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8.15.6 Amendments During Examination

Date Published

Key Legislation:

Patents Act:

  • s102 What amendments are not allowable?  
  • s104 Amendments by applicants and patentees  

Related Chapters: 

  • 2.23.2. General Provisions – Section 104 Amendments
  • The Section 102(1) Provisions Explained, Meaning of “as a result of the amendment”

Amendments requested during examination of a national phase application must be made under s104 (see 2.23.2. General Provisions – Section 104 Amendments).

However, where amendments under s104 would result in the claiming of matter not in substance disclosed in the specification as filed, solely as a result of those amendments (as per s102(1)), then examiners should object accordingly (see also The Section 102(1) Provisions Explained, Meaning of “as a result of the amendment”).

Where the specification is a translation, applicants may wish to amend the specification during examination to claim apparently new matter which is allegedly disclosed in the foreign language specification as filed. In this situation, applicants must establish that the text of the foreign language specification is what they allege it to be (as distinct from what is present in the translation filed to enter the national phase). In order to meet this requirement, applicants will normally need to supply a new verified translation of the foreign language specification. In some circumstances, this translation may only be of the relevant part of the specification. An amendment to the claims should only be allowed if examiners are satisfied that the matter was in substance disclosed in the foreign language specification.

Amended Reasons

Amended Reason Date Amended
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