An amendment must not add new matter that the skilled person could not directly derive from what is explicitly or implicitly disclosed in the complete specification as filed, taken together with the other documents prescribed in reg 10.2A.

A key question to ask is whether the amendment would cause the skilled person to learn anything new about the invention that they could not learn from the complete specification as filed and other prescribed documents.

The applicant can add a feature to a claim if it simply excludes protection for part of the subject matter of the claimed invention and does so in a manner that does not add to the disclosure. This is often achieved by way of a proviso (see Insertion or amendment of provisos).

Meaning of ‘other documents prescribed’

The other documents prescribed by reg 10.2A are:

an abstract filed with the complete specification, this does not include examiner drafted abstracts;
any part missing from the complete specification at filing that was later incorporated into the specification under reg 3.5A or PCT Rule 20.5 or Rule 20.6; and
an amendment that has been made to the complete specification after filing to:
- correct a clerical error or obvious mistake; or
- comply with s6(c) (micro-organism deposit requirements).

The following documents are not part of the complete specification as filed or prescribed documents under s102(1):

Article 34 amendments;
associated applications, such as a provisional, additional, divisional, or parent (or other ancestor, for example, grandparent) applications; or
a translation of an application originally filed in a language other than English.

These documents are irrelevant to the question of whether any subsequently proposed amendments are allowable.

New matter not ‘as a result of the amendment’

The phrase ‘as a result of the amendment’ means it is allowable for an amendment to retain new matter that was introduced in an earlier allowed amendment (for example, voluntary s104, Article 34 etc).

For example, in a claim there may be new matter that was introduced by an Article 34 amendment during the international phase. A subsequent amendment proposed under s104 which retains the Article 34 amendment but does not itself add any new matter would be allowable under s102(1).

However, in this situation, examiners should consider whether the subject matter of the Article 34 amendment is supported for the purposes of s40(3).

Reporting on amendments with partial allowable subject matter

Where an applicant proposes an amendment that is not allowable under s102(1), examination should only be conducted to the extent possible on the claims that define allowable subject matter. The examiner’s report should clearly indicate which claims have been examined and which have opinion reserved.

This is illustrated in the example below, where a proposed amendment results in the claiming of component B, which was not disclosed in the specification as filed.

Claim 1. Composition containing A and a solvent.

Claim 2. Composition containing A or B.

Claim 3. Composition containing B.

Examination would be carried out on claim 1 and claim 2 only as it relates to a composition containing only A. Opinion would be reserved on claim 2 as it relates to a composition containing only B and claim 3.

Specific circumstances – s102(1)

Removing or creating ambiguity by amendment

Existing ambiguity may be removed by amendment, provided the amendment does not add new matter.

Where ambiguity is created by new matter, the amendment is not allowable. If the ambiguity is not as a result of new matter, it will simply lack clarity and will not comply with s40(3).

If the amendment itself is ambiguous, an objection should be raised.

Amendment of integers, examples, embodiments etc.

Disclosure of a specific integer or specific example does not necessarily provide a disclosure of a generic class. The means an amendment to the specification to add material or further embodiments inconsistent with the specific disclosed integer/example would not be allowable, as this would add new matter.

However, if for example, the specification as filed referred to tests having been carried out and the results of those tests, amendments to add an embodiment which achieves the same results may be allowable.

Intermediate generalisation

Where different embodiments of a specification disclose different features and it would not have been apparent to the skilled person that the features of the different embodiments could be interchanged, an amendment to interchange these features would not be allowable. This is referred to as intermediate generalisation and was discussed in CSIRO v BASF Plant Science GmbH (2020) FCA 328 (12 March 2020).

In determining whether an amendment results in an intermediate generalisation, the examiner must consider whether the skilled person is being presented with any new information about the invention which is not directly and unambiguously apparent from the original disclosure.

Examiners should note that an amendment that concerns a subclass of the inventive concept, whether or not it is presented as inventively distinct in the specification as filed, does not constitute an intermediate generalisation. For example, the elevation of features from dependent claims directed to such a subclass would generally not constitute an intermediate generalisation.

Clarifying statements

Applicants will often propose an amendment that adds a clarifying statement, for example, they may wish to add a definition of the term ‘comprising' or state that a reference to prior art does not constitute an admission that the publication forms part of the common general knowledge. These amendments will generally be allowable as long as they do not add any new matter.

Numerical ranges

Where a proposed amendment adds a numerical sub-range that was not expressly stated in the complete specification as filed, the examiner should consider whether the sub-range extends beyond that disclosed in the specification as filed and other prescribed documents.

Examiners should consider what is stated about the ranges. They should not merely look for any mention of the sub-range; rather, they should assess the disclosure in respect of the ranges.

In general, where a proposed amendment that would introduce a sub-range is simply a selection from a number of alternative values in a broader range that is already disclosed in the specification as filed, the amendment will not add new matter and will be allowable.

However, if the applicant submits, or the amendment states, that the sub-range is a selection from the broader range disclosed, and the body of the specification does not teach that the sub-range has any advantageous properties that would support such a selection, the amendment would add new matter contrary to s102(1).

Insertion or amendment of provisos

Where a proposed amendment adds a proviso that simply limits the scope of a claim to a subset of the original, the amendment will be allowable even where the subject matter dealt with in the proviso was not itself disclosed in the specification as filed.

For example, a specification and its claims concern the use of a specific pharmaceutical compound to treat cancer. The applicant proposes to amend the claims by adding the proviso that the compound is used to treat cancer but not breast cancer. The broad disclosure of the treatment of ‘cancer’ implicitly discloses treatment of any cancer, including breast cancer. In this situation, the amendment would be allowable since the proviso simply narrows the scope of the claims to a subset of the cancers originally disclosed and no new matter is added.

Amending the body of the specification to add features only in the claims

Where a feature is clearly disclosed only in a claim of the specification as filed, generally an applicant can amend the description to add the feature.

Where the description contains only broad generalisations and the claims as originally filed are quite specific and provide detailed definitions of the invention, generally, the applicant can amend the description to include specifically what was in the claims.

However, if a proposed amendment inserts into the body of the specification new matter that is only found in amended claims filed after the filing date of the application, the amendment will not be allowable.

Matter from translations

In the case of a national phase application where the original PCT application was filed in a foreign language, but a translation into English has been filed in order to enter the national phase in Australia, ‘the specification as filed’ means the original foreign language PCT application and not the translation (consistent with Fina Research SA v Halliburton Energy Services Inc. (2003) FCA 251, albeit that this case essentially deals with s102(2)).

This means amendments must not extend beyond the matter disclosed in the original foreign language PCT application.

Amended Reasons

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

5.7.4.2 Allowability of amendments before acceptance

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Meaning of ‘claiming or disclosing matter that extends beyond …’