5.7.4.6 Opposition to amendments

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

• 5.7.4.7 Annex A - Examples of Amended Claims

Key Legislation:

Patents Act:

• s102(1) What amendments are not allowable?
• s110 Advertisement of amendment of complete specification
• s114(1) Priority date of claims of certain amended specifications

Patents Regulations:

• reg 3.14 Priority dates: certain amended claims
• reg 10.2(7) Commissioner to consider and deal with requests for leave to amend​​​​​​​

On this page

• Overview
• Examination practice.

Overview

There is no opportunity for opposition to amendments allowed before or at acceptance.

However, where an examiner has inadvertently allowed an amendment that adds new matter (contrary to s102(1)), the amended claim will be given a later priority date (under s114(1) and reg 3.14).

Examination practice

After the specification has been accepted, opposition to amendments can occur when the request to amend is advertised in the Official Journal (see Publishing a notice of the granting of leave to amend). The purpose of this advertisement is to set a time limit for any opposition proceedings.

Note, however, that advertisement does not mean the amendment has been allowed. Actual allowance is advertised in a separate advertisement (under s110).

Where amendments are opposed, a decision must be made on the opposition before allowance or refusal of the amendments can proceed.

Where the applicant or patentee files a request to amend during opposition proceedings, either before or after any decision, an opponent has the opportunity to provide comments (reg 10.2(7)). However, failure to do so does not preclude the opponent from opposing the request after it is advertised.

Where the Commissioner refuses an amendment request and a Court reverses the decision of the Commissioner, such reversal implies, in cases which have not been accepted, that the amendment should be allowed. However, where the case has been accepted, the Court’s reversal allows for an advertisement and for possible opposition proceedings.