IPA patent 5.7.3-amendment-of-a-provisional-application — IP Australia Patent Manual of Practice and Procedure – 5.7.3 Amendment of a provisional application

Also in this Chapter: 5.7.1 What can be Amended and When 5.7.2 Amendment of the Patent Request and Other Filed Documents 5.7.4 Amendments to Complete Specifications 5.7.5 Amendments to Correct a Clerical Error or Obvious Mistake 5.7.6 Amendments Relating to Micro-Organisms and Sequence Listings 5.7.7 Amendments during Opposition Proceedings Key Legislation: Patents Act: s6(c) Deposit requirements s102(3) What amendments are not allowable Patents Regulations: ​​​​​​​ reg 3.5A Filing date: incomplete specifications reg 10.3(1) Amendments not allowable for other documents Related Chapters: 5.7.4.2 Allowability of amendments before acceptance On this page Overview Examination practice . Overview A proposed amendment of a provisional specification is not allowable if the amendment would mean that the specification claimed or disclosed matter beyond that disclosed in the following documents taken together (reg 10.3(1)): the provisional specification as filed; an abstract that was filed with the provisional specification; and a missing part of a provisional application that was incorporated into the specification in accordance with reg 3.5A. Examination practice The considerations for determining whether an amendment would ‘claim or disclose matter that extends beyond that disclosed’ is similar to standard specifications, (see 5.7.4.2 Allowability of amendments prior to acceptance ). The exemption provided by Subsection 102(3) for correcting a clerical error or an obvious mistake, or for complying with s6(c) (deposit requirements) does not apply for the amendment of provisional specifications. Therefore, an amendment to correct a clerical error in a provisional specification is not allowable if, as a result of the amendment, the provisional specification would claim or disclose matter that extends beyond that disclosed in the relevant documents taken together. If there is a request for a certified copy of a provisional specification that has been amended, copies of the specification, as filed and as amended, are certified together and supplied. As the determination of priority dates is the responsibility of each individual jurisdiction, that determination can only be made if the jurisdiction is aware of the disclosure in the specification as filed, as well as the specification as amended.