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Date Published

Filed Documents – What Can be Amended?

A notice of entitlement is a filed document which can be amended under sec 104; see also 2.6.4 Changing the Applicant or Nominated Person.

However, certain filed documents cannot be amended under sec 104. These include statutory declarations, certificates and sworn documents (see Horst Johannes Wohlgemuth's Application (1970) 40 AOJP 4037).

Documents That are Not Filed Documents

The front sheet of a PCT pamphlet is not a filed document and therefore may not in itself be amended under sec 104. However, the information contained on the front sheet (and which is normally found in a patent request) is recorded as bibliographic data in PAMS and may be amended.  See also Patent Request Form.

Substantial Amendment

Where an amendment request relates to a filed document and the proposed amendment is substantial, it may in effect constitute the filing of a new document, as distinct from the amendment of the document already filed.  In this case, the request under sec 104 may not be appropriate and a request under sec 223 may be required instead.

Amendment of Documents That Relate to a Basic Application

A copy of the specification relating to the basic application can be amended under sec 104, for the purpose of correcting a clerical error or obvious mistake, by filing a new document. Such a document is regarded as an amendment and not a late filing.

In certain circumstances, at the time of filing a copy of the basic specification and its annexed translation, the translation may have been incorrect or otherwise not verified to the satisfaction of the Commissioner. If the applicant, before acceptance, wishes to voluntarily file a new translation, or to restate the verification of the translation of the basic specification, an additional certified translation may be filed, without invoking sec 104.  This should be accompanied by a statement and evidence, if required, providing details of, and reasons for, the unsatisfactory aspects of the originally filed document. An extension of time is not required for the filing of such a document (see Saint-Gobain Industries' Application (1978) AOJP 1364).  After acceptance, sec 104 must be invoked for this purpose.

For translations filed after 25 September 2019, where the Commissioner believes that the translation does not accurately reflect the contents of the basic specification, the applicant may be requested to file a corrected translation and/or certificate of verification (see Request for Corrected Translation or Certificate of Verification).

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