2.23.13.3 Amending a Non-Convention Patent Request to a Convention Patent Request

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

A patent request for a non-Convention patent application, upon which a patent has not yet been granted, can be amended to a Convention patent request (sec 104).

When considering an amendment of this type, it should be noted that the original non-Convention patent request must have been filed within twelve months of the date of ‘the basic application in the Convention country’ on which the amendment request is based. Unless the patent request satisfies this condition, it cannot meet the basic requirement of a Convention patent request and therefore the amendment is not appropriate.

In general, a request to amend a non-Convention to a Convention patent request will, if allowed, ‘materially alter the meaning or scope of the request’.  This is because the amendment will prima facie change the priority date of the claim(s) of the complete specification, resulting in an earlier priority date than would otherwise be the case had the patent request remained a non-Convention one.

Prior to acceptance, leave to amend can be granted and the amendment allowed without advertisement.  After acceptance leave to amend must be advertised before the amendment is allowed (reg 10.5(2)).