9.Amendment

Amendment

Coverage

The need to consider amendment will be discussed

After you have read this chapter you should be aware of:

1. The need to discuss possible amendments.

2. The nature of amendments that can be considered.

3.The fact that the amendments need only improve the patentee’s position and not necessarily make it perfect.

In the FD4 paper, the examiner may make no direct reference to the question of amendment, but there will be some marks available for addressing this issue. Even if you have reached the conclusion that all of the claims are valid and infringed (which would be a bit surprising in itself) you should have discussed a few ‘balance’ points along the road which might have fallen another way with the result that you would have reached a rather different conclusion. The position of the patentee may well be improved if the situation regarding one or more of these ‘balance’ points could be crystallised in such a way that the desired interpretation or conclusion (desirable from the point of view of the patentee) could be made inevitable.

However, if any of the claims are invalid for want of novelty or inventive step, then, if at all possible, the claims should be amended to make the claims valid, with the claims still being broad enough to catch the alleged infringer. Are there any features that are in the sub-claims, or (as is often the case in this examination) in the specific description, that are present in the alleged infringement? Could these features be incorporated into the main claim to provide a claim narrower than the original, but still infringed by the alleged infringement?

If the claims are not supported by a 'sufficient' description there may not be many options open to you. The description as such cannot be amplified without adding subject-matter. However, if the specification does not include statements of invention corresponding to the claims, then the description could be amplified by adding such statements of invention. This should be permissible as the claims form part of the specification. With the description bolstered in this way it may be easier to argue that the description, as amended, is sufficient.

If the claims were difficult to construe it might be possible to review the language of the claims by 'correction of error' and this may help ensure that the claims are then construed in the way that the patentee would prefer. Were there any ‘linguistic tricks’ that need to be addressed to solve problems of false antecedents, or ambiguities, or possible ambiguities? Are there incorrect claim dependencies that need sorting out? It may be that there is a claim that is invalid which cannot be made valid. Such a claim may well usefully just be deleted (especially if the subject-matter of the claim is not infringed) so that the patent is valid and enforceable, rather than being only a partially valid patent.

Are there any obvious clerical errors in the specification, or the drawings? Often the examiner puts a slight error in the drawings, such as incorrect shading, or an additional line, and even minor matters like this can be amended to improve the position of the patentee (provided that the amendment is really a ‘correction’, and it is apparent that nothing else could really have been intended).

It can help greatly if you propose the actual amendment that should be made. It is easy to say that the claim should be amended to make it novel and non-obvious over the prior art, but the examiner will appreciate seeing the actual wording that you would use, and possibly some explanation as to why this wording has been selected, showing how the wording makes the claim valid, or more likely to be valid, and showing how the amended claim is still infringed.

While you can always consider simply combining the main claim with a sub-claim, or even combining the main claim with one or more features selected from the sub-claims, it is often more rewarding (specially in FD4) to look for a feature or features that can be found in the description of the preferred embodiment(s) and also in the infringement. It is often features of this type that can form the basis of a very satisfactory amendment.

It is always possible when amending a granted patent to end up with two independent claims of differing scope. Post grant there is no ground for objection on the basis of non-unity of invention. Provided each of the independent claims is based on and narrower than the original main claim, and is patentably distinguished from the prior art, then the amendment should be allowable.

If you cannot see any amendment that even begins to improve the position of the patentee, you should show the examiner that you have considered some options before deciding that there is no satisfactory amendment available. You might say that there is no available helpful

amendment because…the only claim that is novel and inventive is claim 5, and if that is incorporated into claim 1 the claim may be valid, but would not be infringed…

A passage such as this does show the examiner that you tried to be creative on behalf of the patentee rather than just saying to yourself ‘that looks difficult… I cannot think of anything to write about that’.

In the real world, if you had an infringement that took many of the features described in the patent, but not necessarily defined in the claims, you might be tempted to add a final independent claim that included everything common to the invention as described, and the infringement. Such a claim may well be very narrow, but with a lot of features the validity of the claim could hardly be called into question, and with all the features being present in the infringement, the infringer would be unlikely to escape. Now would an amendment of that type ‘improve the patentee’s position’?

Do not fall into the trap of suggesting that if the main claim of a patent were to be amended by deleting one or more words that do not seem to be ‘essential’ then there would be infringement. Any amendment that makes a non-infringed claim into an infringed claim must be ‘claim broadening’, which is not allowed after the patent has been granted. On the other hand, if the question relates to the possible future infringement of a pending application that is proceeding towards grant, then a very different situation may obtain.

Of course, if you say nothing about amendment, the examiner can give you no marks for amendment, and as we have seen, every year there is at least one mark for this topic.

EXERCISE 7

Can you think of any amendments that might be made to the patent? Note them down before you turn the page.

EXERCISE 7 – notes

The amendments need to make the claims valid, while still leaving them infringed, if possible.

Depending on your conclusions on novelty and inventive step, you might be able to combine the concepts of some of the original claims to give a claim that is valid and infringed. But if you concluded that all of the claims were of at least questionable validity, is there anything you can do?

Did you spot the similarity between the ends of the blade in Figure 1 and the ends of the blade in Figure 4, even if Figure 1 has a “converging” throat hook and Figure 4 has a “diverging” throat hook? Do these two throat hooks look the same to you? If the patent had a claim specifying that one end of the blade had a converging throat hook, would the infringement be inside the claim? Would the claim be novel? Is there any prior art of any type that might show the claim to lack inventive step?

So if we propose amended claims that are novel, and inventive, and infringed, and based on the original disclosure, is that all we need to do? No, the patent is still invalid because of the internal invalidity. How can we ‘fix’ that?

We can introduce statements of invention corresponding to the claims, as this will not add any matter to the patent. We can possibly introduce phrases from the claims into the description, to make the description more supportive of the claims. For example, the sentence which says that the triangular teeth have cutting edges could be extended by adding ‘and are arranged in groups of four’. Similar amendments may be used to bring the subject-matter of the sub-claims more clearly into the description of the preferred embodiment.