8.3.1 Allowability of Amendments to Complete Specifications

Date Published

Key Legislation:

Patents Act:

Patent Regulations:

  • reg 3.2B Specifications: formalities check for innovation patents
  • reg 3.25 Request for Commissioner's certification authorising release of sample of a micro-organism
  • reg 10.2(8)-(9) Commissioner to consider and deal with requests for leave to amend
  • reg 10.3(2), (7)-(8) Amendments not allowable for other documents

The Budapest Treaty:

  • Rule 11.3(a) Furnishing of Samples to Parties Legally Entitled

On this page

  • General Provisions
    • Specific Provisions Relating to Specifications for Innovation Patent Applications and Innovation Patents
    • Specific Provisions Relating to Specifications Relying on the Budapest Treaty
    • Specific Provisions Relating to Specifications Where Court Proceedings are Pending

Section 102 and reg 10.3 set out the circumstances in which amendments are not allowable.  These provisions are summarised below.


General Provisions

1. An amendment of a complete specification is not allowable at any time:

if, as a result of the amendment, the specification would claim matter which was not in substance disclosed in the specification as filed.

(see s102(1) and 2.23.8 Allowability Under Section 102(1)).

2. An amendment of a complete specification is not allowable after the relevant time, that is:

i. after acceptance of a standard patent; or

ii. after a decision to certify an innovation patent;

IF, as a result of the amendment:

  • a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
  • the specification would not comply with s40(2) or s40(3).

(see s102(2), s102(2A) (meaning of “relevant time”) and 2.23.9 Allowability under Section 102(2)).

BUT the provisions in 1 and 2 above do not apply where:

an amendment is for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.

(see s102(3) and 2.23.10 "Clerical Error" and "Obvious Mistake")


Specific Provisions Relating to Specifications for Innovation Patent Applications and Innovation Patents

3. An amendment of a complete specification for an application for an innovation patent is not allowable until after the patent has been granted, unless it is an amendment proposed in response to a formalities direction under reg 3.2B.

(see reg 10.3(7))

4. An amendment of a complete specification for an innovation patent is not allowable if it would result in the specification claiming:

  • a thing mentioned in s18(2) (human beings and the biological processes for their generation); or
  • a thing mentioned in s18(3) (plants and animals and the biological processes for their generation) other than a thing mentioned in s18(4) (a microbiological process or a product of a microbiological process).

(see reg 10.3(8), s18(2), s18(3) and s18(4))


Specific Provisions Relating to Specifications Relying on the Budapest Treaty

5. An amendment of a complete specification relating to the deposit requirements of s6(c) is not allowable if the amendment would result in the specification not including each of the matters specified in s6(c).

(see reg 10.3(2) and 2.23.12.1 Amendments Relating to Micro-Organisms)

6. An amendment of a complete specification is not allowable if the Commissioner has given a copy of the amendment request to a person identified below and that person has not been given a reasonable opportunity to be heard with respect to the amendment:

  • a person requesting a certificate authorising release of deposited material under Rule 11.3(a) of the Budapest Treaty in respect of the patent or patent application; or
  • a person who has notified the Commissioner that the micro-organism deposit requirements of s6(c) or s6(d) ceased to be satisfied in respect of the patent or patent application.

(see reg 10.3(2), reg 10.2(8), reg 10.2(9) and reg 3.25)


Specific Provisions Relating to Specifications Where Court Proceedings are Pending

For consideration of amendments when a decision of the Commissioner in an opposition matter is under appeal, see 2.23.3.4 Amendments Arising out of Decisions or Directions Under Appeal.