Patents

Amendment

John Lambert

Last updated 15 Nov 2005

The Patents Act 1977 provides for the amendment of the specification of a British or European patent (UK) in two situations. An application may be made to the Comptroller-General of Patents, Designs and Trade Marks ("the comptroller") under s. 27 (1) provided that no proceedings are pending in which the validity of the patent is in issue. Where such proceedings are proceeding, the court or comptroller may allow the proprietor of the patent to amend in such manner, and subject to such terms as to advertising, costs, expenses or otherwise, as the court or comptroller thinks fit under section 75 (1).

The Court's Discretion under the 1949 Act
The language of s.75 (1) of the Patents Act 1977 is very close to that of s.30 (1) of the Patents Act 1949:

"In any action for infringement of a patent or any proceeding before the court for the revocation of a patent, the court may, subject to the provisions of the next following section, by order allow the patentee to amend his complete specification in such manner, and subject to such terms as to costs, advertisements or otherwise, as the court may think fit…"

In SmithKline and French Laboratories Ltd. v Evans Medical Ltd. [1989] FSR 561, Aldous J (as he then was) said that the discretion as to whether or not to allow amendment under that section was wide and should be exercised according to the following principles:

1. The onus of establishing that amendment should be allowed is upon the patentee who should make full disclosure of all relevant matters.

2. Amendment will be allowed provided that it is permitted by the Act and there are no circumstances that would lead the court to refuse amendment.

3. Amendment should be sought promptly and the court is entitled to refuse an application where the patentee fails to show reasonable grounds for delay.

4. A patentee will not be allowed to amend a patent which he knows or should have known ought to have been amended sooner.

5. The court is concerned with the conduct of the patentee rather than the merits of the invention.

Although strictly obiter, Aldous J said in Chiron Corporation v Organon Teknika Ltd. (No. 5) [1994] FSR 258 that the same principles apply to the court's discretion under s.75 of the 1977 Act, which dicta Dillon and Henry LJJ appeared to endorse on appeal ([1995] FSR 589).   

Deletion Amendments

It should be noted in passing that different considerations arise where the proposed amendment consists of the deletion of one or more invalid claims. In those circumstances an amendment will nearly always be allowed. A good, recent example is Sapey v Trianco Redfyre Ltd. (unreported, 31 Aug 2000) where the court allowed the deletion of a claim that had been held to be invalid with immediate effect, and without requiring the patentee to advertise.

The European Patent Convention
Art 123 of the European Patent Convention ("EPC") provides for European patents and European patent applications to be amended in proceedings before the European Patent Office ("the EPO") in accordance with the Implementing Regulations. There is nothing in those Regulations corresponding to s.75 (1) of the 1977 Act. The only grounds on which an application may be refused are that the amendment contains subject matter which extends beyond the content of the application as filed or that it extends the protection conferred under art 123 (2) and (3). Art 123 (1) further provides that an applicant shall be allowed at least one opportunity to amend the description, claims and drawings of his own volition.

Reconsidering the Discretion

The preamble of the 1977 Act declares that it was passed "to give effect to certain international conventions on patents", one of which was the EPC. That legislative intention surfaces in several places in the Act. For instance, section 125 (3) provides that the Protocol on the Interpretation of Article 69 of the EPC shall, as for the time being in force, apply for the purposes of the construction of a patent specification, as it applies for the purposes of that article, while section 130 (7) declares that certain sections of the Act (though not section 75) were framed so as to have as far as practicable the same effects in the United Kingdom as corresponding provisions of the EPC, CPC and Patent Co-operation Treaty.

No doubt with such legislative policy in mind, Jacob J said in Richardson-Vicks Inc.'s Patent [1995] RPC 568 at page 577 that it was anomalous for an English court to treat an application to amend a European patent (UK) differently from the way in which the EPO would treat such an application. Pumfrey J went slightly further by holding in Palmaz's European Patents (UK) [1999] RPC 47 that the patentee's conduct was irrelevant. Laddie J struck out an opposition based purely on the court's discretion in Kimberly-Clark Worldwide Inc. v Procter & Gamble [2000] FSR 235 (see case note) which decision Pumfrey J followed in Texas Electronics v Hyundai Electronics (unreported, 30 July 1999). The weight of this authority persuaded Neuberger J to follow suit in Hadley Industries Plc v Metal Sections Ltd. [1998] EWHC Patents 284 (13 Nov, 1998):

"In this case, there are two decisions of Pumfrey J, one decision of Laddie J and arguably one decision of Jacob J, all of which consider the point to a greater or lesser extent, and all of which come to the same conclusion. For me not to follow them would require a very telling point or a number of telling points."

Even though counsel for the opponents had pointed out that Aldous J's judgment appeared to have been endorsed by the Court of Appeal and that s.130 (7) of the Patents Act 1977 did not refer to s.75 (1), Neuberger J was not prepared to depart from the earlier first instance decisions.

The Court of Appeal's Decisions

Just over a month later, the arguments before Neuberger J were repeated to the Court of Appeal in Procter & Gamble's appeal from Laddie J's strikeout. The Court of Appeal allowed the appeal on five grounds:

"First, the terms of section 75 of the 1977 Act are strikingly similar to section 30 of the 1949 Act. It would therefore be odd to impose restrictions on the court’s discretion when applying section 75 of the 1977 Act which were not imposed under section 30 of the 1949 Act. Second, section 75 is concerned with post-grant amendment and the EPC does not contain any provision relating to amendment of patents after the opposition procedure, which is considered to be part of the grant procedure, has been completed. Upon that basis some of the signatories to the EPC do not allow post-grant amendment and where amendment is allowed there is no consistent approach. Thus there is no reason to seek to make the discretion exercised by the court under section 75 limited to the approach of the other States under the Convention, nor to accord with that adopted by the EPO. Third, section 130(7) of the 1977 Act specifies the sections that have to be construed so as to conform to Convention obligations and to have the same effect as provisions in other contracting States. Section 75 is not contained within it. Fourth, the grounds upon which the courts had refused amendment in the past arose from a desire to protect the public against abuse of monopoly. The courts were slow to allow a patentee to validate an invalid claim by amendment when he had for many years inflicted upon the public a monopoly of a width which he knew to be unjustified. I can find nothing in the 1977 Act which would suggest that the legislature intended to restrict the court’s discretion to prevent such covetousness from being a ground of refusal of amendment. Fifth, section 75, like section 27, applies to national patents and there would appear to be every reason to protect the public from abuse of monopoly of a national patent after 1977 as there was in 1949."

Aldous LJ explained that the reason for the concurrent jurisdiction of the EPO and national courts was that when the 1977 Act was enacted it was envisaged that proceedings before the EPO would be concluded with reasonable expedition and that any overlap between EPO and national proceedings could be prevented by staying the national proceedings until the EPO had made its decision. As Boston Scientific Ltd. v Palmaz (unreported, 20 March 2000) shows, that does not always happen in practice. The Technical Board of Appeal of the EPO allowed in 1999 amendments that Pumfrey J had refused the previous year. When the patentee appealed to the Court of Appeal it was the patent as amended by the EPO that the Lord Justices considered rather than the un-amended form that Pumfrey J had ordered (subject to a stay) to be revoked. In his judgment Aldous LJ said that "to do otherwise would be contrary to common sense", but part of the reason for his decision was that Pumfrey J's order for revocation had been stayed pending appeal and the patent had not been revoked at the time. The Technical Board of Appeal considered the appeal not from the English judge but from its own Opposition Division. That begs the question as to what would have happened had the order for revocation not been stayed in England.

With the benefit of hindsight, Aldous LJ’s reconciliation of art 123 and s. 75 seems almost breathtakingly obvious, but it is premised on a distinction between opposition proceedings in the EPO and revocation proceedings in the national courts. Since opposition proceedings are brought after grant it is not unusual for revocation and opposition proceedings to run simultaneously. At the end of each set of proceedings the patentee is entitled to apply to amend his patent. It is not obvious why those applications should be decided on different principles.
The Patents Act 2004

 The law has now changed. S.2 (1) of the Patents Act 2004 inserts a new sub-section (6) for s.27 and clause 2 (5) a new sub-section (5) for s.75 of the Patents Act 1977. The new s.27 (6) provides:

“(6) In considering whether or not to allow an application under this section, the comptroller shall have regard to any relevant principles applicable under the European Patent Convention.”

The new s.75 (5) is in almost identical terms:

 "(5) In considering whether or not to allow an amendment proposed under this section, the court or the comptroller shall have regard to any relevant principles applicable under the European Patent Convention."

Thus, UK practice will be brought into line with that of the EPC.

Conclusion
It should be noted that there will still be a discretion in s.27 (1) and s.75 (1) even with the new sub-sections. The court or comptroller will continue to consider the substantive effect of an amendment and it will still be possible to impose conditions or terms for amendment, but the conduct of the patentee will cease to be a material consideration.

 

Important