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An objection may explicitly indicate a particular solution, but must not dictate a specific amendment.  Applicants have the right to amend the specification however they consider appropriate, and a well written objection which accurately and clearly conveys the issues should elicit suitable amendments. Where there are major issues, it is even more important that applicants be allowed to follow their own course of action.

Furthermore, examiners should not dictate a specific amendment as:

  • the very act of doing so may result in applicants feeling obliged to respond as dictated to ensure acceptance of their application, thereby denying themselves other, possibly better, options;
  • the amendment as dictated could be wrong (see Pittsburg Plate Glass Co. (1971) RPC 55 at page 60, lines 3-19 and page 61, lines 27-31); and
  • examiners, in dictating amendments, risk losing objectivity.

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