5.7.2.5 Amendments to the notice of entitlement and other documents

Also in this Chapter:

• 5.7.2.1 Form of the Request to Amend the Patent Request
• 5.7.2.2 Non-allowable amendments to a patent request
• 5.7.2.3 Changing the applicant or nominated person
• 5.7.2.4 Converting the application

Key Legislation:

Patents Act:

• s104 Amendments by applicants and patentees
• s223 Extensions of time

Related Chapters:

• 5.4.2 Statement of entitlement
• 5.6.2.5 Translation of Specifications (requirements for certification, poor translations)
• 5.7.2.3 Changing the applicant or nominated person

On this page

• Overview
• Examination practice:
  • Documents that are not 'filed documents'
  • Filed documents that cannot be amended
  • Substantial amendment to a filed document
  • Amendment of documents that relate to a basic application
  • Amending a request for examination.

Overview

Under s104, the applicant or patentee can amend most filed documents, such as the notice of entitlement.

If the applicant name is amended, the applicant will need to amend the notice of entitlement too, (see 5.7.2.3 Changing the applicant or nominated person and 5.4.2 Notice of entitlement).

Examination practice

Documents that are not ‘filed documents’

The front sheet of a PCT pamphlet is not a filed document and therefore may not be amended. However, the information provided on the front sheet (which is normally found in a patent request) is recorded as bibliographic data and may be amended.

Filed documents that cannot be amended

Certain filed documents cannot be amended. These include statutory declarations, certificates and sworn documents (see Horst Johannes Wohlgemuth’s Application [1970] 40 AOJP 4037).

Substantial amendment to a filed document

Substantial amendment to a filed document may in effect constitute the filing of a new document instead.

In this case, a request under s223 (extensions of time) may be required instead of a request under s104.

Amendment of documents that relate to a basic application

For the purposes of correcting a clerical error or obvious mistake, a copy of the specification relating to a basic application can be amended under s104 by filing a new document. Such a document is regarded as an amendment and not a late filing.

In certain circumstances, the translation of a basic document from another language may have been incorrect or not verified to the satisfaction of the Commissioner at the time when it was filed.

If the application has not yet been accepted, the applicant can voluntarily file a new certified translation or restate the verification of the translation. They do not need to follow the s104 amendment process in order to do this. The new translation should be accompanied by a statement, and evidence if required, providing details of, and reasons for, the unsatisfactory aspects of the originally filed document. An extension of time is not required for filing such documents, (see Saint-Gobain Industries’ Application [1978] AOJP 1364).

If the application has been accepted, the applicant will need to follow the s.104 amendment process in order to file a new translation or restate the verification of the translation.

For translations filed after 25 September 2019, where the Commissioner believes that the translation does not accurately reflect the contents of the basic specification, the applicant may be requested to file a corrected translation and/or certificate of verification (see 5.6.2.5 Translation of specifications).

Amending a request for examination

An amendment to a request for examination is generally allowable. However, requests for examination rarely require amendment.