Requirements in Relation to Providing Reasons for Proposed Amendments

Date Published

Under reg 10.1(3), it is open to the Commissioner to require a statement of reasons for the request for leave to amend and, where appropriate, evidence in support of the request. The applicant or patentee must file these within 3 months of being requested to do so. If the applicant or patentee fails to comply with this request, the Commissioner must refuse the request for leave to amend under reg 10.4(b).

In general, reasons will not be required. However, if the amendment contravenes sec 102(1) and sec 102(2), but the applicant wishes to invoke sec 102(3) in regard to there being a clerical error or obvious mistake (see 2.23.10 "Clerical Error" and "Obvious Mistake"), then a statement as to whichever of these pretexts is being relied upon will need to be provided by the applicant or patentee.  Usually evidence in support of the request will only be necessary when the amendment is in respect of a clerical error.

Apart from where a clerical error or obvious mistake is involved, examiners are not required to have regard to any reasons given by the applicant for requesting an amendment.  The Commissioner does not have any discretion to refuse a request for amendment on the basis of deficiencies in the reasons given for requesting an amendment (New England Biolabs Inc v Commissioner of Patents & Anor [2001] FCA 787 at [53, 54]; 52 IPR 1).