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1853 Amendment Under PCT Article 19

MPEP SECTION SUMMARY

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.

Any amendment to the claims under Article 19 must be filed with the International Bureau – not with the receiving Office nor with the International Searching Authority. The amendments must be in the language in which the international application is published.

Further details for amendments under PCT Article 19 are discussed in this section.

 

(1) The applicant shall, after having received the international search report, be entitled to one opportunity to amend the claims of the international application by filing amendments with the International Bureau within the prescribed time limit. He may, at the same time, file a brief statement, as provided in the Regulations, explaining the amendments and indicating any impact that such amendments might have on the description and the drawings.
(2) The amendments shall not go beyond the disclosure in the international application as filed.
(3) If the national law of any designated State permits amendments to go beyond the said disclosure, failure to comply with paragraph (2) shall have no consequence in that State.


PCT Rule 46. Amendment of Claims Before the International Bureau

The time limit referred to in Article 19 shall be two months from the date of transmittal of the international search report to the International Bureau and to the applicant by the International Searching Authority or 16 months from the priority date, whichever time limit expires later, provided that any amendment made under Article 19 which is received by the International Bureau after the expiration of the applicable time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the technical preparations for international publication have been completed.

Amendments made under Article 19 shall be filed directly with the International Bureau.

If the international application has been filed in a language other than the language in which it is published, any amendment made under Article 19 shall be in the language of publication.

(a) The statement referred to in Article 19(1) shall be in the language in which the international application is published and shall not exceed 500 words if in the English language or if translated into that language. The statement shall be identified as such by a heading, preferably by using the words “Statement under Article 19(1)” or their equivalent in the language of the statement.
(b) The statement shall contain no disparaging comments on the international search report or the relevance of citations contained in that report. Reference to citations, relevant to a given claim, contained in the international search report may be made only in connection with an amendment of that claim.

(a) The applicant, when making amendments under Article 19, shall be required to submit a replacement sheet or sheets containing a complete set of claims in replacement of all the claims originally filed.
(b) The replacement sheet or sheets shall be accompanied by a letter which:

(i) shall identify the claims which, on account of the amendments, differ from the claims originally filed, and shall draw attention to the differences between the claims originally filed and the claims as amended;
(ii) shall identify the claims originally filed which, on account of the amendments, are cancelled.
(iii) shall indicate the basis for the amendments in the application as filed.

 

(a) Amendments to the claims under Article 19 or Article 34(2)(b) may be made either by cancelling one or more entire claims, by adding one or more new claims or by amending the text of one or more of the claims as filed. Where a claim is cancelled, no renumbering of the other claims shall be required. In all cases where claims are renumbered, they shall be renumbered consecutively in Arabic numerals.
(b) The applicant shall, in the letter referred to in the second and third sentences of Rule 46.5(b) or Rule 66.8(c) indicate the differences between the claims as filed and the claims as amended or, as the case may be, differences between the claims as previously amended and currently amended. He shall, in particular, indicate in the said letter, in connection with each claim appearing in the international application (it being understood that identical indications concerning several claims may be grouped), 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;
(vi) the claim replaces one or more claims as previously amended;
(vii) the claim is the result of the division of a claim as previously amended


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.

The submission of Article 19 amendments should comprise:

  • (i) a complete set of claims in replacement of the claims originally filed
  • (ii) a letter which must indicate the differences between the claims as filed and those as amended plus the basis for the amendments
  • (iii) an optional statement under Article 19

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 sheets containing the amended claims should not, however, contain marked-up text; they should contain clean text only.


 

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