7.14.5 Section 105 Amendments

Date Published

Key Legislation:

Patents Act:

  • s102 What amendments are not allowable?  
  • s105 Amendments directed by court  

Patents Regulations:

  • reg 10.10 Prescribed period: filing of court order

Process

The procedural requirements for requests under sec 105(1) to amend a patent request or complete specification in relation to a patent are not set out in the Patents Act or Regulations, but in Federal Court Rule 34.41 (or equivalent Supreme Court Rules). The process is essentially as follows:

  1. The patentee must give the Commissioner a notice of intention to apply accompanied by an advertisement. The advertisement must state:
    1. the identity of the proceedings, or pending proceedings, in which the application will be made;
    2. the particulars of the amendment sought;
    3. the applicant's address for service; and
    4. that a person intending to oppose the application who is not a party to the proceedings or pending proceedings must, not later than 28 days after publication of the advertisement, give written notice of that intention to the Commissioner and to the persons who are parties to the proceedings.
  2. The Commissioner must publish the advertisement in the Official Journal (unless the Court otherwise orders – see Rescare v Anaesthetic Supplies [1993] AIPC 90-950; 25 IPR 119 concerning patent 560360). However, to avoid subsequent complications, the amendments will be considered by an examiner to determine whether the amendments comply with sec 102. If the examiner has concerns with the allowability of the amendments, they should advise OEP of this, who will:
    1. communicate any concerns with the patentee; and
    2. ascertain whether the patentee desires the amendment to be advertised as requested, with the possibility that the Commissioner may later appear in Court regarding the allowability of the amendments, or whether the patentee desires to deal with the Commissioner's concerns prior to any advertisement. If the amendments are changed after the advertisement, the Commissioner may need to advise the Court whether the amendments should be re-advertised.
  3. A person intending to oppose the amendment must give written notice to the Commissioner and each party to the proceedings within 28 days after the publication of the patentee’s notice.
  4. The patentee must file the sec 105 application (usually as a notice of motion) with the Court within 50 days after the publication of the advertisement and serve the application and a copy of the patent request or specification showing the proposed amendment on the Commissioner, each party to the proceedings and each person who has given notice of an intention to oppose.
  5. If no notice of intention to oppose is filed and the Commissioner considers sec 102 has been complied with, the Commissioner will advise the patentee that she considers the amendments prima facie comply with sec 102, and therefore, that she does not intend to appear in the proceedings and requests that they draw the letter to the attention of the Court.
  6. If a notice of intention to oppose is filed, the Commissioner provides a notice to all parties acknowledging service and indicating whether or not the Commissioner intends to appear in the proceedings.
  7. If the Court makes an order under sec 105 directing an amendment, the patentee is required by sec 105(5) to file a copy of the order with the Commissioner within 14 days (reg 10.10). The amendment specified in the order is taken to have been made on filing the order (sec 105(6)).

Note: While not set out in the Patents Act or Regulations, or Federal Court Rules, the process for orders under sec 105(1A) generally follows the same process as that for orders under sec 105(1) (see Yates J in Garford Pty Ltd v Dywidag-Systems International Pty Ltd [2014] FCA 1039 at [25]-[26]).

Role of the Commissioner

If the Commissioner is of the view that the amendment sought does not comply with the requirements of the Act, the Commissioner will determine whether to appear in the proceedings. (Note that, pursuant to sec 105(3), the Commissioner is entitled to appear and be heard, and must appear if the Court directs).

If not appearing, the Commissioner nevertheless will write to the Court indicating that she considers the proposed amendment not to be allowable and attach the notification of the Commissioner’s concerns that was provided to the applicant or patentee.

Cases

The Court's powers to allow an amendment under sec 105 have been considered and applied in a number of cases: