Amending your patent after grant
You can make an application to amend your patent after it has been granted either with us or at the Court.
Overview
If someone has objected to your patent, in order to overcome the objections you might decide to amend it.
If you are involved in proceedings in the court or with us, you can file amendments under section 75 of the Patents Act 1977. If you are not involved in proceedings and still want to amend your patent, you can file amendments under section 27. Please note that any material filed may be open to public inspection, including online.
An amendment which includes new technical details or which seeks to extend the scope of protection provided by your patent is unlikely to be allowed. Anything filed in relation to an amendment is likely to be open to public inspection even if the amendment is not allowed. As a result of this you would not be able to file a new patent application covering those new technical details. You should therefore think carefully before requesting any amendment and ideally seek professional advice.
Section 75 before the court
To amend a patent under section 75 before the court, you need to file an Application Notice.
This consists of court form , full details of the amendments you wish to make and the reasons for making them, including whether you consider the claims of the patent to be valid prior to any amendment being made.
You need to send this to the court in paper form along with the fee. You also need to send us a copy. If possible, you should send us a copy electronically.
If you can send us the form N244 electronically, once you have completed it, you need to sign it.
You should use an electronic signature preferably in the form of a text string signature – a string of characters preceded and followed by a forward slash, for example, /your name/.
Saving the form
You can save the form N244 and any supporting documents in rtf format or in specific word processor file formats.
Our preference is for Microsoft Word. (Microsoft is a registered trade marks). We can also accept Portable Document Format (PDF).
Section 75 before the Comptroller
To amend a patent under section 75, you need to send us details of the amendments and if possible, you should send us these electronically.
Section 27
To amend a patent under section 27 provide details of the amendments and the reasons for these in paper form. If possible, you should send us details of the proposed amendments and the reasons for these electronically.
Sending amendments after grant electronically
Delivery by email
You may send your amendments by email to [email protected]. We will not accept an email for these purposes at any other email address. Your e-mail should be entitled:
- Proposal to amend under section 75 before the court
- Proposal to amend under section 75 before the comptroller
- Proposal to amend under section 27
You should include the application notice, full details of the amendments you wish to make and the reasons for making these as attachments as appropriate.
Your 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.
Setting out amendments after grant
You may find the best way of setting out your amendments is in a schedule. However in most cases if will be much easier for readers to appreciate changes if you use the features available in a word processing program as follows:
| Amendment | Format | Instructions Microsoft Word |
|---|---|---|
| Delete text | Strikethrough | Select the text to be formatted. From the Format menu, choose Font. Click in the Strikethrough tick box and click OK |
| New text | Bold (see below) | Select the text to be formatted. From the View menu, choose Toolbars and Formatting. Click in the B button on the toolbar |
| First amendments | Bold red text | Follow instructions for bold text. From the Format menu, click on Font. Click in the arrow on the Font colour button. Click on the colour you want for the text |
| Second amendments | Bold dark blue text | See above |
| Third amendments | Bold green text | See above |
| Fourth amendments | Bold Maroon text | See above |
The courts have agreed this method of identifying amendments.
Advertising applications received
We provide you with information about applications we have received to amend the specification of a patent under sections 27 and 75 before the court and the Office. We also include information about when you need to file an opposition if you wish to oppose the application to amend.