PCT AG-IP 9.004 When and how may the claims of the international application be amended in the international phase?

Article 19(1)
Rule 46
49.5(a)(ii),
49.5(c),
49.5(c-bis)

9.004.   When and how may the claims of the international application be amended in the international phase?  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 – see paragraphs 9.011, 10.024 to 10.028, and 10.067 to 10.071).  Any amendment to the claims under Article 19 must be filed with the International Bureau – not with the receiving Office nor the International Searching Authority.  The amendments must be in the language in which the international application is published (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish – see paragraphs 9.017 to 9.019).  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 (that is, 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 (see paragraph 7.014).  Upon entry into the national phase, if the claims have been amended under Article 19, a translation of both the claims as filed and as amended (in the form of a translation of the complete set of claims furnished under Rule 46.5(a) in replacement of all the claims originally filed and any statement may have to be furnished to the designated/elected Offices, (see National Chapters (Summary)).  (As to amendments in the national phase, see paragraphs 5.111, 5.127 and 5.162, the National Phase and National Chapters.) The submission of Article 19 amendments should comprise:

(i)  a complete set of claims in replacement of the claims originally filed (see paragraph 9.005)

(ii)  a letter which must indicate the differences between the claims as filed and those as amended plus the basis for the amendments (see paragraphs 9.005 to 9.006A)

(iii)  an optional statement under Article 19 (see paragraphs 9.007 to 9.008)

Rule 6.1
46.5
Section 205

9.005.   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 (description, claims, drawings) as originally filed (see paragraph 9.006). Where an amendment results in the cancellation of an entire sheet of the international application as originally filed, the amendment (that is, 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.

Source: http://www.wipo.int/pct/en/appguide/text.jsp?page=ip09.html

Date retrieved: 02 November 2015

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