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Intellectual Property Law

Intellectual Property Law (5th edn)

Lionel Bently, Brad Sherman, Dev Gangjee, and Phillip Johnson
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p. 43616. Procedure for grant of a patentlocked

p. 43616. Procedure for grant of a patentlocked

  • L. Bently, L. BentlyHerchel Smith Professor of Intellectual Property, University of Cambridge
  • B. Sherman, B. ShermanProfessor of Law, University of Queensland
  • D. GangjeeD. GangjeeAssociate Professor of Intellectual Property Law, University of Oxford
  •  and P. JohnsonP. JohnsonProfessor of Commercial Law, Cardiff University


This chapter explains the processes involved in granting patents as well as the factors that applicants must take into account when deciding whether to patent an invention in the UK. The role of patent agents and the choice of route to take to secure grant of the patent are considered. The chapter then documents the procedures in the application for a patent, paying particular attention to some of the key features of the UK and European Patent Office patent application processes together with the Patent Cooperation Treaty. It also describes situations in which applicants and patentees are able to amend their applications and the restrictions under which such amendments operate. Finally, it looks at a number of proposals to reform the patent procedure.

1 Introduction

Unlike the position under copyright law where rights arise without formality, patents are only granted after a series of formal procedures have been complied with. The process of registration plays a key role in defining many aspects of patent law and practice. In this chapter, we explore some of the key features of those processes. We begin by exploring some of the issues that would-be applicants ought to consider when deciding whether to take out a patent to protect their inventions in the United Kingdom. We then follow the trajectory of a patent through the administrative process, from its inception as a patent application through to grant. In so doing, we discuss the British and European patent systems, the Patent Cooperation Treaty (PCT), and how they intersect.

2 Preliminary considerations

2.1 Deciding to patent

A range of factors are taken into account when considering whether to patent an invention. A potential applicant will need to consider the benefits that may flow from patenting. Perhaps the most obvious benefit is that because a patent confers an exclusive right to make, use, and sell the patented invention for a period of up to 20 years, it provides the owner with associated monopoly profits. It should be noted that the economic value derived from a patent will vary according to the type of invention in question. For example, where competitors are able to develop new ways of achieving the same result that fall outside the scope of the monopoly (known as ‘inventing around the patent’), the economic benefits are reduced. Another benefit associated with patenting flows from the fact that patenting translates inventions from the world of science and technology to the world of commerce. In so doing, patenting enables inventions to be included on the balance sheets of organizations and on the research returns of publicly funded institutions. This may be particularly important in attracting funds to pay for research.

Other less obvious benefits flow from patenting. These include the esteem or symbolic capital that flow from being recognized as an inventor. Indeed, in some cases it is the romantic appeal of becoming an inventor that encourages a person to enter into the p. 437patent system in the first place.1 Another benefit of patenting is that it enables manufacturers to enhance the image of their goods. By advertising that their goods are patented, sellers are able to represent to consumers that they are buying cutting-edge technologies. There is also a sense in which the mere fact that something has been patented carries with it the belief that the product has public approval; this has been particularly important in relation to the patenting of life forms.

The benefits that flow from patenting need to be weighed against the associated costs. The financial costs of patenting include patent agent fees, the administrative charges imposed by national and international institutions as a condition of grant,2 and (where a patent is sought in a non-English-speaking country) the costs of translation. A 2012 study commissioned by the European Patent Office (EPO) showed that the average cost of obtaining a patent directly at the EPO was €32,000.3 Non-financial costs, such as the time and effort involved in transforming a practical technical idea into the form required by the patent system, also need to be taken into account. Another cost associated with patenting relates to the fact that the applicant must make their invention available to the public. While competitors may not be able to copy the patented invention, the disclosure of the invention makes it easier for them to invent around the patent. Another factor to be taken into account is whether the benefits that flow from patenting can be achieved through other means with fewer of the associated costs.4 An important factor here is that an inventor (or owner) may be able to rely upon other techniques to protect their creations that do not require the invention to be disclosed to the public. These include contractual restrictions on the use or disclosure of the process, the law relating to breach of confidence, or non-legal techniques such as secrecy. The problem with these techniques is that they carry with them the risk that if the information is disclosed to the public (even if through a breach of contract or confidentiality), in most cases the invention becomes part of the public domain, free for all to use.5 Another factor that may influence the decision to seek a patent is the ease with which the details of the invention can be ascertained or reverse-engineered when the invention or the products thereof are made available to the public.

Given that the decision to patent is influenced by a range of factors, it is not surprising that patenting practices vary from industry to industry. For example, in the pharmaceutical industry, where research and development costs are high and the products are readily and cheaply copied, the patent process is commonly relied on to protect inventions. In other industries, such as in the aviation field, where the expense of copying is very high, greater emphasis is placed on secrecy as a mode of protection.

2.2 Role of patent agents

It is common for decisions concerning patent applications to be made in consultation with a patent agent. Since emerging as a discrete profession during the nineteenth p. 438century,6 patent agents have come to play a central role in the operation of the patent system. Under the European Patent Convention (EPC), a new breed of expert, the ‘European patent agent’, has developed to deal with the intricacies of the European patent system.7 Patent agents normally have knowledge of the law, the patent administration process, and a particular branch of science. As well as assisting in the drafting and processing of patents, patent agents also offer advice as to whether a patent should be taken out and where and how patents are best exploited. In some cases, they are also able to litigate on behalf of patentees. In a sense, patent agents act as go-betweens who unite the technical–scientific domains with the legal and commercial.

2.3 Choice of routes to grant

Once the decision is made to protect an invention in the United Kingdom by patent, it is then necessary to decide the particular route to take to secure grant of the patent. In particular, it is necessary to decide whether to take out a British patent or a European patent (UK).8 In turn, it is necessary to decide whether to apply directly to the UK Intellectual Property Office (UK IPO) or the EPO, or whether it would be better to make use of the application system provided by the Patent Cooperation Treaty (PCT).9 It should be noted that if the proposed unitary patent package is implemented, it will introduce yet another option: the unitary patent, which will provide uniform protection across 25 participating member states. The particular route that is chosen depends on a variety of factors; perhaps the most important are the countries where protection is desired.

When deciding whether to bring an application to the United Kingdom or the EPO, commercial and strategic considerations may come into play. From a commercial point of view, the primary variable is the fees charged by the respective patent offices. Because the cost of an application to the EPO is greater than to the UK IPO, if an applicant only wishes to file in the United Kingdom or in a few countries, it will be cheaper for them to apply to the respective national offices. There comes a point, however, where the cumulative cost of applying to several national offices will exceed the cost of a European application.10p. 439

Applicants may also be influenced by strategic considerations when they are considering whether to apply to the EPO or to national offices. An important factor relates to the fact that although the substantive law of the national systems and the EPC are largely the same, there are a number of other important differences.11 In particular, while the EPC has a full examination system, some national offices do not require examination at all,12 some allow for deferred examination, and some require patent agents to provide the examination service, while others will only reject applications on limited grounds (such as novelty).13 Another factor that may influence the route taken is the relative vulnerability of the patent. In particular, while a national patent can only be challenged in national tribunals, the EPC allows for a central challenge to be made against a European patent (which takes the form of an ‘opposition’ to the grant and can be brought within the nine-month period after grant).14 If a would-be-patentee believes that the application is likely to be challenged, the applicant might prefer to maximize the survival chances of the patent by registering in a range of national offices rather than to risk the possibility of a successful central attack, which would deprive the applicant of protection in all of the designated states.

Similar factors will influence inventors when they are considering whether to apply directly to the UK IPO or the EPC, or whether they want to make use of the international filing system provided by the PCT.15 While the PCT does not issue patents, it does provide an alternative starting point by which both UK and European patents (UK) can be obtained.16 Under the PCT,17 an international application can be made to the patent office of one of the contracting states, which is called the ‘receiving office’.18 The application must contain a request, a description, at least one claim, drawings (where appropriate), and an abstract.19 Prior to 1 January 2004, applicants also had to designate the states in which protection was sought.20 This is no longer necessary, p. 440however, because the filing of a request automatically applies in all contracting states to the PCT (unless the applicant specifies otherwise).21 Applicants can apply to their designated international offices for an international search and an international preliminary examination to be carried out, (this is the EPO for UK and EPO applicants).22 At this point, the applicant can shift to the designated national offices, which will decide whether to grant national patents.23 At this stage, the national office treats the application as if it has been filed in that office. Instead of going directly to the national stage, an applicant may ask for an international preliminary examination by an international preliminary examining authority.24 The examining authority issues an international preliminary examination report indicating whether the invention appears to meet international standards of novelty, inventive step, or industrial applicability.25 It should be noted that the examination is merely advisory and not binding on designated countries.26

The procedures are useful for countries in which the patent office is not capable of carrying out its own examination. Another factor in favour of the PCT is convenience. Rather than having to apply in each individual country, a single application can be submitted to a relevant PCT body. The PCT is also attractive because of the lengthy period between the initial application to the international office and the time when the application is forwarded to the relevant national offices, at which time the expensive process of translation must be completed.

3 Features of the patent application process

Before looking in detail at the procedures for grant of a patent, it may be helpful to highlight some of the key features of the UK and EPO patent application processes.27

3.1 Requirement of registration

Registration has long been a prerequisite for grant of a patent in the United Kingdom. In modern times, this is largely explained by reference to the type of monopoly that a patent confers. The decision to make patent protection dependent upon registration is said to result from the fact that patents confer an absolute monopoly that enables the patentee to prevent all others from practising the invention. This is the case even if the infringer developed the same invention independently from the patented invention. Consequently, as a matter of fairness, it is necessary to have a register that is open to the public. This p. 441ensures that third parties are able to ascertain whether they are infringing someone else’s rights. The process of filing also helps to establish the priority of the invention and is a prerequisite to systems of pre-grant examination such as those that operate in the United Kingdom and EPO.

3.2 First-to-file

Most patent systems, including that of the United Kingdom and the EPC, operate on the basis that the first person to file an (acceptable) application for an invention should be granted a patent over the invention. The fact that patents are granted via a system of registration does not necessarily mean that the patent ought to be granted to the first person to file an application.28

While the first-to-file system may be incompatible with a regime of intellectual property predicated on natural rights, it avoids the need to consider difficult questions about who was the first person to have a particular idea or to reduce the idea to a working model (as occurs in first-to-invent systems).29 Instead, the first-to-file system replaces such investigations with an administrative practice that delivers rough, but simple, justice.30 The first-to-file system is also justified on the basis that it provides inventors with an incentive to disclose (or a reward for having disclosed) the invention: the first applicant to disclose the invention obtains the patent.31 As we will see, the adoption of a first-to-file system has certain consequences that need to be taken into account later in the grant process.32

3.3 Examination

Another notable feature of the patent application processes in the United Kingdom and the EPO is that applications are subject to a full examination.33 That is, all applications are examined to ensure that they comply with the formalities of filing, as well as the requirements of subject matter, novelty, non-obviousness, and sufficiency.

For most of their long history, British patents were granted without examination. The question whether examination as a prerequisite for grant should be introduced into the United Kingdom was considered and rejected on a number of occasions during the nineteenth century.34 One of the main arguments against examination was that it would have made the recognition of property rights subject to the discretion of government officials. p. 442Examination would also have added to the cost and time of obtaining a patent35—changes that would have run counter to the spirit of much nineteenth-century reform, which aimed to simplify the system and to reduce the ‘taxes’ imposed on inventors.

After much deliberation, a limited system of examination was introduced into the United Kingdom in 1905.36 An important factor that helped to support the case for examination was the finding of the 1901 Fry Committee that 40 per cent of the patents registered at the time were for inventions that had already been described in previous patents.37 Because these patents would not have withstood litigation, they were theoretically harmless. Nevertheless, it was believed that they deterred others from working in the same field. Moreover, the lack of examination brought the system into disrepute and undermined the trust placed in valid patents. For some, the prospect of an examination system sanctioned and controlled by the state was attractive because it would have created a legal (and thus a commercial) presumption that any patents that had been granted were valid. Another factor that supported the case for examination was that fears of arbitrary or self-seeking exercise of discretion on behalf of those in charge of the register had been allayed by a growing trust in bureaucracy38—a trend that was cemented by the increased use of experts.39

The limited examination system established in 1905 was maintained until the passing of the Patents Act 1977, when the current full examination system was introduced.40 While the examination system currently forms an integral part of the British patent system, there may come a time when the United Kingdom may wish to follow other countries in the EPC who, in the face of falling national applications, have abandoned full examination as part of national procedure. If this were to happen, it would provide applicants with greater choice, the alternatives being an unexamined national patent or an examined European patent.

3.4 Amendment

Another notable feature of the grant system is that applicants are able to alter or amend their initial applications both during and after grant of the patent. The decision to give patentees the opportunity to amend their patents recognizes that the first-to-file system may encourage applicants to register without a full understanding of the invention or complete familiarity with the relevant prior art. It is also based on the fact that subsequent examination, either by the applicant or the patent office, may reveal the existence of a p. 443piece of prior art that requires the application to be reformulated to ensure its validity.41 Similarly, an applicant may wish to amend the application (as filed) in light of subsequent experiments carried out on the invention. Where a patent is found to be partially valid,42 it is desirable that the patent be amended by the deletion of the invalid claims, which otherwise might remain as a potential nuisance to industry.43 At the end of this chapter, we look at the situations in which applicants and patentees are able to amend their applications and the restrictions under which they operate.

4 Procedure for grant

The basic procedure for application for a patent to the UK Intellectual Property Office is roughly the same as at the European Patent Office. In this section, we provide an overview of some of the more important features of those processes (see Fig. 16.1).

4.1 Who is entitled to apply for a patent?

There are virtually no restrictions on who may apply for a patent. In contrast with the rules relating to copyright and trade marks, there are no limitations as regards the nationality or residency of the applicant.44 Where appropriate, an application for a patent may be made by two or more applicants. While anyone may apply for a patent, there are a number of restrictions placed on those who are entitled to be granted a patent. The issue of entitlement to grant is dealt with later.45

During the application process, disputes over who is entitled to a patent that may subsequently be granted are dealt with differently, depending on whether it is a British or a European application.46 For the purposes of proceedings before the EPO, it is assumed that the applicant is entitled to exercise the right to the European patent; issues about entitlement are determined elsewhere.47 The EPO will only take account of the question of entitlement if a decision is made by an appropriate national court that a person other than the applicant is entitled to the patent.48p. 444

Fig. 16.1 Flowchart of a patent application

As with the EPC, an applicant for a British patent is presumed to be entitled to grant of the patent.49 However, in contrast with the EPC, the Comptroller is able to consider issues of entitlement that are raised before grant.50 If a person ‘properly entitled’ to a patent decides to submit a new application, they may be able to use the wrongful applicant’s priority date.51 The Comptroller of the UK IPO is given similar powers to determine entitlement where a patent has already been granted.52

4.2 Filing a patent application

Applications for British patents are filed online, in person, or by post. The contents of all documents included in an application for a British patent must be in English or Welsh.53 Applications for a European patent may be filed either with the EPO in Munich p. 445or in The Hague, or with national patent offices in the contracting states.54 Unlike the EPC 1973, under which applications had to be in one of three official languages and the text of the patent had to be in that language, the EPC 2000 allows European patent applications to be filed in any language.55 If the application is not made in an official language of the EPO (English, German, or French), the applicant is given two months in which to translate the application into an official language.56

Applicants at the UK IPO and the EPO are faced with the choice of either making a ‘full application’ or alternatively of taking advantage of the facility that allows for ‘early filing’.57 A full application for a patent must contain a request for grant of a patent, a description of the invention, one or more claims, any drawings referred to in the description or the claims, and an abstract.58

In order to provide applicants with greater flexibility, the patent systems provide that instead of filing a full application, applicants are able to make an ‘early filing’.59 Early filing occurs where an applicant supplies an indication that a patent is sought, information identifying the applicant, and a description of the invention.60 Essentially, early filing provides applicants with a 12-month breathing space in which they can decide whether they wish to pursue a patent, decide whether they are able to carry out further experiments on the invention, look for investors, and consider the countries in which they wish to seek patents.61

The applicant must file the claims and abstract within 12 months of the early filing (the so-called ‘filing date’) if an early application is not to lapse.62 While early filing offers a breathing space ‘for completion of the formalities and the interim preservation of priority’, early filing was not intended ‘to provide a cover for making improvements in the disclosed invention by bringing in new material not covered by the disclosure whilst preserving for it the priority conferred by the original filing date’.63

4.3 Priority date of the application

The initial application is important in that it sets in play the sequence of steps that may ultimately result in the grant of the patent. Irrespective of whether the filing is an early filing or a full application, filing is also important since it establishes the ‘priority date’ of the patent. In the absence of a claim to an earlier date, the priority date is the filing date of the application.64 As we will see, the priority date is the date when the novelty, p. 446inventiveness, and other aspects of the invention are assessed. As such, it is often of critical importance for the validity of the patent. The priority date is of practical significance in several other ways. First, because novelty is assessed as of the priority date, once the date is established, an applicant is able to exploit their invention without fear of invalidating the patent. Second, applicants are able to use the priority date established by filing in the United Kingdom or EPO as the priority date for applications in other countries.

4.4 Preliminary examination and search

The next formal step in the process of grant is the preliminary examination and search.65 Once the full application has been filed (description, claims, and abstract) and the application fee paid (if any), the Comptroller will refer the application to preliminary examination. Once preliminary examination is over, the applicant must request a search.66

On preliminary examination, the application is examined to see whether it complies with certain formal requirements.67 These are that the application contains a request for grant, a description of the invention, one or more claims, any drawings referred to in the description or claim, and an abstract. In addition, the preliminary examination also ensures that the inventor(s) have been identified and that the application accords with other formalities (such as meeting the language requirements).68

Applicants are alerted to any problems that may have been identified in the preliminary examination in a report that is issued to them.69 Applicants are then given the opportunity to respond to the report or, if necessary, to amend their application to overcome the problems. If an applicant fails to change their application in a manner that satisfies the respective patent offices, the application may be refused.

The examiner or (at the EPO) the Search Division also carries out a limited search of the existing literature for relevant prior art—that is, information similar to the invention in question.70 The aim of the search is to identify the documents that may be used at the substantive examination stage when the application is examined for novelty and inventive step.71 The applicant is informed of the findings of the search by way of an examiner’s report or, as it is known at the EPO, the ‘European search report’.72

As well as identifying the documents that may be relied upon when the application is examined for novelty and inventive step, the application is also examined during the search stage to ensure that it relates to one invention or to a group of inventions that form a single inventive concept.73 That is, it is examined to ensure that it meets the requirement of ‘unity of invention’.74

p. 447Where two or more inventions are claimed in the one application, the application will fail to comply with the requirement of unity of invention unless it can be shown that the inventions form a single inventive concept.75 To do this, it is necessary to show that the inventions share the same ‘special technical features’. Special technical features are the features that define the contribution that each of the claimed inventions considered as a whole makes to the claimed advance over the prior art.76 There are at least two reasons for limiting patent applications to a single inventive concept. The first is that patent protection should not be available for two inventions for the price of one. The second, and more important, is that to allow more than one inventive concept to be included in a single patent is likely to undermine the administrative systems for locating, identifying, and searching for patents.

If it is found that the application contains more than one invention, the search is limited to the first invention that is set out in the claims.77 In the face of a finding that an application contains more than one patent, applicants may simply pursue a patent for one of the inventions. Alternatively, they may divide the initial application into two (or more) fresh applications. So long as additional fees are paid and no new material is added, they may use the priority date for the original application for the new applications.78

Along with the search report, the EPO also provides applicants with a report into the patentability of the invention. This is called the ‘Extended European Search Report’.79 The report is to help applicants decide whether to proceed to the substantive examination of the application. If the application decides to progress, the report becomes the first examination report.

4.5 Publication

The next stage in the grant process is the publication of the patent application. The application will be published and made available for public inspection 18 months from the date of filing.80 This process informs third parties that the application has been made. While third parties are not able to oppose the grant of a patent at this stage, they are able to make observations as to whether the patent should be granted.81

The documents published in the United Kingdom and the EPO include the description, claims, and drawings (if any) that have been filed. In the United Kingdom, the publication must include the original claims and any amendments that have been made to the claims, as well as any new claims. The UK IPO is also given power not to publish parts of the application that are offensive or disparaging,82 or which might be prejudicial to p. 448national security.83 At the EPO, the abstract and (where available) the search report are also published.84

Publication is important for two reasons. First, since the act of publication discloses the invention to the public, an unwanted publication may prevent applicants from relying on other ways of protecting their invention (such as confidentiality). Similarly, once a patent application has been published, the application can no longer be resubmitted (whereas if the application is withdrawn prior to publication, it is possible to make a later application).85 Second, if the patent proceeds to grant, the date of publication is the date from which the patentee is able to sue for infringement of the patent. This is on the condition that the act would have infringed both the patent as granted and the claims in the form in which they were published.86 In these circumstances, the patentee is only entitled to damages for infringement in the period between publication and grant.

As mentioned, a third party may respond to the publication of the application by submitting ‘observations’ to the patent office (at any time before grant).87 Such observations should focus on whether the invention is a patentable invention.88 Observations may be made by ‘any person’ and must be submitted in writing accompanied by appropriate reasons. The Comptroller of the UK IPO is instructed to consider the observations, whereas the EPO is merely required to communicate the observations to the proprietor, who, in turn, is permitted to comment on them. If the EPO wishes, it can take account of such observations when examining the application.89 In both fora, the party submitting the observations does not become party to the proceedings and so will not be asked to any hearing, nor be made to pay the costs of any proceedings.

4.6 Substantive examination

Once the requirements of preliminary examination and search have been satisfied, the next stage in the application process is the ‘substantive examination’.90 The applicant must request this within six months from the date of publication of the application or, at the EPO, the publication of the search report.91 In some situations, it is possible for an applicant to request that the examination process is accelerated or fast-tracked.92

p. 449The purpose of the substantive examination is to ascertain whether the application complies with the requirements of the Patents Act 1977 or, in the case of the EPO, the EPC 2000.93 Unlike the preliminary examination, which is mainly concerned with ensuring the presence of certain documents, during the substantive examination the application is scrutinized to ensure that it is valid in all aspects. In particular, the invention is examined to ensure that it does not consist of subject matter excluded from patentability—that is, that it is novel, involves an inventive step, and is industrially applicable. The substantive examination also ensures that the application has been sufficiently disclosed, that the claims are concise, and that they are supported by the description.

The substantive examination takes the form of a dialogue between the examiner and the applicant. When examining the application, the examiner should consider whether if the matter in issue were to be fully investigated at trial with the aid of expert evidence, it would be resolved in the applicant’s favour.94 After the examination has taken place, the examiner draws up a report, which outlines any objections to the application that have been identified. The report is supplied to the applicant, who is given an opportunity to comment on the objections, often in the hope of persuading the examiner that any doubts they have about the application are ill-founded. Alternatively, the applicant may respond to the objections by amending the patent application.95 If they think it necessary, the examiners may make or require further searches. Ultimately, the dialogue may lead in the United Kingdom to a hearing before the Senior Examiner or, at the EPO, before the full Examining Division of the EPO, and from there by way of appeal to the UK Patents Court or the Boards of Appeal of the EPO.96

4.7 Grant of the patent

If the respective patent office is not satisfied that the application satisfies the various requirements for grant, the application will be refused.97 If the respective patent office is satisfied that all of the necessary requirements have been satisfied, the patent will be granted.98 The decision to grant a patent does not take effect until the date on which it is mentioned in the Official Journal (for a UK patent) or the European Patent Bulletin (for a European patent).99 The protection afforded by a patent can last up to 20 years from the filing date.100 Renewal fees must be paid after four years.101 As we will see, the protection may extend beyond the 20-year period if a supplementary protection certificate is issued. The extent of protection conferred by a patent will be considered later.102

The date of the grant of a European patent is also the date of its transition from a European application to a bundle of separate national rights.103 With the exception of opposition proceedings, questions of validity and infringement are thereafter considered at a national level.104 Once granted, a European patent (UK) is given the same level of protection as those granted by the national patent office.105 As discussed earlier, it is no p. 450longer necessary to translate European patents in French or German into English within three months of grant at the EPO for them to be valid in the United Kingdom.106

4.8 Revocation

While the patent examination processes at the UK IPO and EPO are relatively rigorous, they are not conclusive. As such, it is possible for patents to be revoked after grant on a limited number of grounds. The grounds on which a patent may be revoked are set out in section 72 of the 1977 Act and Article 138 of the EPC 2000. These are that:


the invention is not a patentable invention;107


the patent was granted to a person who was not entitled to that patent;108


the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art;109 or


the material in the patent extends beyond the material in the application as filed (impermissible amendment).110

In addition, the UK IPO has limited power to revoke patents on its own initiative.111

One of the notable features of section 72 is that it says that ‘any person’ can apply to have a patent revoked. This has been taken to mean that there is no need for a person to have any interest, whether commercial or otherwise, in the outcome of proceedings to bring an action to revoke a patent.112 Unlike the position under the Patents Act 1949, a person who has no interest in the revocation is nevertheless entitled to apply to have the patent revoked. As Jacob J said: ‘Parliament purposively made patents vulnerable to attack from anyone.’113

4.9 Opposition proceedings at the EPO

While the grant of a European patent generally brings the European stage to an end, a central challenge can be made to the validity of the European patent in the nine-month period following grant of the patent.114 This process, known as ‘opposition’, has a number of advantages over leaving decisions about the validity of patents exclusively to national offices or courts. The most obvious advantage is cost: it is cheaper to launch or defend a single attack in one place than it is to engage in revocation proceedings in each of the countries in which the patent was issued.

p. 451Any person may file a notice of opposition. For a period, it was common for the proprietor to file oppositions in order to make post-grant amendments (which otherwise would have to be made at national level).115 This practice has now been curtailed.116 Opposition has to be filed within nine months from grant and must be based on one of three grounds.117 These are that:


the subject matter of the European patent is not patentable under Articles 52–57 of the EPC 2000;118


the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;119 or


the subject matter of the European patent extends beyond the content of the application as filed.120

Any opposition to a European patent is communicated to the patent proprietor, who may contest the opposition, make observations, and/or make amendments. The opposition proceedings will determine whether the patent should be revoked, maintained, or maintained in an amended form.121 If the proceedings result in revocation, the patent is deemed from its outset not to have had any of the effects specified in the EPC.122

5 Amendment

As we mentioned earlier, applicants are able to alter or amend their initial application both during and after grant of the patent. Prior to grant, applicants are able to amend their application where the examination reveals that the formal and substantive requirements are not complied with.123 In addition, applicants have a general power to amend their application at any time before a patent is granted.124 The ability to amend while the application is being processed is based on a belief that it would be unreasonable to expect applicants to be fully aware of all prior art at the point when they filed their application. This is especially the case given that the patent system provides for a search and examination at a later stage.

After a patent has been granted, the owner of a patent is also able to amend their patent.125 In addition, the Comptroller is able to instigate proceedings that may prompt such amendment.126 Under the EPC 1973, post-grant amendment only occurred in opposition p. 452proceedings;127 otherwise, such matters were for national law.128 Under the EPC 2000, however, patent owners are given a general power to revoke or limit European patents after grant at the EPO.129 Article 138(3) of the EPC 2000 also provides proprietors of European patents with the right to amend a patent in national proceedings relating to the patent’s validity. As we will see, this has ramifications for the way the judicial discretion to allow amendment is exercised. Under the procedures in the United Kingdom and EPO, the application to amend is advertised so that any person may oppose it within two months. If granted, the amendment is deemed to have taken effect from the grant of the patent. Following changes in 2004, a proprietor is able to amend their patent in any proceedings in which the validity of a patent may (rather than is) be put in issue.130 This has overcome the lacuna in the (old) legislative scheme, which made no provision in circumstances where there were infringement proceedings and amendment was desired, but validity was not in issue.131

5.1 Restrictions on amendment

In order to ensure that any amendments that are made comply with the overriding aims of the patent system,132 a number of restrictions are placed on an owner’s ability to amend their application/patent. The amended patent must comply with the requirements that have to be met by all patents. These include the requirements of subject matter, novelty, and inventive step. The amended claims must also be clear and concise, be supported by the description, and relate to one invention or group of inventions that are linked to form a single inventive concept.

There are a number of other provisions that restrict an owner’s ability to amend either the application or the patent. Perhaps the most important of these, with which we deal in Chapter 20, strike at the validity of the patent. Under these provisions, if the amendment introduces subject matter that was not in the original application or the amendment p. 453extends the scope of protection beyond the initial application, the amended patent is liable to be revoked.133 In this section, we focus on the situations in which validity is not at stake.

A post-trial application to amend a patent following revocation proceedings (in which the validity of the patent was at stake) will also be refused if it would lead to a second trial on validity (primarily because procedural fairness requires the parties to put forward their cases prior to trial).134 Another important factor that limits the owner’s ability to amend their application as filed arises from the fact that post-grant amendment is at the discretion of the Comptroller and the courts.135 The onus is on the patentee to establish that the amendment should be allowed.136 As a result of changes made in 2004, when deciding whether to allow an amendment, the courts and the Comptroller are directed to take account of ‘any relevant principles applicable’ under the EPC 2000.137

The courts have tended to use their discretion to deny amendments where the owner has not acted innocently. As Jacob J noted: ‘No patent office is there for the purpose of enabling people deliberately to impose bogus monopolies on the public.’138 There are two situations in which the discretion has been exercised against the patentee. The first is where a patentee knowingly and deliberately obtained claims that were wider than justified by what was invented.139 The second situation in which discretion has not been exercised is where knowing of the doubtful validity of the patent, a patentee has been slow to take action to amend.140 In Raleigh Cycle v. Miller,141 the House of Lords emphasized that a patentee who suspects that a patent is too widely drawn should amend it promptly. If they do not, the discretion to amend will be refused. Lord Normand explained that ‘the public interest is injured when invalid claims are persisted in so that inventors are illegitimately warned off an area ostensibly monopolised by the claims’.142 In this situation, patentees should either litigate or amend. However, if they choose to litigate, they should not be permitted to amend later. It is reasonable for a patentee to delay where they believed on reasonable grounds that the patent was valid.143

p. 454Another factor that regulates the way in which patents are amended arises from the fact that the courts may limit the damages that are awarded where an amended patent is infringed. There are two situations in which this may occur. If an amended application expands the claims beyond those that were reasonably to be expected from the application as it was initially published, the courts may limit the damages that are available to the patentee. The question of whether the inference is reasonable is decided objectively. As such, it does not matter what the defendant (subjectively) thought.144 Another factor that regulates the way patents are amended arises from the fact that when the court assesses damages prior to the date of the amendment it may take into account whether the specification was framed in good faith and with reasonable skill and knowledge.145 In practice, it is rare for the courts to find that patents were not framed in these terms.

5.2 Errors and clerical mistakes

Instead of amending a patent, a patentee may seek to have the patent altered to correct errors and clerical mistakes.146 Such corrections take effect retroactively. The ability to correct mistakes does not conflict with the general policy of protecting third parties, which forbids amendments that extend the patent beyond the scope of the application as filed. The reason for this is that ‘if the mistake was obvious, it cannot have misled’.147

If the request to correct a mistake concerns the description, claims, or drawings, the correction must be obvious. A correction will be obvious where it is immediately evident that nothing else would have been intended other than what is offered as the correction.148 If there are any doubts, a correction will not be allowed. A useful example of the limits imposed on a patentee’s ability to correct mistakes can be seen in PPG Industries Patent.149 In this case, it was said that faced with the proposition ‘2 + 2 = 5’, a person might readily presume that this was obviously incorrect and that, to correct the mistake, the ‘5’ should be changed to a ‘4’. However, as Dillon and Slade LJJ pointed out, since an alternative solution was to change one of the ‘2s to a 3’, in the absence of an indication as to where the mistake lay, the correction was not obvious within the meaning of the 1977 Act.

6 Reform

There are currently a number of different plans to reform patent procedure. These relate to the proposed unitary patent, the idea that patent applicants should be required to disclose any traditional knowledge that they are using in their patents, and suggestions that aim to improve patent examination.

6.1p. 455 Unitary patent system

As we saw in Chapter 14, there are plans under way to introduce a new unitary European patent, which will provide uniform protection across the 25 participating member states. While the new unitary patent which will be issued by the EPO will build upon existing procedures at the EPO, a number of changes will need to be made to the procedures by which patents are granted to allow this to happen.

6.2 Traditional knowledge and prior informed consent

In recent years, there has been increased attention given to the information that applicants have to disclose in their patent applications, particularly as a way of attempting to regulate the way in which indigenous knowledge is used by patentees. Discussions are taking place at the national, community, and international levels about the possibility of requiring inventors who draw upon or utilize genetic resources in the development of their inventions to disclose information in their patent application, such as the fact that they have prior informed consent to use the genetic resources. These discussions have been prompted by Article 15 of the Convention on Biological Diversity (CBD) (which recognizes equitable benefit sharing for access providers) and by Article 8(j) of the CBD which encourages the equitable sharing of benefits arising from the use of indigenous knowledge.150 The discussions have also been prompted by the growing concern about biopiracy and the general misuse of genetic resources in the biodiscovery process. The idea that applicants should be required to disclose information about their invention builds upon the idea that patent law has the potential to modify behaviour to promote good corporate and scientific conduct.151 The fact that an organization might not be able to patent products derived from genetic resources if it does not have the informed consent of the access provider in advance will act as a powerful incentive for such organizations to ensure that they have the necessary prior consent. As we mentioned earlier, debates are presently taking place over whether or not prior informed consent should be incorporated into patent law, and if so, how.152

This question has taken on a new significance following the adoption in 2012 of the Nagoya Protocol to the CBD (discussed earlier). This is because the Protocol requires parties to adopt legislative, administrative, or policy measures to monitor and enhance transparency about the utilization of genetic resources. This system includes the designation of checkpoints at which specified information regarding prior informed consent and mutually agreed terms may be required. It envisages the establishment of a standardized international system of certificates of compliance to act as evidence of prior informed consent and mutually agreed terms. Proposals for the inclusion in the Protocol of a disclosure-of-origin system requiring disclosure of information on prior informed consent and mutually agreed terms as a condition for the grant of patent rights were not included in the final text.

p. 456Discussions have been taking place within Europe for some time about the best way in which the goals of the CBD might be achieved.153 The issue of prior informed consent has already been recognized in Europe in the Biotechnology Directive, albeit only in the non-binding Recitals. In particular, Recital 27 encourages patent applications to include information on the geographical origin of biological material. In turn, Recital 55 requires member states to recognize Article 8(j) of the CBD when developing laws and regulations. To date, these have had minimal impact on member states.154

Early responses to the Convention were not positive. At one stage, the Commission suggested that there should be a debate over the unilateral development under EC law of ‘a self-standing obligation for patent applicants to disclose the origin of genetic resources’.155 This built upon existing requirements that encourage disclosure of information—namely, enabling disclosure, disclosure of relevant prior art for novelty examination, and the disclosure of the inventors.156 Initial proposals by the Commission were fairly modest. These provided that prior informed consent would not be treated as an additional or formal requirement for patentability; rather, the Commission suggested that failure to comply with the requirement for prior informed consent would carry consequences outside patent law. For example, it might prompt civil law claims for compensation or administrative sanctions (such as a fee for refusal to submit relevant information). The Commission was also looking at introducing a similar requirement for plant variety rights.157 Despite the modest nature of these proposals, they were not implemented.

Discussions about the way in which European law should deal with the question of access to genetic resources and related questions were reopened following the adoption of the Nagoya Protocol. In December 2012, the European Union published a draft legislative proposal for implementation of the Protocol. A modified version was adopted by the European Union on 16 April 2014.158 While the Union, has taken the lead in the development of legislation to implement the Protocol, it seems that this is not being done in the spirit in which the Protocol was drafted. Indeed, the original draft law was criticized for, among other things, primarily focusing on enabling economic utilization of genetic resources and traditional knowledge, and restricting its temporal scope to genetic resources and traditional knowledge accessed after the Protocol comes into force.159 Criticism has also been made of the law’s adoption of a very narrow definition of protectable traditional knowledge,160 which renders it almost meaningless as a tool for the protection of traditional knowledge rights. It has also been criticized for its failure to take into consideration customary law in both its preparation and redaction.161 As such, p. 457it seems that little will change in the way in which European law deals with traditional knowledge and access to genetic resources.

6.3 Patent examination

Another area where reform might be considered is in relation to examination. Here, there are two issues that are currently attracting interest. The first relates to the rigour with which examinations are conducted. Some argue that, given the fact that the number of patent applications vastly exceeds the number of commercially significant inventions, it is a waste of resources to examine every application in detail. The most efficient approach, it is said, is to perform a cursory examination of all applications and to review seriously the validity of any grant that has commercial significance.162 Because the validity of any commercially valuable patent will be subjected to a thorough review in any litigation, we should not bother to waste resources on pre-grant examination of patents. On the other hand, some argue that examination is important to protect the public—in particular, small traders—from threats of patent litigation on the basis of granted patents of dubious validity by well-resourced claimants. Essentially, the argument is that even invalid patents can be used to chill activity of legitimate traders or to extort settlements from risk-averse or poorly financed potential defendants. A related problem is said to be the activity of ‘patent trolls’—that is, commercial organizations that acquire patents specifically with a view to bringing actions in the hope of making money by forcing settlements.163 Although the causes and effects of patent trolling are controversial, some argue that the impact has been made much worse by the practices of some patent offices in granting patents that rigorous examination would have shown related to subjects that lacked novelty or were obvious.

The second issue that has arisen in relation to examination arises from increasing backlogs in the processing of applications. Filings at the EPO, for example, have more than quadrupled over the last 30 years to more than 296,000 in 2016, leaving substantial backlogs. As a result of a series of controversial ‘efficiency’ reforms, the EPO granted nearly 96,000 patents in 2016; a staggering increase of 40 per cent over 2015. While this has eased the pressure on the examination backlog, it has triggered other issues, one of which is a concern about the quality of the patents that have been granted.164


  • 1 G. Myers, ‘From Discovery to Invention: The Writing and Re-writing of Two Patents’ (1995) 25 SSS 57, 59.

  • 2 Roland Berger Market Research on behalf of the EPO, Study on the Cost of Patenting in Europe (2004); EPO, ‘Cost of Patenting in Europe’ (1995) 26 IIC 650; M. Bednarek, ‘Planning a Global Patent Strategy: Where to Get the Most “Bang for Your Buck”’ (1995) 77 JPTOS 381; S. Helfgott, ‘Why Must Filing in Europe Be So Costly?’ (1994) 76 JPTOS 787.

  • 3 Commission Staff Working Paper, Impact Assessment (13 April 2012), SEC(2011) 482 final, 36.

  • 4 There may be a danger of another person patenting the invention. This has occasionally prompted defensive patenting, which, at one time, prompted a third of all applications in the United States: W. Davis (1947) 12 L & CP 796, 799–800.

  • 5 On the trade secret/patenting decision, see D. Munson, ‘The PatentTrade Secret Decision: An Industrial Perspective’ (1996) 78 JPTOS 689.

  • 6 See D. Van Zyl Smit, ‘Professional Patent Agents and the Development of the English Patent System’ (1985) 13 Int J Sociol L 79; H. Dutton, The Patent System and Inventive Activity during the Industrial Revolution 1750–1852 (1984), ch. 5; F. Kittel, ‘Register of Patent Agents: A Historical Review’ (1986–87) 16 CIPAJ 195.

  • 7 See EPC 2000, Arts 133–134a; L. Osterborg, ‘The European Patent Attorney: A New Profession’ (1994) 25 IIC 313.

  • 8 Applications to the EPO and UK IPO are alternatives, so a patentee cannot have patents via both mechanisms. To prevent this, PA 1977, s. 73(2), requires the Comptroller to revoke a UK patent where there is a European patent (UK) for the same invention, having the same priority date, which was applied for by the same applicant. Before revocation, the patentee is given an opportunity to justify holding two patents: PA 1977, s. 73(3), amended by CDPA 1988, Sch. 5, para. 19.

  • 9 There are four routes available to get a patent for the United Kingdom: directly to the UK IPO; indirectly to the UK IPO via the PCT; directly to the EPO; or indirectly to the EPO via the PCT. See AstraZeneca/Priorities from India, G 2/02 and G 3/02 [2004] OJ EPO 483 (not possible to claim priority for a European patent from first publication in India by way of TRIPS, because India was not a party to PCT).

  • 10 While translation costs have been a significant consideration in the decision whether to file for a European patent or a national patent, this became less important after 1 May 2008, when the London Agreement became operational.

  • 11 Early versions of the EPC proposed a two-stage approach: a provisional grant, which was subject only to formal examination and novelty report, followed by the possibility of confirmation as a final European patent within five years at the behest of applicant or a third party. See G. Oudemans, The Draft European Patent Convention (1963), 53–60, 164–76.

  • 12 There is no examination in Belgium, the Netherlands, Switzerland, or Ireland. On the latter, see Rajan v. Minister for Industry and Commerce [1988] 14 FSR 9; A. Parkes, ‘The Irish Patent Act 1992’ (1991–92) 21 CIPAJ 426.

  • 13 For example, the French Patent Office will not refuse on grounds of lack of inventive step: Law of 2 January 1968, Art. 16; J. Schmidt-Szalewski, ‘Non-obviousness as a Requirement of Patentability in French Law’ (1992) 23 IIC 725. For Germany, see E. Fischer, ‘The New German Patent Procedure: From the View of a Corporate Patent Department’ (1971) 2 IIC 277.

  • 14 EPC 2000, Arts 99–101.

  • 15 See Chapter 14, section 4.6.1, pp. 416–17; D. Perrott, ‘The PCT in Use’ [1982] EIPR 67; B. Bartels, ‘Patent Cooperation Treaty: The Advantages for the Applicant in the UK’ (1983) 13 CIPAJ 3; J. Cartiglia, ‘The Patent Cooperation Treaty: A Rational Approach to International Patent Filing’ (1994) 76 JPTOS 261; J. Anglehart, ‘Extending the International Phase of PCT Applications’ (1995) 77 JPTOS 101.

  • 16 This was signed in 1970 and came into operation from 1978. As of 1 May 2018, there were 152 contracting parties. PA 1977, s. 89, gives statutory effect to some of the Treaty’s provisions.

  • 17 PCT, Art. 3.

  • 18 The receiving office retains one copy of the application, transmits another to the WIPO, and sends a third to an international search authority (ISA). The receiving office checks to ensure that a filing date should be granted (Art. 14) and that appropriate fees have been paid. The ISA conducts a search and reports its findings to the WIPO: PCT, Art. 15. The application can then be amended within two months—PCT, Art. 19; PCT Regs, r. 46—and it and the search report are then communicated to the patent offices of the designated states: PCT, Art. 20. The application must be published after the expiry of 18 months from the priority date: PCT, Art. 21(2).

  • 19 PCT Regs, rr 4–8.

  • 20 On the need to correct failure to designate during the international phase, see Vapocure Technologies Application [1990] RPC 1.

  • 21 PCT Regs, r. 53.7.

  • 22 There are 22 ISAs and international preliminary examining authorities (IPEAs).

  • 23 At 30 months after the priority date, the national stage begins, by formally initiating prosecution in the designated states, filing translations, and paying fees as necessary.

  • 24 PCT, Ch. II; PCT, Art. 22 (provides for a minimum period of 30 months, save in respects of a handful of countries who derogated from this requirement).

  • 25 PCT, Art. 35(2).

  • 26 PCT, Art. 33.

  • 27 The Strasbourg Agreement concerning International Patent Classification 1971 (which the United Kingdom joined on 7 October 1975) has led to a degree of uniformity in the presentation of patent documents. See A. Wittmann, R. Schiffels, and M. Hill, Patent Documentation (1979), 124–34.

  • 28 On 16 March 2013, the United States changed from first-to-invent to first-to-file: The America Invents Act of 2011 (Leahy-Smith Act, or AIA), Public Law 112-29.

  • 29 The preference for a first-to-file system, however, does not avoid all legal investigations into who was the ‘inventor’. This is because inventors are entitled to be named on the patent, even if they are not the applicant: Paris Convention 4ter PA 1977, s. 13; EPC 2000, Arts 62, 81. If the inventor is not designated, the application is treated as having been withdrawn: PA 1977, s. 13(2); EPC 2000, Art. 90(3); EPC 2000 Regs, r. 57. However, there is no investigation into the correctness of the designation. Where the designated inventor and the applicant are different people, the practice is to inform the inventor of the application, thereby enabling the inventor to raise any objection that they may have. Procedures are also available for inventors to be omitted from published versions of the application if they wish: EPC 2000 Regs, r. 20(1).

  • 30 T. Nicolai, ‘First-to-File vs First-to-Invent: A Comparative Study Based on German and United States Patent Law’ (1972) 3 IIC 103; T. Roberts, ‘Paper, Scissors, Stone’ [1998] EIPR 89.

  • 31 For arguments for first-to-file, see Anon., ‘Prior Art in Patent Law’ (1959) 73 Harv L Rev 369, 380.

  • 32 See section 5, p. 451, and Chapter 20, section 4, p. 614.

  • 33 G. Smith, ‘Why Examine?’ (1982) 12 CIPAJ 9.

  • 34 (1864) 29 PP 321; (1871) 10 PP 603; (1872) 11 PP 395.

  • 35 The most common criticism of examination today is delay. Many patent systems operate with time limits in an attempt to reduce such problems. In the United Kingdom, examination should occur not later than four years and six months from priority; PA 1977, s. 20; PR 2007, r. 30.

  • 36 Patents Act 1902. The Office began to search British patents in 1905.

  • 37 Report of the Committee Appointed by the Board of Trade to Inquire into the Working of the Patents Act on Certain Specified Questions (Cd. 506) (1901) 23 PP 59, 602, [6]‌ (p. 4 of the report) (indicating that 42 per cent of the sample from the previous three years was wholly or partially invalid).

  • 38 EPC 2000, Art. 113, gives an applicant whose patent has been refused an opportunity to comment. This is of fundamental importance for ensuring a fair procedure and reflects the generally accepted notion of a right to be heard. The examiner must give the grounds for refusal—that is, the essential reasoning—sufficient for the case to be properly understood. See NEC/Opportunity to comment, T 951/92 [1996] EPOR 371, [1996] OJ EPO 53.

  • 39 Electromagnetic Geoservices v. Petroleum Geo-Services [2016] EWHC 881 (Pat), [6]–[10] (discussing the advantages of having a neutral scientific adviser to assist the court in understanding the technology in issue).

  • 40 Prior to the 1977 Act, examination was for patentability and novelty only. Examination for inventive step was introduced by the 1977 Act.

  • 41 G. Aggus, ‘The Equities of Amendment’ (1980–81) 10 CIPAJ 389. For the history of reissues in the United States, see K. Dood, ‘Pursuing the Essence of Inventions: Reissuing Patents in the 19th Century’ (1991) 32 Technol & Cult 999. For the history of ‘intervening rights’, see P. Federico, ‘Intervening Rights in Patent Re-issues’ (1962) 30 Geo Wash L Rev 603.

  • 42 PA 1977, s. 63(1).

  • 43 Van der Lely v. Bamfords [1964] RPC 54, 73–4 (Pearson LJ).

  • 44 PA 1977, s. 7(1); EPC 2000, Art. 58; cf. Paris, Art. 2(1), which requires members to provide the same protection as nationals receive to nationals of any other country in the Union.

  • 45 See Chapter 21.

  • 46 Under EPC 2000, Art. 60, the right to a European patent belongs to the inventor or his or her successor in title. The rights of employees depend on the law of the state in which they are mainly employed or, if that cannot be determined, that in which the employer has its place of business. See Chapter 21, section 3.2, pp. 629–35.

  • 47 EPC 2000, Art. 60(3). See G. Le Tallec, ‘The Protocol on Jurisdiction and the Recognition of Decisions in Respect of the Right to the Grant of a European Patent’ (1985) 16 IIC 318; Kirin-Amgen/Erythropoietin, T 412/93 [1995] EPOR 629 (questions of entitlement could not be considered in opposition proceedings). For discussion of problems that arise when validity proceedings run concurrently at the EPO and UK courts, see P. England, ‘Parallel Patent Proceedings between the European Patent Office and UK Courts’ (2015) 10 JIPLP 509. On the criteria used to decide when national proceedings should be stayed, see IP Com v. HTC Europe [2013] EWCA Civ 1496, [68]; Acatvis Group v. Pharmacia [2014] EWHC 2265 (Pat).

  • 48 Three courses of action are available: prosecution of the application in place of the applicant; filing of a new application; or a request that the application be refused: EPC 2000, Art. 61(1). See Latchways/Unlawful applicant, G 3/92 [1995] EPOR 141.

  • 49 PA 1977, s. 7(4).

  • 50 PA 1977, ss 8 and 12. See T. Gold, ‘Entitlement Disputes: A Case Review’ [1990] EIPR 382.

  • 51 PA 1977, s. 8(3).

  • 52 PA 1977, s. 37. See James Industries Patent [1987] RPC 235 (applicant’s claim for share of patent for net beds rejected in absence of contract evincing clear understanding that patent rights were to be shared); Nippon [1987] RPC 120; Norris’ Patent [1988] RPC 159.

  • 53 PA Rules, r. 14(1).

  • 54 EPC 2000, Art. 75(1)(2). On designation costs, see O. Bossung, ‘The Return of European Patent Law to the European Union’ (1996) 27 IIC 287, 296. On the international status, see Lenzing [1997] RPC 245.

  • 55 EPC 2000, Art. 14(2); EPC 2000 Regs, r. 40.

  • 56 EPC 2000 Regs, rr 6(1), 58.

  • 57 Patent filing fees at the UK IPO were abolished from 1 October 2000.

  • 58 PA 1977, s. 14(2); EPC 2000, Art. 78(1); PCT, Arts 3–7; PCT Regs, rr 3–8, 10, 11, 13, and 32; A. C. Edwards v. Acme Signs [1990] RPC 621, 642. See also Xerox/Amendments, T 133/85 [1988] OJ EPO 441, 448. Patent applications must also designate the inventor: PA 1977, s. 13; PA Rules, r. 10; EPC 2000, Art. 81; EPC 2000 Regs, rr 19–21; EPO Guidelines, A–III, 1.

  • 59 PA 1977, s. 15(1); EPC 2000, Art. 80; EPC 2000 Regs, r. 49; PCT, Arts 11 and 14(2); PCT Regs, rr 7, 14.1(b), 15.4(a), 16, 20.2(a)(iii).

  • 60 It is no longer necessary for applications to the EPO to include one or more claims: EPC 2000 Regs, r. 40(1); see also EPC 2000 Regs, r. 57(c); PCT, Art. 4(ii).

  • 61 To clear up application backlogs and to speed up clearance times, the Intellectual Property Act 2014 allows the UK IPO to share information on unpublished patent applications: IP Act 2014, s. 18, which introduces the new PA 1977, s. 118(3)(aa), (3A)–(3C).

  • 62 See Antiphon’s Application [1984] RPC 1, 9. On late submission of drawings, see VEB Kombinat Walzlager [1987] RPC 405.

  • 63 Asahi Kaei Kogyo [1991] RPC 485, 526 (HL) (Lord Oliver).

  • 64 PA 1977, s. 5; PA Rules, r. 6; EPC 2000, Arts 87–9. An application for which a date of filing has been accorded under the PCT is treated as an application for a patent under the 1977 Act.

  • 65 PA 1977, ss 15A and 17; PA Rules, rr 23, 27; EPC 2000, Art. 90;PCT, Arts 14, 15, 17, and 18; PCT Regs, rr 26–30, 33, 37, 38, 40, and 43.

  • 66 PA 1977, ss 15A(1) and 17(1). Under the EPC 2000, the search and examination stages of the application process were combined.

  • 67 The receiving office retains one copy of the application, transmits another to the WIPO, and sends a third to an ISA. The receiving office checks to ensure that a filing date should be granted and that appropriate fees have been paid: EPC 2000, Art. 90.

  • 68 PA Rules, r. 25; EPC 2000 Regs, r. 40, 55; EPO Guidelines, A–II, [4].

  • 69 PA Rules, r. 29; EPC 2000 Regs, rr 57.

  • 70 PA 1977, s. 17(1); EPC 2000, Art. 92; EPC 2000 Regs, rr 61–4.

  • 71 PA 1977, s. 17(4)(5); EPC 2000, Art. 92; EPC 2000 Regs, r. 61(1).

  • 72 PA 1977, s. 17(5); EPC 2000 Regs, r. 65.

  • 73 PA 1977, ss 14(5)(d) and (6), 17(6); PA Rules, r. 16; EPC 2000, Art. 82; EPC 2000 Regs, r. 64.

  • 74 Lack of unity is not a ground for revocation: PA 1977, s. 26; PA Rules, r. 16. There is no EPC equivalent, but see EPC 2000, Art. 82.

  • 75 PA 1977, s. 14(5)(d) and (6); PA Rules, r. 16; EPC 2000, Art. 82; EPC 2000 Regs, r. 64.

  • 76 PA Rules, r. 16(2); EPC 2000 Regs, r. 44. Technical features ‘are the physical features which are essential to the invention’; with respect to a product, these are ‘the physical parameters of the entity’; in relation to a process, the technical features are ‘the physical steps which define such activity’: Mobil Oil/Friction Reducing additive, G 2/88 [1990] EPOR 73, [1990] OJ EPO 93, 100. See also May & Baker v. Boots [1950] 67 RPC 23, 50; Biogen v. Medeva [1995] RPC 25, 92–3; Bayer/Benzyl esters, T 110/82 [1983] OJ EPO 274; Siemens/Unity, G 1/91 [1992] OJ EPO 253.

  • 77 Hollister’s Application [1983] RPC 10, Non-payment of further search fees, G 2/92 [1993] OJ EPO 591.

  • 78 Failure to meet an objection of lack of unity is frequently remedied by the making of divisional applications: EPC 2000 Regs, r. 36; PA 1977, s. 18(3); PA Rules, r. 31(4)(b)(i).

  • 79 EPC 2002, r. 62.

  • 80 PA 1977, s. 16; PA Rules, r. 26; EPC 2000, Art. 93; EPC 2000 Regs, rr 67–70; PCT, Arts 21, 29; PCT Regs, rr 9.1, 48.

  • 81 PA 1977, s. 21; PA Rules, r. 33; EPC 2000, Art. 115; EPC 2000 Regs, r. 114.

  • 82 PA 1977, s. 16(2); PA Rules, r. 33.

  • 83 PA 1977, s. 22 (no EPC 2000 equivalent). PA 1977, s. 23, provides that British residents who file an application (whether as an agent or applicant) for military technology or inventions which might prejudice national security or public safety, must file in the UK Intellectual Property Office first (and wait six weeks) or seek the Comptroller’s permission to file abroad (including the EPO). If it does cause such prejudice then directions may be imposed to restrict publication or overseas filings.

  • 84 EPC 2000 Regs, r. 68(1).

  • 85 EPC 2000, Art. 128, specifies that the application prior to this point is confidential and may be viewed by third parties only with the consent of the applicant.

  • 86 PA 1977, s. 69(2); EPC 2000, Art. 67; PCT, Art. 29.

  • 87 PA 1977, s. 21; EPC 2000, Art. 115.

  • 88 That is, matters covered in PA 1977, ss 21(1), 1; EPC 2000, Arts 115, 52.

  • 89 EPC 2000, Art. 114.

  • 90 PA 1977, s. 18(1); PA Rules, rr 28, 29; EPC 2000, Art. 94; EPC 2000 Regs, rr 70, 71. Under the PCT, the national stage begins 30 months after the priority date by formally initiating prosecution in the designated states, filing translations, and paying fees as necessary. Instead of going straight into the national stage, an applicant may ask for an international preliminary examination by an examining authority: PCT, Art. 31. This is dealt with in Ch. II of the Convention. The IPEA establishes an international preliminary examination report indicating whether the invention appears to meet international standards of novelty, inventive step, or industrial applicability: PCT, Art. 35(2). Such examination is merely advisory and not binding on designated countries: PCT, Art. 33.

  • 91 PA Rules, r. 28(2); EPC 2000 Regs, r. 70(1). This distinction is not of great significance given that, in the United Kingdom, an applicant should receive the search report before the date of ‘early’ publication.

  • 92 In the United Kingdom, see Relaxation of requirements for PCT (UK) Fast Track Practice Notice (8 June 2012). For the EPO, see, e.g., ‘Patent Prosecution Highway pilot programme between the Trilateral Offices based on PCT work products’ (2012) OJ EPO 89.

  • 93 Substantive examinations of EPO applications are carried out in Munich, The Hague, and Berlin.

  • 94 Blacklight Power v. The Comptroller-General of Patents [2009] RPC 173.

  • 95 PA 1977, s. 18(3); EPC 2000, Art. 94(3)(4); EPC 2000 Regs, r. 71; PCT, Ch. II (preliminary examination).

  • 96 PA 1977, s. 97(1); EPC 2000, Arts 106–112a; EPC 2000 Regs, rr 90–96. EPC 2000, Art 112a, provides parties with the ability to petition for review by the EBA in limited circumstances.

  • 97 PA 1977, s. 18(3); EPC 2000, Art. 97(2); EPO Guidelines, C–VI, [14].

  • 98 PA 1977, s. 18(4); EPC 2000, Art. 97(1).

  • 99 PA 1977, s. 24(1); EPC 2000, Art. 97(3).

  • 100 PA 1977, s. 25; EPC 2000, Art. 63(1).

  • 101 The fees increase over time to ensure that the Registry does not become cluttered with useless patents.

  • 102 See Chapter 22.

  • 103 EPC 2000, Art. 64(1); PA 1977, s. 77.

  • 104 EPC 2000, Art. 64(3).

  • 105 PA 1977, s. 77(1)(a).

  • 106 See Chapter 14, section 4.1.2, pp. 403–5; EPC 2000, Art. 97(1), EPC 2000 Regs, r. 71(3), (7). Under PCT, Art. 3, an international application can be made to a patent office of one of the contracting states, which is termed the ‘receiving office’. Rules 4–8 of the PCT Regs set out the contents of a filing, i.e. a request, a description, at least one claim, drawings where appropriate, and an abstract. The application must designate the states in which protection is sought.

  • 107 PA 1977, s. 72(1)(a); EPC 2000, Arts 138(1)(a), 52–7.

  • 108 PA 1977, s. 72(1)(b); EPC 2000, Art. 138(1)(e).

  • 109 PA 1977, s. 72(1)(c); EPC 2000, Art. 138(1)(b).

  • 110 PA 1977, s. 72(1)(d)–(e); EPC 2000, Art. 138(1)(c)–(d).

  • 111 PA 1977, s. 73.

  • 112 Cairnstores v. Aktiebolaget Hassle [2002] FSR 564 (there were circumstances in which the commencement of revocation proceedings might amount to an abuse of process). See also Indupack Genentech/Third party opposition, G 3/97 [2000] EPOR 8.

  • 113 Oystertec’s Patent [2003] RPC 559, [15]; cf. PA 1949, ss 14 and 32 (an applicant for revocation had to be a ‘person interested’).

  • 114 EPC 2000, Art. 99. See generally Bossung, ‘The Return of European Patent Law to the European Union’ (1996) 27 IIC 287, 296.

  • 115 Mobil Oil/Opposition by proprietor, G 1/84 [1985] OJ EPO 299, [1986] EPOR 39; Mobil/Admissibility, T 550/88 [1992] OJ EPO 117, [1990] EPOR 391.

  • 116 Peugeot & Citroen/Opposition by patent proprietor, G 9/93 [1995] EPOR 260.

  • 117 EPC 2000, Art. 100. The procedure for opposition is set out in EPC 2000 Regs, rr 75–89.

  • 118 EPC 2000, Art. 100(a).

  • 119 EPC 2000, Arts 100(b), 83.

  • 120 EPC 2000, Arts 100(c), 123(2). On the question of whether it is possible to amend a claim by way of a disclaimer under EPC 2000, Art. 123(2), see (identical decisions) PPG/Disclaimer, G 1/03 [2004] OJ EPO 413 and Genetic Systems/Disclaimer, G 2/03 [2004] OJ EPO 448.

  • 121 EPC 2000, Art. 101.

  • 122 EPC 2000, Art. 68.

  • 123 PA 1977, s. 18(3); PA Rules, r. 31; EPC 2000, Art. 123(1); EPC 2000 Regs, r. 137; PCT, Ch. II (preliminary examination).

  • 124 PA 1977, s. 19(1); PA Rules, r. 3; EPC 2000, Art. 123(1); PCT, Arts 19 and 34(2)(b); PCT Regs, rr 46 and 66.

  • 125 PA 1977, ss 27(1), 72, 75; EPC 2000, Art. 105a–c.

  • 126 PA 1977, s. 73.

  • 127 Advanced Semiconductor Products/Limited Feature, G 1/93 [1994] OJ EPO 169. Amendments in opposition proceedings are considered only where they are appropriate and necessary—i.e. that they can fairly be said to arise out of the grounds of opposition: Mobil/Admissibility, T 550/88 [1992] OJ EPO 117, [1990] EPOR 391, 397. For a discussion of the situations in which amended claims will be allowed at the EPO, see Minnesota Mining and Manufacturing Company, G 1/99 [2001] OJ EPO 381 (EBA); Lubrizol Corporation, T 525/99 [2003] OJ EPO 452, 457–8.

  • 128 Mobil/Admissibility, T 550/88 [1992] OJ EPO 117.

  • 129 EPC 2000, Art. 105a–c. See also Art. 1, items 51, 62, of the Act Revising the Convention on the Grant of European Patents (Munich) (29 November 2000) MR/3/00 Rev 1e (the ‘EPC Revision Act’).

  • 130 PA 1977, s. 75(1) (amended by Patents Act 2004, Sch. 2, para. 19).

  • 131 Norling v. Eez Away [1997] RPC 160, 165: ‘All this suggests that the sooner the whole procedure of amendment of a patent is rethought and provided for by an amended statute and rules the better. Preferably, so far as European patents are concerned, there should be one, effective and cheap, procedure.’ In Boston Scientific v. Palmaz [2000] RPC 631, cited at [2000] EIPR N–115, the Court of Appeal held that if the EPO had amended a patent ‘after judgment in UK patent litigation, but before an appeal of that judgment is heard, the Court of Appeal must consider the patent as amended’.

  • 132 R. Krasser, ‘Possibilities of Amendment of Patent Claims during the Examination Procedure’ (1992) 23 IIC 467, 471; Gunzel, Staking Your Claim: Claiming Options and Disclosure Requirements in European Patent Practice (1990), 29; A. Bubb, ‘Implied Added Subject Matter: A Practitioner’s View of History’ (1991) CIPAJ 444.

  • 133 PA 1977, ss 72(1)(d) and (e), 76; EPC 2000, Art. 138(1)(c).

  • 134 Nokia v. IPCom [2011] EWCA Civ 6. See D. Wilson and A. Moir, ‘Court of Appeal Warns Patent Holders Defending Revocation Proceedings to “Put up in Time or Shut up” if They Wish to Propose Amendments in Their Patent Claims’ [2011] EIPR 326.

  • 135 PA 1977, ss 27(1), 75(1); EPC 2000, Art 105a. The Court of Appeal confirmed the general discretion of the courts to refuse post-grant amendments in the public interest under PA 1977, s. 75, in Kimberly-Clark Worldwide v. Procter & Gamble [2000] RPC 422, 435. In so doing, it overturned Laddie J’s decision in the Patents Court in Kimberly-Clark Worldwide v. Procter & Gamble [2000] RPC 424; cf. Palmaz’s European Patent (UK) [1999] RPC 47, 63–5, which distinguished Laddie J on this point. For the application of the CA decision, see Oxford Gene Technology v. Affymetrix (No. 2) [2001] RPC 310 (CA). See generally P. Cliffe, ‘A Sorry Case of Making Amends’ [2002] EIPR 277.

  • 136 SKF v. Evans Medical [1989] FSR 561, 569; Chevron Research Company’s Patent [1970] RPC 580.

  • 137 PA 1977, s. 75(5).

  • 138 Richardson-Vicks Patent [1995] RPC 561. See also Hallen v. Brabantia [1990] FSR 134, 149; Kimberly-Clark Worldwide v. Procter & Gamble [2000] RPC 422 (CA), 435.

  • 139 ICI (Whyte’s) Patent [1978] RPC 11. In Richardson-Vicks Patent [1995] RPC 561, 568, Jacob J observed that there was little EPO jurisprudence as regards post-grant amendment in opposition proceedings. Nonetheless, he assumed that if it were to be shown that an applicant had deliberately sought to patent an unjustifiably wide claim, the EPO would refuse leave to amend. Beyond this, however, Jacob J predicted that the EPO might allow a patent to be amended. Consequently, Jacob J held that, for purposes of consistency, nothing short of really blameworthy conduct by a patentee should act as bar to amendment in the United Kingdom. See also Kimberly-Clark Worldwide v. Procter & Gamble (No. 2) [2001] FSR 339, 342–3.

  • 140 SKF v. Evans [1989] FSR 561, 577.

  • 141 (1950) 67 RPC 226.

  • 142 Ibid., 230.

  • 143 On occasion, the courts have suggested that delay is more justified where the patentee operates outside the United Kingdom: Bristol Myers Company v. Manon Freres [1973] RPC 836, 857; Mabuchi Motor KK’s Patent [1996] RPC 387 (not blameworthy for delay when involved in worldwide litigation in which the United Kingdom was not an important country).

  • 144 Unilever v. Chefaro [1994] RPC 567, 592.

  • 145 PA 1977, s. 62(3). PA 1977, s. 62(3), does not apply to an account of profits: Codex Corporation v. Racal Milgo [1983] RPC 369 (CA).

  • 146 PA 1977, s. 117(1); PA Rules, r. 105; EPC 2000 Regs, r. 139.

  • 147 Holtite v. Jost [1979] RPC 81, 91 (Lord Diplock). In Correction under Rule 88, G3/89 [1993] EPOR 376, it was held by the EBA that, as a matter of construction of the EPC, the correction must not extend protection contrary to EPC 1973, Art. 123(2) (which is the same as EPC 2000, Art. 123(2)).

  • 148 This was the position under PA 1949, s. 31(1): Holtite v. Jost [1979] RPC 81.

  • 149 [1987] RPC 469, 478, 483.

  • 150 See also the Bonn Guidelines on Access and Benefit Sharing, adopted at the Sixth Conference of the Parties to the CBD (The Hague, 2002). These are voluntary provisions that act as a guide to the implementation of CBD, Arts 1, 8(j), 10(c), 15, 16, and 19.

  • 151 See B. Sherman, ‘Regulating Access and Use of Genetic Resources: Intellectual Property Law and Biodiscovery’ [2003] EIPR 301.

  • 152 Particularly at the CBD, the TRIPS Council, and at WIPO. See Chapter 14, section 4.6.3, pp. 419–21.

  • 153 See EC Thematic Report on Access and Benefit-Sharing, submitted to CBD Secretariat in October 2002, available online at

  • 154 For discussion, see G. van Overwalle, ‘Belgium Goes its Own Way on Biodiversity and Patents’ [2002] EIPR 233.

  • 155 Communication from the Commission to the European Parliament and the Council, The Implementation by the EC of the ‘Bonn Guidelines’ on Access to Genetic Resources and Benefit-Sharing under the Convention on Biological Diversity (19 December 2003) COM/2003/0821 final.

  • 156 Ibid., 17. The proposal also builds on a Concept Paper submitted by the EC to the TRIPS Council in October 2003 on the relationship between TRIPS and the CBD.

  • 157 Ibid., 18.

  • 158 Regulation (EU) 511/2014 of 16 April 2014 on compliance measures for uses from the Nagoya Protocol on Access to Genetic Resources.

  • 159 L. Mulenkei and J. von Braun, ‘Open Letter to the Committee on Environment, Public Health and Food Safety from Individuals and Organizations that Work with or Represent Indigenous Peoples and Local Communities’ (2 July 2013).

  • 160 Ibid.

  • 161 B. Tobin, ‘Bridging the Nagoya Compliance Gap: The Fundamental Role of Customary Law in Protection of Indigenous Peoples’ Resource and Knowledge Rights’ (2013) 9 LEAD 144.

  • 162 M. Lemley, ‘Rational Ignorance at the Patent Office’ (2001) 95 Nw UL Rev 1495; A. Jaffe and J. Lerner, Innovation and its Discontents (2007), ch. 7.

  • 163 For a discussion of the use of remedies to deal with the behaviour of trolls, see M. Lemley and C. Shapiro, ‘Patent Holdup and Royalty Stacking’ (2007) 85 Texas L Rev 1991; J. Golden, ‘“Patent Trolls” and Patent Remedies’ (2007) 85 Texas L Rev 2111.

  • 164 D. Smyth, ‘Something is Rotten in the State of the EPO’ (2016) 11 JIPLP 393.

© L. Bently, B. Sherman, D. Gangjee, P. Johnson 2018