PCT AG-IP 9.006 What happens where the international application is not in the same language as the accompanying letter?

Rule 46.5
Section 205

9.006.   What should the accompanying letter contain? 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:

“Claim 1 amended; claims 2 to 7 unchanged; claims 8 and 9 amended; claims 10 to 14 cancelled; claims 15 to 17 unchanged; new claim 18 added.

(i)  Basis for the amendment: Claim 1 has been amended at lines 4 and 11 to 14 and now indicates that the filter comprises a periodic backwashing means serially coupled to a first and second chamber. The basis for this amendment can be found in original claims 2 and 4 as filed.

(ii)  Basis for the amendment: Concerning amended claims 8 and 9, the indication of ‘quick-fire piston’ is in paragraph Nos. 2 and 19 in the description as filed.

(iii)  Basis for the amendment: Claim 18 is new, the indication is in drawing No. III of the original application.”

9.006A.   What happens where the international application is not in the same language as the accompanying letter?  The accompanying letter should be furnished in English or French. References may, however, be made to the international application in the language of the international application where to do so will facilitate the work of the examiner in finding the reference, for example:

(i)  Basis for the amendment: Concerning amended claim 2, the indication of “請求項1に基づくパーキングアシストシステム” is in paragraph Nos. 23, 46 and 85 in the description as filed.

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

Date retrieved: 02 November 2015

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PCT Implementing Rules

PCT Applicant's Guide - International Phase