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Allowability of pre-grant amendments (Section 84(2))

7.18 Pre-grant amendments (Section 84(2)):

(2) No amendment of an application for a patent shall be allowed under section 31 if it results in the application disclosing any matter extending beyond that disclosed in the application as filed.

7.19 Section 84(2) requires that no added matter beyond that disclosed in the application as filed is to be incorporated into the application during any pre grant amendments (see sub-section i of Section J in this Chapter). This consideration applies to amendments made of the applicant’s own volition, amendments made by the applicant in response to a written opinion, or amendments required by the Registrar. The test and considerations for added subject matter are discussed in later sections.

7.20 There is no pre-grant restriction on the applicants broadening the scope of their claims provided the amendment does not include matter extending beyond that disclosed in the application as filed. That is, if the disclosure in the specification as filed is broader than the claims as filed, the applicant may make amendments before grant to bring the claims into alignment with the specification.