FOR IP PROFESSIONALS

Amending your patent

An IP Australia staff member explaining a document to another

There are systems in place to allow you to:

  • amend your patent to keep details up to date,
  • to add information to a patent application, and to
  • amend your application in response to an adverse examination report

You can amend your patent online or by fax, post or in person.

What if I omit something or want to change it?

Voluntary Amendments

Once you have filed the specification for your patent application you have limited options to change it.

If you want to add new matter to a provisional application, you should consider filing a new provisional application as soon as possible to secure a priority date for these additional details rather than trying to add the additional details to the existing application. Any amendment that increases the scope of what was given in the original provisional application will not be allowed. For a complete application you are able to amend the specification throughout the patent process via section 104 of the Patents Act 1990.

The type of application determines when a voluntary amendment can be filed:

  • Standard or provisional applications - amendments can be filed at any time (provided the application has not lapsed)
  • Innovation applications - amendments can be filed any time after grant (unless the amendment has been filed to overcome a formalities direction issued by us)

A fee is due if you are filing a voluntary amendment on a patent application before you request examination or after the standard patent application has been accepted. There is no fee for filing a voluntary amendment on a provisional application or on an innovation or standard patent application after examination has been requested.

The voluntary amendment will be considered by an examiner with a number of possible outcomes. The examiner can allow the amendment, indicate that the request is to be advertised for an opposition period or issue an adverse report explaining why the amendment is not allowable.

Keeping patent information up to date

When your patent is granted details about it are recorded in the Register of Patents and it is important that you keep this information up to date.

Contact us if:

  • you change your name or address
  • the ownership of the patent changes, for example, by assignment
  • you grant a licence to the invention to another person
  • you are aware of any errors in the details recorded on the Register of Patents

Assignments

If ownership of a patent or patent application has been assigned to another party, you need to notify us of the change.

Changes in ownership can include a direct transfer of interest from one party to another or a merger between parties.

When notifying us of the change of ownership you need to supply a copy of the documents that confirm the transfer such as a deed of assignment, merger document or sale agreement. These documents must include:

  • the exact name of the current owner
  • the name(s) of the new owner(s)
  • date of execution of the assignment
  • the application/patent number(s) the assignment relates to
  • signatures to satisfy that the ownership has changed. Depending on the circumstances, the signatures needed might be of both parties (i.e. current owner and new owner). If there is more than one current owner, all the owners have to approve the change.

Amending the name of the applicant and patent owner

There are two ways to change the name of a patent applicant;

  1. by the current applicant asking us to amend the patent request to delete their name and insert the name of the new applicant
  2. by the new applicant asking us to change the current applicant's name to their own

If the new applicant asks us for the change, we will need to be satisfied that they own the application. Documents proving ownership may need to be filed. These documents might be records of assignments or a certificate showing that a company has changed its name.

If you have a granted patent and discover that your name is recorded incorrectly, you can ask us to change your name only if the incorrect recording of your name happened because of a clerical error or it is obvious that there is a mistake with the name.

A clerical error is a very specific type of error. It is an error that is made in the course of writing or copying. For example, if you intended to write one thing and, by mistake, wrote something else, that is a clerical error. If you accurately recorded what you were told to record and it is discovered later that an error had been made which resulted in you being given the wrong information to record this is not a clerical error.

If you ask us to change a name because a clerical error caused the wrong name to be recorded, you will need to give us a declaration or other evidence that fully explains the facts to show that a clerical error was responsible for the incorrect name being given.

If you cannot prove that a clerical error has occurred, you could try and get the change made by asking a court to order that the change is made.

Amending the address for service

To amend an address for service you should write to us stating what the new address for service is.  No further evidence of the change is required.

Recording a mortgage or licence

If you want to record the details of a security interest such as a mortgage that has been taken out on your patent (or you have taken out on another person's patent), you need to record this on the national online Personal Property Securities Register. As of 30 January 2012, our register of Patents is no longer a legal security register. However, you may wish to also record the details of a mortgage or licence on a patent on the Register of Patents. To do this you have to tell us that you want to record a licence or mortgage and give us evidence which shows that a mortgage or licence exists. This evidence might be a copy of a mortgage or licence agreement with relevant signatures.

We do not need original documents and will accept copies.

Last Updated: 03/4/2014

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Customer Service Delivery since 2002
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