5.7.7.2 Considering the amendments and comments from the opponent

Also in this Chapter:

• 5.7.7.1 Initial processing of the request to amend during oppositions
• 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
• s102 What amendments are not allowable?
• s104 Amendments by applicants and patentees

Patent Regulations:

• reg 10.2(7) Commissioner to consider and deal with requests for leave to amend

Related Chapters:

• 5.7.4.3 Allowability of amendments after acceptance

On this page

• Overview
• Examination practice:
  • Dealing with amendments during opposition proceedings
  • Dealing with opposition comments
  • Further proposed amendments.

Overview

This section provides guidance on consideration of:

• amendment requests received from the applicant or patentee during opposition proceedings;
• comments received from third-party opponents during opposition proceedings; and
• further amendments arising from the proceedings.

Examination practice

Dealing with amendments during opposition proceedings

When examiners receive a case file for consideration of amendments during opposition proceedings, they must give high priority to the task and return the file to Oppositions as soon as possible.

For guidance on the allowability criteria for amendments during oppositions, see also 5.7.4.3 After acceptance.

Dealing with opposition comments

After considering the allowability of the amendments, the action required by the examiner will vary depending on whether the opponent has provided any comments on those amendments.

If no comments have been received within the time allowed for comments to be filed, the examiner’s report (clear or adverse) should be issued in the normal way.

If the opponent has provided comments on the proposed amendments, the examiner must reconsider any previous report or opinion on the allowability of the amendments, in light of the opponent’s comments. After this reconsideration, the examiner should either:

• issue an adverse report in the normal way and email ohl@ipaustralia.gov.au noting the date of issue and the application number; or
• if no adverse report is required, proceed with the grant of leave and advertisement of amendments as normal.

The opponent can provide comments on any issue and is not restricted to the allowability criteria of s102. For example, they may comment on issues of novelty. However, any comments unrelated to the s102 criteria are irrelevant to the allowability of the amendments and therefore cannot form the basis of an objection in an adverse report under s104. 

Opponents who have provided comments on proposed amendments through this process (that is, under reg 10.2(7)) can still:

• oppose the allowance of those amendments; and
• oppose the grant of a patent under s59 or s101M.

Further proposed amendments

If the applicant or patentee files a further statement of proposed amendments, Oppositions will send the opponent a copy of the amendments and any submissions, together with an invitation to comment.

The amendments will then be forwarded to the examiner for consideration.