1853 Amendment Under PCT Article 19 [R-10.2019]

The applicant is entitled, under Article 19, to one opportunity to amend the claims of the international application in the international phase. Further opportunities to amend the claims, and also the description and the drawings, are available during the international phase under Article 34 if, and only if, the applicant files a Demand for international preliminary examination. Any amendment to the claims under Article 19 must be filed with the International Bureau – not with the receiving Office nor with the International Searching Authority. The amendments must be in the language in which the international application is published.

The opportunity to make amendments under Article 19 is available after the applicant has received the international search report and the written opinion of the International Search Authority, and remains available until the end of 16 months from the priority date or two months after the transmittal (i.e., the date of mailing) of that report and opinion, whichever expires later. Amendments received by the International Bureau after the time limit are still accepted if they have been received before the technical preparations for international publication have been completed. Amendments to the claims under Article 19 are not allowed where the International Searching Authority has declared, under Article 17(2), that no international search report would be established. If the amendments to the claims are timely received by the International Bureau, such amendments will be published as part of the publication of the international application directly following the claims as filed. Article 19 offers applicants the opportunity to generally amend the claims before entering the designated Offices. The national laws of some designated Offices may grant provisional protection on the invention from the date of publication of the claims. Therefore, some applicants take advantage of the opportunity under Article 19 to polish the claims anticipating provisional protection. See PCT Rule 46.5.

The submission of Article 19 amendments should comprise:

• (i) a complete set of claims in replacement of the claims originally filed
• (ii) a letter which must indicate the differences between the claims as filed and those as amended plus the basis for the amendments
• (iii) an optional statement under Article 19

When filing amendments to the claims under Article 19, the applicant is required to file a sheet or sheets containing a complete set of claims in replacement of the claims originally filed. The replacement sheet or sheets must be accompanied by a letter drawing attention to the differences between the claims as filed and the claims as amended. It must also indicate the basis for the amendment to the claims with specific references to particular parts of the application as originally filed, as illustrated in the Example below. Where an amendment results in the cancellation of an entire sheet of the international application as originally filed, the amendment (i.e., the cancellation) is evidenced only by the letter addressed to the International Bureau. Amendments may consist in the cancellation of one or more entire claims, in the addition of one or more new claims, or in the amendment of the text of one or more of the claims as filed. All the claims appearing on a replacement sheet must be numbered in Arabic numerals (corresponding to the order of the claims). Where a claim is cancelled, no renumbering of the other claims is required. However, where the applicant does renumber claims, they must be renumbered consecutively.

The letter, which must accompany the replacement sheets containing amendments to the claims, must indicate firstly the differences between the claims as filed and those as amended and secondly the basis for the amendments in the application as filed. This should be done by stating, in connection with each claim appearing in the international application, whether:

• (i) the claim is unchanged,
• (ii) the claim is cancelled;
• (iii) the claim is new;
• (iv) the claim replaces one or more claims as filed;
• (v) the claim is the result of the division of a claim as filed, etc.

The replacement sheets containing the amended claims should not, however, contain marked-up text; they should contain clean text only. This should be followed by an indication of the basis for the amendments in the application as filed. The basis for the amendments has to be indicated so that the examiner may, by consulting those precise references in the application, assess whether the amendments contain subject-matter which extends beyond the disclosure of the application as filed. Therefore, non-specific indications such as “see the description as filed” or “see the claims as filed” are generally not considered sufficient for an indication of the basis for the amendment.

Example:

Any amendment may be accompanied by a brief statement by the applicant explaining the amendment and indicating any impact it might have on the description and the drawings. Such a statement is published together with the international application itself. Statements not referring to a specific amendment are not permitted. The statement must not exceed 500 words if in English or when translated into English. It may not contain disparaging comments on the international search report or on the relevance of any of the citations contained in that report. References to certain citations in the report may be made only in connection with an amendment made to a specific claim. The statement must be in the language in which the international application is published.

A statement explaining the amendment is not to be confused with and must be clearly distinguished from the letter indicating the differences between the claims as filed and those as amended and the basis for the amendment. It is also distinct from the statement concerning amendments which must be included in a demand for international preliminary examination. It must therefore be identified as such by a heading “Statement under Article 19(1).” Where the statement does not comply with the requirements, it is neither published by the International Bureau nor communicated to the designated Offices.

The PCT provides that amendments are not to go beyond the disclosure in the international application as filed. This requirement is not directly enforceable during Chapter I of the international phase, but failure to comply with it may have adverse consequences for the applicant during the international preliminary examination and in the national phase.

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