The Patents Rules 1995

Amendment of application before grant

36.—(1) An applicant may not amend the description, claims and drawings contained in his application except in accordance with the following provisions of this rule.

(2) Unless the comptroller so requires or consents, the applicant may not so amend before the comptroller sends to the applicant the examiner’s report under section 17(5).

(3) After the comptroller has sent to the applicant the examiner’s report under section 17(5) and before he sends to the applicant the first report of the examiner under section 18, the applicant may so amend of his own volition.

(4) After the comptroller has sent to the applicant the examiner’s first report under section 18, the applicant may so amend once of his own volition provided that—

(a) where the report is made under—

(i) section 18(3), the amendment is filed at the same time as the applicant replies to that report, or

(ii) section 18(4), the amendment is filed within two months of that report being sent to the applicant,

except that—

(b) where the report referred to in sub-paragraph (a)(i) is made before preparations for publication of the application have been completed, the applicant may, in addition and prior to the amendment which may be made in accordance with that sub-paragraph, amend of his own volition the description, claims or drawings.

(5) The right to amend set out in paragraph (4) is in addition to an applicant’s right under section 18(3) to amend the application so as to comply with the requirements of the Act and these Rules.

(6) Any further amendment to the description, claims or drawings which the applicant desires to make of his own volition may be made only with the consent of the comptroller following the filing of Patents Form 11/77 clearly identifying the proposed amendment and stating the reasons for it.