In this practice guideline
Amendment/Correction of Error
Requesting voluntary amendment or correction of an error.
A patentee or patent applicant may request a voluntary amendment to 1 , or correction of an error in, the register details or documents of a patent, either before or after acceptance of the application. A request should be made using the Amendment/Correction of Error facility 2 in our case management system accessible via: Maintain a patent/ Amendment/Correction of Error and using the Submit a Voluntary Amendment For Patent form.
Selecting amendment/correction of error options.
- The option Voluntary Amendment should be chosen;
- if the amendment is directed to amendments of the specification (including corrections in the specification),
- or to amend the detail recorded in the system that the applicant is permitted to change depending on the status of the patent record, for example, post-dating of provisional specifications and applications, acceptance postpone period, declaration of inventorship check,
- or to load documents onto the patent record.
- The option Correction of Error / s88(1) correction should be chosen if the applicant wishes to advise of a correction of an error they believe has been made by IPONZ.
- The Correction of Error/ s88(3) correction option should be chosen if the applicant wishes to request correction of an error that has been made by someone other than the Commissioner.
- If, when an amended specification is proposed, either of the first or second options above is selected, but not the s88(1) option, an amendment request fee will be charged.
Special requirements if an amended specification is submitted for an accepted application/granted patent.
If the amendment/correction request includes an amended specification, and the patent case has been accepted, then the amendment request should also include;
- a statement of the nature of the proposed amendments (correction, disclaimer, explanation);
- full particulars of the reasons for which the amendment application is made;
- whether the amendment/correction has been directed by the Court;
- and if the patent is sealed, a declaration that no action before the Court for infringement of the patent or any proceeding before the Court for the revocation of the patent is pending.
Processing of amendment/correction requests.
To respond to an amendment/correction of error issue see 6. Respond to Amendment/Correction Issue
Creation of amendment/correction of error case associated with the patent case.
If the request is made on a patent or patent application after acceptance, or for correction of error only, in a patent application that has not been accepted, then an amendment/correction case will be created and associated with the patent case.
However, if the amendment request relates to a voluntary amendment of a patent application before acceptance (outside of responding to an examination report), then a separate amendment request case will not be created, and the amendment requested will either be effected on the patent record, or the amendment requested will be drawn to the attention of the examiner for consideration during examination of the patent case.
Informing of Commissioner’s concerns about and completing the request
If the Commissioner cannot make a decision to allow or refuse a request for amendment/correction of error case on the basis of the information provided in the request, IPONZ will explain the issues raised concerning the request in a letter and set a response task Respond to Amendment/Correction Issue for the requestor on the amendment/correction case in the case management system.
If the respond to amendment/ correction issues task is not completed by the due date (normally a two month period is allowed), then the request for amendment/correction will be declined and the case will be closed, and another request will have to be made if the applicant wishes to effect the amendment.
The applicant will be able to respond to the issues task on the request case including supplying the information or documentation that is required.
A Request a Hearing function will be associated with the Respond to amendment/correction issue task.
If the request case is approved, then the amendments will be affected, although if the amendment is to be made to a patent after acceptance, then the proposed amendments will be published in the next Journal and will be subject to a one month opposition period before being affected.
Only one Request for Amendment/Correction of Error case on a patent case can be pursued at a time, so if a second request is made whilst a first is pending, then a new request case for the second request will be created and the first request will be automatically refused.
- 1 This facility should not be used if the amendments to the specification are to be proposed as part of responding to an examination report, in which case the examination response should include the amendments.
- 2 This facility should not be used to amend details of persons or parties associated with the patent, e.g inventors names or addresses, details of applicants etc. Users should use the Change Agent, Change Owner, Change or Add Inventor facilities to amend or request amendments of these details.