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5.7.1.6 Circumstances in which an amendment request cannot be processed

Date Published

Overview

We cannot process an amendment request if it concerns:

  • an existing patent that is the subject of pending court proceedings;
  • an application that has been opposed and is under appeal; or
  • an application that has been refused.

    Examination practice

    Pending court proceedings

    An amendment to the specification of a granted patent cannot be allowed if court proceedings are pending (current or upcoming) in relation to the patent (s112). Consequently, when requesting an amendment, the patentee must declare that there are no relevant proceedings pending.

    If the request specifies or the patentee indicates that a court action is pending, we cannot examine the request. If the examination has already started, it will stop immediately. The matter should be referred to Oppositions, who will refuse the request.

    We cannot grant leave to amend until the patentee indicates that no relevant proceedings are pending. If a patentee files an amendment request without indicating whether any relevant proceedings are pending, examiners are to request that they do so within 1 month (reg 10.1(4)). If they do not, we must refuse the amendment request (reg 10.4(c)). If they provide the requested statement after the 1-month deadline, the amendment must not be allowed unless an extension of time has been granted.

    Note that a statement or other indication that no relevant proceedings are pending only applies at the time of filing and may not be correct when the amendment is finally in order for allowance. For similar reasons, a new statement is required at subsequent report stages.

    Additionally, there may be cases when a request is made to amend the complete specification of an application (that is, not a granted patent), but by the time the request is in order for allowance the application may have become a granted patent. In this situation, a declaration that no relevant proceedings are pending would not have been required.

    Case Law

    Atlantis Corporation Pty Ltd v Schindler (No. 3) (2000) FCA 1758 provides some guidance on relevant proceedings. In this case the Federal Court had already decided to revoke the patent. A stay was granted to allow for the determination of amendments already filed under s104. It was concluded that there were no relevant proceedings pending, as the revocation proceedings had already been decided.

    A decision by the Commissioner to refuse a request to amend was upheld by the Federal Court in Suntory Holdings Ltd v Commissioner of Patents (2013) FCA 999.

    Decision is being appealed

    Under s112A, amendment of a complete specification (that is, of an application) under s104 is not allowable where an appeal against a decision of the Commissioner has been made to a court.

    If an amendment request is filed while an opposition decision is being appealed, the Commissioner will refuse the request.

    Issues where the request has not been refused should be referred to Oppositions.

    Once the appeal has been finalised, the applicant may file either the previously refused request or a new request. These later amendment requests will be processed according to the usual procedures.

    Case Law

    The application of s112A was considered by the Federal Court in Suntory Holdings Ltd v Commissioner of Patents (2013) FCA 999.

    An opposition to the grant of a patent was heard by the Commissioner and the Commissioner’s decision appealed by the opponent. Subsequent to the lodgement of the appeal, the applicant requested leave to amend the complete specification under s104. The Commissioner refused the request on the grounds that s112A applied.

    The Federal Court upheld this decision. The Court concluded that as the amendment had not been allowed at the time the opponent lodged the appeal, s112A applies. Therefore, the complete specification must not be amended under s104 and the Commissioner can refuse the amendment.

    Application has been refused

    When the Commissioner has refused an application, the Commissioner is unable to deal with any request to amend the application.

    The Commissioner becomes functus officio at the time the decision to refuse becomes operative, and any pending amendment requests are nullified (see Kyowa's Application [1969] FSR 183).​​

    Amended Reasons

    Amended Reason Date Amended

    Published for testing
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