8.15.5 Determining Whether Amendments Made Under Articles and Rules of the PCT are Considered During Exam

Date Published

Key Legislation​​​​​​​:

Patents Act:

  • s45 Examination
  • s89 (Superseded)

Patent Cooperation Treaty:

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

Regulations under the Patent Cooperation Treaty:

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

Related Chapters: 

  • ​​​​​​​2.20.10.5 Translation of Amendments

In general, amendments made under Article 19, Article 34 or Rule 91 are deemed to amend the Australian specification at the date of filing of the amendments (s89(5) and reg 8.1).


Special Considerations for Article 34 Amendments

For applications which enter the national phase from 23 December 2004, amendments made under Article 34 are deemed to amend the Australian specification at the date of filing of the amendments, provided that the IPER/IPRPII is established before national phase entry (s89(6)).  However, this provision does not apply if a report is issued under s45(1AA) or s45(1AB), and the applicant advises that:

  • no demand was made under Article 31 of the PCT; or
  • no amendments were made under Article 34 of the PCT; or
  • the demand was made under Article 31 of the PCT, or the international preliminary examination report was established, after the application entered the national phase;

or if the applicant elects to abandon any amendments that may have been made under Article 34 of the PCT.


Translations

A translation filed by virtue of s89(3) amends the PCT application as of the day on which it was filed (s89(4)). Further information on Article 19 and Article 34 amendments and translations is provided in 2.20.10.5 Translation of Amendments.