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How to apply for a patent amendment

In brief: Lawyer Kate Beattie looks at the options open to you if you want to amend your patent after it has been granted.

There are four reasons an Australian patent may need to be amended after it is granted:

  • to address defects in the specification, which may render the patent liable to revocation;
  • to overcome newly discovered prior art;
  • to clarify infringement issues; or
  • to correct clerical errors or obvious mistakes.

Once you become aware of the need to amend, you should act promptly. Asking the Australian Commissioner of Patents to amend a patent avoids the expense and complexity of making an amendment application to the Court during litigation.

Once court proceedings begin in relation to the patent, an amendment application must be made to the Court, and you need to explain delays in seeking the amendment and disclose all relevant material - including, possibly, sensitive material. The issues which arise in the course of an amendment application to the Commissioner and to a Court are discussed below.

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How to amend?

There are two ways to amend a granted patent. First, you can ask the Commissioner for leave to amend the patent under section 104 of the Patents Act 1990 (Cth). However, if 'relevant proceedings' in relation to the patent are pending (and these include infringement and revocation proceedings), you must apply to the Court for an order to amend the patent under section 105 of the Act.

This article outlines both methods, and considers the advantages and disadvantages of each.

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Applications to the Commissioner

The Australian Patent Office will examine an amendment application made to the Commissioner to ensure that it complies with the statutory requirements for amendments:

  • the claims must in substance fall within the scope of the original granted claims;
  • the amended claims must be clear and succinct, and fairly based on the matter described in the patent specification; and
  • the specification as filed must provide sufficient support for the amended claims.

If the amendment is found to be in order, the Commissioner must grant leave to amend and advertise the grant in the Australian Official Journal of Patents. If there is no opposition to the allowance of the amendment after three months, the Commissioner must allow the proposed amendment.

Importantly, under recent amendments to the Act, the Commissioner must refuse an amendment application regarding a prior art document if, before the grant of the patent, the patentee failed to provide the Commissioner with search results relating to the prior art of which it was aware or, in relation to an innovation patent, failed to provide such search results before receiving the certificate of examination. (For a more detailed look at the duty of disclosure, see http://www.aar.com.au/pubspta/pta/ptaapr02.htm.)

If court proceedings in respect of the patent have started before the amendment being allowed, the APO will cease considering the amendment application until the court proceedings are determined. If the patentee wants to continue with the amendment application at that stage, the patentee must ask the Court to order the amendment of the patent under section 105 of the Act.

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Applications to the Court

You must give notice to the Commissioner of your intention to make an amendment application to the Court. The APO will examine the amendments for compliance with the statutory requirements, as discussed above, and then advertise the patentee's intention to make the amendment application, together with a copy of the proposed amendment, in the Australian Official Journal of Patents.

The Court will also examine the proposed amendment to ensure it complies with the statutory requirements. In addition, the Court has a discretion to refuse an amendment application. In the past, Courts have tended to exercise their discretion in favour of the patentee and allow amendment applications. In exercising its discretion, the Court may consider:

  • whether there has been 'culpable delay' in the period between becoming aware of the need to amend the patent and the time of actually seeking to amend the patent. This may be fatal to an amendment application. If the delay can be reasonably explained, for example, the patentee was actively seeking legal advice during this period or awaiting the outcome of a decision on the validity of a foreign equivalent of the patent, the Court is likely to allow an amendment application irrespective of the delay;
  • the motive of the patentee in seeking to amend the patent. For example, intentionally misleading the Commissioner in connection with the grant of the patent and subsequently seeking to amend may be considered an improper motive. Amending a patent to avoid newly discovered prior art or target an infringing product, however, is generally not detrimental to an amendment application;
  • whether full disclosure has been made of all matters relevant to the amendment application. The requirement to make full disclosure may, in some cases, require the patentee to consider waiving legal or patent attorney privilege over sensitive documents.

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Which method is best?

There are advantages and disadvantages to both methods of amending a granted patent. If there has been a long delay in seeking to amend a patent, it may be advantageous to make an amendment application to the Commissioner. The APO does not, in comparison to a Court, retain a discretion to refuse leave to amend on the basis of the patentee's culpable delay. It is also substantially cheaper to pursue an amendment application in the APO.

However, if an amendment application is made to the Commissioner, you will not be able to simultaneously bring infringement proceedings (as above, the APO will not consider an amendment application if there are legal proceedings in relation to the patent). Further, if the allowance of an amendment is opposed, the opponent may appeal any adverse decision of the Commissioner to the Court, which may lead to further delay in bringing infringement proceedings. Therefore, if you wish to issue infringement proceedings immediately, the amendment application should be made to the Court in the course of those proceedings.

It may also be advantageous to make an amendment application to the Court, because the grounds on which a third party may seek to revoke the patent may be revealed in the course of the relevant court proceedings. It may be easier to formulate the amendment in light of this information.

There are, however, reasons that may deter you from making an amendment application to a Court:

  • its discretion to disallow the amendment;
  • the obligation to make full disclosure of all relevant matters including, possibly, sensitive documents; and
  • the cost of court proceedings.

Please contact us if you need further information about amending patents before or after grant.

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