General Considerations

Date Published

A national phase application may contain amendments already made in the international phase under Article 19, Article 34, Rule 91 or Rule 92bis. There may also be amendments made, or proposed, in the national phase under sec 104 prior to examination.

It is essential at the outset of national phase examination to correctly identify the documents upon which examination is to be based.

In general, examination must proceed on the basis of amendments already made, whether or not incorporated into the complete specification on file. However, examiners should note that where a translation of a PCT application becomes the complete specification, special considerations apply (see General Considerations).

Corrected Versions

On rare occasions, the International Bureau (IB) will publish a corrected version of a pamphlet after it has entered the national phase.  When this occurs, the pamphlet as published (or republished) at the time of national phase entry is the specification for the purposes of examination. Any subsequent republication of the pamphlet is to be ignored for the purpose of determining the specification in the national phase. However, such a republication will become relevant when considering the allowability of any amendments under sec 102(1).

As PAMS downloads the version(s) of the pamphlet available in IP Australia at national phase entry, there is a slight possibility that national phase entry will occur between republication by the IB and IP Australia receiving the corrected pamphlet (there is a 7-10 day delay in the receiving the new publication from the IB).  For examination purposes it should be assumed that this has not occurred, unless examiners are aware of information to the contrary (such as by being informed by the applicant or when looking up other information on Patentscope).  Where this circumstance arises, the matter should be referred to Business Process Improvement for attention.

A corrected version of an IPER/IPRPII may also be issued.  If there are amendments referred to in the corrected version of the IPER/IPRPII which are dated later than those referred to in the original IPER/IPRPII, then the establishment date of the IPER/IPRPII must change.  Otherwise, the later version of the IPER/IPRPII may be treated as a mere 'correction' and not a re-established IPER/IPRPII.