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. Considering amendments as a result of a hearing decision

Date Published


This section provides guidance on considering amendments that are requested as a result of a hearing decision on an inter partes matter.

These matters are disputes in which the Registrar is required to make a decision that will determine the rights of one party (normally the applicant or patentee) relative to those of another party (a third party).

Examination practice

A hearing officer in an inter partes matter may give the applicant or patentee an opportunity to amend the application or patent.

Amendments filed in response to this will be examined to determine whether they overcome the deficiencies identified in the hearing officer’s decision.

Where a hearing officer in an inter partes matter has issued a decision giving an opportunity to amend, examination of the amendment must be conducted by a person other than the hearing officer.

Examiners should consider whether the proposed amendments overcome the deficiencies identified in the decision. If it appears that the amendments do not overcome those deficiencies, this should be communicated to the applicant or patentee in an examination report, using the normal adverse report format for voluntary amendments.

However, failure of the amendments to overcome the deficiencies identified in the decision does not in itself provide a basis for refusing to allow the request to amend. If the applicant or patentee indicates that they intend to persist with the amendments, examiners should consider those amendments in the usual manner. In determining whether an observation is warranted, examiners should take into account any comments received from the opponent.

Examiners should not enter into a detailed debate about whether the deficiencies in the decision have been overcome. If the applicant or patentee wishes to debate observations in the examiner’s report, the examiner should contact Oppositions for advice on how to deal with the matter.

Amended Reasons

Amended Reason Date Amended

Published for testing

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