5.7.4.5 Amendments not allowable for reasons other than non-compliance with s104(2)

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
• 5.7.4.4 Allowability of amendments after grant
• 5.7.4.6 Opposition to amendments

• 5.7.4.7 Annex A - Examples of Amended Claims

Key Legislation:

Patents Act:

• s18 Patentable inventions
• s40 Specifications
• ​​​​​​​s104(2) Amendments by applicants and patentees

On this page

• Overview
• Examination practice:
  • Amendments to overcome applicant-raised prior art.

Overview

There may be rare circumstances where an amendment is not allowable but does not give rise to an objection under s104(2). The Commissioner may refuse a request to amend if they are of the opinion that the amendment is not allowable.

Examination practice

In certain rare scenarios, the Commissioner may refuse an amendment request even if there is no objection under s104(2).

One such scenario is a request to amend a parent specification of a patent of addition.

Examiners need to check whether:

• the amendment would result in the claims of the additional becoming redundant, ambiguous, or meaningless; and
• whether the invention claimed in the additional can continue to be regarded as an improvement on, or modification of, the invention claimed in the amended parent specification.

Similar considerations apply to a request to amend a patent of addition.

As a result of an amendment, other such scenarios are that:

• a specification will clearly no longer be patentable; and/or
• the patent will become obviously invalid.

Examiners should also carefully check amendments of an accepted specification (whether or not it is the subject of opposition), or of a specification of a granted patent, for possible extraneous effects not covered by s104(2).

Where examiners become aware of any such circumstances, the case should be forwarded to the supervising examiner for consideration. If appropriate, the matter should then be referred through the supervising examiner to the Assistant General Manager (Oppositions).

Amendments to overcome applicant-raised prior art

The applicant or patentee may propose amendments to overcome prior art documents that they themselves have identified. This may be apparent from the correspondence accompanying the amendment request. In this situation, examiners should consider those prior art documents.

Before acceptance, any relevant objections should be raised during the examination process.

After acceptance, if the proposed amendments would be objectionable under s40 (requirements relating to specifications) and/or s18 (patentable inventions), regardless of their allowability under s102, examiners should consult a supervising examiner. Where appropriate, the case should then be referred to Oppositions with a view to initiating re-examination.