Amending Granted Patents

Patent owners are often keen to start sending off threatening letters as soon as a patent is granted. But this is not a time to over-reach.

Our litigation regime is bloated. First of all, a barrister is required because they, and not solicitors, have the right to represent litigants in the Federal Court. However, a barrister usually needs to be instructed by a solicitor. The solicitor will be responsible for briefing the barrister and preparing the necessary application papers. However, it is not often that a solicitor will have a grasp of patent law. This is the role of a patent attorney. So it's not hard to understand why litigation can be expensive.

Just sending off a cease-and-desist letter may start an expensive and resource-draining process. It's not wise to allow a cease-and-desist letter to be ignored. Once the decision has been made to send off the cease-and-desist letter, the patent owner should be fully committed to filing an application at the Federal Court to back up the demands set out in the letter.

So reflection is required before pushing the button. This should include a review of the patent specification with a view to making amendments to get the patent in the best condition possible for litigation. Failure to do so could have the patent owner relying on the discretion of the court itself to allow an amendment. This can be both complicated and expensive. Furthermore, it can delay the matter significantly.

Here is an article written by my partner Hedie Meka on some of the principles used by the court when deciding to allow an amendment during litigation.


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