Patents: Timing and Costs associated with Amendments in Australia

Under Australian practice, amendments can be submitted at any time throughout the life of a patent. However, there are some restrictions as to the type of amendments and there are also costs associated with amendments at different times.

Pre-prosecution

An amendment to the claims and/or specification prior to requesting examination will be deemed a voluntary amendment, and will incur a voluntary amendment fee of $250 by the patent office (IP Australia). One strategy to get around this official fee is to file the amendments ‘in anticipation of examination’. However, the amendments will not be officially incorporated into the specification until examination is requested. As such, if you wish to incorporate the amendments into the specification immediately then the voluntary amendment fee must be incurred.

Please note that it is possible to expand or change the claim scope during this period.

During prosecution

During prosecution, amendments made to the specification and/or claims do not incur the voluntary amendment fee. An interesting point to

person writing/correcting with red pen

 be made is that, in relation to a unity objection, the Applicant is not restricted to any particular claims. As such, if a unity objection is raised, we can amend the claims to be directed to any group of claims identified by the Examiner. This is in contrast to both European and US practice. This may be a useful strategy to determine which set of claims may be more readily allowable.

Please note that it is also possible to expand or change the claim scope during this period.

After prosecution

Amendments made after acceptance and grant will incur the voluntary amendment fee. It is also only permissible to amend the claims such that there is a reduction in claim scope. That is, the claims as amended must fall completely within the scope of the unamended claims.

Furthermore, any amendments made during this period will be advertised in the Official Journal for opposition purposes. The amendments will be advertised for a period of two (2) months.

Please note that the timing and costs associated with amendments in New Zealand is different to that of Australia. A follow up article regarding the timing and costs in relation to New Zealand will follow. Keep an eye out for it!

Please do not hesitate to contact our patent attorneys if you require any further information regarding amendments in Australia.

 



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