2.23.8A Allowability Under Section 102(1)

Date Published

Note: The information in this part only applies to:

•  requests to amend filed, or deemed under reg 10.6A to be filed, on or after 15 April 2013, for standard patent applications where a request for examination was not filed before 15 April 2013, and standard patents granted on such applications.

•  requests to amend filed on or after 15 April 2013 for innovation patent applications, and innovation patents where a request for examination was not filed before 15 April 2013, or the Commissioner had not decided before 15 April 2013 to examine the patent.

For all other requests to amend, see 2.23.8 Allowability Under Section 102(1).

Subsection 102(1) states:

(1)  An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:

(a)  the complete specification as filed;

(b)  other prescribed documents (if any).

The preamble to this provision does not impose any time constraints.  Consequently, sec 102(1) applies to amendments proposed and considered at any time.  In effect, sec 102(1) requires an applicant seeking to amend a specification to meet the disclosure requirements of sec 40 at the time of filing the complete specification.

To ensure that applicants are not unfairly disadvantaged by this requirement, the legislation prescribes certain documents which, in addition to the specification as filed, form part of the baseline disclosure against which a proposed amendment should be assessed (The Explanatory Memorandum).  These documents are prescribed in reg 10.2A.