Section 19: General power to amend application before grant
Sections (19.01 - 19.26) last updated: July 2017.
Provisions relevant to this subject are laid down in r.31.
|At any time before a patent is granted in pursuance of an application the applicant may, in accordance with the prescribed conditions and subject to section 76 below, amend the application of his own volition.|
(r.107 s.25(1) is also relevant)
To be effective a request to amend must be received before the issue of the letter informing the applicant that a patent has been granted see 18.86. If it is received before that date but too late to prevent issue of the letter the grant may be rescinded; the request should then be considered as described in paragraphs 19.20-19.22. If the request is received on or after that date it is too late to amend the application; amendment of the specification of the patent may be sought after the date of publication of the notice of grant in the Journal see 27.04. It is additionally necessary for the request to be received while the application is still in being; an application apparently cannot be amended after it has been treated as withdrawn through failure to meet a formal requirement or otherwise terminated, even if allowance of the amendment would allegedly have the effect of avoiding termination (eg by relinquishing a claim to priority, see 19.11, and thus apparently giving more time for Form 9A to be filed). This is because amendment takes effect ex nunc as explained in 19.04 and, in addition, it appears that the general power to amend under s.19 cannot be used to circumvent the specific requirements of other sections of the Act (cf Payne’s Application  RPC 193), see 117.19.
Amendments and corrections
Although the ordinary dictionary definitions of these words overlap, and the terms may often be employed interchangeably in normal parlance, they are used in the Act and Rules in quite distinct and specific senses, and it is convenient at this point to discuss in general terms the difference between them. Correction is the alteration of a document so that it may better express the intention the drafter had at the time of drafting, including the case where an agent drafting a document has misconstrued his instructions. If the alteration is sought because the drafter has become aware of new facts, or because circumstances have since changed, or because he has changed his mind, then this is not correction but amendment.
[ Whenever a request to effect an alteration is made informally in a letter rather than formally on the appropriate form, it should be borne in mind that the applicant may not have used the term “amend” or “correct” in these precise ways. If the applicant’s intentions are not clear both options may if necessary be pointed out and the difference explained, but care should be exercised against suggesting either option in a case where it would appear prima facie not to be open. ]
(r.105(3), s.27(3), s.75(3) is also relevant)
Correction of an application or the specification of a patent or of any document filed in connection therewith is governed by s.117, and takes effect ex tunc, that is, the document is deemed always to have been in the state in which it is after the correction. If the correction sought is in a specification then it is necessary to show that it may properly be dealt with as a correction, but once this is established there is no impediment to the making of the correction; in particular the question of whether subject- matter is added or the protection conferred is extended by the alteration does not arise (Rock Shing Industrial Ltd v Braun AG, BL O/138/94). In contrast, amendment of an application or of the specification of a patent must comply with the requirements of s.76(2) or (3), see 76.04-27. Amendment of an application is governed by s.19 and takes effect ex nunc, that is, from the time the amendment is made; amendment of the specification of a patent is carried out under s.27 (or under s.75 if done while there are pending proceedings in which the validity of the patent may be put in issue) and is deemed to have had effect from the date of grant.
Amendment of the request for grant
(r.31(5)(b) r.31(6) r.49 is also relevant)
An application to amend the request for grant (Patents Form 1) must (except as stated below) be made in writing, giving a reason for the amendment. This may be filed at any time before the applicant is sent the letter informing him that a patent has been granted (see 18.86), but must be received before preparations for publishing the application under s.16 have been completed if the change is to be included in the published application. In such a case the published application will carry a notice to the effect that the publication reflects an amendment to the request for grant effected under r.31. A request to change a person’s address or address for service must be made in writing by that person, see 32.06.
(r.31(5)(b), r.49(2), (4) r.113(1) is also relevant)
Any request to amend a name must be made on a Patents Form 20, as such a change must be effected under s.32(2)(d) and in accordance with r.49(2). Patents Form 20 can also be used to notify the IPO of address changes. However, if only an address has changed, it is allowable for a request to update the address on record to be made in writing. (Form 20 should also be used for correction of a clerical error in a name – see 117.17). Where the comptroller has reasonable doubts about whether the alteration should be made, the person making the request will be informed of these doubts and may be required to supply proof to support his request. In the case of a corporate body any proof required should be in the form of a document from the appropriate companies registration authority, such as (for the UK) a certificate from Companies House, or (for the USA) a State Certificate, or (for Germany) an extract from the Handelsregister. For France or Belgium a copy of the gazette or commercial paper in which the change of name was advertised should be supplied. If a change of name has already been recorded at the EPO, a copy of EPO Form 2544 (giving notice of the change made in the Register of European Patents) will be accepted. Whenever the proof is in a foreign language it should be accompanied by a verified translation. In the case of a natural person whose name has been changed, eg by Deed Poll, it is sufficient to give particulars of the issue of the gazette or newspaper in which the change has been advertised.
[ Where a change of name is accepted, the name is crossed out using Enhance and the new name inserted. ]
(r.49(5) is also relevant)
Changes in the applicant’s name, address or address for service will be effected in the Register. If the request to amend is received in time the amendments will be included in the published application (see 19.05).
[ Where there is any doubt as to an applicant’s name, address or address for service, OPTICS and PROSE hold the definitive version of the Register. ]
If the change in name or address had taken place at the time the application for a patent was filed (so that Form 1 was incorrect at the time it was filed), then alteration of it is not amendment but correction and must be effected under s.117 see 117.17.
Provided that Form 7 has not yet been filed, the addition or deletion of an applicant or the substitution of one applicant for another, for example because of assignment of the application or the death of an applicant, may be effected by a request in writing. (This may also necessitate an amendment of Part 8 of Form 1 see 14.04.16-17. Reasons for making the amendment should be provided in writing. Supporting evidence (or sworn statement(s) indicating the consent of the party or parties affected by the change) is required and the statements made on a subsequent Form 7 must be consistent with the amendments made and the reasons given. If however Form 7 has already been filed, any assignment of the application or other change in ownership must be notified under s.30.
A request to amend the title of the invention on Form 1 is generally allowable, although consideration should be given to the issues raised in 14.51. It is acceptable for amendment of the Form 1 title to result in a discrepancy between the Form 1 title and the title on page 1 of the specification see 14.49.
[ The formalities examiner should forward such a request to the relevant examiner, adding a minute to the PDAX dossier, to draw the examiner’s attention to the request. If the examiner allows the request, they should create a minute and send the appropriate PDAX message to the formalities examiner who will effect the changes using the “Enhance” function in PDAX and ensure that the appropriate OPTICS action is taken.]
If the application includes a declaration of priority see 14.04.14 or claims an earlier date of filing see 14.04.15 either of these may be relinquished by a request to amend Part 5 or Part 6 of Form 1. (It should be remembered that abandonment of the claim to an earlier filing date may necessitate relinquishment of a claim to priority). The proposed amendment may arise as a consequence of an objection made under s.18(3), whether to meet that objection or in anticipation of a further objection which would arise as a result of the action taken, for example where a declaration of priority is deleted consequent on division following an objection of plurality of invention. In all cases, including when a request is made to relinquish divisional status following a preliminary objection see 15.34-15.35, the request to amend Form 1 should be made in writing, giving a reason for the amendment. For making a declaration of priority after filing a Form 1, see 5.07 to 5.07.3.
[ A request for the deletion of a declaration of priority must be referred with an explanatory minute to the relevant Assistant Head of Administration via the Formalities Manager. The Assistant Head of Administration will authorise the amendment, alter Form 1 using the “Enhance” function in Madras and then update the history action log. ]
The applicant must always be informed whether or not an application to amend the request for grant has been allowed.
Amendment of the specification of an application
(s.18(3) r.31, r.66A, CoP s.76(2) is also relevant)
In addition to having the right to amend the specification in order to overcome an official objection, the applicant may make amendments for reasons of his own. Such voluntary amendments may however only be made as provided for by r.31 or r.66A see 19.15- 19.16; 19.20, and it is preferable for voluntary amendments to be kept to a minimum and filed as early as possible. No amendment is allowable which results in the application disclosing any matter which extends beyond that disclosed in the application as filed see 76.03-76.23. For the procedure for effecting amendments, see 18.61-18.62.
Amendment as of right
(r.31(3), s.16(1) is also relevant)
Between the dates of issue of the search report and of the first substantive examination report the applicant may, of his own volition, amend the specification, for example to take account of documents cited in the search report. There is no restriction on the number of times this may be done, and this right is not affected by the issue of an examination opinion with the search report see 17.83.3 and 17.83.4. The amendments are deemed to be effected at the time they are filed, but are not considered by the substantive examiner, for example to see if they add subject-matter, until the first substantive examination. Any amended or new claims subsisting immediately before preparations for publication have been completed are included in the published application see 16.16-16.19
(r.66A is also relevant)
Where an international application under the PCT has entered the UK national phase and an international search report was issued during the international phase, the applicant may amend the specification of his own volition from the date of national phase entry until the date the first examination report is issued. Where no international search report has been issued by the time the application enters the UK national phase, the period within which the applicant may amend voluntarily starts from the date of issue of the UK search report or the international search report (whichever is issued first).
(r.31 is also relevant)
After the issue of the first substantive examination report the applicant may, in addition to amending to meet any objections raised in that report, amend the specification once for reasons of his own. If the first report is made under s.18(3), the voluntary amendments must be filed at the same time as the applicant replies to that report except that if the first substantive examination report is issued before the preparations for publication of the application have been completed, the applicant may also amend the specification of his own volition before he replies to the report. Any amended or new claims subsisting immediately before preparations for publication have been completed are included in the published application see 16.16-16.19. On the other hand if the first report is made under s.18(4) any amendments must be filed within two months of the issue of the report.
The opportunity to amend the specification as of right following a first report under s.18(3) is therefore expended when any considered reply is made, whether consisting of amendments to meet the substantive examiner’s objections, the setting out of proposals to meet those objections, or the submission of arguments intended to rebut them, and regardless of whether the reply is complete, or whether it is made before the end of the period specified in the report. Thus, for example, if a reply is made proposing amendments to the claims but deferring consequential amendments, this terminates the period for voluntary amendments as of right under r.31(4), and any further amendments not required by the substantive examiner must be made with the consent of the comptroller under r.31(5)(a), see 19.20. However a mere request or a query in response to the report under s.18(3) does not have this effect, and the option to file voluntary amendments remains open until a considered reply is made within the period specified.
If, following a first report under s.18(4), allowable amendments are filed before the expiry of the two month period the amendments should be acknowledged and the application should be sent for grant in the timescale previously indicated (see 18.85-18.86). If however, amendments are filed which are not allowable, so that a report is then issued under s.18(3), this report counts as a second report, and any subsequent voluntary amendments must be made with the consent of the comptroller under r.31(5)(a), see 19.20. On the other hand if a first report under s.18(4) is rescinded under r.107 see 18.89-18.90, then the report under s.18(3) replacing it is regarded as the first report and voluntary amendments as of right are allowed when reply is made to it, even if voluntary amendments had already been made within the period allowed by the original s.18(4) report.
[ Allowable amendments filed within the two months period should be acknowledged either by telephone (with an open file record) or by sending EL4 selecting a grant checklist in the bundle. The grant checklist should be modified to instruct the ESO to issue the EL4 letter and import it to PDAX. ]
The comptroller has no power to refuse amendments submitted under r.31(3) or (4) to be made. However, any amendment which does not comply with s.76(2) or which gives rise to any other objection under the Act or Rules should not be allowed to stand. The amended specification should be considered by the examiner as described in 18.64-18.70. The amendments take effect on filing; hence if no response is received within the specified period to an objection to such an amendment it is not permissible to send the unamended application forward for grant.
[ RC9 may be used to object to added matter in a specification amended under r.31(3) or (4). ]
Amendment with the consent of the comptroller
Before issue of the search report
(s.117(1) is also relevant)
Under rule 31, amendment of the specification before the examiner’s search report under section 17(5) is issued is only allowable if the comptroller requires or consents to that amendment. Otherwise the specification will remain in its unamended state. The search examiner should normally consider the allowability of any amendments proposed before the search is done, having regard to ss.14(3), 14(5) and 76 see 17.35. Amendments made to the specification other than corrections under s.117(1) or to the claims will not be published in the A specification see 117.13. They will however be incorporated into the specification and become open to public inspection when the application is published see 16.20.
After response to the first report under s.18
(r.31(5), r.31(6) is also relevant)
Once the opportunities for amendment as of right see 19.15-19.16 have passed, the applicant may make amendments which are not in response to an Official objection only with the consent of the comptroller and provided that they are received before issue of the letter informing the applicant that a patent has been granted see 18.86 and 19.02. The application to amend should be made in writing, giving a reason for the amendment, unless the applicant can satisfy the substantive examiner that the amendment is calculated to meet an objection that the examiner should have raised. The comptroller’s consent is not normally withheld if the amendments appear to be allowable.
Until consent is given to the amendments the specification remains in its unamended state. Consent is not granted until the amendments are in an allowable state. The applicant should not be left uncertain whether the amendments have been received and considered. Accordingly, if the amendments were filed after a reply to a report under s.18(3) and no further report under s.18(3) is to issue, and there has been no communication with the agent or applicant concerning the amendments, he should be notified of their allowance. On the other hand, if the specification without the proposed amendments is in order and the amendments give rise to objection a report to this effect should be made, and two months be specified for reply. If no response is made within this time the (unamended) application may be sent for grant.
[ Allowable amendments filed after a reply to the final report under s.18(3) should be acknowledged as in paragraph 19.18. On the other hand if, while the amendments are allowable, a further report under s.18(3) is to issue, RC8 should be added to the report. RC9A may be used to object to additional matter in the proposed amendments when the application is not otherwise in order, and EL9 may be used where the unamended application is in order (RC9 should not be used in either of these circumstances). Where a report solely dealing with objections to proposed amendments under r.31(5)(a) is to be sent, it should be headed “Patents Act 1977: Report on amendments” (and not “Patents Act 1977: Examination report under section 18(3)”) and an appropriate period for reply should be specified. ]
[The EL9 should have a reply date of 2 months. The application should be diaried by the examiner to return in 4 months (plus an additional week to allow correspondence to be added to the file), since the period for reply can be extended by 2 months. The examiner should reconsider the application within 3 weeks of receiving the diary message, this is to ensure the minimum possible delay to grant. If the applicant responds to the EL9, and the application is resultantly found to be in order for grant, the examiner should follow the procedure in 19.22.1 so that the application is sent on for grant by the examiner assistants. The examiner should also minute the file for the attention of the examiner assistants stating that the amendments are now allowable (sending a “PSM” message to the EA GRANT mailbox). If a response to the EL9 is received and the proposed amendments are still not allowable, then the examiner should use their judgement whether to send the application to grant in the unamended state (following the same procedure as when there is no response – see below) or whether they issue a further EL9. If no response is received within the time period, the examiner should add a minute to the file for the attention of formalities (and send a “PSM” message) asking them to remove the amended pages so that the application can be granted in its unamended state. Once this has been done, the examiner should follow the procedure in 19.22.1 and add a minute to the file for the attention of the examiner assistants stating that the application can now be sent on for grant (sending a “PSM” message to the EA GRANT mailbox).]
If, however, a request to amend is received after the end of the compliance period (at which time the application must have been reported as complying with the Act and Rules, otherwise it would have been treated as having been refused) the amendment should be allowed only if it does not necessitate substantial re-examination or further search and would not unduly delay grant; a request to restrict the claims to avoid late-found prior art should, if effective for this purpose, be allowed.
If the application was found in order at second or later examination, then amendments can only be made with the consent of the comptroller. The intention to grant letter sets out that such voluntary amendments must be made before the latest date for reply. However, amendments received after this date should still be considered so long as they are received before grant. In some cases the reply date in the intention to grant letter may be later than the compliance date. This is not a problem because it is possible to make voluntary amendments after the compliance date, see 19.22. The amendments must be accompanied by reasons, and their allowance is at the comptroller’s discretion.
[If the substantive examiner finds the voluntary amendments are allowable they should respond using an EL4 letter (selecting an EL4P checklist, and ensuring the status is set to 9: Disposed of – in order). The examiner should minute the file to state the application is in order for grant. The case will then appear in the examiner assistant’s ‘grant list’, generated by informatics. Resultantly, the examiner assistants will set the status to 11: Ready for grant, and send a ‘Grant Check’ message to formalities. Formalities will then carry out this check and send the application to grant in the usual way.]
|The comptroller may, without an application being made to him for the purpose, amend the specification and abstract contained in an application for a patent so as to acknowledge a registered trade mark.|
Registered trade marks
Under the Trade Marks Act 1994, registered trade mark includes service mark.
While in general no attempt should be made at the search stage to check for trade marks, if the search examiner comes across a term in the specification or abstract which he knows, or can readily establish, to be a registered trade mark he should amend the specification or abstract to acknowledge the mark and inform the applicant that he has done so. S.19(2) does not extend to authorising the comptroller to amend the title on Form 1 to acknowledge a registered trade mark. That title, complete with any unacknowledged trade mark, is published in the Patents Journal see 14.04.10. The abstract title see 14.173- 14.174 should not normally contain a trade mark, but if this is unavoidable then the trade mark must be acknowledged.
[The search examiner should insert “(RTM)” after the trade mark using the “Enhance” function in PDAX or add an “RTM” document to the bundle in PROSE. Where the “RTM” document is used in PROSE, the examiner will need to edit it to include the identified trade mark(s). In either case the search examiner will need to add a minute to the dossier. However, there is no need to make this insertion if the symbol ® is already present. SC2 should be added to SL1 or SL2 before the paragraph on publication. ]
[ If any RTMs are added or removed after A-publication a second RTM document will be needed before grant. Formalities will automatically only include the most recent RTM document in the B-publication. If this is not to be the case then formalities should be informed by a minute. Any RTM document on the dossier which is not to be included in the B-publication should be appropriately annotated.]
At substantive examination (when it is not performed at the same time as the search), if the examiner suspects that an unacknowledged term may be a registered trade mark, he should check whether or not it is see 14.100 for the procedure). If the use of the trade mark is not objectionable see 14.137 and the application is otherwise in order the substantive examiner should amend the specification to acknowledge the mark and inform the applicant, in the report under s.18(4), that this has been done. If the application is not in order, the examiner should ask the applicant, in the report under s.18(3), to acknowledge the trade mark. If the applicant subsequently refuses or omits to acknowledge the mark, the substantive examiner should do so and inform the applicant.
[If the application is otherwise in order, the examiner should insert “(RTM)” as per 19.24. The applicant should be informed by referring to the acknowledged trade mark in EL3. If the applicant is to be asked to acknowledge the trade mark, RC11 should be added to a s.18(3) report. If the examiner needs to acknowledge a trade mark either because the applicant refuses or omits to do so, the examiner should add SC2 to the report to inform the applicant of the fact. ]
For combined search and examination cases, the examiner should check at first examination stage whether any unacknowledged terms are registered trade marks see 14.100 for the procedure. If the examiner comes across such an unacknowledged registered trade mark in the specification or abstract, he should either add an “RTM” document to the PROSE bundle or insert “(RTM)” after the trade mark amend the specification or abstract to acknowledge the mark see 19.24. If the use of the trade mark is not objectionable see 14.137 and the examiner has no other objections, he should inform the applicant that the specification or abstract has been amended to acknowledge the mark. If other objections are to be raised and the “RTM” document has been used,the examiner should also ask the applicant, in the report under s.18(3), to acknowledge the trade mark, as this provides an opportunity for the applicant to acknowledge the mark themselves in amended pages.
[If there are no other objections, the examiner should insert “(RTM)” as per 19.24. The applicant should be informed by adding SC2 to SE3 before the paragraph on publication. If there are other objections and the applicant is to be asked to acknowledge the trade mark, RC11 should also be added to the s.18(3) report.]