Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure. Initial processing of the request to amend during oppositions

Date Published

Key Legislation:

Patents Act:

  • s59 Opposition to grant of standard patent
  • s101M Opposition to innovation patent

Patents Regulations:

  • reg 10.2 Commissioner to consider and deal with requests for leave to amend​​​​​​​


Regulations 10.2(6) and 10.2(6A) provide that if the grant of a standard patent is opposed (s59) or a certified innovation patent is opposed (s101M), and the applicant or patentee requests leave to amend the patent request or complete specification, the Commissioner must:

  • provide a copy of the request and the statement of proposed amendments to the opponent as soon as practicable after the applicant or patentee has filed the request; and
  • invite the opponent to comment on the request and the statement of proposed amendments.

This gives the applicant or patentee the opportunity to consider the views of the opponent on the proposed amendments and then to rectify any deficiencies identified by the opponent.

The main purpose of this is to facilitate resolution of the opposition proceedings.

Examination practice

Issuing the invitation

Oppositions will:

  • arrange for a copy of the amendment request, the proposed amendments and any submissions to be sent to the opponent; and
  • invite them to comment on the amendments within 21 days (reg 10.2(7)).

The opponent may request more time to comment (up to a maximum of 2 months from the initial invitation). Any such request should be accompanied by reasons. The extra time should not be assumed to be automatically available.

If an examiner receives a case file with amendments for consideration and the invitation has not been issued, they should return the file to Oppositions for processing. Once the invitation has been issued, the file will be returned to the examiner for consideration of the amendments.

Amended Reasons

Amended Reason Date Amended

Published for testing

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