5.7.1.9 Annex A - Guidelines for Completing the Voluntary Section 104 Allowance Form

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?
• 5.7.1.4 Requirement to provide reasons for amendments
• 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

Key Legislation:

Patents Act:

• s104 Amendments by applicants and patentees​​​​​​​

Related Chapters:

• 5.7.1.7 Granting leave to amend

Note: Voluntary amendment tasks are now processed in RIO. For information on the processes for considering voluntary amendments filed before examination, after acceptance and after grant in RIO, please consult RIO - VolS104 Amendments and RIO - Processing VolS104 Tasks. 

On this page

• General Requirements
• Voluntary Amendments Filed Before Examination
• Voluntary Amendments Filed After Acceptance
• Granting Leave to Amend
• Allowance of the Amendments​​​​​​​

General Requirements

A request for leave to amend other than in anticipation of, or in response to, an examination report is generally termed a voluntary request, and the proposed amendments accompanying such a request voluntary amendments.  

As a precursor to allowing amendments to a complete specification, the Commissioner must grant leave to amend.

Voluntary Amendments Filed Before Examination

For voluntary amendments filed before examination, the amendments are allowed immediately after leave to amend is granted. In these situations, examiners should select ‘Yes’ in the ‘Are there allowed or proposed s104 amendments’ in the preliminary considerations tab in the RIO Workbench. Examiners can find the instructions for how to do this on the RIO - Processing VolS104 Tasks page.

Voluntary Amendments Filed After Acceptance

For voluntary amendments filed after acceptance, the amendments are not allowed immediately after leave to amend is granted.   Where the leave to amend relates to a complete specification which has been accepted, a notice of that fact must be published in the Official Journal.  A period of 2 months from the date of publication of the notice is allowed for an opposition to be filed against the allowance of the amendments.  The amendments cannot be allowed before this period has expired, or if an opposition is filed.

The two-stage procedure for processing voluntary amendments filed after acceptance is outlined below.

Granting Leave to Amend

At the time of granting leave to amend, examiners need only complete the relevant portions of the ‘prepare for allowance’ tab on the RIO workbench. They can find the instructions for how to do this on the RIO - Processing VolS104 Tasks page.

Notes:

a. Do not formally allow the amendments at this time.

b. Leave to amend a granted patent is not to be granted before a current indication is given that no relevant proceedings are pending.  If no indication is already on file, examiners should request that the patentee provide one.

c. Leave to amend a granted patent is not to be granted unless any registered mortgagee or exclusive licensee has consented in writing to the amendment.  Examiners are to check for any registered mortgagee or exclusive licensee and, where these exist, request a consent if not already provided (see 5.7.1.2 Who can request amendments?). Examiners can also use RIO to identify if there is a registered mortgagee or exclusive licensee.

Allowance of the Amendments

CEG will diary the case for 2 months and 2 weeks from the date of advertisement.  If no opposition is filed within this period, CEG will allow the amendments.  For voluntary amendments filed in respect of a granted patent, CEG will seek a further indication from the patentee that no relevant proceedings are pending before allowance of the amendments.  CEG will also at this time confirm whether consent is needed from a registered mortgagee or exclusive licensee.