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2.23.12.2 Amendments Otherwise not Allowable to a Complete Specification

Date Published

Overview

The Commissioner may refuse a request to amend if of the opinion that the amendment is not allowable.

Where examiners become aware of any circumstances which could affect the allowance of the request, but do not in themselves give rise to an objection under sec 104(2), the case should be forwarded to the supervising examiner for consideration.  If appropriate, the matter should then be referred through the supervising examiner to the Assistant General Manager (OEP).

Amendments of an accepted specification (whether or not the subject of opposition), or of a specification of a granted patent, should also be carefully checked for the possibility of extraneous effects.

For example, if there is a patent of addition, or an accepted application for a patent of addition, and a request to amend the parent specification has been filed, it is necessary to check whether the amendment would result in the claims of the additional becoming redundant, ambiguous or meaningless and, whether the invention claimed in the additional can continue to be regarded as an improvement in, or modification of, the invention claimed in the amended parent specification. Similar considerations apply where a request is made by a patentee to amend a patent of addition.

Another example is where, as a result of amendment, a specification is clearly no longer patentable or, in the case of a patent, renders the patent obviously invalid. If an otherwise allowable amendment it likely to result in invalid claims in a patent (e.g. under sec 18), examiners should consult a supervising examiner to determine whether the case should be referred to Patent Oppositions to initiate re-examination.


Amendments During Opposition

Where a request to amend is filed as a result of a hearing officer's decision in opposition proceedings, examiners should consider the allowability of the amendments according to the procedure outlined in 2.23 Annex A – Section 104 Amendments During Opposition Proceedings: Check Sheet (see also 2.23.14.5 Amendments as a Result of a Decision).


Amendments to Overcome Prior Art

Where an amendment is sought for the reason of avoiding prior art documents that have come to the attention of the applicant or patentee (this may be apparent from the correspondence accompanying the amendment request), examiners should consider those documents.

Prior to acceptance, any relevant objections should be raised during the examination process.

After acceptance, where the proposed amendments would be objectionable under sec 40 and/or sec 18, regardless of their allowability under sec 102, examiners should consult a supervising examiner.  Where appropriate, the case should then be referred to Patent Oppositions with a view to initiating re-examination.

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