MOPOP - Chapter 19



Amendments to patent applications

Table of Contents

19.01 Amendments to patent applications - January 2016

Section 38.2(1) of the Patent Act states that the specification and any drawings furnished as part of an application may be amended before the patent is issued. An amendment to the specification or drawings may be submitted in response to an examiner's report.

An applicant may also choose to amend the specification or drawings of their own volition; such amendments are known as "voluntary amendments" and are referred to as such in this chapter.

An application that has been amended is subject to further examination to ensure it complies with the Patent Act and Patent Rules. Any defects identified will be set out in an examiner's report. An amended application may also be subject to a further search of the prior art.

Information regarding amendments to petitions can be found in section 4.01.01 of this manual.

Information regarding clerical error corrections under section 8 of the Patent Act or section 35 of the Patent Rules can be found in sections 23.04 and 23.05 of this manual.

19.02 Format and requirements for submitting amendments - September 2017

It is strongly recommended that a cover letter be provided with every amendment to help facilitate processing in the Office. The cover letter can be filed in either official language provided that the text matter of the specification and drawings after amendment is wholly in English or wholly in French, as per subsection 71(3) of the Patent Rules. Where the applicant submits an amendment or a response following an examiner's report, any subsequent examiner's report will be written in the official language used by the applicant in the most recent submission.

It is recommended that one of the following headers in uppercase be used to identify the nature of an amendment, as applicable:

  • VOLUNTARY AMENDMENT
  • VOLUNTARY AMENDMENT FOLLOWING PCT NATIONAL ENTRY
  • AMENDMENT/REMARKS AFTER EXAMINER'S REPORT
  • AMENDMENT AFTER ALLOWANCE

New or replacement pages should follow and be separate from the cover letter.

Submissions relating to an application other than amendments to the specification and drawings may be included in the same submission and addressed in the same cover letter. For example, communications regarding an amendment, a submission of prior art, the appointment and/or revocation of an agent, a request for examination, a request for advanced examination ("special order" and applications related to green technology [see chapter 13]) and a request to make a payment of a fee or fees may be incorporated in the same cover letter using uppercase headings.

Where an amendment submission also includes a PPH request form [see chapter 13], this should be mentioned in the cover letter.

It is strongly recommended that all applicable headers be listed in uppercase on the first page of the cover letter. For example:

VOLUNTARY AMENDMENT / AMENDMENT IN RESPONSE TO EXAMINER'S
REPORT
SUBMISSION OF PRIOR ART
APPOINTMENT AND REVOCATION OF AGENT
REQUEST FOR EXAMINATION
REQUEST FOR ADVANCED EXAMINATION
MAINTENANCE FEE
PPH REQUEST

An amendment requested to take effect at some time in the future (delayed amendment) is not permitted by the Patent Office. It should also be noted that an examiner will not enter an amendment based upon telephone or email instructions from an applicant.

The following sections set out the requirements that must be met when submitting an amendment.

19.02.01 Identification of the application

As per section 7 of the Patent Rules, communications addressed to the Commissioner in relation to an application must include:

  • the name of the applicant or inventor;
  • the application number, if one has been assigned by the Patent Office; and
  • the title of the invention.

It is recommended that the filing date and the classification of the application, if known, be identified in the cover letter. This information is useful to validate the application number.

Subsection 8(1) of the Patent Rules requires that communications addressed to the Commissioner in relation to a patent application relate to one application only, subject to the exceptions in subsection 8(2). However, as mentioned above [see 19.02] several action items with respect to one application can be combined in the same communication.

19.02.02 Authentication of the authorized correspondent

Subsection 6(1) of the Patent Rules requires that for the purposes of prosecuting or maintaining an application the Commissioner shall only have regard to communications from the authorized correspondent [see 4.02 and 4.03]. The patent agent's signature, the seal or stamp of the firm, or a cover letter with the firm's official letterhead or mark recognized by the Patent Office will be accepted as authentication of the authorized correspondent. When the authorized correspondent is an inventor, assignee, or legal representative, the paper copy of the amendment must be signed, although a copy or an image of the signature on a fax or an electronic image is accepted as authentication.

When an amendment is filed by a person who is not the authorized correspondent on file at the Patent Office, this person or firm will be notified by Office letter that they are not the authorized correspondent and that consequently the amendment cannot be entered. Where a revocation and/or appointment of an agent has recently been submitted to the Office, or is being submitted concurrently with the amendment, the applicant should indicate this in the cover page of the amendment to ensure that the revocation and/or appointment is applied to the file prior to processing the amendment.

19.02.03 Supporting statement

As per section 34 of the Patent Rules, an amendment made to an application must be accompanied by a written statement explaining the nature and purpose of the amendment and should include instructions for entering the amendment. This written statement may be included in the cover letter. The instructions provided should be divided by clear headings representing each section of the patent application addressed, such as the description, claims and drawings. Since the applicant may need to address several requisitions made in an examiner's report, it is recommended that distinct headings for each requisition be provided.

19.02.04 Replacement pages and new pages

Generally, when an amendment is received in the Patent Office, it is entered into the application file before an examiner determines whether it complies with the Patent Act and Patent Rules. If replacement pages are submitted by the applicant they are substituted in place of the pages altered by the amendment (for example if an application contains description pages 1 to 3 and the applicant submits an amended page 2, the existing page 2 will be removed and the replacement page 2 will be entered). If new pages are submitted by the applicant they will be entered (for example if an application contains description pages 1 to 3 and the applicant submits page 2A, page 2A will be entered). The cover letter with the supporting explanation for the amendment is attached to the file. It should be noted that the entry of replacement pages or new pages into the application file does not denote acceptance of the amendment by the examiner.

Where existing pages are being amended, replacement pages must be supplied for all affected pages irrespective of whether the changes are for adding or deleting matter.

All replacement and new pages must meet the criteria of sections 68 to 70 of the Patent Rules with respect to documentation presentation.

As per subsection 73(1) of the Patent Rules, the pages of the description and claims must be numbered consecutively. Page numbering which includes letters is acceptable; for example the sequence 1, 2, 3, 3A, 3B, 4 is acceptable. If pages are deleted, the applicant should renumber the affected pages to ensure that pages are numbered consecutively; alternatively, the applicant may insert a numbered blank page in place of a deleted page as long as the blank page is marked with a diagonal stroke or a “Z” to indicate that no text is missing and that the space is intended to be left blank. Likewise for deletions which have resulted in partially blank pages, the applicant may insert a "Z" or diagonal stroke to fill areas of empty space to indicate that no text is missing and that the space is intended to be left blank.

Section 85 of the Patent Rules requires that claims be numbered consecutively in Arabic numerals.

19.03 New subject-matter - September 2014

According to subsection 38.2(2) of the Patent Act, the specification may not be amended to describe subject-matter not reasonably to be inferred from the specification and drawings as originally filedFootnote 1. Similarly, the drawings may not be amended to add matter that is not reasonably to be inferred from the originally-filed specification or drawings (subsection 38.2(3) of the Patent Act). Matter pertaining to prior art with respect to the invention of the application may be added to the specification and the drawings; however, the applicant must acknowledge in the specification that any such matter is prior art. If an examiner determines that an amended specification or amended drawing comprises new subject-matter, the defect will be identified in an examiner's report and the applicant will be requisitioned to remove the new subject-matter.

Note also that an amendment that results in the removal of subject-matter from the specification or drawings may cause the application to not comply with subsections 38.2(2) or (3) of the Patent Act. For example, if the originally-filed specification described a component as made of a specific material, an amendment to remove the recitation of that specific material may be considered to describe new subject-matter if it could not reasonably be inferred from the original specification and drawings that the component could be made of material other than that originally stated.

Amendments containing new subject-matter will also be laid open on the date the application is laid open to public inspection or on the date the amendment is placed on file, whichever is later. This could affect the applicant's ability to later successfully obtain a patent in Canada or elsewhere for an invention relying on the new subject-matter.

19.04 Voluntary amendments - September 2014

A voluntary amendment may be made to a patent application at any time during the prosecution of an application; however, examination of such amendments will only be carried out once a request for examination has been received.

A voluntary amendment will be considered to be publicly disclosed on the date the application is laid open to public inspection or on the date the amendment is placed on file, whichever is later. This could have implications for the patentability of any new subject-matter disclosed in the amendment [see section 19.03].

19.05 Amendments to PCT applications - June 2015

Article 19 and 34 amendments made to Patent Cooperation Treaty (PCT) applications during the international phase become part of the national phase application at the time of national entry into Canada as long as such amendments were made prior to national entry. After national entry a PCT national phase application is subject to the same amendment requirements as a regularly filed patent application.

Any amendments made during the international phase after national entry will not be automatically included in the PCT national phase application. Where an applicant wishes to have such amendments entered into the PCT national phase application, the authorized correspondent must submit them as voluntary amendments.

19.06 Amendments in response to an examiner's report - September 2014

When submitting an amendment in response to an examiner's report identifying defects in an application, the written statement [see 19.02.03] must explain the manner in which the amendment overcomes the defects.

Where an amendment in response to an examiner's report has been submitted by a person who is not the authorized correspondent, the amendment will not be entered [see 19.02.02]. The application will become abandoned if a response to the examiner's report is not submitted by the authorized correspondent before the applicable due date.

The examiner will review the amendment and the written statement and determine whether the amended specification complies with the Patent Act and Patent Rules. Recognizing that the specification may not be amended to describe matter that is not reasonably inferred from the originally-filed specification and drawings, except in cases where the matter is prior art, the examiner will identify such a "new matter" defect, if present, and any additional defects introduced by way of the amendment in a further examiner's report [see 19.03].

Where the applicant believes that the application complies with the Patent Act and Patent Rules and does not wish to amend the application, arguments must be presented to explain why the applicant thinks that the application is not defective.

Paragraph 73(1)(a) of the Patent Act provides for the abandonment of an application if the applicant does not reply in good faith to any requisition made by an examiner within the prescribed time. A response to an examiner's report will be considered to be not in good faith if:

  • The applicant has neither presented an amendment in order to comply with the Patent Act and Rules nor presented any argument as to why the application does comply. In effect, the applicant has submitted a response that amounts to a non-response; or
  • The applicant has responded to a requisition with only clearly false statements.

It should be noted that the Patent Office does not generally requisition the correction of minor errors in a specification such as obvious spelling errors, punctuation and letter inversions (though they may be included in an examiner's report if other defects have been identified). If not corrected, such errors will appear in the granted patent.

19.07 Amendments in response to a Final Action - September 2014

Amendments received in response to a Final Action are covered in section 21.05.

19.08 Amendments after allowance - January 2016

Subsection 30(1) of the Patent Rules specifies that where an examiner has reasonable grounds to believe that the application complies with the Patent Act and Patent Rules, the Commissioner shall notify the applicant that the application has been found allowable and shall requisition the payment of the applicable Final Fee set out in paragraph 6(a) or (b) of Schedule II of the Patent Rules within the six-month period after the date of the notice.

After a notice of allowance has been mailed but before payment of the final fee, the types of amendments that may be made to an application are limited. Paragraph 32(a) of the Patent Rules specifies that after the notice of allowance is sent, an application shall not be amended, other than to correct a clerical error that is obvious on the face of the application, unless the fee set out in item 5 of Schedule II of the Patent Rules is paid. Paragraph 32(b) of the Patent Rules states that an application shall not be amended in a way that would necessitate a further search by the examiner in respect of the application or that would make the application not comply with the Patent Act or Patent Rules.

Examples of corrections to clerical errors include:

  • correcting a recognized typographic error within a word (obvious from a dictionary); or,
  • inserting a word or group of words which are missing from a sentence, when they are present in other occurrences of this sentence (obvious when considering the whole application).

Note that if a fee was paid in respect to an amendment after allowance, but was not required (i.e., in the case of a clerical error), the fee will not be refunded. For more information on clerical error corrections under section 8 of the Patent Act see 23.04 of this manual.

Examples of amendments which are not considered to be corrections to clerical errors include:

  • inserting the wording of the broadest independent claim into the description;
  • reintroducing elements that were removed previously in response to a report;
  • modifications which must be inferred from the application through some effort;
  • adding claims of narrower scope or deleting claims or parts of claims; or,
  • introducing new description headings.

Where an amendment after allowance fee is required, the examiner will verify that the fee has been paid or that a General Authorization Statement (GAS) for such a fee is included with the amendment. The following language for the GAS statement is recommended:

"Should the fees submitted with this letter be insufficient to cover all of the fees for which payment is explicitly or implicitly requested by this letter, CIPO is authorized to charge the amount of the insufficiency using one of the payment methods specified on the accompanying Fee Payment Form."

If an amendment after allowance fee is required but was not submitted with the amendment and no GAS for the fee was included with the amendment, the examiner will notify the applicant by letter that the amendment after allowance is refused.

If the required fee was paid or a suitable GAS was provided, the examiner will proceed to examine the amended application. If the amended specification and drawings comply with the Patent Act and Patent Rules and if the amended specification and drawings do not require a further search of the prior art, the amendment after allowance will be accepted and entered in the application. If the amendment would cause the application not to comply with the Patent Act or Patent Rules, or if a further search would be required as a result of the amendment, the amendment after allowance will be refused.

An amendment after allowance that broadens the scope of the claims, or changes the point of invention or its characterization so that something additional or different is claimed, will be refused. This includes not only changes to the claims, but also to additions to, or deletions from, the description or drawings which have the effect of broadening the scope of the claims or shifting the point of invention.

If the examiner refuses an amendment after allowance, the applicant will be so advised by the examiner by letter. The letter will indicate the reason(s) for refusal. At this point the applicant may:

  • pay the final fee to proceed to issuance with the application in its version before the amendment after allowance; or
  • if there is time before the final fee is due, submit arguments as to why the amendment after allowance is acceptable or submit a new amendment after allowance; or
  • not pay the final fee, allow the application to become abandoned, and then reinstate the patent application [see 19.11].

If an applicant chooses to submit a new amendment after allowance, the examiner will determine whether or not a new amendment after allowance fee is required. A new amendment after allowance fee will be required if the subject-matter of the new amendment after allowance is substantially different from that of the original submission.

19.09 Amendments after Commissioner's withdrawal of notice of allowance - September 2014

In the case where, after a notice of allowance has been sent to the applicant but prior to the patent being issued, the Commissioner has reasonable grounds to believe that the application does not comply with the Patent Act and Patent Rules, the Commissioner will notify the applicant accordingly and will return the application to the examiner for further examination. If the final fee has been paid, it will be refunded as per subsection 30(7) of the Patent Rules. Prosecution of the application will resume and the application may be amended by the applicant.

19.10 Amendments with or after payment of the final fee - June 2016

Generally, applications may not be amended by the applicant after the final fee has been paid (subsection 33(1) of the Patent Rules). On receipt of such an amendment submission, the Patent Office will notify the applicant that the application is scheduled to issue and cannot be amended, with the exception of clerical errors as provided by section 8 of the Patent Act [see Chapter 23.04 of this manual]. If a request to correct a clerical error is received after payment of the final fee, but before issue, the correction will be made after the patent issues.

19.10.01 Amendments after allowance submitted with the final fee

As noted above [see 19.10], an application shall not be amended after payment of the final fee. Applicants are strongly advised not to submit the final fee at the same time as an amendment after allowance (AAA). Should the Office inadvertently apply the final fee before processing the AAA, the AAA will not be taken into account and the application will proceed to grant on the basis of the application as it stood at the time of allowance. Though paragraph 4(10)(b) of the Patent Rules provides that a final fee may be refunded if a refund request is received before the start of technical preparations for issue, the Office now begins technical preparations for issue a short time after receipt of the final fee, making it highly unlikely that the Office will be able to refund the final fee.

The following procedures will be followed by the Office when an AAA is submitted at the same time as the final fee:

  1. Where the cover letter does not instruct the Office that the final fee is only to be applied in the event that the amendment after allowance is acceptable:
    • The final fee will be applied once the amendment after allowance has been evaluated by an examiner.
    • If the amendment after allowance is acceptable, it will be entered and the final fee will be applied. The application will proceed to grant and will include the amendment after allowance.
    • If the amendment after allowance is not acceptable, the amendment will not be entered; the final fee will be applied and the application will proceed to grant on the basis of the application as it stood at the time of allowance.
    • In both cases the Office will send a courtesy letter informing the applicant whether or not the amendment after allowance was accepted. Please note that in this instance the final fee will have been applied before the courtesy letter is sent.
  2. Where the cover letter does instruct the Office that the final fee is only to be applied in the event that the amendment after allowance is acceptable:
    • If the amendment after allowance is acceptable, the amendment will be entered and the final fee will be applied. The application will proceed to grant and will include the amendment after allowance.
    • If the amendment after allowance is not acceptable, the amendment will not be entered. The final fee will not be applied and the application will go abandoned at the expiry of the time to pay the final fee, unless a subsequent acceptable amendment after allowance is received before the expiry of the time to pay the final fee.
    • In both cases the Office will send a courtesy letter informing the applicant whether or not the amendment after allowance was accepted.

19.11 Amendments after failure to pay the final fee - September 2014

If an applicant fails to pay the final fee within the six-month period after the date of the notice of allowance, the application will be deemed abandoned (paragraph 73(1)(f) of the Patent Act).

Subsequent to abandonment, the applicant has 12 months within which the application may be reinstated under subsection 73(3) of the Patent Act. In order to reinstate the application, the applicant must file a request for reinstatement along with the payment of the reinstatement fee and payment of the final fee. Should the applicant wish to amend the application at this stage, the amendment request must be made together with the request for reinstatement. The amended application will be considered with respect to compliance with the Patent Act and Patent Rules upon receipt, and the application will be subject to examination, pursuant to subsection 73(4) of the Patent Act. If the application is found to be allowable, it will advance directly to issuance since the final fee has already been paid. If the application does not meet the requirements of the Patent Act and Patent Rules, prosecution of the application will resume.

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