PA 06/2010: Filing amendments under PCT Article 19 after the publication of the international application;  language requirements for such amendments.

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q:  I recently received an international search report (ISR) and a written opinion of the International Searching Authority (ISA) which were transmitted by the ISA late, after the publication of the international application.  I understand that, even though the international application has been published, the ISR will be the subject of a later publication.  If I submit amendments to the claims under PCT Article 19, will they also be published later?  Also, given that the original application was filed in Dutch with the Netherlands Patent Office, and was translated into a publication language, namely, English, for the purposes of international publication, will the amendments also have to be translated into English? 

A:  Amendments to the claims under PCT Article 19 can be filed with the International Bureau (IB) within two months from the date of transmittal of the ISR or 16 months from the priority date, whichever time limit expires later (PCT Rule 46.1).  In your case, since the ISR was transmitted after the publication of the international application, and therefore later than 16 months from the priority date, the applicable time limit is two months from the date of transmittal of the ISR.  Provided that the amendments to the claims are received in the correct language (see below) and within the above-mentioned time limit, they will be published together with a revised “front page” (that is, the page containing the bibliographic data, the title and the abstract) (PCT Rule 48.2(h)). 

If, at the time of the completion of the technical preparations for publication in respect of a given international application, no amended claims have been submitted yet, and the time limit for amending the claims under PCT Article 19 has not yet expired, third parties will be alerted to this fact by way of an indication in the published international application that the time limit for submitting claims under PCT Article 19 has not yet expired, and that, should the claims be amended within the applicable time limit, the amended claims and any statement under PCT Rule 46.4 (see below) will be published separately.

Any amendments under PCT Article 19 must be submitted in the language of publication (in your case, English) (see PCT Rule 46.3) – you should not submit them in another language (even if you do intend to file a translation).  The amendments must comprise a replacement sheet or sheets containing a complete set of claims in replacement of all the claims originally filed (PCT Rule 46.5(a)).  You should also submit a letter which identifies the claims which differ from the claims originally filed, and draws attention to the differences between the claims originally filed and the claims as amended (PCT Rule 46.5(b)(i)) and identifies the claims which have been cancelled (PCT Rule 46.5(b)(ii)).  In addition, as from 1 July 2010, you will also need to indicate the basis for the amendments, in other words, to indicate where in the application as filed there is support for the amendments (new PCT Rule 46.5(b)(iii)).  Note that the accompanying letter should be in English, or if the language of the international application is French, in French (PCT Rule 92.2(d)).

You may also submit a brief statement (up to 500 words) regarding the amendments (see PCT Rule 46.4), explaining them, and indicating any impact they might have on the description and drawings.  Any such statement will be published together with the amended claims.  The statement should also be in the language of publication (that is, in your case, English). 

It is important to note that, although having PCT Article 19 amendments published may help secure provisional protection in the countries offering this, making use of PCT Article 19 to correct any negative findings in the written opinion of the ISA will NOT affect the contents of the subsequent international preliminary report on patentability (Chapter I of the PCT) (IPRP Chapter I).  Such amendments will not be examined in substance in the international phase unless a demand for international preliminary examination is filed.  Applicants who file a demand have the possibility of requesting that the International Preliminary Examining Authority (IPEA) use the PCT Article 19 amendments as a basis for the international preliminary examination, and if this results in negative objections in the IPRP Chapter I being overcome, this may lead to a positive IPRP Chapter II.  If it is your intention to file a demand, and you would like the PCT Article 19 amendments to be taken into account for international preliminary examination, the corresponding indications should be made in Box No. IV (“basis for international preliminary examination”) of the demand form (Form PCT/IPEA/401)), and a copy of the amendments should preferably be submitted with the demand (PCT Rule 53.9(a)(i)).

Please be aware that in any country in which the national phase has already been entered at the time of publication of the amended claims, the designated Office concerned need not take into account the claims as amended.

It is recalled that the claims, as well as the description and drawings, may also be amended when filing a demand (PCT Article 34.2(b)) or before the national/regional Offices (PCT Articles 28 and 41).

Detailed instructions concerning the filing of PCT Article 19 amendments are contained in the PCT Applicant’s Guide, International Phase, paragraphs 9.004 to 9.011.

References: a_19_pct; r_46_pct; r_48_pct;

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