IPA patent 5.7.4.5-amendments-not-allowable-for-reasons-other-than-non-compliance-with-s-1042 — IP Australia Patent Manual of Practice and Procedure – 5.7.4.5 Amendments not otherwise allowable under the Act or Regulations

Also in this Chapter: 5.7.4.1 Form of proposed amendments (statement of proposed amendments) 5.7.4.2 Allowability of amendments before acceptance 5.7.4.3 Allowability of amendments after acceptance 5.7.4.4 Allowability of amendments after grant 5.7.4.6 Opposition to amendments 5.7.4.7 Annex A - Examples of Amended Claims Key Legislation: Patents Act: s18 Patentable inventions s40 Specifications ​​​​​​​ s102 What amendments are not allowable s103 Consent of mortgagee or exclusive licensee needed Patents Regulations: reg 10.2(1)(c) On this page Overview Examination practice : Amendments to overcome applicant-raised prior art Overview In certain rare scenarios an amendment may not be allowable even though it does not give rise to an issue under ss 102 or 103 or regs 10.1 and 10.3 . This is because regulation 10.2(1)(c) requires the Commissioner to report on whether the proposed amendments would not otherwise be allowable under the Act or the Regulations. The Commissioner must refuse a request to amend if they are of the opinion that the amendment is not allowable. (see New England Biolabs Inc v Commissioner of Patents [2001] FCA 787 ) Examination practice Examiners should consider whether proposed amendments will have extraneous effects. One such scenario is a request to amend a parent specification of a patent of addition. In that scenario examiners need to check whether: the amendment would result in the claims of the additional becoming redundant, ambiguous, or meaningless; and whether the invention claimed in the additional can continue to be regarded as an improvement on, or modification of, the invention claimed in the amended parent specification. Similar considerations apply to a request to amend a patent of addition. As a result of an amendment, other such scenarios are that: a specification will clearly no longer be patentable; and/or the patent will become obviously invalid. Examiners should also carefully check amendments of an accepted specification (whether or not it is the subject of opposition), or of a specification of a granted patent, for possible extraneous effects not covered by ss 102 or 103 or regs 10.1 and 10.3. Where examiners become aware of any such circumstances, the case should be forwarded to the supervising examiner for consideration. If appropriate, the matter should then be referred through the supervising examiner to the Assistant General Manager (Oppositions). Amendments to overcome applicant-raised prior art The applicant or patentee may propose amendments to overcome prior art documents that they themselves have identified. This may be apparent from the correspondence accompanying the amendment request. In this situation, examiners should consider those prior art documents. Before acceptance, any relevant objections should be raised during the examination process. After acceptance, if the proposed amendments would be objectionable under s18 (patentable inventions), regardless of their allowability under s102, examiners should consult a supervising examiner. Where appropriate, the case should then be referred to Oppositions with a view to initiating re-examination.