2.23.8.1A The Section 102(1) Provisions Explained

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 2.23.8.1 The Section 102(1) Provisions Explained.

In this topic:

Note: Under sec 102(3), the provisions of sec 102(1) do not apply to an amendment for the purposes of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification (see 2.23.10 “Clerical Error” and “Obvious Mistake”), or to comply with the deposit requirements of sec 6(c) (see 2.7.5 Amendments to Insert Section 6(c) Information and Extensions of Time Therefor).

Meaning of “as a result of the amendment”

Under sec 102(1), the clause “as a result of the amendment” prescribes that a proposed amendment is not allowable where that amendment results in the specification claiming or disclosing matter that extends beyond the combined disclosure of the specified documents.

An amendment that does not introduce new matter is therefore allowable.  This is so even where the amendment retains new matter that was introduced in an earlier allowed amendment (e.g. voluntary sec 104, Article 34 etc).

For example, new matter may be present in a claim that was introduced by an Article 34 amendment during the international phase.  In this situation, a subsequent amendment proposed under sec 104 which retains the Article 34 amendment, but does not itself add any new matter, would be allowable under sec 102(1).  This is because the new matter was not added as a result of the subsequent sec 104 amendment; it was added by the Article 34 amendment.  

(Note that in this situation, consideration should also be given to whether the subject matter of the Article 34 amendment is supported for the purposes of sec 40(3)).

For additional information on applying these provisions, see 2.23.8.2A Section 102(1) Examination Practice.

Meaning of “claim or disclose matter that extends beyond”

Under sec 102(1), the clause “claim or disclose matter that extends beyond” requires that an amendment must not add new matter that the hypothetical skilled person could not directly derive by reading the information in the combination of documents identified in sec 102(1) and reg 10.2A, i.e. the explicit and/or implicit disclosure of the complete specification as filed, taken together with the other documents prescribed in reg 10.2A.  However, where the person skilled in the art could directly derive the matter sought to be added to the specification from this combination of documents, an amendment will be allowable under sec 102(1).

Thus, the correct approach to considering whether an amendment adds new matter is to ask whether the skilled person would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn from the combined disclosure of the complete specification as filed and other prescribed documents.  This comparison is a strict one in the sense that subject matter will be added unless it is clearly and unambiguously disclosed, either explicitly or implicitly, in the relevant documents.  Conversely, it has always been permissible to add a feature to a claim if it simply excludes protection for part of the subject matter of the claimed invention and does so in a manner that does not add to the disclosure.  (Consistent with the UK Court of Appeal in Sudarshan Chemical Industries Ltd v Clariant Produkte (Deutschland) GMBH [2014] RPC 6 at 186 [62])

For additional information on applying these provisions, see 2.23.8.2A Section 102(1) Examination Practice.

Meaning of “the complete specification as filed, and other prescribed documents”

Under sec 102(1), the allowability of amendments must be considered by comparing the subject matter of the amendments with the combined disclosure of:

a. the complete specification as filed, that is the description, claims and any drawings, graphics, photographs and/or sequence listing, as these stood at the filing date of the application;

and

b. the documents prescribed by reg 10.2A which are:

• an abstract filed with the complete specification (this does not include abstracts drafted by examiners during international or national examination);
• any part missing from the complete specification at filing that was later incorporated into the specification under reg 3.5A or PCT Rule 20.5 or Rule 20.6; and
• an amendment that has been made to the complete specification after filing, for the purpose of:

i. correcting a clerical error or obvious mistake; or

ii. complying with sec 6(c) (micro-organism deposit requirements).

Thus, an earlier amendment to the complete specification to correct a clerical error or an obvious mistake, or to comply with the deposit requirements of sec 6(c), is a prescribed document for the purposes of sec 102(1).  Consequently, the disclosure of such amendments must be taken into account (together with the complete specification as filed and any other prescribed documents), when considering the allowability of subsequent amendments under sec 102(1).

However, any earlier amendment request(s) for reasons other than to correct a clerical error or an obvious mistake, or to comply with sec 6(c), whether previously allowed or not, are irrelevant to the allowability of any subsequently proposed amendments under sec 102(1).  

The following documents are also not part of the complete specification as filed or prescribed documents for the purposes of sec 102(1) and are therefore irrelevant to the allowability of any subsequently proposed amendments under sec 102(1):

• Article 34 amendments;
• associated applications, such as a provisional, additional, divisional or parent (or other ancestor, e.g. grandparent) applications;
• a translation of an application originally filed in a language other than English.

For further information on applying these provisions, see 2.23.8.2A Section 102(1) Examination Practice.