Boutique IP Law Firm Specializing in Patents, Trademarks, Copyrights and High-tech

Amending a Patent Specification and Claims to a Registered Patent

Genentech v Celltrion (Cancellation Request No.122910-Objection to Specification Amendment)

25 December, 2012,

Dr. Yonatan Drori

The case at hand was brought by Celltrion, Inc. and Perrigo Israel Pharmaceutical, Ltd. against Genentech, Inc., owner of the disputed patent, regarding Patent Cancellation Request No. 122910. The case was brought before Yearah Shoshani-Caspi, arbiter, of the Israeli Patent and Trademark Registrar's Office.

The Facts: Opposition to a request for a specification amendment of a registered patent. The amendment request included the amendment of claims no. 25,26,45,46, the deletion of claim 44, as well as the addition of claims 47-51. The objecting parties objected partially to the amendment in regards to the addition of new claims.

The Result: The objection was accepted regarding the new claims 47-51. The Patent Owner shall compensate the Objectors in the amount of 10,000 NIS for expenses.

Amending Patent Specification for the Purpose of Clarification, Correction of an Error, or in Order to Restrict the Scope of Claims

Provision 65: Since the law deals with registered patents, the legislator has limited the amending ability of the owner. An amendment may take place in one of 3 occasions: a clarification, a correction of an error, or the restriction of the scope of claims.

The fact that the legislator chose the wording 'restriction of the claims of the patent' begs the interpretation that the amendment must reduce the scope of protection awarded to the original request. For if the intent of the legislator was to allow the scope of protection to remain unchanged, why would the term 'restriction of the claims' be used?

Provision 66: As aforementioned, the request for amendment must meet another requirement detailed by the legislator. According to this requirement the owner of a patent may not expand the scope of protection as detailed in the specification or to add any detail to the specification which was not included in the original specification. This requirement will be examined following the examination of the requirements of provision 65.

The Two Step Examination for the Amendment of a Patent Specification

We therefore have a two-step examination process, where both examinations need to be passed in order to be able to amend a patent.

For clarification, there may be a situation where a request to amend a patent passes the examination process of provision 65 but not of provision 66. This may happen, for example, in a situation where the addition of an aspect of a claim is requested in order to limit the scope of protection it awards but is not mentioned in any other part of the request (such as in the description, the drawings, or the claims). See also Opposition to Amendment Request No. 101537 Unipharm v Merk&Co. from April 30, 2003, where it was ruled that an amendment of an existing claim by adding an aspect which exists in the description chapter of the patent request, meets the requirements of provisions 65-66.

Main Legal Issues Discussed in the Case: A request for amendment of claims in a registered patent is the right of a patent owner as well a right of a patent requestor, according to the Israeli Patent Act of 1967. The specification of the patent includes a description of the patent, drawings of the patent, if such exist, as well as claims which carefully outline the scope of the protection awarded to the owner for their invention.

The flexibility to amend any part of the patent, including the claims, during the registration process and prior to its acceptance is relatively large (see article 22-23 of the Act), since once the patent is registered and its owner awarded a long term monopoly, they may only make changes to the patent under certain conditions and circumstances. These terms have been clearly outlined by the legislator in provisions 65-66 of the Act:

65. The owner of a patent may request the amendment of the patent specification for the purpose of clarification, correction of an error or in order to restrict the scope of their claims.

66. The Registrar shall allow a correction only if he is convinced that it does not expand the scope of the protection as detailed in the claims, or add details which were not included in the original request; granting of a request for amendment shall be published in the Official Patent Gazette.

Meaning, a request for the amendment of a patent must meet the conditions of provisions 65-66 above.

Have a question about the article?

Post a comment

I accept the

Terms of use

X
Might also be interesting

DWO - Terms and Conditions

Close