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7.2.4 Section 104(4) - Opposition to a Request to Amend a Filed Document

Date Published

Note: This information applies on or after 15 April 2013.  


Under section 104(4) of the Patents Act, the Minister or any other person may, subject to and in accordance with the regulations, oppose the Commissioner allowing an amendment to a patent request, specification or other filed document.  

On and after 15 April 2013, a section 104 amendment request may only be opposed on the ground that the amendment is not allowable under section 102 or regulation 10.3.

An opposition to a request for leave to amend a relevant document is generally filed by a person (the “opponent”) who will be in some way affected by the amendment.  The opposition process provides the opponent with the opportunity to make out a case to persuade the Commissioner that the amendment should not be allowed.

An opposition under section 104(4) commences when a person files a notice of opposition in the approved form within the period allowed by the regulations, and pays the appropriate fee.  Subsequently, the opponent files a statement of grounds and particulars, setting out the grounds upon which the amendment is opposed and the facts and circumstances supporting the grounds.  Where appropriate, the parties will be provided with periods for filing evidence to establish their respective cases, after which the Commissioner will hear and decide the matter.   

Under reg 5.12, the Commissioner may decide the practice and procedure to be followed and direct the parties accordingly.

The procedures involved in this process are explained more fully in the following sections.

Amended Reasons

Amended Reason Date Amended
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