5.7.2.4 Converting the application

Also in this Chapter:

• 5.7.2.1 Form of the Request to Amend the Patent Request
• 5.7.2.2 Non-allowable amendments to a patent request
• 5.7.2.3 Changing the applicant or nominated person
• 5.7.2.5 Amendments to the notice of entitlement and other documents

Key Legislation:

Patents Act:

• s104 Amendments by applicants and patentees

Patents Regulations:

• reg 10.5(2) Commissioner to grant leave to amend

On this page

• Overview
• Examination practice:
  • Changing a standard patent to an innovation patent and vice versa
  • Changing a non-Convention patent to a Convention patent and vice versa:
    • Non-Convention patent to Convention patent
    • Convention patent to non-Convention patent
  • Changing a requested patent to a patent of addition.

Overview

Before acceptance, a requested patent can be converted:

• from a standard patent to an innovation patent and vice versa;
• from a non-Convention patent to a Convention patent and vice versa; or
• to a patent of addition.

These changes are not allowable after the application has been accepted.

Examination practice

Changing a standard patent to an innovation patent and vice versa

Before acceptance, a patent request can be amended under s104 to convert:

• a standard patent request to an innovation patent request; or
• an innovation patent request to a standard patent request.

After acceptance, conversion is not allowable (see Conversion of patent application after acceptance).

Where the conversion is from a standard to an innovation patent, and we have issued a first or subsequent examination report on the standard patent application:

• examination must cease following the conversion, as there is no longer a standard patent application to examine;
• the innovation patent application arising from the conversion must first be granted and a new examination request filed before examination can re-commence; and
• there are no refunds of the examination request fees for the standard application.

If there are outstanding s104 amendments on file, the examiner should establish (by contacting the attorney if necessary) whether the applicant wants the amendments to be made:

• to the standard patent specification before the conversion; or
• to the innovation patent after conversion.

If the amendments are to be made before the conversion, examiners should proceed as follows:

• if the amendments are allowable, complete the voluntary s104 allowance form; or
• if the amendments are not allowable, issue an adverse report on them, noting that any outstanding issues may not be resolved before the final date for acceptance or the conversion.​​​​​​​  

In either situation, the only consideration is the allowability of the amendments. There is no need to consider whether the amendments address issues raised in any previous examination report.  

If the amendments are made before the conversion, they will form part of the granted innovation patent that is subsequently created. If they are not made before the conversion, they amendments will remain on the innovation patent file as amendments in anticipation of the examination of that patent.

Changing a non-Convention patent to a Convention patent and vice versa

Non-Convention patent to Convention patent

An application for a non-Convention patent that has not yet been granted can be amended to a Convention patent application.

The basic criterion for this to be allowable is that the non-Convention patent application must have been filed within 12 months of the date of the basic application in the Convention country.

Normally, the conversion, if allowed, will ‘materially alter the meaning or scope of the request’. This is because it will change the priority date to an earlier date. Therefore, if the conversion occurs after the application has been accepted, leave to amend must be advertised before the amendment is allowed (reg 10.5(2)).

Convention patent to non-Convention patent

Similarly, a Convention patent application that has not yet been granted, can be amended to a non-Convention patent request.

This will also ‘materially alter the meaning or scope of the request’, by changing the priority date to a later date. Therefore, if the conversion occurs after the application has been accepted, leave to amend must be advertised before the amendment is allowed (reg 10.5(2)).

As the claims will now have a later priority date, any previous novelty assessment may need to be reviewed if the application has been examined and accepted.

Examiners should not grant leave to amend if they are aware of any documents that would cast doubt on the novelty of the claims if the amendment was made. Instead, consult a supervising examiner to determine whether the case should be referred to Oppositions to initiate re-examination.

Changing a requested patent to a patent of addition

If there is a request to amend a patent request to a request for a patent of addition, the examiner must check the patent request and complete specification to determine whether the patent is suitable to become a patent of addition, (see Patent of addition for requirements).

The conversion to a patent of addition will ‘materially alter the meaning or scope of the request’. Therefore, if the conversion occurs after the application has been accepted, leave to amend must be advertised before the amendment is allowed, (see Publishing a notice of the granting of leave to amend).

If a patent request and complete specification are not suitable for conversion to a patent of addition, examiners should refer the case to the Assistant General Manager (Oppositions) via a supervising examiner.