5.7.4.4 Allowability of amendments after grant

Also in this Chapter:

• 5.7.4.1 Form of proposed amendments (statement of proposed amendments)
• 5.7.4.2 Allowability of amendments before acceptance
• 5.7.4.3 Allowability of amendments after acceptance
• 5.7.4.5 Amendments not allowable for reasons other than non-compliance with s.104(2)
• 5.7.4.6 Opposition to amendments
• 5.7.4.7 Annex A - Examples of Amended Claims

Key Legislation:

Patents Act:

• s70 Applications for extension of patent

Related Chapters:

• 5.7.1.7 Granting leave to amend

• RIO - VolS104 Amendments

• RIO - Processing Voluntary S104 Tasks after Acceptance

Examination practice

The criteria for allowability of amendments after grant are the same as after acceptance.

However, as the patent has already been granted, the amendment may be motivated by considerations other than achieving compliance with the requirements of the Act. For example, the applicant may be attempting to:

• amend around a future infringement action; or

• prepare the ground for an extension of term of the patent under s70.

The consequences arising from an erroneous allowance of an amendment after grant can be significant. For example, amendments with a view to a future extension of term can affect the Pharmaceutical Benefits Scheme.

Consequently, these amendments are regarded as high risk and are therefore subject to higher level quality assurance processes. All reports on amendments to a granted patent are to be checked by a senior examiner.

This is to ensure that there is no consequential broadening of the scope of the monopoly, as this is the area of greatest risk to the public. Of particular concern are cases where there is a change in the type of claim, for example, if the original claims are method claims, and apparatus claims or substance per se claims are introduced.

Note that examiners should always check for a statement that no relevant proceedings are pending (see 5.7.1.7 Granting leave to amend).

For allowable amendments after grant, notice of the grant of leave to amend may need to be advertised for opposition purposes before the amendment is allowed (reg 10.5(2)). Advertisement is required whenever the specification (description, claims, drawings, or sequence listing) is amended (see considerations discussed in 5.7.1.7). This corresponds to the 'Advertisement of the amendment(s)' selection in the RIO Vol S104 form.