Although there is an approved form for filing a request to amend (Form P/00/039), it is not necessary to use the specific form, as long as the correspondence contains the relevant information.

A request is also not required when the amendments are in response to, or in anticipation of an examiner’s report (reg 10.1(1A)).

In certain circumstances, the request (or correspondence) may also need to include:

for a granted patent, a statement that no relevant proceedings are pending in respect of the patent (see 5.7.1.2 Who can request amendments); and/or
if there is any exclusive licensee or mortgagee of the patent, a statement from that person giving consent to the amendment (see 5.7.1.2 Who can request amendments).

The request should clearly indicate the document to be amended. In particular, there may be several versions of the specification on file, so examiners should ensure that the amendments are made to the correct document.

Where a previous request under s104 has been allowed and there is a further request for amendment, the applicant must direct the request to the specification that incorporates the previously allowed amendments. Similarly, where a patent application has been accepted, the applicant must make a request for amendment using the specification that incorporates the amendments allowed at acceptance.

Statement of proposed amendments

The Patents (Formalities Requirements for Patent Documents) Determination 2019 provides guidelines on the formatting requirements for a statement of proposed amendments (SOPA). However, the applicant does not have to strictly comply with the determination as long as it is clear what the proposed amendments are.

Statement must be separate from correspondence

The amendments must be in the form of a statement of proposed amendments. Where proposed amendments are included in, or intermingled with, ordinary correspondence, the statement of proposed amendments will be considered prima facie ambiguous. Thus, an objection should be taken and a separate statement of proposed amendments requested.

Amendment item numbers

In a SOPA, the proposed amendments must be numbered consecutively. Amendment items in subsequent statements should follow on consecutively from the numbers in the previous statement.

However, it is not necessary for the numbering to be consecutive with any previous allowed amendments (that is, allowed voluntary s104 amendments, or amendments allowed at acceptance). For example, voluntary s104 amendment items 1-2 were allowed prior to examination. During examination, the applicant can restart amendment item numbering from item 1.

Issues arise when amendment items are ambiguous or otherwise lead to ambiguity - for example, where there are duplicate amendment items that refer to the deletion and insertion of the same text in a claim and it is unclear which of the deletion or insertion is the latter amendment, it will affect how the specification is assembled.

Where there is an issue with non-consecutive amendment items, examiners may notionally renumber the amendment items to be consecutive and enter the appropriate amendment item number when completing the task. The applicant or attorney should be informed of this renumbering by either phone conversation (if this is the only issue remaining before acceptance) or along with other objections in an adverse report. An assembly note regarding said renumbering should also be placed on file to assist with assembly of the specification.

Note that proposed amendment items do not need to start from 1.

Substitute whole pages or documents

Amendments to the specification (including drawings, graphics, and photographs) must be made by substituting whole pages or documents. Amendments cannot be made by specifying deletion and/or insertion of specific line numbers.

Similarly, an amendment of the patent request or notice of entitlement must also be made by substituting documents or pages. However, the applicant can amend particulars that appear on the patent request without replacing the patent request (see 5.7.2 Amendment of patent request and other filed documents).

Requirement for marked-up copies of the amended pages

The applicant or patentee must file 2 copies of each amended page or document. One of those copies must be marked up to show the nature and location of the proposed amendments, and the other copy must be ‘clean’ and have no mark-up.

If no marked copies are filed and the amendments are not obvious and are difficult to find, the applicant or attorney should be asked to supply the marked copy. However, a marked-up copy is not needed if the proposed amendments are reasonably obvious.

If the amendments are so extensive that it would be impractical to mark where the changes have been made, the applicant may simply mark the second copy as ‘new page’ or ‘all new’.

Maintaining consecutive page/claim numbering

Proposed amendments must comply with the formalities requirements (reg 10.2(1)(a); Schedule 3 or the Formalities Determination). Therefore, amended pages should have consecutive page/claim numbering:

when there is more than one page to be inserted in place of a single page, applicants should number alpha-numerically, for example, ‘Delete page 3, insert new pages 3 and 3A’;
when pages are deleted, applicants should insert statements such as ‘This page is intentionally blank’ or ‘The next page is page 10, not page 9‘; and
if there are significant amendments, applicants should renumber all pages.

Where an amendment results in page numbering that does not follow from the abstract, the abstract page(s) do not need to be renumbered, noting that abstracts cannot be amended (reg 10.3(2)).

If amendments made under Article 19 or Article 34 of the PCT result in the pages of a specification not being consecutively numbered and an amendment in the national phase merely continues the previous specification format, no formal objection applies in respect of the incorrect numbering. However, the applicant can still be advised to voluntarily correct the numbering if they wish. (See 5.3.1.2 Formalities checking during exam).

Amended pages are missing

There may be situations where a statement of proposed amendments is provided, but the substitute amended pages are missing or were not filed. The applicant should be asked to provide the missing pages, either by phone or in a further report.

The applicant can provide the missing pages without having to submit a further statement of proposed amendments. The missing pages the applicant provides may have a different date stamp from the earlier statement of proposed amendments. In this situation, an Assembly Note should be added to the case file that the statement of proposed amendments and the amended pages are in different files.

At acceptance, examiners should enter the date on which the last statement of proposed amendments was filed, regardless of whether any of the amended pages have a later date stamp.

Providing oral opinions on amendments

Where an applicant, instead of filing a statement of proposed amendments, asks for an opinion on possible new claims:

the examiner should only offer an opinion on amendments that are minor in nature;
the opinion should be limited to the precise inquiry made;
there must be an expectation that a formal amendment will follow quickly.

The oral opinion must be recorded on the file (see File of record of conversation).

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	06 Jun 2023

5.7.4.1 Form of proposed amendments (statement of proposed amendments)

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Request to amend