Legal Definitions - memorandum of alteration

A memorandum of alteration is a formal legal document used in English patent law. It allows a patent holder to make specific changes to their granted patent, typically by narrowing its scope. This is done when certain claims or aspects of the patented invention are later found to be invalid – for instance, if a part of the invention was not truly new, inventive, or useful at the time the patent was filed. By formally disclaiming or removing these problematic elements, the patent holder aims to protect the remaining, valid parts of the patent from being entirely invalidated.

Here are some examples:

• Example 1: Prior Art Discovery
  Imagine a tech company patents a novel smartphone charging technology. During a subsequent review by a competitor or a patent office, it's discovered that a small, specific component within their patented charging circuit was actually described in an obscure academic paper published years before their patent application. This means that particular component isn't new.

  To prevent the entire patent from being invalidated due to this one non-novel element, the tech company files a memorandum of alteration. They use this document to formally disclaim or remove the claims related to that specific, previously disclosed component from their patent. This action allows them to maintain the validity of the rest of their innovative charging technology, which remains new and inventive.

• Example 2: Overly Broad Claim
  An inventor secures a patent for a new type of eco-friendly packaging material. One of the patent's claims is drafted very broadly, stating that the material can be used for "any food product packaging." A legal expert advises the inventor that this claim might be too encompassing and could be challenged as covering existing, non-eco-friendly packaging for certain food types, thus lacking novelty or inventiveness in that broad scope.

  To strengthen the patent and make it more robust against potential challenges, the inventor submits a memorandum of alteration. Through this document, the inventor narrows the problematic claim to specify "packaging for perishable organic produce," which is where their material truly offers a unique and inventive advantage. This alteration ensures the patent remains valid and defensible for its core innovation.

• Example 3: Utility or Usefulness Issue
  A medical device company obtains a patent for a new surgical instrument designed for minimally invasive procedures. The patent initially included a claim for the instrument's use in a very specific, rare surgical scenario. Further clinical trials reveal that while the instrument is highly effective for its primary intended uses, its utility for that rare scenario is questionable or not sufficiently proven. If challenged, this unproven claim could weaken the entire patent.

  The company decides to file a memorandum of alteration. They use this formal document to remove or significantly modify the claim pertaining to the unproven rare surgical scenario. By doing so, they proactively eliminate a potential vulnerability, ensuring the patent's validity is maintained for the instrument's proven and primary applications.