General power to amend before grant

Amendments made in reponse to written opinions (Rule 46(3))

7.13 For a search and examination request or an examination only request, Section 29(9) provides that an applicant may respond to at least one written opinion that has been issued under Section 29(7), and subject to Section 84, amend the specification of the application. Rule 46(3) states that the response to the written opinion may contain written submissions on the examiner’s opinion, an amendment of the specification of the application or both.

7.14 Given the time frames associated with the examination process, it is forseeable that there may be several rounds of communication between the Examiner and the applicant. When the deadline for issuing the examination report is approaching and the applicant still fails to resolve all the issues with the application, it will be at the discretion of the Examiner whether to issue a further written opinion according to Rule 46(6). Factors that may be taken into account at this juncture would include: whether sufficient time remains for the applicant to respond, which generally depends on the nature of the outstanding issues, and whether sufficient time remains for the Examiner to draw up an examination report. However, if the prosecution of the case has reached a stalemate and is unlikely to progress further, where Section 29(7) applies and the examiner has already issued at least one written opinion before, the Examiner may issue an adverse examination report rather than issue a further opinion. In such circumstances, the Examiners should discuss the case with a Senior Examiner.

7.15 Under Rule 46(7), an Examiner’s further opinion or report need not take into account any response filed by the applicant after the Examiner has commenced drawing up the opinion or report.

7.16 For a supplementary examination request, Section 29(8) mandates that the Examiner issue the applicant only one written opinion. An applicant’s written submissions to the written opinion and/or amendments to the specification under section 2 (9) will be forwarded to the Examiner for consideration, and subsequent establishment of a supplementary examination report. If the Examiner considers that the written submissions and/or amendments do not overcome the objections, an adverse examination report will be established.

7.17 Rule 46(3) sets out that, in all the types of examination requests aforementioned, amendments to the specification (that is, the description, the claims and any drawings) in response to the written opinion issued by the Examiner should be made on Patents Form 13A. The amendments filed may be in response to the issues raised by the Examiner, and may include other amendments that are not in response to the Examiner’s objections.