APO - Determination of Allowable Amendments

Case: Richard Thomas Ross as trustee for Clear Focus Australia Trust [2012] APO 39

Determination of Allowable Amendments After Patent Acceptance

  1. After acceptance, an amendment must pass three tests to be allowable. As a result of the amendment: (a) it must not claim matter not in substance disclosed in the filed specification; (b) a claim of the specification must not fall outside the scope of the claims before amendment; (c) the specification must comply with s 40(2) and (3)
  2. For (a), the test for whether an amended claim would claim matter not in substance disclosed in the specification  as filed (and thus not be allowable) is essentially the same "real and reasonably clear" test for whether the claims are fairly based on the matter described in the specification
  3. For (b), nothing should become an infringement of the patent which would not have been an infringement of the patent before the amendment (AMP Incorporated v Commissioner of Patents (1974) 3 ALR 283)


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