Processing Amendments Filed Under Article 19 and Article 34 Prior to or at the Start of International Preliminary Examination

PCT Rule 62

Copy of the Written Opinion by the

International Searching Authority and of Amendments Under Article 19 for the

International Preliminary Examining Authority

62.1 Copy of Written Opinion by International Searching

Authority and of Amendments Made Before the Demand Is Filed

Upon receipt of a demand, or a copy thereof, from the

International Preliminary Examining Authority, the International Bureau shall

promptly transmit to that Authority:

(i) a copy of the written opinion established under

Rule 43bis.1

, unless the

national Office or intergovernmental organization that acted as

International Searching Authority is also acting as International

Preliminary Examining Authority; and

(ii) a copy of any amendment under

Article

19

, and any statement referred to in that

Article, and the letter required under

Rule

46.5(b)

, unless that Authority has indicated that

it has already received such a copy.

62.2 Amendments Made After the Demand Is

Filed

If, at the time of filing any amendments under

Article

19

, a demand has already been submitted, the applicant

shall preferably, at the same time as he files the amendments with the

International Bureau, also file with the International Preliminary Examining

Authority a copy of such amendments, and any statement referred to in that

Article and the letter required under

Rule

46.5(b)

. In any case, the International Bureau shall

promptly transmit a copy of such amendments, statement and letter to that

Authority.

PCT Rule 62bis

Translation for the International

Preliminary Examining Authority of the Written Opinion of the International

Searching Authority

62

bis

.1 Translation and Observations

(a) Upon request of the International Preliminary Examining

Authority, the written opinion established under

Rule

43bis.1

shall, when not in

English or in a language accepted by that Authority, be translated into

English by or under the responsibility of the International Bureau.

mining Authority of the Written Opinion of the International

Searching Authority

62

bis

.1 Translation and Observations

(a) Upon request of the International Preliminary Examining

Authority, the written opinion established under

Rule

43bis.1

shall, when not in

English or in a language accepted by that Authority, be translated into

English by or under the responsibility of the International Bureau.

(b) The International Bureau shall transmit a copy of the

translation to the International Preliminary Examining Authority within two

months from the date of receipt of the request for translation, and shall at

the same time transmit a copy to the applicant.

(c) The applicant may make written observations as to the

correctness of the translation and shall send a copy of the observations to

the International Preliminary Examining Authority and to the International

Bureau.

PCT Rule 66

Procedure before the International

Preliminary Examining Authority

66.8 Form of Amendments

(a) Subject to paragraph (b), when amending

the description or the drawings, the applicant shall be required to

submit a replacement sheet for every sheet of the international

application which, on account of an amendment, differs from the sheet

previously filed. The replacement sheet or sheets shall be accompanied

by a letter which shall draw attention to the differences between the

replaced sheets and the replacement sheets, shall indicate the basis for

the amendment in the application as filed and shall preferably also

explain the reasons for the amendment.

rnational

application which, on account of an amendment, differs from the sheet

previously filed. The replacement sheet or sheets shall be accompanied

by a letter which shall draw attention to the differences between the

replaced sheets and the replacement sheets, shall indicate the basis for

the amendment in the application as filed and shall preferably also

explain the reasons for the amendment.

(b) Where the amendment consists in the

deletion of passages or in minor alterations or additions, the

replacement sheet referred to in paragraph (a) may be a copy of the

relevant sheet of the international application containing the

alterations or additions, provided that the clarity and direct

reproducibility of that sheet are not adversely affected. To the extent

that any amendment results in the cancellation of an entire sheet, that

amendment shall be communicated in a letter which shall preferably also

explain the reasons for the amendment.

(c) When amending the claims,

Rule

46.5

shall apply

mutatis

mutandis

. The set of claims submitted under

Rule 46.5

as applicable by virtue of this

paragraph shall replace all the claims originally filed or previously

amended under

Articles 19

or

34

, as the case may be.

The documents making up the international application may include

amendments of the claims filed by the applicant under

PCT Article 19

.

Article

19

amendments are exclusively amendments to the claims and these

amendments can only be made after the international search report has been established.

Article

19

amendments, any statement referred to in that Article, and the

letter required under

PCT Rule 46.5(b)

will be

transmitted to the International Preliminary Examining Authority (IPEA) by the

International Bureau unless that Authority has indicated that it has already received

such a copy

aims and these

amendments can only be made after the international search report has been established.

Article

19

amendments, any statement referred to in that Article, and the

letter required under

PCT Rule 46.5(b)

will be

transmitted to the International Preliminary Examining Authority (IPEA) by the

International Bureau unless that Authority has indicated that it has already received

such a copy. The International Bureau marks, in the upper right-hand corner of each

replacement sheet submitted under

PCT Article 19

, the international

application number, the date on which that sheet was received under

PCT Article 19

and, in the middle of the bottom margin, the words

"AMENDED SHEET (ARTICLE 19)."

Where a demand for international

preliminary examination has been submitted to the IPEA/US and a copy of the

PCT Article

19

amendments has not yet been received from the IB, applicant

may consider filing a copy directly with the IPEA/US. If the copy of the

PCT Article

19

amendments has not been stamped as “AMENDED SHEET (ARTICLE

19)” by the IB, the IPEA/US will treat the unstamped copy as an amendment under

PCT Article

34

.

The IPEA starts the international preliminary examination when it is in

possession of the demand; the required fees; if the applicant is required to furnish a

translation under

PCT

Rule 55.2

, that translation; either the international search

report or a notice of the declaration by the International Searching Authority under

PCT Article

17(2)(a)

that no international search report will be established;

and the written opinion established under

PCT Rule

43bis.1

, unless the applicant expressly requests

to postpone the start of the international preliminary examination until the expiration

of the later of three months from the transmittal of the international search report, or

declaration that no international search report will be established, and written

opinion; or the expiration of 22 months from the priority date, with the exception of

the following situations:

(A) If the competent IPEA is part of

tpone the start of the international preliminary examination until the expiration

of the later of three months from the transmittal of the international search report, or

declaration that no international search report will be established, and written

opinion; or the expiration of 22 months from the priority date, with the exception of

the following situations:

(A) If the competent IPEA is part of the same national Office or

intergovernmental organization as the competent International Searching

Authority, the international preliminary examination may, if the IPEA so wishes,

start at the same time as the international search, provided that the

examination is not to be postponed according to the statement concerning

PCT

Article 19

amendments (

PCT Rule

53.9(b)

);

(B) Where the statement concerning amendments contains an

indication that amendments made with the International Bureau under

PCT

Article 19

are to be taken into account

(

PCT Rule

53.9(a)(i)

), the IPEA does not start the international

preliminary examination before it has received a copy of the amendments

concerned, any statement referred to in that Article and the letter required

under

PCT Rule 46.5(b)

. These

will be transmitted to the IPEA by the International Bureau. The applicant

should preferably, at the time the applicant files the demand, also file a copy

of the amendments, any statement referred to in that Article and the letter

required under

PCT Rule 46.5(b)

with the

IPEA;

(C) Where the statement concerning amendments contains an

indication that the start of the international preliminary examination is to be

postponed (

PCT

Rule 53.9(b)

), the IPEA does not start the international

preliminary examination before:

(1) it has received a copy of any amendments made under

PCT Article 19

, any statement referred to in

that Article and the letter required under

Rule

46.5(b)

;

(2) it has received a notice from the applicant that the

applicant does not wish to make amendments under

PCT Article

19

; or

is to be

postponed (

PCT

Rule 53.9(b)

), the IPEA does not start the international

preliminary examination before:

(1) it has received a copy of any amendments made under

PCT Article 19

, any statement referred to in

that Article and the letter required under

Rule

46.5(b)

;

(2) it has received a notice from the applicant that the

applicant does not wish to make amendments under

PCT Article

19

; or

(3) the later of two months from the transmittal of the

international search report or the expiration of 16 months from the

priority date;

whichever occurs first; and

(D) Where the statement concerning amendments contains an

indication that amendments under

PCT Article 34

are

submitted with the demand (

PCT Rule 53.9(c)

) but no

such amendments are, in fact, submitted, the IPEA does not start the

international preliminary examination before it has received the amendments or

before the time limit fixed in the invitation referred to in

PCT Rule

60.1(g)

has expired, whichever occurs first.

The applicant has the right to amend the claims, the description, and

the drawings, in the prescribed manner and before the start of international preliminary

examination. The amendment must not go beyond the disclosure in the international

application as filed. These amendments are referred to as

PCT Article

34(2)(b)

amendments. It should be noted that

PCT Article 19

amendments are strictly amendments to the claims made during the Chapter I search phase

while

PCT Article

34(2)(b)

amendments to the description, claims, and drawings are

made during the Chapter II examination phase.

When amendments to the description or drawings are made under

PCT Rule

66.8

, the applicant shall be required to submit a replacement

sheet for every sheet of the international application which, on account of an

amendment, differs from the sheet previously filed

h phase

while

PCT Article

34(2)(b)

amendments to the description, claims, and drawings are

made during the Chapter II examination phase.

When amendments to the description or drawings are made under

PCT Rule

66.8

, the applicant shall be required to submit a replacement

sheet for every sheet of the international application which, on account of an

amendment, differs from the sheet previously filed. The replacement sheet or sheets

shall be accompanied by a letter which shall draw attention to the differences between

the replaced sheets and the replacement sheets, shall indicate the basis for the

amendment in the application as filed and shall preferably also explain the reasons for

the amendment. When amendments to the claims are made under

PCT Rule 66.8

,

the applicant shall be required to submit a replacement sheet or sheets containing a

complete set of claims in replacement of all the claims originally filed or previously

amended under

Articles

19

or

34

, as the case may be. The

replacement sheet or sheets must be accompanied by a letter that identifies the claims

which, on account of the amendments, differ from the claims originally filed, and shall

(A) draw attention to the differences between the claims originally filed and the claims

as amended, (B) identify the claims originally filed which, on account of the

amendments, are cancelled, and (C) indicate the basis for the amendments in the

application as filed

anied by a letter that identifies the claims

which, on account of the amendments, differ from the claims originally filed, and shall

(A) draw attention to the differences between the claims originally filed and the claims

as amended, (B) identify the claims originally filed which, on account of the

amendments, are cancelled, and (C) indicate the basis for the amendments in the

application as filed. These amendments may have been submitted to avoid possible

objections as to lack of novelty or lack of inventive step in view of the citations

listed in the international search report and the observations on novelty, inventive

step, and industrial applicability set forth in the written opinion established by the

International Searching Authority; to meet any objections noted by the International

Searching Authority under

PCT Article 17(2)(a)(ii)

(i.e.,

that all or at least some claims do not permit a meaningful search) or under

PCT Rule

13

(i.e., that there is a lack of unity of invention); or to meet

objections that may be raised for some other reason, e.g., to remedy some obscurity

which the applicant has noted in the original documents.

The amendments are made by the applicant of the applicant’s own

volition. This means that the applicant is not restricted to amendments necessary to

remedy a defect in the international application. It does not, however, mean that the

applicant should be regarded as free to amend in any way the applicant chooses. Any

amendment must not add subject matter which goes beyond the disclosure of the

international application as originally filed. Furthermore, it should not itself cause

the international application as amended to be objectionable under the PCT, e.g., the

amendment should not introduce obscurity

, however, mean that the

applicant should be regarded as free to amend in any way the applicant chooses. Any

amendment must not add subject matter which goes beyond the disclosure of the

international application as originally filed. Furthermore, it should not itself cause

the international application as amended to be objectionable under the PCT, e.g., the

amendment should not introduce obscurity.

As a matter of policy and to ensure consistency in handling amendments

filed under

Articles

19

and

34

of the PCT, the following

guidelines for processing these amendments have been established:

(A) Any argument or amendment which complies with

37 CFR

1.485

will be considered;

(B) Amendments filed after the demand:

(1) will be considered if filed before the

expiration of the applicable time limit under

PCT Rule

54bis.1(a)

which is the

later of:

(a) three months from the transmittal

of either the international search report or a notice of the

declaration by the International Searching Authority under

PCT Article

17(2)(a)

that no international search

report will be established, and the written opinion established

under

PCT Rule

43bis.1

; or

(b) the expiration of 22 months from

the priority date.

Note however, that if applicant did not

expressly request to postpone the start of the international preliminary

examination until the expiration of the time limit under

PCT Rule 54bis.1(a)

, then the

examiner is not required to consider the post-Demand amendment, even if

such amendment is filed before the expiration of the applicable time

limit under

PCT Rule

54bis.1(a)

.

(2) will be considered if filed before the application is

docketed to the examiner. To ascertain if the application has been

docketed to the examiner, check the USPTO patent electronic filing

system or contact the PCT Help Desk. See

MPEP §

1730

, subsection III.

the post-Demand amendment, even if

such amendment is filed before the expiration of the applicable time

limit under

PCT Rule

54bis.1(a)

.

(2) will be considered if filed before the application is

docketed to the examiner. To ascertain if the application has been

docketed to the examiner, check the USPTO patent electronic filing

system or contact the PCT Help Desk. See

MPEP §

1730

, subsection III.

(3) may be considered if filed after docketing. The examiner

has discretion to consider such amendments if the examiner determines

that the amendment places the application in better condition for

examination or the examiner determines that the amendment should

otherwise be entered.

(C) Amendments and/or arguments filed after expiration of the period

for response to the written opinion:

(1) will be considered if the amendment was requested by the

examiner,

(2) need not be taken into account for the purposes of a

further written opinion or the international preliminary examination

report if they are received after the examiner has begun to draw up that

opinion or report. The applicant may file an amendment to the

description, the claims and the drawings in the prescribed manner, even

if this is outside the time period set for reply in

PCT Rule

66.2(d)

. Since the examiner may begin to draw up

the final report once the time period set for reply in

PCT Rule

66.2(d)

expires, amendments filed after the

expiration of the time period set in for reply in

PCT Rule

66.2(d)

may or may not be considered. There may

be situations where it is advisable, to the extent possible, to take

such amendments or arguments into account, for example, where the

international preliminary examination report has not yet been completed

and it is readily apparent to the examiner that consideration of the

late-filed response would result in the issuance of a favorable

report

Rule

66.2(d)

may or may not be considered. There may

be situations where it is advisable, to the extent possible, to take

such amendments or arguments into account, for example, where the

international preliminary examination report has not yet been completed

and it is readily apparent to the examiner that consideration of the

late-filed response would result in the issuance of a favorable

report.

It is expected, due to the relatively short time period for completion

of preliminary examination, that the Chapter II application will be taken up promptly

after docketing to the examiner for preparation of either a further written opinion, if

necessary, or the international preliminary examination report (Form PCT/IPEA/409).

Amendments timely filed but misdirected or otherwise late reaching the

examiner will be considered as in the case of regular domestic applications and may

require a supplemental written opinion and/or international preliminary examination

report.

Clearly, these guidelines offer the examiner flexibility. The examiner

should be guided by the overriding principle that the international preliminary

examination report should be established with as few written opinions as possible and

resolution of as many issues as possible consistent with the goal of a timely and

quality report.

See also Administrative Instructions Section

602

regarding

processing of amendments by the IPEA.

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