IPO The stated grounds for requesting the amendment were so that the main claim would be more clearly distinguished from two identified documents, although the patentee did not accept that there was any defect as such in the granted claim. The documents in question had been previously notified to the patentee by the opponent along with two other documents that were not referred to in the request to amend. The grounds of opposition included failure to disclose the full reasons for the amendment, failure to rectify the defect identified, lack of novelty and inventive step (having regard to prior art mentioned above plus other documents which had been considered during the application phase), added matter, that the invention was not sufficiently enabled, and that the amended claim was not clear.
Referring to three earlier Office decisions including James Gibbons Ltd’s Application [1957] RPC 158, the Hearing Officer agreed that opposition to a post-grant amendment is not an opportunity to attack the validity of the patent, either as granted or as amended. It was therefore not appropriate to consider arguments in general going to novelty, inventive step or sufficiency. However the objective of the amendment would not be met if the amended claim was not fully clear of the citations. This entailed the need to consider the extent to which the amended patent would be distinguished over these documents. Furthermore in assessing whether or not full disclosure of the reasons for the amendment had been made it was appropriate to consider the relevance of the other citations which had been drawn to the attention of the patentee and which had not been referred to in the request.
The Hearing Officer rejected all the grounds of opposition and allowed the requested amendments.
Regarding costs, it was held that although not automatic in section 27 proceedings, it was appropriate in the present case for an award of costs to be made in favour of the patentee. A request for off-scale costs was rejected.
Citations:
[2013] UKIntelP o00113
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Updated: 14 November 2022; Ref: scu.472188