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PATENTS REGULATIONS 1991 - REG 10.2

Commissioner to consider and deal with requests for leave to amend

  (1)   For the purposes of subsection   104(2) of the Act, the Commissioner must report on whether:

  (a)   the request for leave to amend, and the statement of proposed amendments, comply with regulation   10.1 and the formalities requirements determined in an instrument under section   229 of the Act; and

  (b)   any proposed amendment of a complete specification is not allowable under section   102 or 103 of the Act; and

  (c)   the proposed amendments are not allowable under regulation   10.3 or, if made, would not otherwise be allowable under the Act or these Regulations;

and may, if the request for leave to amend relates to a PCT application, and a copy of an international preliminary examination report relating to the application has not been provided to the Commissioner:

  (d)   notify the applicant of that fact; and

  (e)   ask the applicant to provide a copy of the international preliminary examination report, or to advise that no amendments were made under Article 34 of the PCT, or to abandon any amendments that may have been made under Article 34 of the PCT.

  (2)   The Commissioner must give a copy of each report made under subregulation   (1) to the applicant or patentee.

  (3)   The applicant or patentee may:

  (a)   contest the report in writing; or

  (b)   file a statement of proposed amendments of the statement referred to in paragraph   ( 1 )( a); or

  (c)   if the report relates to a request for leave to amend a PCT application, and the Commissioner has reported under subregulation   (1) that the international preliminary examination report has not been provided to the Commissioner:

  (i)   provide a copy of the international preliminary examination report to the Commissioner; or

  (ii)   if:

  (A)   no demand was made under Article 31 of the PCT; or

  (B)   no amendments were made under Article 34 of the PCT; or

  (C)   the demand was made under Article 31 of the PCT, or the international preliminary examination report was established, after the applicant complied with the requirements of subsection   29A(5) ;

    advise the Commissioner of that fact; or

  (iii)   elect to abandon any amendments that may have been made under Article 34 of the PCT.

Note:   If the applicant provides the advice mentioned in subparagraph   ( c)(ii), or makes the election mentioned in subparagraph   ( c)(iii), any amendments made under Article 34 of the PCT are not taken to be included in the application.

  (4)   If a statement of proposed amendments referred to in subregulation   (3) is filed, the Commissioner must report under subregulation   (1) as if the proposed amendments had been made.

  (5)   If, under subregulation   (3), the applicant or patentee contests the report, the Commissioner must report under subregulation   (1) and take notice of the matters raised by the applicant or patentee.

  (5A)   If, under subregulation   (3), the applicant:

  (a)   provides a copy of the international preliminary examination report to the Commissioner; or

  (b)   provides the advice mentioned in subparagraph   ( 3 )( c )( ii) to the Commissioner; or

  (c)   elects to abandon any amendments that may have been made under Article 34 of the PCT;

the Commissioner must report under subregulation   (1) taking notice of that fact.

  (6)   Subregulation (6A) applies if:

  (a)   either:

  (i)   the grant of a standard patent is opposed under section   59 of the Act; or

  (ii)   an innovation patent is opposed under section   101M of the Act; and

  (b)   the applicant or patentee has requested leave to amend the patent request or complete specification concerned.

  (6A)   The Commissioner must:

  (a)   give a copy of the request for leave to amend and the statement of proposed amendments to the opponent as soon as practicable after the request for leave to amend has been filed; and

  (b)   invite the opponent to comment on the request and statement.

  (7)   The opponent may file comments within 21 days, or any longer period (up to 2 months) allowed by the Commissioner, after being given the copy of the request for leave to amend and the statement under paragraph   ( 6A )( a).

  (8)   If:

  (a)   a person has, under subregulation   3.25(1), requested the Commissioner to grant the certification referred to in that subregulation; and

  (b)   the Commissioner has not made a decision under subregulation   3.25(2); and

  (c)   the applicant or patentee has filed a request for leave to amend the complete specification in respect of a matter mentioned in paragraph   6(c) of the Act;

the Commissioner must, as soon as practicable after the request for leave to amend has been filed, give a copy of that request and the statement of proposed amendments to the person referred to in paragraph   ( a).

  (9)   If a request for leave to amend a complete specification in respect of a micro - organism is made for the purpose of including in the specification a matter in respect of which a notice has been filed by a person under subregulation   3.29(1), the Commissioner must, as soon as practicable after the request for leave to amend has been filed, give the person a copy of the request and the statement of proposed amendments.


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