Intellectual property (IP) can be amended by written application to IP Australia. Each and every request for an amendment for a patent, trade mark, design or plant breeder’s right will need to be assessed by an IP examiner. Just like an application for intellectual property, you need to ensure the application for amendment is completed correctly – contact an intellectual property lawyer at LegalVision to assist you with your application for amendment.

Amending a Patent

There is a time limitation on filing amendments to patents, especially after a specification application has been lodged for the patent. A new provisional application may be necessary to add a new matter, however, this should be completed as soon as possible to secure a new priority date. If the patent amendment increases the scope significantly, this amendment will not be allowed.

If ownership of the patent is changed, or there is an administrative change in the name, address, or there is an error in the Register of Patents, this needs to be notified to IP Australia. To change the name of a patent applicant, this can either be done by the current applicant asking IP Australia to update the information, or the new applicant asking IP Australia to update the name to their own.

Amending a Trade Mark

Amendments for trade marks can be made in writing; however, goods or services cannot be extended and only minor changes can be made to trade marks so as to not substantially affect their identity. Amending a trade mark can be made before and after particulars of the application have been published – this application is available on the Australian Trade Marks Online Services System (ATMOSS).

Minor amendments can be made by phone, including typographical errors, and changes to a convention application number made in relation to a priority claim. More substantial changes need to be made in writing, including changes to name of the applicant, adding or deleting goods and services, or adding or changing endorsements. Have an IP lawyer assist you with this process when in doubt.

Amending a Design

Only very limited amendments can be made to designs once an application is filed. Similar to patents, an amendment will not be allowed if it increases the original scope of the application. If a design name is amended to include a new product that has not been shown in the representations, this will not be allowed. In this case, a new application must be lodged.

Conclusion

With various restrictions and conditions associated with amending IP, you are best to contact one of our intellectual property lawyers to assist you. Our lawyers understand when certain amendments can be made and what amendments will alter the scope, requiring new applications to be lodged. Call us on 1300 544 755 and our IP lawyers will be able to answer any questions regarding your IP amendment.

Lachlan McKnight

Next Steps

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