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Amendment and Correction
4.2.1 Amendment and Correction of a Patent
GB EPC
Voluntary amendments
s27: Comptroller has discretion to allow amendment unless any proceedings are pending that may affect validity. Amendments are retroactive to the date of grant. Third parties can oppose amendments. A105A: Proprietor can request central revocation or limitation (by amendment), unless opposition proceedings are pending. The limitation is fully retroactive (ab initio).
Other amendments
s75: Comptroller or court has discretion to allow amendment during revocation or infringement proceedings. Again the amendments are retroactive to date of grant. Third parties can oppose.
Restrictions s76: The scope of protection is not broadened, and there is no added matter.
Correction to specification
s80(3): An error in translation can be corrected after grant. However, where the correction results in a broader scope of protection, that broader scope is not retroactive and third party rights may exist.
s117 and R105: Correction must be obvious and unambiguous. The correction can be advertised, and third parties can oppose within four weeks. R80: Amendment is possible during opposition proceedings, but only where occasioned by a ground of opposition (even if not raised by opponent).
A105B: The amendment narrows the claims, the resulting claims are clear, and there is no added matter.
A14(2): An error in translation can be corrected throughout proceedings at the EPO, including during opposition.
R139: Correction must be obvious and unambiguous.
Correction to a form or other document
s117: Corrections can be non-obvious, but must clearly identify what is being corrected. The correction can be advertised, and third parties can oppose within four weeks. R139: Corrections can be non-obvious.
4.2.2 Amendment and Correction of an Application
Voluntary amendments GB
s19 and R31(3): Can amend as often as desired between issue of search report and 1st exam report.
Other amendments
Restriction: unsearched matter
R31(4): Can also amend once after first s18(3) examination report along with response (see below), or within two months of 18(4) report if the first exam report.
Can amend to comply with requirements of the act in response to deficiencies outlined in s18(3) report (but can keep amending if s18(3) report was issued prior to publication – R31(4)(b)(ii)).
R31(5): Further amendments possible at comptroller’s discretion.
Restriction: added matter s76: amendment cannot extend beyond the specification as filed.
The specification as filed does not include the abstract.
The specification as filed does not include the priority document(s).
Correction to specification s117 & R105: Correction must be obvious and unambiguous. The correction can be advertised, and third parties can oppose within four weeks.
Correction to a form
s117: Corrections can be non-obvious, but must clearly identify what is being corrected.
EPC PCT
R161(2): Can amend an EP(PCT) where the EPO was not the ISA/IPEA in response to a R161(2) communication. R137(2): After receipt of the search report and before the examination report, can amend in addition to any amendments mandated by R161(1) or R70a. A19 & R46: One amendment of claims only within two months of search report or within 16 months of priority. File at IB.
A123(1): The applicant is given at least one opportunity to make voluntarily amendments, including if necessary after a first examination report.
The EPO can invite the applicant to file amendments to address deficiencies outlined in an Examination Report (A94(3)), and also in response to an extended European search report (R70a), and for an EP(PCT) regional phase entry where the EPO was ISA/IPEA, also under R161(1).
R137(3): Further amendments are at the discretion of the Examining Division
R137(5): Cannot base amendment on unsearched subject matter (e.g. not searched due to non-unity).
A123(2): amendment cannot extend beyond the application as filed. A34(2) and R66: Can amend claims, description and figures upon filing Ch II demand until IPER issued. File at IPEA. NB all PCT amendments are in effect voluntary since it is not a granting body.
A34(2) and R66: Can amend claims, drawings and figures in response to Ch. II Written Opinion. File at IPEA.
A41(1): Can also amend upon entry into the national / regional phase.
A34(2)(b): amendment cannot extend beyond the application as filed.
The application as filed does not include the abstract.
The application as filed does not include the priority document(s).
R139: Correction must be obvious and unambiguous. R91: An obvious mistake may be corrected. The correction is evaluated in light of the specification.
R139: Corrections can be non-obvious. R91: An obvious mistake may be corrected. The correction is evaluated in light of the relevant document(s).
Priority claim GB
s117, R105: Can correct if erroneous, incomplete or inaccurate. S5 & R6: Can add declaration within 16 months of earliest declared priority.
Inventor’s details
s117: Can request a correction of a name or address (use R49 to correct in the register). Evidence may be required.
Applicant’s details
s117: Can request a correction of a name or address (use R49 to correct in the register). Evidence may be required.
Applicant’s death / dissolution s30: Successors in title must register upon distribution of the estate. Need copy of probate.
Representative
R101: Change using form PF51.
Address for service
Assignments
Use R49 to correct in the register. Evidence may be required.
s30(6): Submit in writing or using PF21. In theory can correct under R50, but in practice resubmission of new assignment more effective since a defect in an agreement has wider implications.
EPC
R139: Corrections can be non-obvious. R52(3): Can correct within 16 months of the earliest priority date claimed (either before or after correction) or four months from filing (whichever is later).
PCT
R26bis: Can correct within 16 months of the earliest priority date claimed (either before or after correction) or four months from filing (whichever is later).
R139: Corrections can be non-obvious. A62 & R21: Corrected on request only with consent of any wrongly designated inventor (i.e. in event of replacement).
R139: Corrections can be non-obvious. Evidence may be required. R92bis: Can be corrected by written request.
R92bis: Can be corrected by written request.
R142(1): Can request to interrupt proceedings. Successors in title must inform EPO and proceedings can resume. Most deadlines are restarted. Have two months to request examination if necessary. Pay outstanding renewal fees on restart.
R152: File signed authorisation for either a specific application or in general. R92bis: Applicant can be changed by written request.
R92bis: Can be changed by written request.
A133: Is that of the representative
A72 & R22(3): In theory could correct under R139 but in practice submit a new assignment. Note that actions taken by new proprietor if not validly assigned may be void – R22(3). R92bis: Can be changed by written request.
R92bis: Submit new assignment or signed consent of assignor.
