Patents Act · 2023 Revised Edition · Part · Amendments of Patents and Applications
81. Amendments of applications and patents not to include added matter
Official textFrom Attorney General's Chambers, unchanged
An application for a patent which —
patent
“patent” means a patent under this Act and includes a patent in force by virtue of section 114(4);
is made in respect of matter disclosed in an earlier application, or in the specification of a patent which has been granted; and
discloses additional matter, that is, matter extending beyond that disclosed in the earlier application made under this Act or in the application made under the United Kingdom Patents Act, Malaysia
Patents Act or Singapore Patents Act or the application under the
European Patent Convention designating the United Kingdom filed at the European Patent Office from which the filing date and right of priority is sought to be derived, as filed, or the application for the patent, as filed, may be filed under section 20(3) or 48(4), or as mentioned in section 26(11), but shall not be allowed to proceed unless it is amended so as to exclude the additional matter.
Where, in relation to an application for a patent —
the documents filed at the Registry to initiate the application contain —
a reference to an earlier relevant application specified in a declaration under section 17(2) made in or in connection with the application; and
a statement referred to in section 26(1)(c)(ii)(C); and
Patents 110
the description filed under section 26(7)(b) discloses additional matter, that is, matter extending beyond that disclosed in the earlier relevant application, the application shall not be allowed to proceed unless it is amended to exclude the additional matter.
No amendment of an application for a patent shall be allowed under section 31 if it results in the application disclosing any matter extending beyond that disclosed in the application as filed.
No amendment of the specification of a patent shall be allowed under section 38(1), 78 or 80 if it —
results in the specification disclosing any additional matter;
or
extends the protection conferred by the patent.
In subsection (2), “relevant application” has the same meaning as in section 17(9).
Terms defined in s 2
European Patent Convention
Defined · s 2“European Patent Convention” means the Convention on the Grant of European Patents;
European Patent Office
Defined · s 2“European Patent Office” means the office of that name established by the European Patent Convention;
patent
Defined · s 2“patent” means a patent under this Act and includes a patent in force by virtue of section 114(4);
right
Defined · s 2“right”, in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent;
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