8.3.4 Amendments to a Provisional Specification

Date Published

Key Legislation:

Patents Act:

  • s102 What amendments are not allowable?

Patent Regulations:

  • reg 10.3 Amendments not allowable for other documents

A proposed amendment of a provisional specification is not allowable if it would materially alter the meaning or scope of the specification (reg 10.3(1)).

In considering whether an amendment materially alters the meaning or scope of the specification, it must be noted that the purpose of a provisional specification is to provide the basis for priority rights when seeking a patent in Australia or overseas. Furthermore, when determining priority dates, all material contained in a provisional specification is taken to have been filed on its filing date. There is no mechanism to accord a different date to material added to a provisional specification by way of amendment.

Examples of amendments that would materially alter the meaning or scope of the specification are:

  • addition of “missing” pages;
  • insertion or deletion of text; and
  • correction of formulae.

Examples of amendments that would not materially alter the meaning or scope of the specification are:

  • correction of spelling (noting that some “corrections” of spelling could give rise to a material change of meaning);
  • grammatical corrections (noting that a correction to remove a real ambiguity would materially alter the meaning or scope);
  • renumbering of items in the drawings with corresponding changes in the text; and
  • changing measurement units to clearly equivalent measurement units (e.g. from degrees Fahrenheit to degrees Centigrade).

Subsection 102(3) provides a general exemption from the provisions of s102(1) and s102(2) for the purpose of correcting a clerical error or obvious mistake in a complete specification.  However, there is no such exception for the amendment of provisional specifications. Therefore, an amendment to correct a clerical error in a provisional specification is not allowable if it would materially alter the meaning or scope of the specification.  

In general, an amendment which is properly in the category of correcting an 'obvious mistake' would not materially alter the meaning or scope of the specification. Similarly, amendments that make no change in the technical disclosure, such as replacing quantities with exact equivalences, or replacing imperial measurements with equivalent metric measurements, would not materially alter the meaning or scope.  Otherwise, there is a high presumption that the amendment would materially alter the meaning or scope of the document and is not allowable.  In particular, any amendment which is ‘worthwhile’ would appear to fall within this category.

When a request is made for a certified copy of a provisional specification which has been amended, copies of the specification as filed and as amended, are certified together, and supplied.  As the determination of priority dates is the responsibility of each individual jurisdiction, that determination can only be made if the jurisdiction is aware of the disclosure in the specification as filed, as well as the specification as amended.