5.7.2.2 Non-allowable amendments to a patent request

Also in this Chapter:

• 5.7.2.1 Form of the Request to Amend the Patent Request
• 5.7.2.3 Changing the applicant or nominated person
• 5.7.2.4 Converting the application
• 5.7.2.5 Amendments to the notice of entitlement and other documents

Key Legislation:

Patents Act:

• s54 Notice of publication
• s191A Commissioner's power to rectify register
• s79B(3) Divisional applications prior to grant of patent
• s79C(2) Divisional applications for innovation patents may be made after grant of an innovation patent

On this page

• Overview
• Examination practice:
  • After grant
  • Conversion of a patent application after acceptance
  • Conversion to a divisional application at any time
  • Within 3 weeks before OPI.

Overview

The amendment of a patent request is not allowable in the following circumstances:

• the patent has been granted;
• the patent application has been accepted and the amendment would convert it to a different type of application;
• the amendment would convert the patent application to a divisional application; or
• the request is in the 3-week period before a notice of publication under s54 and would convert the application to a different type of application.

Examination practice

After grant

After grant of a patent, a patent request cannot be amended in any way. This applies to both standard and innovation patents. 

If a proposed amendment to the patent request is filed after the patent has been granted, examiners must issue an adverse report explaining that:

• the proposed amendment is not allowable; and
• the patentee may seek rectification of the Register under s191A.​​​​​​​

Note that where an amendment requested after acceptance but before grant would affect what is recorded on the Register (such as an amendment to the title or to the patent request), examiners should immediately contact CEG to arrange a bar to grant flag. This ensures that the patent will not be granted until the amendment has been allowed or otherwise finally dealt with.

Conversion of a patent application after acceptance

After acceptance of a patent, an amendment to the patent request is not allowable if the proposed amendment would convert the patent application either:

• from a standard patent to an innovation patent or vice versa; or
• into a divisional application if:
  • the request to amend was filed (or deemed to be filed) on or after 15 April 2013; or
  • the application is for a standard patent and a request for examination was filed on or after 15 April 2013.​​​​​​​  

Conversion to a divisional application at any time

Amending a patent request to convert the request into a divisional application is not allowable at any time if all of the following conditions apply:

• the time in which a divisional application could have been filed (under s79B(3) or s79C(2) as in force after 15 April 2013) has expired;
• the request to amend the patent request was filed (or deemed to be filed) on or after 15 April 2013; and
• the application is for a standard patent and a request for examination was filed on or after 15 April 2013. 

Note that even if the application in question was filed before 15 April 2013, the applicable time period is nevertheless the same as for a divisional application filed after that date. 

Within 3 weeks before OPI

An amendment to a patent request is not allowable if both of the following conditions apply:

• The proposed amendment is requested in the 3-week period before a notice under s54 (notice in the Official Journal that the complete specification is open to public inspection) is due to be published, including on the date of publication; and
• The proposed amendment either:
  • converts the application from an application for a standard patent to an application for an innovation patent; or
  • changes the priority date of the application to a later date.

However, such amendments are allowable after the date on which the notice appears in the Official Journal.