PA 76 - Added Matter; PR 49, 50, 105

Question 1

What does Section 76 concern

Answer 1

Amendments not to include added matter

Question 2

What will happen if a divisional application adds matter

Answer 2

S76(1)
An APPLICATION which
a) is made in respect of matter disclosed in a prior application or patent, and
b) discloses additional matter extending beyond that previously disclosed as filed in the prior application
ay be filed under S8(3), 12, 37(4) or 15(9) but shall NOT proceed to grant until amended to EXCLUDE the additional matter

Question 3

What happens if your description filed after your application was filed with reference to a previous application adds matter

Answer 3

S76(1A)
the application shall NOT proceed unless it is amended to EXCLUDE the additional matter

Question 4

When are added matter amendments not allowed

Answer 4

S76(2)
NO amendment of an APPLICATION is allowed under S15A(6), S18(3) or S19(1) if it results in disclosing matter beyond that disclosed in the application as filed

S15A(6) - amendments to comply with prelim exam
S18(3) - amendments to comply with defects highlighted in exam reports
S19(1) Voluntary amendments before grant

Question 5

What type of amendment to a PATENT is not allowed

Answer 5

S76(3)
No amendment of the PATENT is allowed under S27(1), S73 or S75 if it:
a) disclosed additional matter or
b) extends the scope of protection

Question 6

What is the added matter test

Answer 6

you can only amend within the limits of what a skilled person would have derived directly and unambiguously, using CGK and seen objectively and relative to the date of filing, from the whole of the document as filed

Question 7

Which cases do S76 (1) and (1A) apply to

Answer 7

When re-filing occurs, and you want to maintain the priority date. If you do not exclude the added matter later it will have a new priority date

Question 8

Why does S76(3) apply

Answer 8

To give legal certainty for third parties after grant by preventing expansion of the claim scope

Question 9

What does R49 apply to

Answer 9

Correction or change or name or address

Question 10

How should corrections of names and addresses be made

Answer 10

R49
TO correct a name a PF20 must be filed, otherwise (for address or address of service) the request must be made in writing

Question 11

What should the comptroller do if he has reasonable doubts about a correction or change in name or address

Answer 11

he must inform the person making the request of the reasons for his doubts, and may require them to file evidence in support of the request.

Question 12

What should the Comptroller do when he has no doubts about making a correction under R49 or R50

Answer 12

enter it on the register or make it to the application or document

Question 13

What does R50 concern

Answer 13

Requests for correction of an error in the register or in any document filed in connection with registration

Question 14

How should requests for correction of errors under R50 be made

Answer 14

R50(2)
It must be made
a) in writing
b) accompanied by sufficient information to identify the nature of the error and the correction requested.

Question 15

What does R105 concern

Answer 15

Correction of errors or mistakes under S117

Question 16

How should corrections under R105 be made

Answer 16

R105(1) in writing and identifying the correction

Question 17

What can the Comptroller do to help determined if an error should be allowed

Answer 17

R105(2)
If he thinks fit, require the person requesting a correction to produce a copy of the document indicating the correction

Question 18

What conditions should be met for errors under R105

Answer 18

R105(3)
In the spec of a patent or application, the correction should be obvious to make
(4) UNLESS it is due to corruption during electronic transmission

Question 19

What does obvious mean for errors

Answer 19

immediately evident that nothing else could have been intended

Question 20

When will corrections of errors be advertised in the OJ (R105)

Answer 20

R105
(5) if it is unobjectionable it will not be advertised
(6) but the Comptroller WILL advertise the correction if relevant to S117(3) (i.e. related to erroneous withdrawal of an application)

Question 21

What does R105 corrections not apply to

Answer 21

R105(7)
To the correction of names and addresses (use R49)

Question 22

Who can request corrections under R105

Answer 22

There is no limitation on who can request corrections, thus it includes the proprietor their representative and the Examiner

Question 23

Can non-obvious errors ever be corrected

Answer 23

Yes - R105(3) only applies to the specification, so NON-obvious errors in other application docs and forms can be corrected