5.7.7.1 Initial processing of the request to amend during oppositions

Also in this Chapter:

• 5.7.7.2 Considering the amendments and comments from the opponent
• 5.7.7.3 Considering amendments as a result of a hearing decision
• 5.7.7.4 Amendments while a decision of the Commissioner is being appealed

• 5.7.7.5 Annex A - Section 104 Amendments During Opposition Proceedings: Check Sheet

Key Legislation:

Patents Act:

• s59 Opposition to grant of standard patent
• s101M Opposition to innovation patent

Patents Regulations:

• reg 10.2 Commissioner to consider and deal with requests for leave to amend​​​​​​​

On this page

• Overview
• Examination practice:
  • Issuing the invitation.

Overview

Regulations 10.2(6) and 10.2(6A) provide that if the grant of a standard patent is opposed (s59) or a certified innovation patent is opposed (s101M), and the applicant or patentee requests leave to amend the patent request or complete specification, the Commissioner must:

• provide a copy of the request and the statement of proposed amendments to the opponent as soon as practicable after the applicant or patentee has filed the request; and
• invite the opponent to comment on the request and the statement of proposed amendments.

This gives the applicant or patentee the opportunity to consider the views of the opponent on the proposed amendments and then to rectify any deficiencies identified by the opponent.

The main purpose of this is to facilitate resolution of the opposition proceedings.

Examination practice

Issuing the invitation

Oppositions will:

• arrange for a copy of the amendment request, the proposed amendments and any submissions to be sent to the opponent; and
• invite them to comment on the amendments within 21 days (reg 10.2(7)).

The opponent may request more time to comment (up to a maximum of 2 months from the initial invitation). Any such request should be accompanied by reasons. The extra time should not be assumed to be automatically available.

If an examiner receives a case file with amendments for consideration and the invitation has not been issued, they should return the file to Oppositions for processing. Once the invitation has been issued, the file will be returned to the examiner for consideration of the amendments.