The introduction of central amendment as of right and a toothless Rule 141 invite a more laissez-faire attitude to whether any procedure is required to ensure that, upon grant of a patent, the most relevant prior art has been taken into account.
From a UK perspective, there are a number of positive reasons for bringing prior art to the attention of the EPO before grant, and there a number of possible repercussions for failing to do so. In our panel opposite, we set out these reasons and repercussions.
Before the EPC 2000 and Zipher Ltd v Markem Systems  F.S.R. 1, there was a potential risk in drawing attention of prior art to the UK Patent Attorney. Under earlier decisions, positive inaction could mitigate against discretion to amend later, whereas lack of communication between applicant and patent attorney might excuse inaction. The jurisprudence tended to encourage burying one's head in the sand. That is no longer so.
Positive reasons for voluntarily citing prior art to the EPO
1. Opportunity - the scope for amendment before grant is wider.
2. Acknowledgment in specification - acknowledging prior art in the specification can serve to strengthen a claim.
3. Citing art on the front page - our contact at the EPO tells us there will be no change in EPO practice in this regard. We take this to mean that the Office will not list all references drawn to the Office's attention, but will list those in its own search report and any additional documents upon which the Examiner relies. Citing of prior art on the front cover does not have the same force as acknowledging it in the specification. Neither does it affect the burden of proof in an action for invalidity, nor the standard of proof applicable. Nevertheless, a putative opponent may be deterred from opposing if the prior art to be relied on in opposition has already been considered by the Examining Division.
4. Cost - if amendment is necessary, it is clearly preferable to amend before translation of the claims into the other EPC languages and before national validation.
Repercussions for failing to amend promptly
1. Tactics - having to amend a granted patent (whether centrally at the EPO under Article 105a EPC or before national authorities) before asserting it against an infringer has a number of tactical drawbacks including delay.
2. Discretion - even though the scope for a Court to refuse discretion for amendment of a granted patent is much more limited than was the case in the past, before UK rules implementing the EPC 2000, nevertheless procedural fairness is still a factor to be considered in whether an amendment is to be permitted.
3. Restrictions on recovery of damages - under Section 62(3) of the Patents Act, there are certain mitigating factors that a Court must take into account when awarding damages for a patent that has been amended after grant. The same factors apply if a patent is found to be only partially valid (in which case they apply also to any award of costs). No such mitigation is available if the patent is entirely valid as granted. Lack of good faith is one of the mitigating factors, so the notion of "covetous claiming" may not be relevant to amendment, but is still relevant to remedies.
4. Duty of full disclosure before the Court - even if there is no duty of full disclosure before the European Patent Office, there may still be such a duty before the Court if the patent is enforced. For example, a patentee who continues with an amendment application which is refused for failure to have given full disclosure may not be allowed a second chance.