EICKMANN'S APPLICATION

112 tNd. 5] REPORTS· OF PATENT, DESIGN AND TRADE MARK CASES [1968] Eickmann's Application (Amendment P.A.T.) Before MR. JUSTICE LLOYD-JACOB 30th January, 1968. EICKMANN'S ApPLICATION Patent-Application-Amendment-Amendment of specification after expiry of 5 extended statutory period and before acceptance-Extent of Comptroller's discretion to allow amendment-Amendment refused. Patents Acts, 1949 and 1957, s.12. Two patent applications were refiled on 16th March, 1967, after amendment. They were found to satisfy the examiner, and arrangements for acceptance were com- 10 menced. On 31st May 1967, after the expiry on 9th April of the extended section 12 period by which the application had to be in order but before the arrangements for acceptance had been concluded, the applicant's agent applied for leave to amend both complete specifications and filed Forms 37 a few days later. By letter dated 6th June 1967, the applicant was informed by the Patent Office that his application 15 to amend could not be considered until after acceptance. The applicant submitted that the Comptroller had an unfettered discretion to allow amendment of a complete specification at any time before acceptance, and that he could not refuse it solely on the ground that the application was made after the expiry of the extended section 12 period and before acceptance. After a hearing, the Patent Office refused 20 to allow the amendment on the ground that it would involve an extension 01 the examination process and delay acceptance of the application. On appeal to the Patents Appeal Tribunal: Held, dismissing the appeal, that the purpose of section 12 was to specify a period within which amendment to place the application in an acceptable form was per- 25 mitted, and thereby place a time limit on the examination process. The Comptroller therefore had no discretion to allow amendment of the specification at the applicant's request after the end of the extended section 12 period and before acceptance, or alternatively, the discretion should not have been exercised in the applicant's favour. 30 This was an appeal to the Patents Appeal Tribunal by Karl Eickmann from a refusal by the Comptroller to allow him to amend applications Nos. 57161/66 and 1832/67 until after acceptance. The decision of the Assistant Comptroller, Mr. J. Field, dated 23rd June 1967, is set out below. T~omas Blanco White, instructed by Eric Potter & Clarkson, appeared for the 35 applicant. IN THE ApPEAL TRIBUNAL 113 [1968] REPORTS OF PATENT, DESIGN AND TRADE MARK CASES [No.5] Eickmann's Application (Amendment P.A.T.) 10 On 31st May 1967 the applicant's agent asked, by letter, for amendment to be made to the complete specifications of both applications and, to comply with the Rules, filed Forms 37 on 2nd June 1967. The applicant was informed by letter dated 6th June 1967 that as the fully extended period for putting the applications in order expired on 9th April 1967 the requests for amendment could not be 15 considered until after publication of the specifications. The applicant did not agree with this ruling and the matter came before me at a hearing on 14th June 1967. The last paragraph of the letter of 6th June 1967 was, strictly, incorrect, as requests for amendment under section 29 can be considered at any time after acceptance, but this error did not affect the issue raised at the hearing. Briefly, Mr. Blanco White submitted that the Comptroller has a discretion to allow amendment of a complete specification at the applicant's request at any time before acceptance; that this discretion must be exercised having regard to the circumstances of each case and that it is not a proper exercise of discretion to refuse amendment solely for the reason that it was submitted after the end of 25 the extended section 12 period and before acceptance, in the absence of statutory prohibition to this effect. 20 The Act is silent as to whether amendment of the complete specification at the applicant's request before acceptance is possible and, if possible, the extent to which it should be allowed. However, it has for many years been the pratice to allow such 30 amendment to be effected before the end of the statutory period for placing the application in order, and indeed rule 153 gives the Comptroller discretion to allow any document to be amended if he thinks fit, and the Rules provide for Form 37, on which a request for such amendment can be made and for the appropriate fee. The Comptroller must, of course, exercise this discretion with care as any amend35 ment, at whatever date it is made before acceptance, will in effect date back to the filing date of the complete specification. However, more extensive amendment is permissible at this early stage than would be allowed in an application under section 29 made after acceptance. The present question, therefore, is whether the Comptroller's discretion is fettered 40 in any way in the period in question or, if not fettered, whether lit is properly exercised as a blanket refusal in all cases. I must first make plain that I am not dealing with the correction of clerical errors permitted under section 76, but with amendments to the substance of the complete specification. Section 12 of the Patents Acts, 1949 and 1957 specifies that the 45 application shall be void unless the applicant has, within a specified period dating from the date of filing of the complete specification, fulfilled all the requirements of the Act. This plainly means that no opportunity exists, after the expiry of that period, for submission to the Comptroller of amendments to place the application in an acceptable form. The purpose of this provision, as it seems to me, is to place 50 a limit on the examination process and to admit a request for amendment after Mr. Field.-The applications were filed as divided from application 964/64; application 57161/66 being lodged on 21st December 1966 and application 1832/67 being lodged on 13th January 1967. Following the examiner's report and other actions, the amended complete specifications were refiled on 16th March 1967 and, 5 on re-examination, the applications were found to meet the requirements limposed by or under the Act. The applications were, therefore, regarded by the Comptroller as in order, and arrangements for acceptance were commenced. The fully extended period laid down by section 12 of the Patents Acts, 1949 and 1957 for meeting these requirements expired on 9th April 1967. 114 [No.5] REPORTS OF PATENT, DESIGN AND TRADE MARK CASES [1968] Eickmann's Application iAmendment P.A.T.) One further point. Section 12, as I have said, specifies a period within which amendment to place the application in order is possible. It would, in my view, make nonsense of the procedure if an applicant could not amend after the end 15 of that period in order to save his patent but could amend, if the application were in order, to suit his own ends and to incorporate his (...truncated)