2.31.4.7 Amendments

Date Published

The procedure concerning amendments for innovation patents is substantially the same as for standard patents (see 2.23 Amendments), except as follows:

  • the provisions of sec 102(2) do not apply until a decision has been made to certify the patent;
  • an amendment to the patent request for an innovation patent application filed under sec 79C to convert the application to a standard application is not allowable (sec 102(2B)).  Note that, as is the case for standard patents, an amendment of the patent request of a granted innovation patent is also not allowable (see 2.23.13.1 Amendment of Patent Request);
  • proposed amendments to the complete specification, other than those proposed in response to a formalities direction, cannot be allowed until after grant;
  • an amendment which would result in the specification claiming human beings, plants or animals, or biological processes for the generation of human beings, plants or animals, is not allowable.  This is to ensure that once an innovation patent has been granted, but not yet examined, the patentee cannot make amendments to include material which would contravene sec 18(2) or sec 18(3); and
  • when an amendment is in respect of a granted innovation patent, examiners are required to check:
    • whether there is a mortgagee or licensee (see 2.23.3.6 Consent of Exclusive Licensee or Mortgagee Required and 5.13.6 Checking for a Mortgagee or an Exclusive Licensee).
    • whether any court action is pending.  This will be evident by the presence of documents labelled ‘Court Documents’ in the PAMS file.  In this situation the matter should be referred to Patent Oppositions.