2.23.13.8A Amendments to a Provisional Specification

Note: The information in this part only applies to provisional applications filed on or after 15 April 2013.  For all other provisional applications, see 2.23.13.8 Amendments to a Provisional Specification.

A proposed amendment of a provisional specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:

• the provisional specification as filed;
• an abstract that was filed with the provisional specification;
• a missing part of a provisional application that was incorporated into the specification in accordance with reg 3.5A.

(reg 10.3(1))

For information on the considerations for determining whether an amendment would claim or disclose matter that extends beyond that disclosed in the relevant documents taken together, see 2.23.8.1A  The Section 102(1) Provisions Explained, Meaning of “claim or disclose matter that extends beyond”.

Subsection 102(3) provides a general exemption from the provisions of sec 102(1) and sec 102(2) for the purposes of correcting a clerical error or an obvious mistake, or for complying with sec 6(c) (deposit requirements).  However, there is no such exception for the amendment of provisional specifications.  Therefore, an amendment to correct a clerical error in a provisional specification is not allowable if, as a result of the amendment, the provisional specification would claim or disclose matter that extends beyond that disclosed in the relevant documents taken together.  

In general, an amendment which is properly in the category of correcting an 'obvious mistake' would not result in the specification claiming or disclosing matter that extends beyond that disclosed in the provisional specification as filed (together with other relevant documents).  Similarly, amendments that make no change in the technical disclosure, such as replacing quantities with exact equivalences, or replacing imperial measurements with equivalent metric measurements, would not extend beyond the earlier disclosure.  Otherwise, there is a high presumption that the amendment would result in the specification claiming or disclosing matter that extends beyond that disclosed in the relevant documents.  In particular, any amendment which is ‘worthwhile’ would appear to fall within this category.

When a request is made for a certified copy of a provisional specification which has been amended, copies of the specification as filed and as amended, are certified together, and supplied.  As the determination of priority dates is the responsibility of each individual jurisdiction, that determination can only be made if the jurisdiction is aware of the disclosure in the specification as filed, as well as the specification as amended.