When Amendment May Be Requested

Date Published

Leave to amend under sec 104 may be requested at any time, either before a request for examination is made, during examination or after acceptance or grant.  Different provisions apply depending on when leave to amend is requested and an amendment request fee applies in particular circumstances (see Fees Required for Amendment Requests).  Where amendment of a lapsed application is requested (such as in relation to an assignment) the case should be referred to COG .

Amendments in Anticipation

In the case of an application for a standard patent, where a request for examination has not been made and the applicant files a request for leave to amend, the applicant may ask the Commissioner to defer consideration of the proposed amendments until substantive examination of the application commences (reg 10.6A). The applicant will be taken to have asked the Commissioner to defer consideration of the amendments if the heading “Amendments in anticipation of examination” or similar is used in the correspondence accompanying the proposed amendments.

In this situation, the request for leave to amend is taken to be filed immediately after the applicant files any subsequent request for examination (reg 10.6A(2)) and consequently no fee is payable.

Amendments in Transit

Where amendments in anticipation are filed after a request for examination is made, but examination has not yet commenced, attorneys and applicants are requested to contact COG and forewarn them of the amendments. COG will then place a case note on the file drawing attention to the amendments being in transit.