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Date Published

Note: The information in this part only applies to:

•  requests to amend filed, or deemed under reg 10.6A to be filed, on or after 15 April 2013, for standard patent applications where a request for examination was not filed before 15 April 2013, and

•  standard patents granted on such applications.

For all other requests to amend, see Standard Patents.

There is no opposition available for sec 104 amendments allowed before or at acceptance. However, where an examiner has inadvertently allowed an amendment which adds new matter contrary to sec 102(1), the provisions of sec 114(1) and reg 3.14 will operate to give a later priority date to the amended claim.

After the specification has been accepted, the particulars of the request to amend are advertised in the Official Journal. The purpose of this advertisement is to set a time limit for any opposition proceedings. The only ground for opposition to allowance of a proposed amendment of a complete specification is that the amendment is not allowable under sec 102 or reg 10.3 (reg 5.21).

After acceptance, amendments which would materially alter the meaning or scope of the patent request or other filed document are also advertised for opposition purposes.

Note, however, that advertisement does not mean the amendment has been allowed. Actual allowance is advertised in a separate advertisement under the provisions of sec 110.

Where amendments are opposed, the allowance or refusal of the amendments will be determined when a decision is made on the opposition.  

Where a request to amend is filed during opposition proceedings, either before or after any decision, while an opponent has the opportunity to provide comments (reg 10.2(7)), failure to do so does not preclude that opponent from opposing the request after it is advertised.

Where the Commissioner refuses an amendment request under reg 10.4 and a Court reverses the decision of the Commissioner, such reversal implies, in cases which have not been accepted, that the amendment should be allowed. However, where the case has been accepted, the Court's reversal allows for an advertisement under reg 10.5(2), and for possible opposition proceedings under the provisions of Chapter 5 (reg 5.10(1)).

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