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2.20.11A Amendments During Examination

Date Published

Note: The information in this part only applies to requests to amend filed, or deemed under reg 10.6A to be filed, on or after 15 April 2013, for standard patent applications where a request for examination was not filed before 15 April 2013.  For all other requests to amend, see 2.20.11 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 specification claiming or disclosing matter that extends beyond that disclosed in the complete specification as filed (taken together with any other prescribed documents), 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 translation of the foreign language specification as indicated below. 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 does not extend beyond that disclosed in the foreign language specification as filed (taken together with any other prescribed documents).

New Translation Filed Before or On 25 September 2019

A certificate of verification for the new translation must be provided.

New Translation Filed After 25 September 2019

Where applicants become aware of an error or omission in the translation of the specification, they may file a corrected translation under the provisions of reg 3.5AC and reg 3.5AF.

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