11.047. May amendments to the claims, description or drawings during the international phase introduce new matter into the international application? Article 19(2) and Article 34(2)(b) both provide that amendments are not to go beyond the disclosure in the international application as filed. Compliance will not be checked during the international phase unless the applicant requests international preliminary examination. If the International Preliminary Examining Authority considers that any amendments go beyond the original disclosure, it will comment accordingly in any written opinion of the International Preliminary Examining Authority and in the international preliminary report on patentability (Chapter II of the PCT), and the report will be established as if such amendment had not been made (see paragraphs 10.064(iv) and 10.070). Compliance with the requirement may be important during the national phase, when it may be checked by the designated Offices, and non‑compliance may result at that stage in adverse consequences such as disallowance of the amendments or the according of a later filing date for any new matter claimed as a result of the amendments concerned. On the other hand, if the national law applicable in a designated Office permits amendments to go beyond the disclosure in the application as filed, non-compliance with the requirement has no consequence in the State concerned. Although customary in most national laws and contained in the European Patent Convention, the requirement is not one which by virtue of the PCT would bind any of the Contracting States. It is contained in the PCT because most laws provide for it, and it therefore seems to be a useful warning to all applicants planning to make amendments in the international phase.
11.047A. What happens where the claims, description or drawings have been amended, but the replacement sheets were not accompanied by a letter? The PCT requires that replacement sheets submitted with Article 19 or Article 34 amendments must be accompanied by a letter indicating the basis for the amendment in the application as filed (see paragraph 9.005, 9.006 and 10.071). Substantive compliance with this requirement is not checked during the international phase unless the applicant requests international preliminary examination. If the International Preliminary Examining Authority finds that the replacement sheets were either not accompanied by such a letter or that the letter failed to indicate the basis for the amendment, the International Preliminary Examining Authority may establish the international preliminary report on patentability (Chapter II of the PCT) as if such amendment had not been made. Compliance with this requirement may also be important during the national phase, when it may be checked by the designated Offices, and failure to comply may result in disallowance of the amendments.
Date retrieved: 24 November 2017