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2.23.2.8 Unfinalised Proposed Amendments Prior to Examination

Date Published

Note: In this part, a request for leave to amend other than in anticipation of, or response to, an examination report, is termed a voluntary request and the proposed amendments thereof voluntary amendments.


Request for Voluntary Amendment

Where an applicant:

  • files a voluntary request for leave to amend (that is not indicated as being in anticipation) before requesting examination; or
  • files a voluntary request for leave to amend at the same time or after a request for examination has been made, and indicates that the amendment is not to be treated as in anticipation (see below);

COG will forward the case file to the relevant examination section.  The voluntary amendment is to be processed independently of substantive examination and either an adverse sec 104 report should issue, or the amendment allowed forthwith.

If a substantive first report is to issue before leave to amend is granted, that examination report should be based on the specification as proposed to be amended and refer to the latest report issued on the amendment.  If further amendments are proposed in response to the substantive examination report, then these are taken to supersede the voluntary request and any further consideration of the amendments is to be subsumed into the substantive examination.

Note: Where examiners receive a voluntary amendment request and a request for examination has been filed, they may, where they consider it efficient to do so, expedite substantive examination of the application.  Consideration of the voluntary amendment is to continue separately, unless amendments are proposed in response to the substantive examination report as indicated above.


Amendments in Anticipation of Examination

Where an applicant files a request for leave to amend after a request for examination has been made, and it is not a voluntary request (see above), consideration of the amendment is to be subsumed into substantive examination.  Consequently, if an examination report has already been dispatched and is awaiting a response, a further report taking the amendment into account should be issued.

For standard patent applications, where an applicant files a request for leave to amend on or after 1 January 2012, and before a request for examination has been made, the applicant may defer consideration of the proposed amendments until substantive examination of the application commences (see 2.23.2.2 When Amendment May be Requested).


Amendments Relating to Micro-Organism Deposits

Amendments which have the effect of including details of a micro-organism deposit should be allowed forthwith. For further information see 2.7.5.1 Sections 104 and 223 - Insertion of Section 6(c) Information.

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