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5.7.4.3 Allowability of amendments after acceptance

Date Published

Overview

Sections 102(2) and 102(2A) provide that an applicant cannot amend a complete specification after acceptance of a standard patent (or after a decision to certify an innovation patent) if the amendment would mean:

  • a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
  • the specification would not comply with s40(2), s40(3) or s40(3A), (that is, clear enough and complete enough disclosure or support).

These points are in addition to the allowability requirements under s102(1).

A useful test for the allowability of amendments under s102(2) is:

Would the amendment make anything an infringement which would not have been an infringement before the amendment?

Examination practice

Scope of the claims before amendment

In this context the ‘scope of the claims’ means the ‘scope of the claims as a whole’. All claims need to be considered in order to determine the whole scope. The monopolies of the original claims may also be added together. For example, if the original claims included a claim to a method performed at 20-70°C and another claim to the same method performed at 70-100°C, an amended claim to the process performed at 20-100°C would be allowable.

However, an applicant cannot make a combination of the original claims in order to make the amended claim allowable. For example, if an original claim disclosed an apparatus comprising parts A, B, and C, and another original claim disclosed an apparatus comprising parts B, C, and D, an amended claim to apparatus comprising only parts A and D would not be allowable.

Also, the ‘scope of the claims before amendment’ means the amended claims must be compared with the claims immediately before the requested amendment.

‘In substance’ of the scope

The substance of the claims is not the individual integers that appear in the claim, rather, it is the total invention the claim defines. It is important to distinguish the substance of the claims from the words used in it. An amended claim can fall in substance of the scope even when the words differ.

For example, for a claim to a new product made by a specific process, an amendment to add a new claim for the specific process that produces the product would be allowable. This is because the substance of the claims concerns the total invention of the specific product by the specific process.

Where a set of claims concerns a new process that uses a number of known pieces of equipment and the substance of the claims is directed to the process, not to the pieces of equipment, any amendments that add features to the equipment would not fall ‘in substance’ within the scope of the claims.

Amendments comply with s40(2), 40(3), 40(3A)

The provisions of s102(2)(b) ensure that compliance with s40(2), s40(3), and s40(3A) is maintained from the accepted specification to the amended specification.

Therefore, the amendments should be considered for:

  • clear enough and complete enough disclosure;
  • support;
  • clarity and succinctness; and
  • omnibus claims.

(Refer to relevant s40 chapters).

Specific scenarios – s102(2)

Claims to article per se

A claim to an article per se (that is, the claimed invention is the article) would be infringed by the use of that article. Consequently, an amendment to claim the use of the article (in a manner already disclosed in the specification) would be a narrowing of the claim. This would not make an act an infringement that was not an infringement previously. However, the reverse situation would not be allowable. A claim to the use of an article is not infringed by the article per se, so an amendment to insert a claim to the article per se would not be allowable.

It is incorrect to argue that there is only one use for an article or substance, and therefore a claim to the use of that article or substance is effectively the same as a per se claim. If an applicant makes this type of argument, it may indicate that the applicant has a particular reason for changing the type of claim, such as an infringement action or extension of term. In this situation, the supervising examiner should be informed of the case. If the applicant maintains the argument, the matter should be brought to the attention of the Assistant General Manager (Oppositions).

Deletion of words and phrases

In general, the examiner should carefully consider amendments proposing the deletion of words and phrases from a claim. This is because deletion of words/phrases can potentially remove limitations from a claim. For example, deletion of ‘for use’ or ‘suitable for use’ from a claim may broaden the scope of the claims.

However, in rare circumstances, the deletion of a word does not remove a limitation and does not result in any significant change in meaning.

Also, reference numerals that refer to drawings do not place any limitations on the claim unless there is clear indication that they are intended to do so. Therefore, deletion of these reference numerals is allowable.

Omnibus claims

Where an omnibus claim is not permissible, the applicant may wish to substitute the omnibus claim with another form of claim. When considering the allowability of such amendments, the scope of the omnibus claim prior to amendment may become relevant.

For information on the interpretation and meaning of omnibus claims, see 5.6.7 Full Disclosure, Sufficiency, Clarity, Support and Usefulness (s40).

Omnibus claims referring to ‘each and every novel feature’ and ‘the features individually and collectively’ are indeterminate in scope and cannot be considered as defining any invention at all. Therefore, as a general rule they provide no basis upon which to propose amendments allowable under s102(2)(a).

Necessary omnibus claims:

Where an omnibus claim is absolutely necessary to define the invention, its scope should be reassessed each time amendments are proposed. Amendments to the body of the specification, the claims, the drawings, the graphics, or the photographs may result in new objections to omnibus claims under s40(3A), s102(1), and s102(2).

Insertion of omnibus claims:

An applicant cannot make an amendment of a specification to insert an omnibus claim (unless the omnibus claim is absolutely necessary to define the invention).

Legal principles and case law

Test for allowability under s102(2)(a)

A useful test for the allowability of amendments under s102(2)(a) is:

'Would the amendment make anything an infringement which would not have been an infringement before the amendment?'

This test was suggested in relation to s31(1) of the British Act in The Distillers Co. Ld.’s Application [1953] 70 RPC 221 at page 223. Although the wording of s102(2)(a) differs from the wording of the then s31(1) of the British Act, the Commissioner in W.J. Voit Rubber Corp.’s Application [1965] AOJP 1752, when considering the corresponding provision of the Patents Act 1952, at page 1754 stated:

"... the test as to whether a proposed amendment would have the effect of causing infringement when none existed before, seems to me a perfectly reasonable one."

The Federal Court accepted the continuing relevance of this approach in Boehringer Ingelheim International GmbH v Commissioner (2000) FCA 1918.

In AMP Incorporated v Commissioner of Patents (1974) AOJP 3224, the High Court stated (at page 3227):

"The amending claim must in substance fall within the scope of the claims before amendment. The reference to substance imports the kind of test which is appropriate to a consideration of the question whether or not a particular act or a particular article is an infringement of the patent.

… It would be of little avail to an alleged infringer to say that his article did not infringe one claim if it infringed another even though he may not in the infringement have incorporated all the features of that other claim."

Scope of the claims

In W.J. Voit Rubber Corp.’s Application [1965] AOJP 1752, ‘the scope of the claims’ was held to mean ‘the scope of the claims as a whole’. The same view was expressed in AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227, where it was stated:

"The amendment may be allowed if the amending claim will in substance fall within the scope of the claims of the specification before amendment. It is necessary therefore to look at the other claims in order to see their scope ... Again it is not necessary before an amendment is allowed to find that the amended claim would actually fall within the scope of one or all of the other claims. It need only fall in substance within that scope."

The monopolies of the original claims may also be added together (see Hilti v Ramset (1979) AOJP 1761 at page 1764).

The Federal Court has recently considered this expression in the context of s70(2)(a). The Full Court stated in Boehringer Ingelheim International GmbH v Commissioner (2001) 52 IPR 529 at paragraph 42:

"... we think that falling within the scope of a claim in a patent specification means included among the things claimed."

‘In substance’ of the scope

The meaning of ‘in substance fall within the scope of the claim’ was recently considered in the context of s70(2)(b) and s102(2(a)). In ImmunoGen, Inc. [2014] APO 88, a claim was directed to a process for producing an antibody conjugate. The Deputy Commissioner concluded that a claim to a product made by a particular process is substantially indistinguishable in scope from a claim to the particular process used to make the product. Consequently, it was held that the antibody conjugate when produced by a process in substance falls within the scope of a claim to a process for preparing the antibody conjugate.

Specific scenarios – s102(2)

Claims to article per se

An amendment to claim the use of the article (in a manner already disclosed in the specification) would be a narrowing of the claim which would not make an act an infringement that was not an infringement previously (see Farbwerke Hoechst A.G.’s Application [1972] RPC 703).

A claim to the use of an article is not infringed by the article per se and therefore an amendment to insert a claim to the article per se would not be allowable (see BoehringerIngelheim International GmbH v Commissioner (2001) 52 IPR 529 at paragraph 42).

Substitution of apparatus with method

It is important to distinguish the substance of the claims from the words used in it. For example, a claim may begin with the word ‘Apparatus’ and yet be, in effect, a claim for a method. In such circumstances, substitution of a claim directed to a method may not only be unobjectionable, it may even be desirable. For the determination of allowability, the substance is much more important than the words. In AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227, the High Court stated:

"... an amendment may be allowed where it does no more than explain what is already in the claim when it is properly construed. It may be said that such an amendment is unnecessary because it adds nothing to the claim so construed. However, when it is borne in mind that the claim is intended to speak to the world, an amendment by way of explanation so that any misapprehension can be avoided may clearly be desirable."

Deletion of words and phrases

Although there are circumstances in which words may be deleted from a claim without any significant change in meaning, (for example, AMP Incorporated v Commissioner of Patents (1974) AOJP 3224), such situations are not common.

This aspect was discussed in some detail in Chrysler Aust. Ltd v RegieNationale Des Usines Renault (1974) AOJP 4807, where it was stated:

"There is, of course, a considerable force behind the argument that deletion of a limiting clause from a claim would not be allowable under the provisions of sub-section (2) of s78 [1952 Act: s102(2)(a) of the 1990 Act corresponds]. But it is also clear that this argument may relate only to real limitations, and should not be necessarily extended to apparent limitations. In particular, one must be careful not to equate the deletion of words with the deletion of limitations, since not all words in a claim impose a limitation."

The latter aspect has been extensively dealt with in the decision of the High Court in Farbwerke Hoechst Aktiengesellschaft vormals MeisterLucius & Bruning v Commissioner of Patents (1972) AOJP 3524. The High Court allowed the deletion, from a number of claims, of the words ‘of the general formula given in claim 1’. Prima facie, these words have the appearance of a definite and substantial limitation. However, in his decision, Gibbs J pointed out that the question which arises is primarily one of the interpretation of the claims in the light of the specification as a whole.

After concluding that a reading of the specification before him showed that the substance of the invention was the discovery of a process, which produced chemicals with particular properties and whose formula was unimportant, and that there was no compound that answered to the formula given in claim 1, Gibbs J stated:

"The definition of the invention in the claims now under consideration therefore comprises two parts - a correct description of the nature of the process and an incorrect statement of the formula of the resulting products. On ordinary principles of construction, if the correct part of the description defines the subject matter with certainty, the incorrect part may be rejected to enable effect to be given to the document as a whole … Of course, if, in the present case, the formula applied to some of the compounds produced by the process, it could not be rejected as a mere erroneous addition to the description, but would have to be given effect as limiting the class of compounds to which the description applied."

Gibbs J allowed amendments sought in relation to the process claims which entailed the deletion of the reference to the formula of claim 1, as he did not regard it as an effective limitation and that removal of that limitation would not widen the claims, or have the result that the claims would not in substance fall within the scope of the claims before amendment.

For purposes of determining the allowability of an amendment under s102(2)(a), reference numerals in a claim referring to drawings, whether in brackets or not, do not place any limitations on the claim unless there is clear indication that they are intended to do so (Rodi and Wienenberger A.G. v Henry Showell Ltd (1968) FSR 100; Lucent Technologies Inc v Krone Aktiengesellschaft (No 3) (2000) FCA 100). As a consequence, removal of these reference numerals in general will not result in the broadening of the claim. Similar considerations apply to reference numerals referring to graphics and photographs.

Substituting omnibus claims

In Irish’s Application [1966] AOJP 321, the only claim read:

"All of the improvements herein disclosed individually and in combination."

At page 322 it was stated:

"The original claim, by no stretch of imagination, can be called clear and succinct. It does not attempt to set out in the claim a statement of any form of mechanical construction. However, by virtue of the words ‘all of the improvements herein disclosed’ it imports any form of improved construction that is identified in the body of the specification as constituting the invention."

The claim which was ultimately allowed was narrow in scope and in that particular case, closely followed the consistory statement given in the provisional specification. However, this case does not serve as a precedent for situations in which no appreciation of the invention may be derived at all.

In Picton Hopkins and Sons Pty Ltd’s Application [1965] AOJP 3118, the only claim read:

"A building partition having the features of improvement, collectively and individually as disclosed."

In this case, amended claims, narrow in scope, were allowed to the building partitions specifically disclosed as the invention in the specification.

Amended Reasons

Amended Reason Date Amended

Published for testing
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