Patent amendments after grant were relaxed on May 1. TIPO held several public hearings in the last two months discussing revisions to the current examination guidelines for amendments after grant.
The revision is in response to a series of court judgments rendered by the Intellectual Property Court (IP Court), which revoked TIPO’s decisions on not entering the patentees’ claim amendments after grant. According to Article 64 of the Patent Act, amendments to the contents of the specification and drawings after grant should be limited to narrowing the scope of claims, correction of the errors made in the specification, or explanation of obscure descriptions.
However, experiences from patentees indicate that amendments after grant have rarely been allowed and the TIPO has been overly strict in terms of allowing amendments after grant. This strict practice has put patentees in an unfavourable position when defending patent validity during litigation or invalidation proceedings, as unsuccessfully narrowing a claim may render the entire claim invalid.
The amended guidelines allow amendments after grant, but elaborate situations where TIPO may deem a broadening or alteration of the claimed scope include:
To continue reading, you need a subscription to WIPR. Start a subscription to WIPR for £455.
In-house feature articles, the archive and expert comment require a paid subscription. Subscribe now.
Want to give it a try? We are offering a two week free trial to the WIPR website – register and select “Free Trial” to begin access to the full WIPR archive and read the latest news, features and expert comment. Begin your free trial here.
Is your 2 week free trial about to end? Upgrade to a 12 month subscription for £455 now.
If you have already subscribed please login.
If you have any technical issues please email tech support.
TIPO, patent amendments