UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
72(1) of the Patents Act 1977 and derived from Article 138 EPC. • The invention is not patentable – ie, a patent
Conditional amendments (ie, in the event that the claims as granted would otherwise be found invalid) are permitted in England and Wales, and when making an application to amend, the pat- ent owner must state whether or not it will con- tend that the original, un-amended claims are valid. Applications to amend must be served on the other parties to the litigation as well as on the Comptroller General of Patents, Trade Marks and Designs at the UK IPO and the applica- tion must be advertised in the UK IPO’s patents journal (unless the court orders otherwise), as amendments sought by the patent owner dur- ing proceedings before the court or the UK IPO may be opposed by any person (whether or not a party to the proceedings). If an application to amend is made to the court, the UK IPO will prepare a report for the ben- efit of the court as to whether it considers the amendments to be allowable. The court or the UK IPO has discretion as to whether to allow an amendment sought in revocation proceedings but must take into account relevant principles under the EPC. Any patent amendment is effective as if it were made from the date of grant of the patent. Post-trial amendments aimed at setting up a new claim to save a claim found invalid at trial are likely to be refused if a new trial on the valid - ity of the proposed new claims is required. 4.4 Revocation/Cancellation and Infringement There is no bifurcation in England and Wales. Issues of infringement and validity are dealt with in the same proceedings and at the same trial, and decisions in respect of infringement and
may be revoked if: (a) it is not novel; (b) is obvious;
(c) is incapable of industrial application; or (d) if it solely concerns excluded subject matter. • The patent was granted to a person who was not entitled to be granted the patent. • The specification of the patent does not disclose the invention clearly and completely enough for it to be performed by a person skilled in the art. This ground is often referred to as insufficiency. • The matter disclosed in the patent specifica- tion extends beyond that disclosed in the application as filed – this ground is often referred to as added matter. • The protection conferred by the patent has been extended by an amendment that should not have been allowed. 4.2 Partial Revocation/Cancellation Partial revocation is possible – ie, some of the patent claims might be found to be valid, and A patent owner can apply in writing to the UK IPO to amend their patent, identifying the pro- posed amendment and stating the grounds on which the amendment is made; following this, the UK IPO may grant the amendment with any conditions that it sees fit. If there are pending proceedings before the court or the UK IPO, in which proceedings the validity of the patent might be put in issue, the amendment is not per- mitted as of right. others might be found to be invalid. 4.3 Amendments in Revocation/ Cancellation Proceedings
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