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Upon lodging your patent application for a patent, you may need to make some changes to the application before (or even after) the application is examined. There are certain circumstances where this is allowable. These include making sure the details of the patent application are up to date, adding information to a patent application and amending the patent application where there has been an adverse examination report.

This article considers the types of changes that can be made to a patent application before the patent is granted in relation to the different types of patents and the costs involved.

Changing the specifications of the patent application

If you have already lodged the application but you want to add new specifications to the application, there are limited avenues to do this.

Where it is a provisional patent application, you can file a new provisional application soon after the original application instead of trying to amend the original application. The sooner you file the new application, the earlier your priority date will be.

However, bear in mind that if the amendment increases the scope of the original provisional application, it will not be accepted.

You can amend standard or provisional patent applications at any time, as long as the application has not lapsed. You can amend an innovation application at any time after the patent has been granted, unless the reason for filing the amendment is because of a formalities direction issued by IP Australia.

Are there any costs involved?

If you are filing a voluntary amendment before the application is examined or after a standard patent application has been accepted, you will need to pay a fee.

No fee will apply if:

  • You are filing a voluntary amendment for a provisional patent application; or
  • Following the examination, an innovation or standard patent application has been requested.

What happens to a voluntary amendment?

When an examiner considers a voluntary amendment, they will either allow the amendment, make the request advertised for an opposition period, or not allow the amendment and issue you an adverse report with an explanation.

What details do I disclose to IP Australia?

You will need to make sure that certain details are kept up to date, as they are recorded in the Register of Patents. Details that need to be updated when there is a change include your name and address.

In addition to this, if the patent changes ownership, you will need to notify IP Australia. You’ll need to show IP Australia the document that confirms the change in ownership to update these details. For example, if the patent is assigned, you may need to show a deed of assignment or a sale agreement.

Conclusion

Once you have lodged your patent application, there may be some changes that are necessary to make. There are limited options for making amendments to patent applications, but there are certain details that must be kept up to date. These do not require amendments but you must notify IP Australia about changes to details of ownership. For more information regarding patent applications and the process for making amendments, get in touch with LegalVision on 1300 544 755. Our patent lawyers are ready to help.

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