We are currently developing a new site to host the Patent Manual of Practice and Procedure. The BETA version of this site is now available for you to review. The information and content displayed in the BETA site is only available for testing purposes. Do not use or reference the information in the BETA site when making any decisions or actions regarding IP rights.

2.13.7.4 Suggesting Amendments

Date Published

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.

Back to top