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Date Published

Examiners are to ensure that as far as practicable, all matters bearing on the allowance of an amendment are considered fully prior to granting leave. Where an issue comes to an examiner's attention after leave to amend has been granted, leave to amend cannot be reversed, undone or re-done other than in exceptional circumstances.

If an application is accepted on or after 15 April 2013, and the patent has not yet been granted, acceptance may be revoked under sec 50A (see 2.15.5 Revocation of Acceptance). Similarly, certification of an innovation patent can be revoked under sec 101EA if there are no relevant proceedings pending (see Certification). In either case, the granting of leave and allowance of amendments that occurred at the same time is also revoked by virtue of reg 10.6B.

In other circumstances, if leave to amend is granted on or after 15 April 2013, the granting of leave may be revoked under reg 10.6B(3) if the Commissioner is satisfied that:

a. leave to amend should not have been granted, taking into account all of the circumstances that existed when leave was granted (whether or not the Commissioner knew the circumstances existed); and

b. it is reasonable to revoke the grant and allowance of the amendment (if applicable), taking into account all of the circumstances; and

c. there are no relevant proceedings pending.

If revoked:

a. leave to amend is taken to never have been granted; and

b. if allowed under reg 10.6, the amendment is taken not to have been allowed; and

c. the Commissioner must continue to examine and report on the amendment in accordance with reg 10.2(1); and

d. reg 10.5 and reg 10.6 continue to apply in relation to the amendment.

The power to revoke a grant of leave to amend under reg 10.6B(3) is only to be exercised by the Assistant General Manager (OEP) or the Supervising Examiner (Patent Oppositions). If it becomes apparent that an error has occurred in granting leave to amend, the matter is to be referred to Patent Oppositions immediately. Similar considerations to those discussed in 2.15.5 Revocation of Acceptance apply.

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