The amendments must be in the form of a statement of proposed amendments (reg 10.1(1)). Where proposed amendments are included in, or intermingled with, ordinary correspondence, the statement of proposed amendments will be prima facie ambiguous. Thus, an objection should be taken and a separate statement of proposed amendments requested.

Note: The formal requirements for amendments are provided for by Schedule 3 of the Regulations, or the Patents (Formalities Requirements for Patent Documents) Determination 2019 (Formalities Determination), depending upon certain timing requirements. For further information, see 2.29 Formalities and Forms.

The relevant provisions are:

Formalities Determination (sec 18)
Schedule 3 (clause 5(5)) (see also reg 10.1(2)).

Amendment Item Numbers

The key consideration with amendment item numbers is for Examiners to ensure that the nature of the specification as a result of the proposed amendments is clear.

The numbering of proposed amendments is also an important issue as it informs COG staff, when assembling the specification after acceptance or when incorporating allowed voluntary amendments, what changes to make to the specification.

In a statement of proposed amendments (SOPA), the proposed amendments must be numbered consecutively. Where amendment items are ambiguous or otherwise lead to ambiguity, such that there is doubt as to the amendment to be made or how the specification is to be assembled as a result of the proposed amendments, an objection should be taken. Where the application would otherwise be in order for acceptance, apart from non-consecutive amendment item numbers, examiners may notionally renumber the statement of proposed amendments and enter the appropriate amendment number when completing the ‘Amendments Report’ screen in PAMS (screen 5 of 7) at acceptance. When this course of action is contemplated, the applicant or attorney should be contacted by phone to obtain their approval. However, where a further adverse report is to issue, the report should refer to the notional renumbering (see PERP code [G30]).

It should be noted that the numbering of proposed amendments need not commence with 1. For amendment requests filed prior to acceptance of an application, either in anticipation of, or in response to, an examination report, the amendment item numbers of the accompanying SOPA must be consecutive with the previous SOPA accompanying an earlier amendment request filed in anticipation of, or in response to, an examination report, but these SOPAs need not be numbered consecutively with any earlier voluntary amendment requests, although it is acceptable if that is the case.

It is acceptable if SOPAs accompanying voluntary amendment requests are numbered non-consecutively with previous SOPAs accompanying other voluntary amendments requests (although it is acceptable if they are).

Form of Amendments

Substitute Pages or Documents

The applicant or patentee is required to make amendments to the specification (including drawings, graphics and photographs) by means of substituting one page or document for another page or document. Amendments made by deletions and/or insertions by specifying page and line numbering are not permitted.

An amendment of the patent request or notice of entitlement is also required to be effected by means of substitute documents or pages. However, the applicant can amend particulars that appear on the patent request without replacing the patent request (see 2.23.13.1 Amendment of Patent Request).

Page Numbering

Under reg 10.2(1)(a), examiners must consider whether the proposed amendments comply with Schedule 3 or the Formalities Determination. A consequence of this is that an amendment cannot be allowed in cases where pages, drawings, graphics, photographs or claims are added/deleted from the specification, without substituting renumbered subsequent pages, drawings, graphics, photographs and claims (even if the only alteration to the page is the renumbering), except in the following circumstances:

where an amendment has the effect of adding new pages to a specification, if the extra pages are numbered alpha-numerically in accordance with where they are to be inserted, for example:

'Delete page 3, insert new pages 3 and 3A.'

where an amendment has the effect of deleting pages of a specification, it is not necessary to renumber the subsequent pages if it is clear that the existence of missing pages is intentional. This may be effected as follows:
at the bottom of the page immediately preceding the omitted pages, insert words such as:

‘The next page is page xx.’

insert a page for the missing page, containing words such as:

‘This page is intentionally blank.’

where several sequential pages are missing, insert a single page containing words such as:

‘Pages xxx to yyy are intentionally blank.’

where an amendment results in a lack of continuity in page numbering with the abstract, it is not necessary to renumber the abstract page(s) (noting that under reg 10.3(2), the amendment of an abstract is not allowable; see 2.8.3A Amendment of Abstract).

If the pages of a specification are not consecutively numbered as a result of amendments made under Article 19 or Article 34 of the PCT, and an amendment in the national phase merely continues the previous specification format, no objection applies in respect of the incorrect numbering (see 2.20.10.2 Formality Considerations).

Missing Pages

In the situation where a statement of proposed amendments is provided, but amended page(s) are missing from the attorney’s correspondence, examiners should request for the missing pages to be provided, either by phone or in a further report.

The attorney may provide the missing pages without a further statement, in which case the missing pages may have a different date stamp from the earlier statement in which they are formally proposed to be amended. In this situation, an Assembly Note should be added to the case file to inform COG that the statement of proposed amendments and the amended pages are in different files in PAMS (see 5.10.11.3 Assembly).

At acceptance, examiners should enter the date on which the last statement was filed in the ‘Amendments Report’ screen in PAMS (screen 5 of 7), irrespective of whether any of the amended pages have a later date stamp.

Requirement for Marked Up Copies of the Amended Pages

Where substitute pages or documents are filed, the applicant or patentee is required to file 2 copies of each page or document, with one copy marked to indicate the nature and location of the proposed amendments. If no marked copies are filed, and the amendments are not apparent and are difficult to find, the applicant or attorney should be contacted and asked to supply the marked copy.

It may be clearer or more convenient for the applicant or patentee to mark a copy of the original (unamended) page, rather than a copy of the amended page. If the nature and location of the amendments can be determined by this means, no objection should be taken. In addition, if the amendments are so extensive that it would be impractical to mark where the changes have been made, examiners should not object to the second copy simply being marked as "new page" or "all new".

Providing Oral Opinions on Amendments

Where an applicant, instead of filing a statement of proposed amendments, asks for an opinion on possible new claims, the following practice should be employed:

any opinion provided should be confined to amendments which are minor in nature;
comment should be limited to the precise inquiry made; and
there must be an expectation that a formal amendment will follow quickly.

Any oral opinion must be recorded on the file.