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Amendments and Corrections

Statutory requirements

7.1 Note: Amendments and Corrections are dealt with under different sections of the Patents Act.

7.2 Amendment of an application or amendment of the specification of a patent must comply with the requirements of Section 84. Section 84(2) requires that pre-grant amendments do not result in the application disclosing any matter extending beyond that disclosed in the application as filed. Section 84(3) requires that post-grant  amendments do not result in the specification disclosing any additional matter or extend the protection conferred by the patent. The same principles apply for deciding whether a new application filed under Section 20(3), Section 26(11) or Section 47(4) of this Act or an application for which a filing date has been secured upon satisfying the conditions referred to in Section 26 (1)(a), (b) and (c)(ii) discloses any added matter as well. Section 84(1) requires that if an application filed under Section 20(3), Section 26(11) or Section 47(4) of this Act discloses matter extending beyond the earlier application made under this Act as filed, the application shall  notbe allowed to proceed unless it is amended to exclude that matter. Section 84(1 (A) requires that if an application having made a Section 17(2) priority declaration contains a incorporation by reference statement to an earlier relevant application under Section 26(1)(c)(ii) and the description of the invention later filed under Section 26(7)(b) discloses matter extending beyond the earlier relevant application, the application shall not be allowed to proceed unless it is amended to exclude that matter.

7.3 In contrast, correction of an application or the specification of a patent or of any document filed in connection therewith is governed by Section 107. In short, correction is the alteration of a document so that it may better express the intention the drafter had at the time of drafting, including where an agent drafting a document has misconstrued his given instructions. Once it has been established that the change is indeed a correction, the question of whether subject matter is added or the protection conferred is extended is not a relevant consideration.

7.4 It is important that Examiners examine the correct specification of the application, and accordingly all relevant amendments or corrections must be identified and taken into account during examination. This will include any amendments made (PCT Article 19 and 34) or rectifications authorized (PCT Rule 91) in the international phase, as well as any amendments or corrections made by the applicant during the national prosecution.

7.5 A pre-grant amendment, once accepted, takes effect from the date the amendment was filed, whereas an amendment of the specification of a patent post-grant, once allowed, shall have effect and be deemed always to have had effect from the date of grant of the patent (Section 38(3)). A correction, once accepted, takes effect from the date of filing, as if the error has never been made in the first place.

7.6 How amendments made (PCT Article 19 and 34) and rectifications authorized (PCT Rule 91) in the international phase should be dealt with during the national phase are discussed in detail in later sections.