Change in practice for post grant amendments to Australian Patents

The Australian Patent Office published notification in the Official Journal of Patents dated 24 July 2008 advising of a change in the way the Commissioner will handle post grant amendments.

Previously, after granting leave to amend and following the expiration of the three month period for opposition but before granting the amendments, the Commissioner issued notification requiring the patentee to provide a statement confirming that no relevant proceedings (ie court proceedings for infringement or revocation of the patent) were pending and set a one month date for the patentee to respond. For various reasons this practice led to administrative inefficiencies.

Accordingly, henceforth the Commissioner will, prior to allowance of any amendment to a sealed patent, issue a letter asking for advice on whether there are any relevant proceedings pending and give the patentee one month to provide that advice. This date is extendible by one month. It should be noted that if the requested advice is not received within the initial one month period or within the extended time, the Commissioner will move to formally refuse the request for leave to amend. It should also be noted that if relevant proceedings are pending the Commissioner will automatically refuse the amendment request and the patentee will need to reapply for leave to amend after such proceedings have been completed.

It is hoped that this change will rectify the current administrative nightmare associated with post grant amendments and bring some finality to the process.