We are currently developing a new site to host the Patent Manual of Practice and Procedure. The BETA version of this site is now available for you to review. The information and content displayed in the BETA site is only available for testing purposes. Do not use or reference the information in the BETA site when making any decisions or actions regarding IP rights.

2.20.11 Amendments During Examination

Date Published

Note: The information in this part only applies to:

  • requests to amend filed before 15 April 2013, other than those deemed under reg 10.6A to be filed on or after 15 April 2013.
  • requests to amend filed on or after 15 April 2013 for standard patent applications with an examination request filed before 15 April 2013.

For all other requests to amend, see 2.20.11A Amendments During Examination.

Amendments requested during examination of a national phase application must be made under sec 104 (see 2.23.2. General Provisions – Section 104 Amendments).

However, where amendments under sec 104 would result in the claiming of matter not in substance disclosed in the specification as filed, solely as a result of those amendments (as per sec 102(1)), then examiners should object accordingly (see also The Section 102(1) Provisions Explained, Meaning of “as a result of the amendment”).

Where the specification is a translation, applicants may wish to amend the specification during examination to claim apparently new matter which is allegedly disclosed in the foreign language specification as filed. In this situation, applicants must establish that the text of the foreign language specification is what they allege it to be (as distinct from what is present in the translation filed to enter the national phase). In order to meet this requirement, applicants will normally need to supply a new verified translation of the foreign language specification. In some circumstances, this translation may only be of the relevant part of the specification. An amendment to the claims should only be allowed if examiners are satisfied that the matter was in substance disclosed in the foreign language specification.

Back to top