tag:blogger.com,1999:blog-5574479.post1013351992236434683..comments2024-03-28T11:16:43.146+00:00Comments on The IPKat: Making amends: why do patents and trade marks differ?Verónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger3125tag:blogger.com,1999:blog-5574479.post-77445413586328603582012-07-18T10:51:57.945+01:002012-07-18T10:51:57.945+01:00Claire, whether you call it "having another g...Claire, whether you call it "having another go" depends entirely on one's standpoint! Patent judges, parties attacking patents, and trade mark opponents do so, whereas patentees, trade mark proprietors, and Hearing Officers do not. But the substantive point seems to me to be exactly the same in each case since an unsuccessful patentee could make exactly the points you make.Douglas Campbellnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-39701608814248487992012-07-16T20:46:20.255+01:002012-07-16T20:46:20.255+01:00Interesting. The bulk of my experience has been w...Interesting. The bulk of my experience has been with the New Zealand patents systems, which shares it's roots with, and has much in common with the UK system. In New Zealand, amendments were always allowable at the discretion of the court. I wasn't involved in very much litiagation, but the impression I got was that there was no disadvantage to waiting until proceedings had commenced to apply to amend, and it was in some ways advantageous, as it forced the other side to prove their case for invalidity. With regard to the 'wholly invalid' point, we were always taught that if one claim (i.e. the main independent claim in question) was found invalid, then the whole patent was considered invalid. The subsidiary claims and any other independent claims wouldn't necesarily have been considered at that point. Validity could be re-established by suitable amendments (with the permision of the court).Richard Locknoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-66514007462002631522012-07-16T20:39:40.272+01:002012-07-16T20:39:40.272+01:00I do not know anything about patent amendments, b...I do not know anything about patent amendments, but I do know quite a lot about the rules for appealing a decision of the examiner at the UKIPO and then amending the specification after the appellate court has remitted the application back to the Office, because that practice is based on the SENSORNET decision, in which I acted for the appellant. In short, the reason why the appellate court can remit the tm application back to the Office to have the specification cut back at that stage has nothing to do with “having another go”. Instead it is to do with whether the reasons the examiner gave for his decision to refuse the application are applicable only to <i>some</i> rather than <i>all</i> the goods and services in the application. If the reasons apply to all the goods and services, there is no having another go.Claire Lazenbynoreply@blogger.com