Amendments as a Result of a Decision

Date Published

Where a hearing officer in an inter partes matter has issued a decision which gives an opportunity to amend, examination of the amendment must be conducted by a person other than the hearing officer.  

Examiners should have regard to whether the proposed amendments overcome the deficiencies identified in the decision. Where it appears that the amendments do not overcome those deficiencies, this should be communicated to the applicant or patentee by means of observations in a report, using the normal adverse report format for voluntary amendments (see PERP code [G60]). However, the failure of the amendments to overcome the deficiencies identified in the decision does not, in itself, provide a basis for refusing to allow the request to amend. If the applicant or patentee indicates the intention to persist with the amendments, examiners should consider those amendments in the usual manner. In determining whether an observation is warranted, examiners should take into account any comments received from the opponent (see Dealing with Comments).

Examiners should not enter into a detailed debate about whether the deficiencies in the decision have been overcome.  Where it appears that the applicant or patentee wishes to debate the observation, examiners should contact Patent Oppositions for advice on how to deal with the matter.