5.3.1.3 Formalities required and assessed during examination

Also in this Chapter:

• 5.3.1.1 Formalities Required and Assessed at Filing

• 5.3.1.2 Credible Address for Service​​​​​​​

Key Legislation: 

Patents Act:

• s104 Amendments by applicants and patentees

Patent Cooperation Treaty (PCT):

• Article 19 Amendment of the Claims Before the International Bureau 
• Article 34 Procedure Before the International Preliminary Examining Authority 

Regulations under the PCT:

• Rule 91 Rectification of Obvious Mistakes in the International Application and Other Documents

Related Chapters:

• 5.6.3.1 Consideration of amendments made prior to examination

Overview

Unusual formality situations may arise with convention applications where there have been amendments under:

• PCT Article 19 (amendment of the claims);
• PCT Article 34 (preliminary examination); and
• PCT Regulations Rule 91 (rectification of obvious mistakes).​​​​​​​

Examination practice

Generally, these formality issues relate to numbering. For example:

• Amended claims may have unusual numbering, for example, claims 3 to 6 are cancelled or claim 25 is the first claim; and/or
• The amendments may have non-sequential page numbering.

Such numbering is allowable under the PCT, so no objection is required. However, examiners can suggest that the applicant voluntarily renumbers the claims or pages by amendment under s104.

When the examination report is generated, appropriate text will automatically appear in the ‘Additional comments’ section if the examiner responds ‘Yes’ to the question about Article 19/Article 34 amendments resulting in non-sequential claim/page numbering.