5.7.1.4 Requirement to provide reasons for amendments

Also in this Chapter:

• 5.7.1.1 What documents can be amended?
• 5.7.1.2 Who can request amendments?
• 5.7.1.3 When can amendments be requested?
• 5.7.1.5 Withdrawal of a request to amend
• 5.7.1.6 Circumstances in which an amendment request cannot be processed
• 5.7.1.7 Granting leave to amend
• 5.7.1.8 Fees for amendments
• 5.7.1.9 Annex A - Guidelines for Completing the Voluntary Section 104 Allowance Form

Key Legislation:

Patent Regulations:

• reg 10.1(3) Form of amendments
• reg 10.4(b) Commissioner to refuse request for leave to amend​​​​​​​

Overview

Under reg 10.1(3), the Commissioner may require the applicant or patentee to provide:

• a statement of reasons for a request for leave to amend; and/or
• evidence in support of the request.

Examination practice

If the Commissioner requires the applicant or patentee to provide a statement of reasons or evidence in support of the request, they must file these within 3 months of being requested to do so.

If we do not receive these documents within 3 months, the Commissioner must (under reg 10.4(b)) refuse the request for leave to amend.

In practice, however, examiners only need to consider the reasons for an amendment when it relates to a clerical error or obvious mistake. We do not need to consider any reasons given by the applicant for requesting any other type of amendments.

The Commissioner cannot refuse a request for amendment on the basis of deficiencies in the reasons given for the request (New England Biolabs Inc v Commissioner of Patents & Anor (2001) FCA 787 at paragraphs 53 and 54; 52 IPR 1).