Litigation Manual (online version)

Chapter 23: Section 75 Amendment of patent infringement or revocation proceedings before the court

Sections (23.01 - 23.29) last updated: March 2016

Introduction

23.01

This chapter is concerned with the amendment of the specification of a granted patent during proceedings in the Courts of England and Wales and in the Scottish Court of Session. Proceedings in the courts of England and Wales are governed by the Civil Procedure Rules 1998 as amended. Proceedings in Scotland in the Court of Session are governed by rule 55 of the rules of the Court of Session. Amendments may also be filed under section 75 in revocation proceedings before the comptroller (see Chapter 14 for details).

23.02

Amendments to EP and GB patents are processed electronically on PDAX.

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.

23.03

EPC 2000 - Central Limitation Process

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 s75, the European Patent Register should be checked to determine whether there is a request to centrally limit an EP (UK) patent. And If so, whether the applicant wishes to stay the UK proceedings until conclusion of the EPC process or wishes to proceed. A standard letter is issued. (Annex 7 - Letter relating to Central Limitation Process).

A minute should be prepared as follows:

Official letter issued to attorney on XX.XX.XX. B/F for 1 month (always to a Wednesday)
PDAX:- Letter created, locked and imported from PROSE
File note is created in PDAX

Amendment during proceedings before the court/court of session

23.04

For proposals to amend under Section 75 before the court, applicants need to file an application notice. The application notice consists of:-

  • the prescribed form N244 (or the equivalent information). The form is available on the office website.

  • particulars of the amendment
  • the grounds for seeking the amendment

All this information must be filed at the court on paper and should also be served on the Comptroller electronically if reasonably possible (see rule 63.10 of the Civil Procedure Rules 1998 as amended). There is a fee payable to the court but not to the Comptroller.

For proposals to amend under Section 75 before the Court of Session, requirements differ, in that a patentee shall give notice of his intention to the comptroller to make an application to the Court of Session for leave to amend the patent under section 75. The application should also include:

  • particulars of the amendment sought

Directions for the electronic delivery of applications

23.05

Electronic delivery should be made by email to litigationamend@ipo.gov.uk.

by e-mail

23.06

The A3 should not accept an email for these purposes at any email address other than that given above. The email should be a plain text message.

The email should be entitled proposal to amend under s75 before the courts/court of session

The text may be provided as an attachment to the email.

If the A3 is unable to read the text, the email should 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

23.07

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.

Amendments filed in paper form

23.08

Any amendments filed in paper format should clearly identify the amendments on a copy of the specification.

Action on receipt of the amendments

23.09

The A3 should check the following have been provided:

  • the particulars of the proposed amendments
  • the grounds on which the amendments are sought. (Not required for Court of Session)
  • whether the applicant will contend that the claims prior to amendment are valid. (Not required for Court of Session)

  • if the application for amendment applies to an EP (UK) patent the A3 should ensure that the specification is the latest version using the European Patent Register and check that there are no central amendment proceedings ongoing, refer to 23.03
  • complete the Journal notice see Annex 1 - Journal notice (Annex 10 - Court of Session Journal Notice for S75 before the Court of Session) and enter the section 75 details on the summary listing noting whether amendments have been filed electronically or in paper format. For s75 before the Court of Session, Publishing should be notified of the format changes due to the additional information required for advertisement
  • request the name and address details of the solicitor representing the other side to enable them to receive copies of correspondence throughout the proceedings
  • if the question of dispensing advertisement is raised prior to the Court Hearing, the applicant will inform us either in a letter or possibly a draft Court Order. On receipt, the s75 application should be stayed pending the outcome of the Court Hearing
  • alternatively, the applicant may request that prior to advertisement the Head of Examination Group considers the amendments. In this case, the A3 should refer the amendments to the Head of Examination Group who will then decide whether Comptrollers comments should be issued prior to advertisement and if so, will forward comments in due course. Occasionally, on receipt of the application for amendment, the courts will have already considered the amendments and dispensed with the need for them to be advertised for opposition. The A3 should action any Court Order received, make the appropriate entries on the Register and prepare a final advert for the Patents and Designs Journal

Advert is created and imported using manual import (doc code is ADVERT).

  • when the weekly journal is produced, send electronic amendments to webmaster. The summary listing should accompany the amendments and the A3 should advise webmaster which journal date the notice will appear in (see Annex 2 - Table).

    Webmaster will then arrange a link from the web 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 the Litigation Section upon request

Issue S75(a) (see Annex 3 - S 75a letter) letter advising the applicant when the notice of proposed amendments will be advertised in the Journal. For Court of Session issue S75 (see Annex 11 - Letter relating to Comptrollers Comments for Court of Session) letter advising the applicant when the notice of the proposed amendments will be advertised in the Journal. Also confirming that a certified copy of the advertisement and marked up copy of the patent specification will be sent once the advertisement is published. The A3 should make a note in the Court work Diary of the date to prepare and issue the certified office copies.
PDAX:- Letter created, locked and imported from PROSE
File note is created in PDAX

The A3 will then:

  • make a free text entry on OPTICS using REG ENT

For amendments filed electronically, the A3 should send the document to the dossier and message the Ex parte team 1 mailbox.

Consideration of proposals to amend

23.10

The A3 should then send the proposals for amendment to the Head of Examination Group responsible for the subject matter for any comments and to confirm whether the Comptroller wishes to be represented in Court. Before issuing to the Head of Examination Group, the A3 will complete the Comptrollers Comment Log on SharePoint. (see Annex 9 - Comptrollers Comments Log)

PDAX:- Create a minute in PDAX and send a “PSM – Comptrollers Comments” message to the DD.

23.11

Following expiry of the opposition period, the Head of Examination Group will instruct the A3 to issue the Comptrollers comments. This may take the form shown in standard letter S75(c) (see Annex 4 - S 75c letter). This should be sent to the applicant(s) when the Comptroller has no comments to make on the proposed amendments and does not wish to be represented in Court. If the Head of Examination Group wishes to comment on the amendments, he will provide you with the appropriate text. You should not issue the Comptrollers comments until the 14 day period for opposition has passed (or 28 days for S75 before the Court of Session). Make a note on DiaryEX1 of the date the Comptroller’s comments are to be issued.

PDAX:- Letter created, locked and imported from PROSE.
File note is created in PDAX

Actions following advertisement: Scottish Court of session

Once the advertisement has appeared in the Patents and Designs Journal and within 35 days of the appearance of the advert, a certified copy of the front page of the Patents & Designs Journal in which the advertisement appeared, and a certified copy of the marked up patent specification and register print-out should be issued to the attorney in accordance with Rule 55.5(4). The A3 should complete the appropriate certificates (see Annex 12 - Certificate for Advert and Annex 13 - Certificate for Patent Specification and Register Entries) and ribbon and seal the relevant one to the marked up specification, register print out and the front page of the relevant Patents and Designs Journal. Both certificates should be signed and dated by an Officer duly authorized to issue certificates on behalf of the Comptroller-General.

Notice of opposition

23.12

An opponent must file and serve on all parties and the Comptroller a notice opposing the application. The notice must include the grounds relied on. This must be filed within 14 days of the first appearance of the advertisement (Journal notice) or 28 days for s75 before the Court of Session.

The A3 must send the notice of opposition to the Head of Examination Group to ensure that this is taken into consideration before issuing the Comptroller’s comments.

PDAX:- Create a minute in PDAX send a “PSM – Opposition filed” message to DD.

Court directions

23.13

The applicant must apply to the Court in England and Wales for directions within 28 days of the date of the advertisement (Journal notice)

Order of the Court. (Outcome of proceedings)

23.14

Unless the Court otherwise orders, the applicant must within 7 days serve on the Comptroller any Order of the Court relating to the application.

23.15

The Court Order will state the outcome of the Court proceedings i.e. whether the amendments have been allowed (see 23.18) or refused, whether the proceedings have been stayed, or whether the patent has been revoked (see 23.16). The Court Order should be referred to the Head of Examination Group for information/confirmation or clarification on how to proceed.

The proprietor may file a second set of amendments. These will require advertising unless the Court Order dispenses with the requirement for advertisement, in which case the amendments may be referred immediately to the Head of Examination Group for a second Comptroller Comments letter. The Court Order may also direct that these further amendments are allowed and that the patent may be amended. (No OPTICS or ledger entry is required).

PDAX:- Create a minute in PDAX and send a “PSM – Court Order” message to the DD.

Amendments not allowed, patent revoked or patent revoked pending appeal

Register entry

23.16

The A3 should make a register entry using the REG ENT function on OPTICS to reflect the outcome of the Order. Where a patent is revoked by an Order of the Court but the Order has been stayed pending appeal, the patent should not be revoked until either (a) the stay has expired and an appeal has not been filed within the period allowed or (b) where an appeal has been filed, a copy of the Order from the Court of Appeal has been received upholding the earlier decision.

23.17

The A3 should send a standard letter s75e (see Annex 5 - S 75e letter) to the applicants’ attorney acknowledging receipt of the Court Order. The applicants should also be informed that the Register has been updated and that an advertisement reflecting the outcome of the decision will appear in the Journal.

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

Clear records

23.18

A final entry for the Journal should be made (see 23.19), and the electronic ledger updated (23.20). A clear records proforma (see Annex 6 - Standard Publishing minute) should be used as a check list to ensure that all relevant actions have been completed.

Final journal advert

23.19

A final advertisement for the Journal should be prepared as follows:-

Section 75 Application to amend the Specification of a patent under Section 75 before the Court/Court of session

Application refused by Court order/dismissed by Court order/patent revoked. (use wording as appropriate)

patent number
Proprietors name
Title

Application to amend under Section 75, refused /dismissed /patent revoked (use wording as appropriate) by Court Order dated ……………..

The date the advert is due to appear in the Journal should be entered on the clear records proforma on the dossier.

Advert is created and imported using manual import (doc code is ADVERT).

Electronic ledger

23.20

The Sections electronic ledger is found in SharePoint under Ex-parte post grant SharePoint list. Locate the appropriate year and section and enter the outcome of the case (see Journal and register entry), and the date. Highlight the entry to show the case has been completed.

23.21

(Deleted)

23.22

(Deleted)

Court allows the specification to be amended or appeal has been allowed

Amendment of the B specification

23.23

For amendments to GB specifications

The description, claims and drawings annotated “P” and “working copy” are copied from PREGRANT 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 by Index and scanning section. A file note is prepared as follows:-

Amendments applied to BDOC and sent to Index and Scanning

PDAX:- File note is created in PDAX.

If the amendments are extensive and no replacement specification has been filed, one may be requested from the attorney.

Any replacement specifications should be checked by the A3 to ensure that the amendments made are in fact the same as those allowed by the Court. A file note should be prepared as follows:

Specification checked - amendments incorporated into retyped specification agree with those advertised and allowed by the Court.

PDAX:- Letter created, locked and imported from PROSE.
File note is created in PDAX.

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:-

Amendments allowed by Court Order dated xxxxxx applied to the B Specification on pages xxxxxx/ amendments in the form of replacement pages xxxxxx/ amendments in the form of replacement specification. (Delete as appropriate). Please confirm that I can now apply your electronic signature to the appropriate certificate.

PDAX:- Create a minute in PDAX and send a “PSM – s75 and confirm your electronic signature can be added to the appropriate certificate” message to Head of Examination Group.

Once a message is received from the Head of Examination Group, a letter (see Annex 5 - S 75e letter) should be issued by the A3 notifying the applicant that a copy of the C specification will be forwarded in due course by Publishing Section. The appropriate certificate should be dated with the date of the Court Order and a Head of Examination Group electronic signature applied. This should then be pasted into a Word document and imported into the dossier using manual import (doc code CERTIFICATE). The certificates are located on SharePoint.

The following file note should be prepared as follows:

Amendments allowed on by Court Order dated xxxxxx. O/L issued (insert date). Clear records.

PDAX:- File note is created in PDAX.
Letter created, locked and imported from PROSE.

Amendments allowed by the Court of session

Notification that the amendments are allowed will be in the form of a certified copy of the interlocutor which is the order of the Scottish Courts.

The relevant section that concerns the allowed amendment requires advertising once the certified copy of the interlocutor is received. The necessary information is extracted from the interlocutor and incorporated into the final advert (see 23.25).

Before seeking a certified copy, the attorney may seek advice on the suitability of the interlocutor for publishing purposes. Only information regarding the amendment is required for producing an advert and we may provide an advert template showing the suggested wording required. The final advert should state that the certified copy of the interlocutor is available to view on request.

Advertisement of the terms of the interlocutor should be communicated to the attorney (see Annex 14 - Letter relating to advertisement of terms of interlocutor) along with a request for a replacement specification, if required.

Once the amendment has been advertised as allowed, the specification can be amended as directed by the court (see 23.23). Once the specification has been amended and the certificate authorised, records can be cleared (see 23.24 – 23.29) and the case referred to publishing for production of a C specification.

Clear records

Register entry

23.24

If the Court allows the amendments, a register entry will be made to this effect by the A3. The A3 should then arrange for the B Specification to be amended and should provide instructions to Publication Section so they can produce a C specification.

Journal advert

23.25

A final advertisement for the Journal should be prepared by the A3 as follows:-

Section 75 Application to amend the Specification of a patent under Section 75 Specification amended. patent number Proprietors name Title

Application to amend under Section 75 allowed by Court Order dated ……………..

Section 75 Application to amend the Specification of a patent under Section 75 Before the Court of session

Amendment allowed

Patent number Proprietors name Title

In the Court of Session proceedings, the interlocutor dated ………. allows the patent to be amended (insert appropriate wording)

Advert is created and imported using manual import (doc code is ADVERT). File note is created in PDAX.

Electronic ledger

23.26

Follow procedure at 23.20; however the outcome will be ‘Amendments allowed’.

Publishing action for production of the C Specification

23.27

For GB cases, if the amendments have been allowed, a request is made to Publishing Section for a C specification. A detailed minute should be prepared for Publishing. (see Annex 6 - Standard Publishing minute) If the C specification was amended, then a C2 is requested.

To refer a case to Publishing, send a “PSM – s75 allowed by Court Order, please see certificate for details of amendment and prepare a C specification” message to the Publishing Team Mailbox.

For EP cases, the corrected BDOC should be annotated “For Publishing Purposes”. A detailed minute should be prepared for Publishing. (see Annex 6 - Standard Publishing minute) If the C specification was amended, then a C2 is requested.

23.28

(Deleted)

23.29

(Deleted)