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Date Published

Amendments Filed Before Examination has Been Requested or After Acceptance/Certification

Amendment requests filed before examination has been requested (other than those where reg 10.6A applies, see below), and after acceptance of a standard patent application or certification of an innovation patent, are termed "voluntary amendments" and attract a fee (items 222 and 224 of Schedule 7).

Each separate request to amend an application or patent requires the payment of a fee.  For guidance on what constitutes a “separate” request, examiners should refer to Granting Leave to Amend and Publishing a Notice of the Granting of Leave to Amend.

Where multiple voluntary amendment requests are filed and a fee has been paid for the lodging of each request then, in accordance with the Corporate Guidelines for Refunds and Waivers, the fee "cannot and may not be refunded".

If the fee has not been paid, examiners should follow the procedures outlined in 2.27.3 Fees Not Paid or Requested and not examine the request.

Deferred Consideration of Request for Amendment – Regulation 10.6A

In the case of an application for a standard patent, where a request for examination has not been made and the applicant files a request for leave to amend on or after 1 January 2012, the applicant may defer consideration of the proposed amendments until substantive examination of the application commences (reg 10.6A).

In this situation, the request for leave to amend is taken to be filed immediately after the applicant files any subsequent request for examination (reg 10.6A(2)) and consequently no fee is payable (note ‘Amendments Filed After Examination has Been Requested’ below).

Amendments Filed After Examination has Been Requested

Amendments filed, or deemed to be filed (reg 10.6A), after a request for examination has been made do not require the payment of a fee. If fees for a voluntary amendment have been paid after examination has been requested, this should be brought to the attention of COG who will automatically refund the fee as an overpayment.

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