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5.7.1.7 Granting leave to amend

Date Published

Key Legislation:

Patents Act:

  • s104 Amendments by applicants and patentees

Patents Regulations:

  • s10.2(1) Commissioner to consider and deal with requests for leave to amend
  • s10.5 Commissioner to grant leave to amend
  • s10.6 Time for allowance of amendments
  • s10.6B Revocation of grant of leave​​​​​​​

Related Chapters: 

Overview

Before amendments can be allowed, the Commissioner must grant leave to amend.

Examiners need to check whether:

  • the conditions for this specified in reg 10.5(1) are met; or
  • a notice of leave to amend needs to be published.

After leave to amend has been granted, examiners will assess whether the amendments are allowable.

In some circumstances, amendments can be revoked.

Examination practice

Conditions for leave to amend

The conditions under which the Commissioner must grant leave to amend are specified in reg 10.5(1):

  • there is no adverse report under reg 10.2(1) (that is, the amendments are allowable); and
  • for a standard patent, the amendments overcome all lawful grounds for objection to the request or specification; or
  • for an innovation patent, the amendments overcome all lawful grounds for revocation of the patent.

Once leave to amend has been granted, that decision cannot be reversed other than in exceptional circumstances (see Revocation of leave to amend).

For granted patents, examiners should also check for a statement that no relevant proceedings are pending (see 5.7.1.6 Circumstances in which an amendment request cannot be processed).

Publishing a notice of leave to amend

In certain situations, we are required to publish a notice in the Official Journal stating that leave to amend is granted. In response to this notice, the Minister or another person may oppose the allowance of the amendment (reg 10.5(3)). They have 2 months (the ‘opposition period’) to do this.

Regulation 10.5(2) specifies that publication of notice is required when:

  • the leave to amend relates to the patent request and complete specification for an accepted standard patent (or a certified innovation patent); and
  • the proposed amendment concerns either:
    • a complete specification; or
    • a patent request or another filed document, if the proposed amendment would materially alter the meaning or scope of the request or document.

Note that if the request for leave to amend is filed before the patent is granted, proposed amendments relating to the name or address of an applicant are not taken to materially alter the scope of the patent request.

Allowing amendments after granting leave

Examiners with the acceptance delegation have a delegation to grant leave to amend and to allow amendments under s104.

If publication of notice is not required, the proposed amendments will be allowed immediately after leave is granted (reg 10.6(1)). This will usually occur at acceptance.

If notice is published, the proposed amendments will be allowed after the opposition period has ended, if the amendments have not been opposed (reg 10.6(2)). CEG will allow the amendments and incorporate them into the specification.

If allowance of the amendments is opposed, they will be allowed or refused when a decision is made on the opposition (see 5.7.4.6 Opposition to amendments).

No formal act of acceptance

In exceptional circumstances, an amendment may be processed as if it has been allowed (including making the amendment) without a formal act of acceptance (for example, for paper cases where a form has not been signed). In these circumstances the amendment may still have been properly made.

See 3.5.1 Commissioner's power to make delegations and types of delegations for guidance on the appropriate course of action in such situations.

Revocation of leave to amend

In general, leave to amend cannot be reversed, undone or re-done other than in exceptional circumstances. Therefore, as far as possible, all matters regarding the allowance of an amendment should be considered fully before granting leave.

The power to revoke a grant of leave to amend under reg 10.6B(3) is only to be exercised by the Assistant General Manager (Oppositions) or the Supervising Examiner (Oppositions). Therefore, if it becomes apparent that an error has occurred in granting leave to amend, the matter is to be referred to Oppositions immediately. Similar considerations to those discussed in 5.6.9 Acceptance and grant apply.

For applications accepted on or after 15 April 2013, where acceptance (or certification) has been revoked, the granting of leave and allowance of amendments that occurred at the same time is also revoked (reg 10.6B).

In other circumstances, if leave to amend is granted on or after 15 April 2013, the grant of leave may be revoked under reg 10.6B(3) if the Commissioner is satisfied that:

  • leave to amend should not have been granted, taking into account all of the circumstances that existed when leave was granted (whether or not the Commissioner knew of these circumstances);
  • it is reasonable to revoke the grant of leave to amend and (if applicable) the allowance of the amendment, taking into account all of the circumstances; and
  • there are no relevant proceedings pending.

If the grant of leave is revoked:

  • leave to amend is taken to never have been granted;
  • if allowed under reg 10.6, the amendment is taken not to have been allowed;
  • the Commissioner must continue to examine and report on the amendment in accordance with reg 10.2(1); and
  • reg 10.5 and reg 10.6 continue to apply in relation to the amendment.

Amended Reasons

Amended Reason Date Amended

Published for testing
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