2.23.2.5 Multiple Requests for Amendment

Date Published

In certain circumstances, several separate requests for voluntary amendment may be current in relation to an application or patent. These separate requests are distinguishable from situations where a statement of proposed amendments is amended by the filing of a further statement of proposed amendments to the earlier statement, before leave is granted in respect of the earlier statement (see reg 10.1(5)).

Where two or more requests under sec 104 are made in respect of entirely separate matters (for example, where each request deals with a clerical error on a separate page), examination of each request may proceed separately and regardless of the allowance of the other request or requests.

Where two or more requests under sec 104 are made, and the allowance of any one request may affect the part of the specification in which an amendment proposed by another request is to be made, or where there is any other interdependence, the later request or requests should not be examined until the allowance (or formal withdrawal) of the earlier request, and the person who made the later request or requests should be informed of that deferment accordingly.

In some circumstances, examiners may find it advisable to notify the applicant or patentee of the procedure proposed to be adopted and to suggest that an alternative procedure is for the individual requests to be withdrawn and that a consolidated single request be filed within a specified period.

Note: Where, after a protracted period, there is no response to an adverse report on a voluntary amendment, examiners should not assume that the amendment request has been abandoned or withdrawn, unless there is evidence on file to the contrary.