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Date Published

Where a decision or direction of the Commissioner (which for the majority of cases will have issued in an opposition to grant under sec 59) has been appealed to the Court, an amendment of the complete specification is not allowable, pursuant to reg 10.2C(6) and sec 112A. Consequently, if an appeal is pending and the applicant files a request to amend the specification under sec 104, that request will be refused. Where it appears that the request has not been refused, the matter should be referred to Patent Oppositions.

Once the appeal has been finalised, the applicant may either file the previously refused request, or file a new request. These later amendment requests will be processed according to the usual procedures.

Case Law

The application of sec 112A was considered by the Federal Court in Suntory Holdings Ltd v Commissioner of Patents [2013] FCA 999.

An opposition to the grant of a patent was heard by the Commissioner and the Commissioner’s decision appealed by the opponent.  Subsequent to the lodgement of the appeal, the applicant requested leave to amend the complete specification under sec 104.  The Commissioner refused the request on the grounds that sec 112A applied.

The Federal Court upheld this decision.  The Court concluded that as the amendment had not been allowed at the time the opponent lodged the appeal, sec 112A applies.  Therefore the complete specification must not be amended under sec 104 and the Commissioner can refuse the amendment.

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