2.23.7A Allowability of Amendments to Complete Specifications

Note: The information in this part only applies to:

• requests to amend filed, or deemed under reg 10.6A to be filed, on or after 15 April 2013, for standard patent applications where a request for examination was not filed before 15 April 2013, and standard patents granted on such applications.
• ​​​​​​​requests to amend filed on or after 15 April 2013 for innovation patent applications, and innovation patents where a request for examination was not filed before 15 April 2013, or the Commissioner had not decided before 15 April 2013 to examine the patent.
  

For all other requests to amend, see 2.23.7 Allowability of Amendments to Complete Specifications.

In this topic:

Note: Where Court proceedings are pending in relation to a patent application or patent, amendments to the specification must not be allowed (see point 7 below). In this situation, which will generally be evident from the correspondence on file, examiners should refer the case to Patent Oppositions.

Section 102 sets out the circumstances in which amendments are not allowable.  These provisions are summarised below with detailed discussion in ensuing paragraphs.

General Provisions

1. An amendment of a complete specification is not allowable at any time:
   if the amendment would result in the specification claiming or disclosing matter that extends beyond the combined disclosure of the complete specification as filed, together with other documents prescribed by reg 10.2A.
   (see sec 102(1) and 2.23.8A Allowability Under Section 102(1))
2. An amendment of a complete specification is not allowable after the relevant time, that is:

i. after acceptance of a standard patent; or

ii. after a decision to certify an innovation patent;

IF, as a result of the amendment:

• a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
• the specification would not comply with sec 40(2), sec 40(3) or sec 40(3A).

(see sec 102(2), sec 102(2A) (meaning of “relevant time”) and 2.23.9 Allowability under Section 102(2) etc)

BUT under sec 102(3) the above provisions do not apply where an amendment is for the purposes of:

• correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification; or
• to comply with the deposit requirements of sec 6(c)

(see point 5 below).

(see 2.23.10 "Clerical Error" and "Obvious Mistake")

Specific Provisions Relating to Specifications for Innovation Patent Applications and Innovation Patents

3. An amendment of a complete specification for an innovation patent is not allowable until after the patent has been granted, unless it is an amendment proposed in response to a formalities direction under reg 3.2B.

(see sec 102(2D) and reg 10.2C(4))

4. An amendment of a complete specification for an innovation patent is not allowable if it would result in the specification claiming:

• a thing mentioned in sec 18(2) (human beings and the biological processes for their generation); or
• a thing mentioned in sec 18(3) (plants and animals and the biological processes for their generation) other than a thing mentioned in 18(4) (a microbiological process or a product of a microbiological process).

(see sec 102(2D), reg 10.2C(5), sec 18(2), sec 18(3) and sec 18(4))

Specific Provisions Relating to Specifications Relying on the Budapest Treaty

5. An amendment of a complete specification relating to the deposit requirements of sec 6(c) is not allowable if the amendment would result in the specification not including each of the matters specified in sec 6(c).

(see sec 102(2D), reg 10.2C(2) and 2.23.12.1 Amendments relating to Micro-Organisms)

6. An amendment of a complete specification is not allowable if the Commissioner has given a copy of the amendment request to a person identified below and that person has not been given a reasonable opportunity to be heard with respect to the amendment:

• a person requesting a certificate authorising release of deposited material under Rule 11.3(a) of the Budapest Treaty in respect of the patent or patent application; or
• a person who has notified the Commissioner that the micro-organism deposit requirements of sec 6(c) or sec 6(d) ceased to be satisfied in respect of the patent or patent application.

(see sec 102(2D), reg 10.2C(3), reg 10.2(8), reg 10.2(9) and reg 3.25)

Specific Provisions Relating to Specifications Where Court Proceedings are Pending

7. An amendment of a complete specification is not allowable if making the amendment would be contrary to sec 112 or sec 112A. That is, a complete specification must not be amended where relevant Court proceedings are pending or when an appeal has been made against a decision of the Commissioner, except where the amendments are directed by the Court under sec 105.

(see sec 102(2D), reg 10.2C(6), sec 112, sec 112A and 2.23.3.4 Amendments Arising Out of Decisions or Directions Under Appeal)