition proceedings have been settled. During this period, an Official Letter should be issued every 6 months requesting updates on the proceedings. Once the proceedings and expiry date have passed, the case should be referred to the group head with a minute note as follows:

Case referred for report under Section 27 of the 1977 Patents Act (see para 27.07 MOPP).

If the applicant wishes to proceed:

17.47

A minute note should be prepared for the dossier as follows:- Attorneys have replied to Official Letter dated xx.XX.xx and have asked to proceed regardless. See attorneys letter dated xx.XX.xx . Case referred for report under Section 27 of the 1977 Patents Act (see para 27.07 MOPP).

Is the application an Amendment or a Correction?

17.48

The application should be checked to ensure that the applicant has applied the term “amendment” in the correct manner (see Chapter 24 for a description of what constitutes a correction). If it appears that the application is a correction rather than an amendment, the case should be minuted to the appropriate Head of Examination Group for consideration.

Create a minute on PDAX, then send a “PSM – S27/S117 Referral” message to DD.

Where the group head agrees that the case should proceed as a request for correction under Section 117 rather than an application to amend under Section 27, letter S27J (see Annex 13 - Letter informing applicant that the amendment is not proceeded with due to central limitation is to be issued to the proprietor. Has the patent been granted?

17.49

An application to amend under Section 27 cannot be actioned by Litigation Section until the granted patent has been published in the Journal or the EP Bulletin. The status of the patent should be checked on OPTICS.

GB cases

17.50

A DIS FUL will show two dates in connection with the granting of the patent. The first relates to when the applicant was notified by the Formalities Section that the patent was to be granted. The second gives the date when the notice of the grant is published in the Journal.

17.51

If an application to amend is filed before the first date is recorded on OPTICS, the application should be referred to the relevant Formalities Section for amendment under Section 19 (General Power To Amend Before Grant). To refer to Formalities, create a minute on PDAX, then send a “PSM –

Amendment” message to the relevant Formalities Team Mailbox

17.52

Where an application is filed between the two dates, the applicant should be informed that they have filed too early and the Office will therefore stay the proceedings until the notice of grant has been published in the Journal. The application will then be considered to be filed on the day the notice is published in the Journal. The applicant should also be informed of any other defects in the application.

17.53

The case is then diaried until the date of the Journal containing the notice of grant. A file note is created on PDAX noting any action taken.

EP cases

17.54

An application to amend under Section 27 cannot take place until the fact that the patent has been granted is published. This date affects all provisions of the Act from Section 25(1) onwards.

17.55

An application to amend a European patent (UK) cannot be considered until the date on which its grant is mentioned in the European Patent Bulletin. OPTICS will show the date on which the patent will take effect, i.e. the publication date.

17.56

If an application is filed before this date, the applicant should be informed that they have filed too early and the Office will therefore stay the proceedings until the patent has been mentioned in the EP Bulletin. The application will then be considered to have been filed on that date. The applicant should also be informed of any other defects in their application.

17.57

The case is then diaried for the date of the Bulletin mentioning the patent. A file note of action taken should be prepared for the dossier.

Outstanding Revocation or Infringement Action

17.58

Where the validity of the patent may be put at issue (see Section 72), and proceedings are pending before the court or Comptroller, e.g. revocation or infringement action, an application under Section 27 is not allowed. This is in accordance with Section 27(2). In such circumstances the applicant should be informed that while proceedings are pending, (until the period of appeal has expired and any appeal has been determined) amendment can only be made under Section 75.

17.59

To check proceedings against a GB or EP (UK) patent, you should check the below the line entries on OPTICS using the DIS FUL function and any correspondence concerning the patent.

17.60

Where a European patent (UK) is undergoing opposition proceedings before the EPO, amendment may still proceed under Section 27 (see paragraph 17.47).

17.61

If the applicant wishes to stay the proceedings until court action has been finalised, the case should be diaried until the Court action is completed. When the Court action has been completed, the application may proceed as long as all formalities are complied with. A minute of action taken should be prepared for the dossier.

File note is created on PDAX. Letter created, locked and imported from PROSE

Non-English Documents & Translations

17.62

Any documents filed as supporting evidence and not published in English should be accompanied by a copy of a translation in accordance with rule 113.

17.63

Where a non-English European patent (UK) is cited in evidence, and there is no accompanying translation, a check should be made to see whether under Section 77(6)(a) translation of the published specification has previously been filed. Check OPTICS or the DIS FOR (DISPLAY FORMS HISTORY) screen (No 10 from the Common Enquiry Menu) and check if a Patents Form 54 (the filing of a translation) has been filed.

17.64

If a translation has been filed, the EP file in question should be requested from NMP. The translation and accompanying Patents Form 54 will be found in the main EP file. If the EP case is electronic, locate the required documents on the PDAX dossier.

17.65

If no translation has been filed, the applicant should be requested to file a copy of a translation of the cited specification and/or the non-English documents in accordance with the Patents Rules. This should be done before the application is referred to the Head of Examination Group. A period of one month is given for reply. A file note of action taken is prepared for the dossier.

17.66

The Patents Rules provide an additional automatic extension of two months for periods not specified in the rules. This may be applied for retrospectively. As a result, the case should be diaried for one month and a further two months from the date of the letter. Update Diary EX2 task list within Outlook.

Patent Ceased

17.67

A ceased patent may also be amended, though this would be a matter for the Head of Examination Group to consider. Providing all the formalities have been complied with or resolved, the application should be referred to the appropriate Head of Examination Group for consideration as usual.

Problems arising from referral of amendments to the Head of Examination Group

Amendments not prima facie allowable

17.68

The Head of Examination Group will report giving reasons why any amendment or group of amendments are not regarded as prima facie allowable. He/she will advise on any amendments which he/she considers should also be submitted. An e-mailed version of the report may be sent by the Head of Examination Group for incorporation into a letter. The applicant may also be given the option of withdrawing all proposed amendments or not proceeding with amendments that appear to be not prima facie allowable.

17.69

The A3 should draft a letter inserting the Head of Examination Group’s report together with his name and telephone number e.g. I refer to your application for amendment filed on XX.XX.XX, the examiner (Mr/Mrs ………… Tel…… ) has reported the following: …………. (see Annex 2 - Letter providing a report on the proposed amendments). If no reply date is noted by the Head of Examination Group, a period of 2 months should be specified.

17.70

Diary EX2 should also be updated. File note is created on PDAX. Letter created, locked and imported from PROSE

17.71

Any further amendments received in response to the Official letter, should be referred back to the Head of Examination Group with the following minute on the dossier:

Attorneys have replied to the official letter dated XX.XX.XX and have stated in their letter dated XX.XX.XX that ………… For your consideration, please.

Create a minute on PDAX, then send a “PSM – S27 Response to exam report” message

17.72

The Head of Examination Group will produce a new report and again a letter should be prepared and issued by the A3 (see Annex 2 - Letter providing a report on the proposed amendments This action continues until a set of amendments are produced that appear to be prima facie allowable, the amendments will then be advertised.

Where further amendments are not considered to be allowable, the applicant will be notified of the group head’s decision using letter S27O (see Annex 16 - Amendment Not Allowed Letter) offering the applicant the opportunity for a hearing. Where no hearing is requested the A3 will clear records as ‘Section 27 not allowed/refused’. (See Clear Records 17.87-17.91)

17.73

If an agreement cannot be reached, a hearing will be offered subject to advertisement of the proposed amendments. The advert should state clearly that the allowability of the amendments has not yet been determined. An appropriate letter will be drafted by the Head of Examination Group. A note of the action taken is then recorded on a minute on the dossier.

Advert is created and imported using manual import on PDAX (doc code is ADVERT). Letter created, locked and imported from PROSE. File note is created on PDAX.

If a hearing is requested, the case should be referred to the Hearings Clerk.

To refer to the hearing team, create a minute on PDAX, then send a “PSM – set up hearing” message.

If the applicant accepts the Head of Examination Group’s decision, records can be cleared, refer to 17.81

Amendments not proceeded with

17.74

An application may be considered not proceeded with in the following circumstances:

  • the applicant fails to file the application correctly
  • the applicant requests his application is not proceeded with
  • the application is a correction rather than an amendment
  • the patent has been centrally limited at the EPO
  • the applicant fails to respond to official letters
  • an EP patent has been centrally amended during Opposition Proceedings before the EPO. Since the amendments automatically apply to the European patent (UK), action under Section 27 is not necessary

17.75

If the Head of Examination Group considers that an application to amend should be regarded as not proceeded with, he/she will send a minute to the dossier requesting that the applicant be informed and the Journal and register updated. An additional free text entry to the register may be requested by the Head of Examination Group in order to record the reason for the application not proceeding. He/she may provide suitable wording.

17.76

The A3 should issue an official letter to the applicant informing him of the group head’s decision. The A3 will select the relevant ‘not proceeded with’ letter ie. S27L (see Annex 13 - Letter informing applicant that the amendment is not proceeded with due to central limitation) or S27M (see Annex 14 - Letter informing applicant that the amendment is not proceeded with) as appropriate, alternatively the wording may be supplied by the Head of Examination Group. Letter created, locked and imported from PROSE. File note is created on PDAX.

The next action involves clearing records, refer to 17.81

Withdrawal of an application

17.77

An application cannot be withdrawn once the applicant has been given notice that the amendments are allowable. Any withdrawal request can only be allowed at the discretion of the Head of Examination Group.

17.78

All withdrawal requests are referred to the Head of Examination Group for his consideration with a minute on the dossier as follows:

Attorneys letter received on XX.XX.XX . The applicant has advised they wish to withdraw the application. For your consideration, please.

Create a minute on PDAX, then send a “PSM – S27 withdrawal” message.

17.79

If a withdrawal is refused and the proposed amendments do not cure the specific defect identified and alternative amendments have not been submitted, the application to amend must also be refused. A register entry reflecting the fact that both the withdrawal and the application itself has been refused should be made. Suitable wording for the additional register entry concerning the refusal to allow the withdrawal should be provided by the Head of Examination Group. The applicant should also be notified of the decision.

Letter created, locked and imported from PROSE. File note is created on PDAX.

17.80

If a withdrawal is allowed, the applicant should again be informed of the Head of Examination Group’s decision by issue of letter S27N (see Annex 15 - Withdrawal Letter).

Letter created, locked and imported from PROSE. File note is created on PDAX.

The next action involves clearing records, refer to 17.87

Clear records – not allowed/not proceeded with/withdrawn

17.81

Once the applicant has been informed of the outcome of the application, clear records action may be undertaken. An advert should be prepared for the Journal and the Exparte Post Grant SharePoint List electronic ledger and OPTICS updated. The clear records proforma on word should be updated with all the actions taken. File note is created on PDAX and titled as ‘Clear records’.

Final advert

17.82

An advert should be drafted manually corresponding with the decision or directions of the Head of Examination Group. The advert should be copied to the Journal folder on SharePoint and a hard copy placed in the Journal file. Advert is created and imported using manual import on PDAX (doc code is ADVERT) Exparte Post Grant SharePoint List

17.83

The relevant entry on the Exparte Post Grant SharePoint List under Section 27 should be updated to show the outcome of the application and the date of the clear records action.

OPTICS entry

17.84

A free text entry should be made on OPTICS indicating the outcome of the application. Use the REG ENT option as follows:- Application for amendment under Section 27 filed on DD MM YYYY not proceeded with/not allowed/withdrawn on DD MM YYYY.

Opposition filed

17.85

Notice of opposition should be filed on Patents Form 15 within four weeks of the date of the notice of the proposed amendments in the Journal. This period may not be extended.

17.86

The opposition should be referred to the B3, with an appropriate minute. It will then be processed as an inter partes case.

To refer to B3, create a minute on PDAX, then send a “PSM – S27(5) Opposition filed” message.

Extension of time

17.87

Where an automatic extension of time has been granted and a further request for an extension of time has been received, the request should be referred to the Head of Examination Group with the following minute note: The attorney by phone/fax/letter on/dated XX.XX.XX has requested a further extension of time. Please advise on action to be taken.

Create a minute on PDAX, then send a “PSM – S27 EOT request” message

17.88

The applicant should be advised of the Head of Examination Group’s decision and a note of the action taken entered on the dossier.

Letter created, locked and imported from PROSE. File note is created on PDAX.

17.89

With regard to extension of time requests relating to an opposition to an amendment, please refer to Chapter 9.