PCT AG-IP 10.026 How should the statement concerning amendments be completed?

10.026.   How should the statement concerning amendments be completed?  If amendments to the claims have been made under Article 19 (see paragraphs 9.004 to 9.009) prior to the filing of the demand, the statement must indicate whether, for the purposes of the international preliminary examination, the applicant wishes the amendments to be taken into account (in which case a copy of the amendments should be filed with the demand) or to be considered as reversed by an amendment under Article 34.  If no amendments under Article 19 have been made but the time limit for filing such amendments (see paragraph 9.004) has not expired at the time when the demand is filed, the statement may, if the applicant so chooses, indicate that the applicant wishes the start of the international preliminary examination to be postponed (see paragraph 10.054).  If any amendments under Article 34 are submitted with the demand, the statement must so indicate.  A more detailed explanation is given below for each of the check-boxes in Box No. IV.

“1. The applicant wishes the international preliminary examination to start on the basis of:

the international application as originally filed”

This check-box should be marked either where the applicant has not made any amendments under Article 19 and does not intend at the time of filing the demand to file any amendments, or where the applicant has already made amendments under Article 19 but is no longer interested in pursuing them.

“the description

as originally filed
as amended under Article 34

the claims

as originally filed
as amended under Article 19
as amended under Article 34

the drawings

as originally filed
as amended under Article 34”

Rule 60.1(g)
69.1(e)

These check-boxes should be marked only where the applicant wishes amendments to be taken into account for the start of the international preliminary examination.  Where the applicant wishes amendments which have previously been made under Article 19 to be taken into account, a copy of the amendments, and any statement accompanying such amendments, should be attached to the demand.  If a check-box is marked but the demand is not accompanied by the documents referred to, the start of international preliminary examination will be delayed until the International Preliminary Examining Authority receives them.  Amendments under Article 34 should be submitted with, and attached to, the demand.  The applicant should also indicate, by marking the appropriate check-box(es), which parts of the international application are so amended.

Rule 53.9(a)(ii)

“2. The applicant wishes any amendments to the claims made under Article 19 to be considered as reversed.”

 

This check-box should be marked only where the applicant, after having previously made amendments under Article 19, no longer wishes them to be considered for international preliminary examination.  Marking this check-box will have the effect that those amendments will be considered as reversed by an amendment under Article 34.

Rule 53.9(b)
69.1(d)

“3. Where the IPEA wishes to start the international preliminary examination at the same time as the international search in accordance with Rule 69.1(b), the applicant requests the IPEA to postpone the start of the international preliminary examination until the expiration of the applicable time limit under Rule 69.1(d).

 

This check-box should be marked only where, at the time when the demand is filed, the time limit for filing amendments under Article 19 has not expired (see paragraph 9.004) and the applicant intends to file such amendments after filing the demand.  In practice, this situation is only likely to arise if the demand is filed before the international search report is available.  If this check-box is marked but the applicant later decides not to file amendments under Article 19, he should send a notice to the International Preliminary Examining Authority that he does not wish to file such amendments and the international preliminary examination will then start.  It should be noted that the examination will start in any event after the expiration of the applicable time limit under Rule 54bis.1(a) even where no amendments have been received by the International Preliminary Examining Authority.

 

“4. The applicant expressly wishes the international preliminary examination to start earlier than at the expiration of the applicable time limit under Rule 54bis.1(a).”

 

This check-box should be marked if the applicant wishes that the international preliminary examination start earlier than at the expiration of the applicable time limit under Rule 54bis.1(a).  Where the International Searching Authority and the International Preliminary Examining Authority are not the same Authority, the examination will not commence until the International Preliminary Examining Authority is in possession of the international search report, or a notice of the declaration under Article 17(2)(a) and the written opinion of the International Searching Authority.

Source: http://www.wipo.int/pct/en/appguide/text.jsp?page=ip10.html

Date retrieved: 02 November 2015

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