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5.6.3.1 Consideration of Amendments made prior to Examination

Date Published

Key Legislation:

Patents Act:

  • s102 What amendments are not allowable? 
  • s104 Amendments by applicants and patentees  

Patents Regulations:

  • reg 3.5AB PCT applications--international applications taken to be applications under the Act
  • reg 3.5AC PCT applications--amendment
  • reg 3.17B PCT applications--examination requirements
  • reg 10.6A Deferred consideration of request for amendment

Patent Cooperation Treaty (PCT):

  • Article 19 Amendment of the Claims Before the International Bureau 
  • Article 34 Procedure Before the International Preliminary Examining Authority 

Regulations under the PCT:

  • Rule 91: Rectification of Obvious Mistakes in the International Application and Other Documents
  • Rule 92bis: Recording of Changes in Certain Indications in the Request or the Demand

Overview

It is essential to correctly identify the specification and claims to be examined at the outset of national phase examination.

A national phase application may contain amendments already made in the international phase under Article 19, Article 34, Rule 91, or Rule 92bis. There may also be amendments made, or proposed, in the national phase under s104 prior to examination.

In general, examination must proceed on the basis of amendments already made, whether or not incorporated into the complete specification on file. However, examiners should note that where a translation of a PCT application becomes the complete specification, special considerations apply (see 5.6.2.5 Translation of specifications).

​​​​​​​Examination Practice

​​​​​​​In general, amendments made under Article 19, Article 34, or Rule 91 are deemed to amend the Australian specification at the date of filing of the amendments (reg 3.5AB and reg 3.5AC).

S104 voluntary amendments

S104 voluntary amendments are processed independently of substantive examination and either an adverse s104 report should be issued, or the amendment allowed as soon as possible.

If a substantive first report is to be issued before leave to amend is granted, that examination report should be based on the specification as proposed to be amended and refer to the latest report issued on the amendment. If further amendments are proposed in response to the substantive examination report, then these are taken to supersede the voluntary request and any further consideration of the amendments is to be subsumed into the substantive examination.

Note that where examiners receive a voluntary amendment request and a request for examination has been filed, they may, where they consider it efficient to do so, expedite substantive examination of the application. Consideration of the voluntary amendment is to continue separately, unless amendments are proposed in response to the substantive examination report as indicated above.

Amendments in Anticipation

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, the applicant may ask the Commissioner to defer consideration of the proposed amendments until substantive examination of the application commences (reg 10.6A). The applicant will be taken to have asked the Commissioner to defer consideration of the amendments if the heading “Amendments in anticipation of examination” or similar is used in the correspondence accompanying the proposed amendments.

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.

Where an applicant files a request for leave to amend after a request for examination has been made, and it is not a voluntary request (see above), consideration of the amendment is to be subsumed into substantive examination.  Consequently, if an examination report has already been dispatched and is awaiting a response, a further report taking the amendment into account should be issued.

Determining Whether Article 19 and Article 34 Amendments are Considered During Examination

Below are Decision Trees to determine whether Article 19 or Article 34 Amendments are considered during Examination.

Article 19 Amendments

Under Article 19, the applicant is entitled to amend the claims of the international application after receiving the ISR and ISO. The applicant may also file a brief statement explaining the amendments.

Article 34 Amendments

Under Article 34, the applicant is entitled to amend the claims, description and drawings during the International Preliminary Examination (IPE) process. Article 34 amendments supersede any Article 19 amendments where they amend the same page.

The applicant may elect to abandon any Article 34 amendments at National Phase.

Refer to 5.6.2.5 Translation of PCT Amendments for specific circumstances around Translations of PCT amendments.

Missing IPRPII

In certain circumstances where there is no IPRPII on file, CEG will issue a notice requesting that an applicant provide a copy of the document (s45(1A) and reg 3.17B).  In response, the applicant may:

  • provide a copy of the IPRPII; or

  • advise that:

    • no demand for international preliminary examination was filed;

    • no Article 34 amendments were made;

    • the demand for international preliminary examination was filed, or the IPRPII was established, after national phase entry; or

    • elect to abandon any Article 34 amendments.

Note where situation a. applies, there are no Article 34 amendments to consider.  Where situation c. applies, any Article 34 amendments will not form part of the specification, unless pursued under s104.

Where the applicant fails to comply with the request, CEG will refer the matter to Patent Oppositions.

Where a notice does not appear to have been issued and there is no IPRPI/IPRPII on file, and the document is not available on Patentscope (or INTESS/RIO, if IP Australia was the IPEA), and a demand has been filed before national phase entry, then examiners should keep the Exam Request task and email CEG requesting them to issue a notice as above.  Examination should not proceed until the applicant has replied or the matter considered by Patent Oppositions.  

IPE Proceeding in Parallel with National Examination

In the situation where Australia is the IPEA and international preliminary examination is proceeding in parallel with national examination, the only amendments relevant to national examination are the s104 amendments. To the extent that there are any differences between Australian law and the PCT, those differences will need to be reflected in the content of the reports issued under the respective procedures.

PCT Amendments Resulting in a Claim to New Matter

The PCT provides that the amendments made under Article 19, Article 34, and Rule 91 shall not go beyond the disclosure of the international application as filed. However, where it is subsequently found that a claim of a national phase application is based on matter first introduced by an Article 19, Article 34, or Rule 91 amendment, its priority date is determined to be the date that the amendment was made (s114 and reg 3.14).

Where a translation includes matter that was not disclosed in the specification as filed, the priority date of claim(s) to that matter is the date on which the translation was filed. However, examiners should normally assume that the translation does not introduce new matter, unless they have evidence to the contrary.

Amendments filed during the international phase are deemed to amend the specification on the date those amendments were made. Thus, amendments of this type must be treated as having been already incorporated into the specification when national examination commences. Therefore, examiners are not permitted to object to the allowability of such amendments under s102 during examination, even if those amendments have resulted in claims which go beyond the disclosure of the international application as filed.

Note that although an objection cannot be taken to the allowability of amendments to the claims, in certain circumstances a proposed amendment to insert the new matter into the description will not be allowable under s102 (see 5.7.4.2 Allowability of amendments before acceptance).

Amendments which go beyond the original disclosure must be taken into account for the purposes of national examination.  This is despite the fact that such amendments are excluded from IPE.  (Where amendments are considered to go beyond the original disclosure at the establishment of the IPRPII, this will be identified at item 4 of Box I and/or the supplemental sheet(s) of that report).

Examiners should note that if new matter is claimed, the international search may be inadequate, in which case an additional search in respect of the new matter is required.

See also 5.7.4.2 Allowability of amendments before acceptance​​​​​​​.

Rule 91 Amendments (Rectification of Obvious Errors)

Rectifications of obvious errors authorised by the receiving Office, ISA, or International Bureau in accordance with Rule 91 will be incorporated into the published pamphlet and are recognised under the Act.

They require no further consideration and will appear as rectified sheets annexed to the IPRPII.

There may be cases where a PCT pamphlet is published with “A request for rectification under Rule 91.3(d)”. The request may include replacement sheets of the application. However, because the request has not been authorised the replacement sheets do not form part of the application for the purposes of examination. The applicant should be informed accordingly by the inclusion of a note in the examination report. In these circumstances, it may be possible for the applicant to pursue the request for rectification under the provisions of s104.

Rule 92bis Amendments (Bibliographic details)

Rule 92bis allows for the recording of changes in the person, name, residence, nationality, or address of the applicant during the international phase. Similarly, changes to the person, name or address of the agent may also be recorded. The International Bureau will provide notification of such changes and, where possible, the changes will be reflected in the front page of the pamphlet.

All such notifications are effective in the national phase, including applicant name or person changes. Rule 92bis changes are usually processed by CEG. However, prior to acceptance, examiners should check the file for any unrecorded Rule 92bis amendment and contact CEG if appropriate.

Corrected Versions of Pamphlet and IPRPII

On rare occasions, the International Bureau (IB) will publish a corrected version of a pamphlet after it has entered the national phase. When this occurs, the pamphlet as published (or republished) at the time of national phase entry is the specification for the purposes of examination. Any subsequent republication of the pamphlet is to be ignored for the purpose of determining the specification in the national phase. However, such a republication will become relevant when considering the allowability of any amendments under s102(1).

As RIO downloads the version(s) of the pamphlet available in IP Australia at national phase entry, there is a slight possibility that national phase entry will occur between republication by the IB and IP Australia receiving the corrected pamphlet (there is a 7-10 day delay in the receiving the new publication from the IB).  For examination purposes it should be assumed that this has not occurred, unless examiners are aware of information to the contrary (such as by being informed by the applicant or when looking up other information on Patentscope).  Where this circumstance arises, the matter should be referred to CEG for attention.

A corrected version of an IPER/IPRPII may also be issued. If there are amendments referred to in the corrected version of the IPER/IPRPII which are dated later than those referred to in the original IPER/IPRPII, then the establishment date of the IPER/IPRPII must change. Otherwise, the later version of the IPER/IPRPII may be treated as a mere 'correction' and not a re-established IPER/IPRPII.

Missing ISR

A PCT application may enter the national phase before the Office is in possession of the associated ISR (and therefore also the ISO/IPRP).  Situations where this may occur are:
 

If the ISR is not on file, examiners should check whether a copy is available from Patentscope.  If the ISR is present, a copy should be downloaded and attached to the case file.  Where the ISR is not available, examination should proceed regardless.  The normal search and examination process should be followed, i.e. checking for the existence of FERs as per 3.3.1 Use of FERs (earlier search and examination reports).  If these are either unavailable or inadequate, then an original or additional search should be conducted (see 4.1.1 Objectives of the Search and 4.3.3 Additional Searching).

Where the ISR and ISO/IPRP become available during the course of examination, appropriate use is to be made of them.
 

Note: In the situation where Australia was the ISA, the ISR and ISO, although not published, should be available to the examiner and examination should proceed as normal. However, as the ISR and ISO are not OPI:
 

  • a copy of the ISR and ISO must not be added to the case file; and
  • examiners must not refer to any reasoning in the ISO and instead draft their own objection or reproduce the text of the ISO in their report.  The source of any citations should be identified as ‘Cited in the ISR’.

Amended Reasons

Amended Reason Date Amended

Page content updated to include information relating to process to be adopted when ISR missing.

Page content updated to include information relating to process to be adopted when ISR missing.

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