9.6.6 Amendment of the patent
During the course of patent infringement proceedings, it is possible for the patentee to make an application to amend the patent and, in particular, the claims of the patent, pursuant to Section 75 of the Act. To do so, the patentee must serve on the opposing party and the UKIPO an application to amend the patent, identifying the amendments it is seeking to make and the reasons for making the amendment (e.g., so as to avoid a specific passage in an item of prior art). The UKIPO will advertise the application to amend the patent so that third parties have the opportunity to intervene if they object to the amendment being made.
Amendment applications are almost always heard at the trial. However, where such an application is made close to the time of the trial, there may be ancillary consequences, not least because the court’s power under Section 75 of the Act is discretionary:
(1) In any proceedings before the court or the comptroller in which the validity of a patent may be put in issue the court or, as the case may be, the comptroller may, subject to section 76 below, allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to advertising the proposed amendment and as to costs, expenses or otherwise, as the court or comptroller thinks fit. (emphasis added)
Any delay in making an application to amend the patent claims may affect the chances of the court allowing the application. In particular, the court will consider whether the application is procedurally fair to the other party. If the application is likely to necessitate another trial, this may result in it being refused. For example, in Nokia GmbH v. IPCom GmbH,124 the Court of Appeal confirmed the principles of patent claim amendment and duly rejected IPCom’s amendment application brought three days before trial on the grounds of procedural unfairness:
The main purpose of Art. 138 [of EPC 2000] as compared with the unamended Art. 138 was to provide that national authorities should have an amendment procedure at all. For prior to the amendment of the Treaty the laws of some countries did not allow patent amendment post-grant at all. Now they must. Art.138 was not intended to govern national rules of procedure concerning patent amendment, still less to require national courts to conduct them in a manner which national law regarded as an abuse of process.125
Indeed, late-filed amendment applications may be considered to be an abuse of the court’s process. This is particularly the case when the application is made after the trial has taken place.126
In practical terms, this means that a patentee that wishes to make an amendment application should make that application as soon as practicable. To wait until the judgment is available will almost certainly be too late. Occasionally, a provision will be made in the order for directions at the CMC for the patentee to make any application to amend the patent-in-suit by a certain date.