IPA patent 5.7.1.2-who-can-request-amendments- — IP Australia Patent Manual of Practice and Procedure – 5.7.1.2 Who can request amendments?

Also in this Chapter: 5.7.1.1 What documents can be amended? 5.7.1.3 When can amendments be requested? 5.7.1.4 Requirement to provide reasons for amendments 5.7.1.5 Withdrawal of a request to amend 5.7.1.6 Circumstances in which an amendment request cannot be processed 5.7.1.7 Granting leave to amend 5.7.1.8 Fees for amendments 5.7.1.9 Annex A - Guidelines for Completing the Voluntary Section 104 Allowance Form Key Legislation: Patents Act: s103 Consent of mortgagee or exclusive licensee needed s213 Making and signing applications etc. Related Chapters: RIO - VolS104 Amendments On this page Overview Examination practice : ​​​​​​​ Consent from mortgagee or exclusive licensee : Check for registered mortgage or exclusive licence Procedure if consent has not yet been given Procedure if there are further amendments Overview Only the applicant or the patentee may request an amendment. To amend an existing patent for which there is a registered mortgage or exclusive licence, the patentee needs consent from the mortgagee or licensee. Examination practice If anyone other than the applicant or patentee requests an amendment, the examiner should object that the person requesting the amendment is not eligible to do so. Consent from mortgagee or exclusive licensee Amending a patent that has a registered mortgage or exclusive licence is allowable only if the mortgagee or licensee consents in writing to an amendment of the complete specification ( s103 ). The consent may be filed as part of the request to amend or in a separate document filed at the time of the request or at a later date. Section 213 , which allows certain documents to be signed by a patent attorney, does not apply here – the consent must be signed by the mortgagee or licensee. Consent is not required from a non-exclusive licensee or where a licence or mortgage has not been registered. However, if an exclusive licence or mortgage is registered after leave has been granted to amend and before the amendments have been accepted, consent from the registered licensee or mortgagee is required before the amendments can be allowed. Check for registered mortgage or exclusive licence Where there is a request to amend the specification, the examiner should check for any registered mortgagee or exclusive licensee. Examiners can view instructions for doing this at RIO - VolS104 Amendments . Procedure if consent has not yet been given If consent is required but has not been given, the examiner should still examine the amendment request and issue a report. The report should include, in addition to any adverse comments regarding allowability, a statement that leave to amend will not be granted unless either: IP Australia receives written consent to the amendment; or the Commissioner makes a direction under s103(2) to dispense with such a consent. Procedure if there are further amendments Sometimes a request for further amendments will be filed after the mortgagee or licensee has consented to the original ones. If the further amendments substantially change the overall nature of the amendments, an additional consent will be required. The examiner will need to request this consent if it is not filed at the same time as the amendment request.​​​​​​​