reg 3.2A Complete application for standard patent--direction to meet formalities requirements
reg 10.1(5) Form of amendments
reg 10.6A Deferred consideration of request for amendment

Related Chapters:

5.6.2.4 Payment of fees

Overview

Leave to amend may be requested at any time, that is:

before a request for examination is made;
during examination; and/or
after acceptance or grant of a patent.

Fees differ depending on when the amendment is requested (see 5.6.2.4 Payment of fees). The processes for handling amendment requests also depend on when the request is filed.

Examination practice

Amendments in response to an examination report

Most amendments are made in response to an examination report, with the aim of overcoming the objections raised in the report.

Examiners are to:

report on the specification as proposed to be amended;
report whether the amendments are allowable;
consider whether they overcome the objections raised in the previous report; and
issue a further report if issues remain.

A further report generally involves:

maintaining objections raised in the previous report that have not been fully overcome by the proposed amendments (and/or submissions). This is more than just restating the objection; there must be further discussion addressing the applicant’s proposed amendments and any submissions; and
raising new objections arising from the amendments.

Further amendments while the original ones are under examination

Applicants may wish to file a further amendment request before their previously filed amendments have been reported on. Applicants and attorneys have been requested to phone the examiner if this is what they intend to do and forewarn them to expect further amendments. The examiner will then delay the examination until the further amendments are filed.

Amendments in partial response to an examination report

A response to an examination report may propose amendments directed to only certain objections and state that a future response will address the remaining objections. In this case the examiner’s report should raise:

any objections arising directly from the response; and
an objection that formally maintains the previous objections not addressed by the response.

Late filing of amendments and responses

Attorneys have been requested to forewarn the examiner by phone if they intend to file a response less than one week before the final acceptance deadline, and to subsequently email a copy of the response to the examiner. As email is not an official means for filing a response, they must also file the response officially through eServices before the final deadline.

The examiner is to proceed with the examination on the basis of the emailed response, but to delay acceptance until receipt of the official copy of the response.

Note that it is normally not necessary for examiners to ask CEG to expedite the processing of a response. Responses filed through eServices are processed promptly and should appear in the case file within 30 minutes. The only exceptions are where there is an unexpected outage and a response is filed through the Alternative Lodgement Service (ALS) or, in rare circumstances, by fax. In these situations, the examiner should ask CEG to expedite manual processing of the response.

Voluntary amendments

Voluntary amendments are amendment requests that are not in response to, or in anticipation of, an examination report. Such a request can be made at any time.

Voluntary amendments are processed independently of substantive examination. The examiner should either:

allow the amendment as soon as possible; or
issue an adverse report on the amendment.

If a substantive examination report (that is, the first examination report) is issued after receiving a voluntary amendment but before granting leave to amend, that report should be based on the specification as proposed to be amended and refer to the latest s104 report issued on the amendment. If further amendments are proposed in response to the substantive examination report, these are taken to supersede the voluntary amendments. Any further consideration of the amendments will then be done as part of the substantive examination.

Note that where examiners receive a voluntary amendment request when a request for examination has already been filed, the examiner may, if 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 of examination

If the applicant files a request for leave to amend but has not yet requested examination, they may ask the Commissioner to defer consideration of the proposed amendments until substantive examination of the application begins (reg 10.6A). If the heading ‘Amendments in anticipation of examination’ or similar is used in the correspondence relating to the proposed amendments, we infer that the applicant is asking the Commissioner to defer consideration of the 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)). Consequently, no Amendment fee is required.

Amendments in transit

Attorneys and applicants are requested to forewarn CEG if they intend to file amendments in anticipation if they have already requested an examination but the examination has not yet commenced. CEG will then place a case note on the file drawing attention to the amendments being ‘in transit’.

Request to amend a patent or application that is not in force

Examination is not required for amendment requests relating to patents that are not in force or applications that have lapsed, been refused, or withdrawn.

The status of the case is indicated on the case Summary screen.

If there is a request to amend a lapsed application (such as in relation to an assignment), the case should be referred to CEG.

Where the request relates to an application in a state of lapse or lapsed, examination should not occur. In these circumstances, there is no automatic refund of the fee for filing the request (see Refunds and waivers).

Amendments to comply with a direction to meet formalities requirements

Under reg 3.2A, the Commissioner may direct the applicant to correct the patent request or complete specification to comply with s29(4A) (that is, be in English and comply with formalities requirements).

Applicants have 2 months from the date of the direction to comply with the direction, otherwise the application lapses.

The applicant may choose to comply with the direction by filing an amendment request. This request may also include other proposed amendments to the specification.

If the amendment request does not have to be advertised (that is, the patent request and complete specification have not yet been accepted), the reg 3.2A direction will be complied with when the amendment request is allowed and the allowed amendments overcome the formalities deficiency.

If the amendment request does have to be advertised (that is, the patent request and complete specification have already been accepted), the reg 3.2A direction will be complied with when:

the request is cleared for advertisement; and/or
the proposed amendments would overcome the formalities deficiency.

Difficulty in complying with reg 3.2A

In certain situations, an applicant may find it difficult to comply with a regulation 3.2A direction, where there is no means of preparing pages of the required standard, without undesirably altering the substantive nature of the text.

Case example:

In Hewlett-Packard Company’s Application (20390/76), the specification as lodged contained a program listing printed by a computer line printer. This program listing was objected to under reg 7B of the 1952 Act (equivalent to reg 3.2A). Representations from the applicant established that accurate reproduction of the original matter was not possible with a typewriter. Subsequently, a request to amend the specification under s77 of the 1952 Act, by deletion of the offending pages and incorporation of a reference to their availability in a US specification, was allowed.

Amendments open to public inspection

If a specification has been amended before becoming open to public inspection (OPI), when it does become OPI both the unamended and the amended forms of the specification are OPI.

Similarly, if a specification is amended after it becomes OPI, the amended form of the specification is also OPI.

Proposed amendments are OPI when the complete specification becomes OPI, whether or not they have been allowed.

Multiple requests for amendment

In certain circumstances, there may be several separate voluntary amendment requests relating to the same application, for example, separate requests to correct unrelated clerical errors.

This is different from the situation where a statement of proposed amendments is amended by the filing of a further statement of proposed amendments before leave is granted for the earlier statement (see reg 10.1(5)).

Where there are multiple amendment requests with respect to unrelated matters, examination of each request may proceed separately, independent of the allowance of the other requests.

However, some amendment requests are interdependent. For example, allowing an earlier request may affect a part of the specification affected by a later request. In such cases, we should not examine the later request until the earlier request is allowed or formally withdrawn. The examiner should inform the applicant or patentee of this, and may suggest that they instead withdraw the individual requests and file a consolidated single request.

Note that if a long period has elapsed with no response to an adverse report on a voluntary amendment, the examiner should not assume that the amendment request has been abandoned or withdrawn, unless there is evidence on file to the contrary.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	06 Jun 2023

5.7.1.3 When can amendments be requested?

Also in this Chapter:

Key Legislation: