Contact

RESOURCES

General power to amend before grant

General process for amendments before grant

7.9 Rule 49 sets out the time frames within which that an applicant may make different types of pre-grant amendments:

(1) The applicant may, of his own volition, amend the request for the grant of a patent at any time before payment of the fee for the grant of the patent.

(2) Subject to paragraph (3), the applicant may, unless the Registrar otherwise requires, of his own volition, amend the description, claims, drawings and abstract at any time before payment of the fee for the grant of a patent.

(3) Subject to section 29B(2), an amendment shall not be made under paragraph (2) —

(a) at any time after the filing of a request for a search report under section 29(1)(a) and before the receipt of that report by the applicant;

(b) at any time after the filing of a request for a search and examination report under section 29(1)(b), unless the amendment is contained in a response filed under rule 46(3) in respect of that report;

(c) at any time after the filing of a request for an examination report under section 29(1)(c) or (3), unless the amendment is contained in a response filed under rule 46(3) in respect of that report;

(d) at any time after the filing of a request for a supplementary examination report under section 29(1)(d), unless the amendment is contained in a response filed under rule 46(3) in respect of that report; or

(e) at any time after a request for a review under section 29B(1) is made.

7.10 Taking a search and examination request as an example, amendments to the application (that is, description, claims, any drawings and abstract) can only be made either prior to or at the filing of the request or during a response to the Examiner’s written opinion under Rule 46(3). In other words, apart from at the time of filing the response, there is no other opportunity for the applicant to make amendments to the application during the period after the filing of the request and before payment of the fee for the grant of a patent, unless the Registar requires such amendments.

7.11 The identification of the afore-mentioned different types of pre-grant amendments can be facilitated by an understanding of the governing rules and prescribed forms used for their filing as follows:

  • Applications for amendment of the request for the grant of a patent on Patents Form 1 or applications for amendment of the description, claims, drawings and abstract prior to or at the filing of a request for a search or any type of examination should be made on Patents Form 13 (Rule 48(1)).
  • Amendments to the specification (that is, description, claims and any drawings) in response to a written opinion should be made on Patents Form 13A (Rule 46(3)).
  • Amendments to to the specification (that is, description, claims and any drawings) at the time of requesting for an examination review should be made on Patents Form 13 (Rule 46A(3)).
  • Within the prescribed period of putting the application in order for grant, the applicant is required to provide clean copies of the specification including the amended pages, but these clean copies are not forwarded for checking by the Examiner. Only amendments in order to comply with the formal requirements made on Patents Form 13 are allowed to be introduced at this stage (Rule 4 (6)).

7.12 Formality requirements would be checked by the Registry prior to forwarding the application to the Examiners, so the Examiners need not routinely check these details. However, if the Examiner notices that the application may not fulfil the formality requirements, the matter should be referred to the Registry.