Note: An amendment of a patent request is not allowable after the patent has been granted. This applies to innovation patents as well as standard patents.

Note: COG should be informed of any amendment to the patent request (see 5.5.4 Invention Details).

Form of Request to Amend, Requirement for New Patent Request

An amendment to the patent request may be included in a statement of proposed amendments under sec 104, for example an item stating:

“Amend the priority details to read US xx/xxxxxx.”

or words to that effect. The applicant may also file a replacement patent request incorporating the amendment. However, there is no formal requirement for applicants to file an amended copy of the request for reasons discussed in the paragraph below. The allowability criteria that apply are those relating to the patent request.

The patent request is a means for applicants to provide key bibliographic information that is transcribed into the record keeping systems maintained by the Commissioner. These systems are the authoritative record of the relevant facts and constitute the Register on grant. Therefore, when amending information originally provided on a patent request, it is not necessary for applicants to file an amended copy of the request. Similarly, the Commissioner will consider a request for amendment of information in the official records as equivalent to a request to amend the patent request, and thus can be effected under sec 104. This applies regardless of whether the case is a national phase application.

The request may also be amended under sec 113 (persons claiming under assignment or agreement). Information on sec 113 and sec 104 amendments, involving a change in the name of the applicant or nominated person, is provided in 2.6.4 Changing the Applicant or Nominated Person.

Note: Any amendment to make the nominated person different from the applicant is of no effect, as the applicant is taken to be the nominated person (reg 3.1A). Applicants should be advised of this fact.

Where a change occurs in the stating of the inventors (including where this is as a result of restricting the invention, such that all the originally stated inventors are no longer the actual inventors of the invention), an amended request specifying the revised actual inventors must be filed as a sec 104 amendment. These amendments are processed by COG.

Effect of Amendments to Patent Request on Notice of Entitlement

If a notice of entitlement was filed prior to the amendment (e.g. as part of the request for examination), then a new notice may be required. Any notice filed subsequent to the amendment must be consistent with the changed circumstances.

Non-Allowable Amendments to Patent Request

The amendment of a patent request is not allowable in certain circumstances.

After Grant

After grant of a patent, a patent request cannot be amended, regardless of the nature of the proposed amendment. This applies to innovation patents as well as standard patents. Therefore, when a proposed amendment to the patent request of a granted patent is received, an adverse report should be issued explaining that:

the proposed amendment is not allowable; and
rectification of the Register may be sought under sec 191A.

Note: Grant occurs automatically unless a bar to grant flag is set in PAMS. Where a proposed amendment after acceptance, but before grant, would affect what is recorded on the Register (such as an amendment to the title or to a patent request), examiners should immediately contact COG to arrange a bar to grant flag in PAMS. This ensures grant does not occur until the amendment has been allowed or otherwise finally dealt with.

After Acceptance – Conversion of Patent Application

After acceptance of a patent, an amendment to a patent request is not allowable if the proposed amendment would convert the patent application:

a. from an application for a standard patent to an application for an innovation patent; or

b. from an application for an innovation patent to an application for a standard patent; or

c. into a divisional application under sec 79B or sec 79C where both:

the request to amend was filed, or deemed under reg 10.6A to be filed, on or after 15 April 2013; and
if the application is for a standard patent, a request for examination was not filed before 15 April 2013.

At Any Time – Conversion to Divisional Application Under Specific Circumstances

At any time an amendment to a patent request is not allowable if all of the following conditions are met:

a. the amendment would convert the application into a divisional application under sec 79B or sec 79C; and

b. the time in which a divisional application could have been filed under sec 79B(3) or sec 79C(2) (as in force after 15 April 2013) has expired; and

c. the request to amend the patent request was filed (or deemed to be filed under reg 10.6A) on or after 15 April 2013; and

d. if the application is for a standard patent, no request for examination was filed before 15 April 2013.

Note: Even if the application in question was filed before 15 April 2013, the time period that applies, with reference to sec 79B(3) and sec 79C(2), is nevertheless the same as that which would apply to a divisional application filed after that date.

Prior to Publication

An amendment to a patent request is not allowable where both of the following conditions are met:

a. the proposed amendment is requested in the 3 week period before a notice under sec 54 is due to be published including the date of publication; and

b. the proposed amendment either:

converts the patent application from an application for a standard patent to an application for an innovation patent; or
changes the priority date of the application to a later date.