Applications to amend the specification of a patent under sections 27 and 75 of the Patents Act 1977

Introduction

1. New procedures are being introduced to enable proposed amendments to be made available to third parties on the Office website.

2. This change is aimed at both speeding up proceedings and presenting proposed amendments in a clearer and more helpful format.

3. Notice of proposed amendments will continue to be advertised in the Journal, and copies of proposed amendments will also be available, by fax or post, from the comptroller.

4. To enable this change to be made, anyone wishing to propose an amendment under section 27 or 75 will be required, if reasonably possible, to deliver the amendment (and where applicable the reasons for making the amendment) to the comptroller electronically. For section 75 this applies to proposals to amend before the courts of England and Wales as well as before the comptroller.

Legislative background

5. The Civil Procedure (Amendment No 2) Rules 2002 (SI No 2002/3219) will enter into force on 1 April 2003. These Rules will provide a new Part 63 of the Civil Procedure Rules 1998, entitled "Patents and Other Intellectual Property Claims", governing intellectual property proceedings in the courts of England and Wales. Part 63, together with a supplementary Practice Direction, will supersede Practice Direction 49E. The SI, Part 63 and the Practice Direction are available from The Stationery Office. They are also published on the Lord Chancellor's Department website at "Civil Procedure Rules" (see "Statutory Instruments" and "Rules and Practice Directions").

6. Rule 63.10 introduces a new procedure for making applications under section 75 before the courts, including " if it is reasonably possible", the service of the application notice on the comptroller electronically; and paragraph 12.2 of the Practice Direction provides that:

"Where the application notice is served on the Comptroller electronically under rule 63.10(3), it must comply with any requirements for the sending of electronic communications to the Comptroller."

7. It is anticipated that The Patents Act 1977 (Electronic Communications) Order 2003 and a parallel Statutory Instrument introducing associated rule changes will also enter into force on 1 April 2003. Included will be changes to rules 40 and 78 of the Patents Rules 1995 which deal with amendments under section 27 and 75. These changes will, in line with the new Civil Procedure Rules, require amendments (and where applicable the reasons therefor) to be delivered to the comptroller electronically if reasonably possible.

8. Under this Order, a new section 124A of the Patents Act 1977 will provide that the comptroller may make directions as to the form and manner in which documents may be electronically delivered.

Explanatory notes

9. For proposals to amend under section 75 before the courts, applicants will have to file an "application notice" under Part 23 of the Civil Procedure Rules. This must include, inter alia, practice Form N 244 (or the equivalent), the particulars of the amendment, and the grounds for seeking the amendment. All of this (together with a fee) must go to the court on paper, and should also be served on the comptroller electronically if reasonably possible (see rule 63.10 of the Civil Procedure Rules 1998, as amended).

10. For proposals to amend under section 75 before the comptroller, applicants will simply be required to deliver the proposed amendment to the comptroller electronically if reasonably possible.

11. For proposals to amend under section 27, applicants will have to file Form 11/77 (together with the appropriate fee) identifying the amendment and stating the reasons for it, on paper as at present (at least for the time being). In addition, the amendment and the reasons for it should also be delivered to the comptroller electronically if reasonably possible. (NB. The directions below relate to the amendment and the reasons for it, but do not currently provide for an electronic Form 11/77).

12. Given the widespread use of word processing for the preparation of patent specifications, the comptroller will generally assume that it is "reasonably possible" for amendments filed by patent agents, solicitors and large companies to be delivered electronically in most cases. However, to help with the transition, although applicants are encouraged to use electronic delivery at any time from 1 April 2003, the comptroller will not assume that it is reasonably possible for any applicant to use electronic delivery until 1 July 2003.

Directions

13. Directions for the electronic delivery of applications to amend the specification of a patent under sections 27 and 75 are as follows:

(i) Electronic delivery should be made either by email to litigation amendments, or on an electronic carrier (such as floppy disc or CD-R) delivered to the Office and accompanied by an identifying letter.

By email

(ii) The Office will not accept an email for these purposes at any email address other than that given in note (i) above. The email should be a plain text message (RFC822-compliant). We will not accept MS-TNEF/RTF format messages or HTML format messages; nor will we accept messages that are encrypted or digitally signed.

(iii) The email should be entitled "Proposal to amend under s75 before the courts [or the comptroller]" or "Proposal to amend under s27" as appropriate

(iv) The text may be provided as an attachment to the email

IT requirements

(v) Since, among other reasons, business under sections 27 and 75 is of relatively low volume, the Office intends to adopt an open approach to formats and carrier media and not, at this early stage at least, to impose restrictions. Well known word processing packages such as Microsoft Word and WordPerfect ("Microsoft" and "WordPerfect" are registered trade marks), and carriers such as floppy discs and CD-R (ISO 9660) will be accepted. We will also accept documents in PDF format. However, if the Office is unable to read the text, it will be treated as not delivered, and in these circumstances the applicant will be contacted by the Office with a view to making alternative arrangements.

Setting out the amendments

(vi) We would encourage applicants to use conventional word processing features such as markup, coloured text and strikeout/strikethrough to set out the amendments on the original version of the text in a way that makes it easy for the reader to appreciate the changes.

Enquiries

14. Enquiries concerning this notice should be directed to:

Sue Williams
Room 3Y52:

Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel: +44(0)1633 814736
Fax: +44(0)1633 814491