We are currently developing a new site to host the Patent Manual of Practice and Procedure. The BETA version of this site is now available for you to review. The information and content displayed in the BETA site is only available for testing purposes. Do not use or reference the information in the BETA site when making any decisions or actions regarding IP rights. Relevant Proceedings Pending

Date Published

Note: When checking for relevant proceedings pending during re-examination, examiners are to follow the procedures outlined in Post-Grant (Standard and Innovation Patents) and Conclusion of Re-Examination Otherwise.

Note: Where an amendment is in respect of a granted innovation patent, examiners are to follow the procedures outlined in Amendments.

An amendment to the specification of a patent (that is, a granted patent and not merely an accepted application) cannot be allowed if relevant proceedings are pending in relation to the patent (sec 112). When requesting an amendment, the patentee must declare that there are no relevant proceedings pending.

If no indication is given by the patentee as to whether relevant proceedings are pending, examiners are to request that the patentee provide the relevant statement within one month (reg 10.1(4)), in addition to reporting on other aspects of the amendment request (if appropriate).

Similar procedures apply at subsequent report stages where the patentee does not include a current statement. Leave to amend is not to be granted before a current indication is given that no relevant proceedings are pending. If a reg 10.1(4) request is not complied with within one month, the amendment request must be refused (reg 10.4(c)).  If a statement is received after the one month period has expired, the amendments must not be allowed unless an extension of time has been granted.

An indication in an amendment request, or separate statement, that no relevant proceedings are pending only applies at the time of filing the request or statement and may not be correct when the amendment is finally in order for allowance.

Moreover, if a request is made to amend the complete specification of an application (in which case the provisions of sec 112 are not appropriate), by the time the request is in order for allowance the application may have become a granted patent. In this situation, a declaration that no relevant proceedings are pending would not have been made at all.

If the request specifies, or the patentee during examination of the request indicates, that an action is pending, no further examination of the request is to take place. The matter should be referred to Patent Oppositions who will refuse the request.  

Case Law

Atlantis Corporation Pty Ltd v Schindler (No. 3) [2000] FCA 1758 provides some guidance on relevant proceedings.  In this case the Federal Court had already decided to revoke the patent. A stay was granted to allow for the determination of amendments already filed under sec 104.  It was concluded that there were no relevant proceedings pending, as the revocation proceedings had already been decided.

A decision by the Commissioner to refuse a request to amend was upheld by the Federal Court in Suntory Holdings Ltd v Commissioner of Patents [2013] FCA 999 (see Amendments Arising Out of Decisions or Directions Under Appeal).

Back to top