1871 Processing Amendments Filed Under Article 19 and Article 34 Prior to or at the Start of International Preliminary Examination [R-01.2024]

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. 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 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
  • (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. 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. 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.

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.
  • (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.

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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