8.3.5 Opposition to Amendments - Standard Patents

Also in this Chapter:

• 8.3.1 Allowability of Amendments to Complete Specifications

• 8.3.2 Allowability Under Section 102(1

• 8.3.3 Allowability Under Section 102(2) - General Comment

• 8.3.4 Amendments to a Provisional Specification​​​​​​​

Key Legislation:

Patents Act:

• s102 What amendments are not allowable?
• s104 Amendments by applicants and patentees
• s110 Advertisement of amendment of complete specification
• s114 Priority date of claims of certain amended specifications

Patents Regulations:

• reg 3.14 Priority dates: certain amended claims
• reg 5.3
• reg 10.2 Commissioner to consider and deal with requests for leave to amend
• reg 10.4 Commissioner to refuse request for leave to amend
• Chapter 5 Opposition

There is no opposition available for s104 amendments allowed before or at acceptance. However, where an examiner has inadvertently allowed an amendment which in fact was not in substance disclosed, the provisions of s114(1) and reg 3.14(b) will operate to give a later priority date to the amended claim.

After the specification has been accepted, the particulars of the request to amend are advertised in the Official Journal. The purpose of this advertisement is to set a time limit for any opposition proceedings. The only ground for opposition to allowance of a proposed amendment of a complete specification is that the amendment is not allowable under s102 (reg 5.3(4)).

After acceptance, amendments which would materially alter the meaning or scope of the patent request or other filed document are also advertised for opposition purposes.

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

Where amendments are opposed, the allowance or refusal of the amendments will be determined when a decision is made on the opposition.  Examiners should note that a decision which finds that any one of the amendments is not allowable has the effect of refusing to allow all amendments proposed with the request to amend.  This is also the case where the statement of proposed amendments which accompanied the request to amend is amended by the filing of a further statement of proposed amendments.  The effect of refusing to allow any one of the amendments in this situation would be to refuse all amendments the subject of the earlier and further statements of proposed amendments.

Where a request to amend is filed following an interim decision in opposition proceedings, while an opponent has the opportunity to provide comments (reg 10.2(7)), failure to do so does not preclude that opponent from opposing the request after it is advertised.

Where the Commissioner refuses an amendment request under reg 10.4 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 under reg 10.5(2), and for possible opposition proceedings under the provisions of Chapter 5.