PCT AG-IP 10.028 May the applicant make amendments during the international preliminary examination in addition to any amendments mentioned in Box No. IV?

Rule 66.1(b)
66.4bis

10.028.   May the applicant make amendments during the international preliminary examination in addition to any amendments mentioned in Box No. IV?  Yes, the applicant is not precluded from later making amendments, or further amendments, during the course of the international preliminary examination (see paragraphs 10.067 to 10.071), whatever appears in the statement concerning amendments, and in this sense the statement is not binding on the applicant or on the conduct of the international preliminary examination.  For example, the applicant may choose to file amendments under Article 34 at a later stage which supersede amendments previously made under Article 19, even though the statement indicates that those previous amendments should be taken into account.  However, the information contained in the statement is used by the International Preliminary Examining Authority to determine when, and on what basis, the international preliminary examination is to start (see paragraphs 10.051 to 10.055).  Moreover, amendments or arguments need not be taken into account by the International Preliminary Examining Authority for the purposes of the international preliminary report on patentability (Chapter II of the PCT) if they are received after the Authority has begun to draw up that report (see paragraph 10.068).  Since the time available for international preliminary examination is limited, it is in the applicant’s interests to be as definite as possible, at the time of filing the demand, as to what should form the basis of the international preliminary examination.  If the applicant intends to file amendments under Article 34 but is not in a position to submit them with the demand, that intention should preferably be mentioned in a letter filed with the demand.  It is to be noted that since, under Rule 66.1bis, the written opinion of the International Searching Authority will in the majority of cases be considered to be the written opinion of the International Preliminary Examining Authority, if amendments under Article 34 are not filed together with the demand, the International Preliminary Examining Authority might, shortly after the expiration of the time limit under Rule 54bis.1(a), start to draw up the international preliminary report on patentability (Chapter II of the PCT).

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

Date retrieved: 24 November 2017

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