2.7.5.1A Sections 104 and 223 - Insertion of Section 6(c) Information

Date Published

Note: The information in this part only applies to:

  • standard patent applications with an examination request filed on or after 15 April 2013.
  • innovation patents with an examination request filed on or after 15 April 2013.
  • innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

For all other standard patent applications/innovation patents, see 2.7.5.1 Sections 104 and 223 - Insertion of Section 6(c) Information.

Overview

An amendment of the specification under sec 104 to include any or all of the information referred to in sec 6(c) (i.e. the name of the prescribed depositary institution and/or the file, accession or registration number of the deposit) can be made at any time before the end of the prescribed period. In general, the prescribed period ends immediately before the day on which the specification becomes open to public inspection (OPI), or immediately before acceptance, whichever is earlier (see 2.7.4.2.1 The Section 6 Provisions Explained and also sec 102(3)).

Any amendment of the specification to include sec 6(c) information after the end of the prescribed period will not achieve compliance with the deposit requirements, unless the applicant also obtains an extension of time under sec 223, such that the amendment can occur within the extended time period.

Note: Section 6(c) information may also be inserted under Article 34; see 2.7.5.2 Article 34 Amendments Concerning Section 6(c) Information.

When is an Extension of Time Under Section 223 Required?

An extension of time under sec 223 to include sec 6(c) information is only required if:

The specification has not included the information relating to the deposit if the relevant information was:

  • absent

    i.e. no information relating to the deposit was previously disclosed in the specification;

OR

  • incomplete

    i.e. information relating to the deposit was previously present, but that information was incomplete, e.g. the file, accession or registration number was omitted;

OR

  • incorrect and a hindrance

    i.e. information relating to the deposit was previously present, but that information was incorrect (e.g. the deposit number was wrong), and the incorrect information would have hindered a person seeking access to the deposit.​​​​​​​

Note: If incorrect information relating to the deposit was previously present, but the error would not have hindered a person seeking access to the deposit (e.g. if the file, accession or registration number contains an obvious mistake), then the specification “has included” the sec 6(c) information.

When is an Extension of Time Under Section 223 Not Required?

An extension of time under sec 223 to include sec 6(c) information is not required if:

  • the deposit information is not required for the purposes of sec 41, i.e. the deposit is not necessary to satisfy the requirements of sec 40(2)(a);

OR

  • the deposit information was present, and any incorrect information would not have hindered a person seeking access to the deposit;

OR

  • the deposit information was present, and an amendment has the effect of replacing (or supplementing) that information with information relating to a different deposit of the same micro-organism, e.g. a new or transferred deposit.​​​​​​​

Note: If the deposit requirements had ceased to be satisfied before filing the request to amend, the provisions of sec 41(4) and reg 3.30 apply.

Examination Practice

Where a sec 104 amendment is proposed to include sec 6(c) information in the specification, examiners should process the amendment regardless of whether an application under sec 223 has been made. The allowability of the amendment is not dependent upon whether an extension of time has been granted.  If the sec 223 request is refused, the applicant will not be able to rely on the deposit for the purposes of sec 40(2).

The processing of sec 104 amendments to insert sec 6(c) information differs from the processing of other sec 104 amendments.  Thus:

A sec 104 amendment to insert sec 6(c) information is processed and allowed separately from other proposed amendments, without requiring the remainder of the specification to be in order for acceptance.

  • Consequently, the amendment is allowed forthwith (reg 10.6(1)) and allowance is advertised as soon as possible.
  • Other amendments are allowed immediately before acceptance (reg 10.6(2)).

Examiners should therefore advise applicants that to facilitate correct processing, amendments to insert sec 6(c) information should be proposed as items separate from those proposing to amend other matters.

Applications under sec 223 are processed by Patent Oppositions.  If the case file contains an application under sec 223 which has not been granted, examiners should initially consult a supervising examiner. The supervising examiner will determine whether the application has been processed and arrange for any action by Patent Oppositions that may be required.

If the sec 223 extension of time to include sec 6(c) information has not been granted, or has been refused, examiners must disregard the deposit for the purposes of sec 40 and sec 41, and consider whether the claimed matter involving a micro-organism has been otherwise disclosed in the specification in a clear enough and complete enough manner.

Where the only outstanding matter is a sec 40 deficiency due to the fact that an extension of time to insert sec 6(c) information has not yet been allowed, the application cannot be accepted.  A report to this effect should therefore be issued.