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Date Published

Before acceptance, a patent request can be amended under sec 104 to convert a request for an innovation patent to one for a standard patent and vice versa.

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

Examination Practice – Conversion From Standard to Innovation

Where the conversion is from a standard to an innovation patent application, and a first or subsequent report has issued on the standard patent application, examination must necessarily cease following the conversion, as there is no longer a standard patent application to examine.  There is also no refund of the examination request fees for the standard application.

However, in the situation where there are outstanding sec 104 amendments on file, examiners should establish (by contacting the attorney if necessary) whether the applicant intends for the amendments to be included in the specification prior to the conversion, or to be treated as amendments in anticipation once the conversion has taken place.  If the intention is for the amendments to be included prior to the conversion, examiners should proceed as follows:

  • where the amendments are allowable, complete the voluntary sec 104 allowance form; or
  • where the amendments are not allowable, issue an adverse (voluntary amendment) report, noting that any outstanding issues may not be resolved before the final date for acceptance or the conversion.​​​​​​​

Note: In either situation, the only consideration is the allowability of the amendments, irrespective of whether the amendments address the issues raised in any previous examination report.

Where the amendments are allowed prior to the conversion, these will form part of the granted innovation patent that is subsequently created.  Otherwise, the amendments will remain on the innovation patent file as amendments in anticipation.

If examiners are in any doubt about the appropriate course of action they should consult a senior examiner.

Note: The previous examination request for the standard application does not apply to the newly created innovation patent application.  Instead, the innovation patent application arising from the conversion must first be granted and a new examination request filed under sec 101A before examination can commence.

Amendment Not Allowable

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

After acceptance, an amendment which would convert an innovation patent application to one for a standard patent and vice versa is not allowable (Chapter 10 of the Regulations).

An amendment to a patent request relating to an innovation patent application upon which a patent has not yet been granted is not allowable if:

  • the patent application was provided for in sec 79C (divisional application for an innovation patent made after grant of an innovation patent); and
  • the effect of the proposed amendment would be to convert the application from one for an innovation patent to one for a standard patent (sec 102(2B)).
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