How to Amend a Patent – Application and Stages of the Procedure

General information about the procedure for amending a patent

Within the framework of the Civil Code of the Russian Federation (Clause 1 of Article 1232 of the Civil Code of the Russian Federation), a procedure is provided for amending not only the initial patent application at the stage of its consideration, but also directly to the title of protection after its issuance. Such actions are carried out exclusively at the initiative of the patent owner through the filing of an appropriate application, provided that such amendments do not affect the essence of the original patent application.

Making changes to a patent for an invention is an important process that allows the patent holder to adapt his rights in accordance with current data, legal requirements or his own interests. The procedure may include various aspects, such as correcting obvious errors, clarifying the wording or adding new data to the name of the authors/applicants, their registration address, correspondence address, etc. At the same time, technical errors or typos that do not affect the essence of the subject matter of patenting can be corrected by Rospatent on its own, but before that it must send a corresponding notification to the patent owner.

An application from the right holder is mandatory to start administrative measures aimed at making changes to the State Register. In case of a positive decision of Rospatent, the updated information is immediately included in:

• State Register;
• official bulletins issued by Rospatent;
• a document of protection (patent certificate) at the additional request of the patent holder.

In addition, updated data is published in open sources to ensure transparency and availability of information.

What is the reason for the need to make changes?

The need for mandatory reflection of all changes in the patent document is due to:

• preservation of legal force: changes ensure that the document corresponds to the current state;
• transparency of procedures: ensures confidence in the patenting system on the part of society and business;
• protection of the rights of third parties: prevents possible conflicts related to incorrect information in the patent.

Thus, timely reflection of all changes is a key element of effective patent law and protection of intellectual property rights.

Reasons for making changes

Changes to a patent can be caused by several reasons:

1. Error correction: This can be a typo in the description of the invention or incorrectly specified data that needs to be corrected to ensure the accuracy of the patent.
2. Clarification of wording: Sometimes a more precise description of the invention is required (correction of obvious errors that do not go beyond the substance) in order to avoid ambiguities and ensure the protection of the patent holder's rights.
3. Add new data: for example, about the owner or author of a patent – full name, company name, change of legal address or address for correspondence.

Amendment procedure

The procedure for amending a patent for an invention includes several stages:

1. Preparation of documents: The patent owner or his representative must prepare the necessary documents for the Federal Executive Body in the Field of Intellectual Property, including a request for amendments with confirmation of payment of the relevant fees and a description of the changes Depending on the type of corrections to be made, it will be necessary to provide other additional documents. In particular, when making changes to the list of authors who are indicated in the patent, it is required to provide their consent to the corrections made. This document states that there is no dispute between the authors of the invention. In another case, if, for example, there were disagreements between the inventors, and they applied to the court to recognize a specific person as the author, then the decision of the judicial authority is attached. If the patent holder has changed his surname, then you will need to provide a certificate of marriage, divorce or name change. If the registration address has changed - a copy of the passport, if the name of the legal entity or the legal address has changed - an extract from the Unified State Register of Legal Entities. If supporting data is not provided, then the department sends a notification and provides an additional three months to send the missing documents.
2. Examination: After filing the request, the patent office verifies the fact of payment of the fee. If the fee is not paid, then Rospatent sends a notification and provides a period of 2 months for additional payment. In the event that after the expiration of the specified period the required amount is still not transferred to the account of the patent office, a decision is made to refuse to provide the service. which includes a compliance analysis as well as an assessment of whether the changes infringe the rights of third parties.
3. Decision-making: Based on the results of the examination, the patent office decides to make changes. If the changes are approved, the patent will be updated and the patent holder will be notified about it.
4. Publication of changes: Changes must be made to the State Register, and to the title of protection at the request of the right holder. In some cases, changes may be published in official sources to inform the public about the new conditions of the patent.

Important aspects

• Possible consequences of not making changes in a timely manner: for example, when registering an agreement on the disposal of the exclusive right to a patent, the office takes into account only the data that is indicated in the registers, so the lack of reliable information about the right holder and the author may lead to a refusal to register the agreement.
• Timing: It is important to take into account that making changes to the patent may take time (about 2.5-3 months). The patent holder should plan this process in advance, especially if the changes are necessary for the protection of rights.
• Costs: The process of making changes may involve certain costs, including government fees and legal fees.

Consideration of the right holder's application for making changes to the State Register, including those relating to information about the right holder, the author, the address for correspondence, as well as the correction of obvious and technical errors (made by the applicant), making a decision based on the results of its consideration - 2000 rubles for each change for one patent (clause 1.23 of the Regulations on Fees).

Consideration of the right holder's application for amendments to a patent for an invention, utility model, industrial design, including those relating to information about the right holder, about the author, as well as the correction of obvious and technical errors (made by the applicant), making a decision based on the results of its consideration - 2000 rubles + 3000 rubles for the issuance of one patent on paper at the request of the right holder (clause 1.24 of the Regulations on Fees).

It is important to know that each change in the register is paid separately, and the applicant pays for making corrections to the patent only once, regardless of how many amendments are made.

• Consultation with patent attorneys: It is recommended to seek advice from patent law experts to avoid mistakes and ensure that all documents are properly executed. Making changes to a patent is an important step to keep the patent holder relevant and protective.