Can a Patent be Amended following Settlement?

The question of whether a patent can be amended following settlement of a claim was examined by the Patents County Court in the case of Industrial Self Adhesives Limited v Teknek Limited and Others (2012).

The claim concerned adhesive rolls used in cleaning apparatus, one application of which was to clean electronic circuit boards. Proceedings were commenced after the claimant alleged the defendants had made unjustified threats. TH Group Ltd was the patentee and wished to sue as it believed the threats were justified. It joined proceedings as an additional counterclaimant.

The claimant alleged that the patent was invalid and therefore unenforceable. TH Group Ltd denied this, but also applied to amend the patent in order to limit its scope and to distinguish it from the prior art and alleged general knowledge, as alleged by the claimant. The claimant did not object to these amendments but maintained that the patent was not valid.

The parties later settled their dispute, although the issue of amending the patent remained outstanding. HHJ Birss QC held that it was more appropriate for the Patents County Court to deal with the issue of amendment rather than requiring the additional counterclaimant to submit a new application to the IPO. This was due to the Comptroller not having made any comments and no objections to the advertisement of the amendments having been received. The Patents County Court therefore dealt with the issue and that the amendments were permissible.


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