The regime under the Australian Patents Act (1990) (‘the Act’) to determine the allowability of amendments is governed by s102. This article aims to shed some light on this somewhat unique aspect of Australian practice. The Act was amended in 2012 by the Raising the Bar Act and the following discussion relates to s102, as amended, in regard to standard patents only.
The statutory regime under s102 dictates what amendments are not allowable to a complete specification. s102 constitutes three subsections that are to be taken together, and is reproduced below:
Amendment of complete specification not allowable if amended specification claims or discloses matter extending beyond that disclosed in certain documents.
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a) the complete specification as filed;
(b) other prescribed documents (if any).
Certain amendments of complete specification are not allowable after relevant time
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2), (3) or (3A).
(3) This section does not apply to an amendment for the purposes of:
(a) correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification; or
(b) complying with paragraph 6(c) (about deposit requirements).
s102(1) is broadly directed to whether the amendment to the complete specification introduces new matter to the complete specification as filed. That is, whether the amendment claims or discloses matter that extends beyond that disclosed at filing. There is no temporal limitation to s102(1) and the provision applies to amendments proposed and considered at any time. Therefore, any proposed s104 amendment is subject to s102(1) consideration.
The test under s102(1) is strict and this section has received judicial consideration by Beach J in Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH  FCA 328. An Australian Patent Office decision in Permaform International Pty Ltd v CSR Building Products Limited  APO 66 at paragraph 13 succinctly summarises Beach J’s approach to s102(1):
Thus, the correct approach when considering whether an amendment would result in the specification claiming or disclosing new matter is to ask whether the person skilled in the art would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn or directly derive from the complete specification as filed.
The relevant comparison under s102(1) for potential added subject matter is with the specification as originally filed (inclusive of the abstract), and any earlier filed amendment proposals or already allowed amendments are disregarded. Notably, Article 34 amendments are not considered part of the specification as originally filed and are therefore irrelevant to the allowability of any subsequently proposed amendments under sec 102(1).
s102(2) is enlivened by a temporal event, namely amendments after acceptance (and by extension, after grant) of the complete specification of a standard patent and imparts further constraints to the allowability of the proposed amendment made in this period. An amendment under s102(2) will not be allowed if the amendment contravenes subsections (a) or (b). Therefore, if the amendment introduces a claim that does not fall within the scope of the claims before amendment, if the proposed amendment results in a specification that is either unclear, not supported by the matter disclosed in the specification or an invention that is not clearly and completely disclosed, the amendment will not be allowed – this provision ensures s40 compliance is maintained from the unamended to the amended specification.
Under s102(2)(a), the relevant comparison is not to the specification as originally filed, but rather to the scope of the claims of the specification before amendment. That is, whether an amended claim would not in substance fall within the scope of the claims before amendment. In Permaform (supra) at paragraphs 14-16, the Delegate, drawing from judicial precedence, stated that a useful test for the allowability of amendments under s102(2)(a) is: “would the amendment make anything an infringement which would not have been an infringement before the amendment?“.
Some other salient considerations regarding s102(2)(a):
- The test requires consideration of the monopoly afforded by the considered claim, and namely the total invention that the claim defines. The test is not a meticulous comparison of the text of the claim before and after amendment.
- The amended claim need only fall within the scope of one or more of the other claims present before amendment. The question is not whether the amended claim would actually fall within the scope of one or all of the other claims.
s102(3)(a) provides that s102 does not apply to correction of a clerical error or obvious mistake. The onus is on the applicant or patentee to prove that the benefit of s102(3)(a) applies, and evidence may be required to establish a clerical error or obvious mistake. This section is interesting insofar as the clerical error or obvious mistake is not confined to its presence in the complete specification but may simply be in relation to the complete specification. Therefore, s102(3)(a) may apply to a clerical error or obvious mistake in any prepared earlier document in relation to the complete specification, e.g., a provisional specification or instructing letter, that carries through to the complete specification. The nature of a clerical error has garnered some judicial consideration: “The words ‘clerical error’ … mean a mistake made in the course of some mechanical process such as writing or copying as distinct from an error arising, e.g. from lack of knowledge, or wrong information, in the intellectual process of drafting language to express intention.”
A poor translation from a foreign language is a noteworthy example of what is not a clerical error.
An obvious mistake is one “that the instructed public can, from an examination of the specification, appreciate the existence of the mistake and the proper answer by way of correction“. The caveat is correction that is sought must also be obvious. If the correction is not obvious, this provision may not apply. A well-known example to Australian practitioners is that it may be obvious that a page of a specification is missing but it may not be obvious that the page to be inserted should be present in the amended specification. Errors in judgements when drafting the specification are not regarded as falling within the scope of an obvious mistake.