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Under Article 34, the applicant is entitled to amend the claims, description and drawings during the IPE process.  The amendments must be made before the IPRPII is established and will have effect in Australia provided the circumstances set out in General Provisions are met.  Article 34 amendments supersede any Article 19 amendments where they amend the same page.

Article 34 amendments will always be included in the IPRPII.  If the source of the Article 34 amendments is unknown, or the amendments are attached to other correspondence or filed separately, then there is a prima facie assumption that they are not bona fide amendments.  In this case, examiners should confirm the existence of the Article 34 amendments by checking Patentscope. (An IPRPII and any associated Article 34 amendments present on Patentscope are accepted as being the “official” IPRPII/amendments).  If there are no Article 34 amendments present, then the amendments obtained from the unknown source (or attached to other correspondence or filed separately) do not form part of the specification and should be disregarded.  (Note, however, that any IPRPII and associated Article 34 amendments provided by the applicant should be accepted as being the “official” IPRPII/amendments).

Note: If examiners have reason to believe that there are Article 34 amendments (for example, as indicated in Box I of the IPRPII) and these are not on file, they should first check Patentscope.  If the amendments are available, a copy should be downloaded and attached to the case file.  If the amendments are not available, examiners should contact COG and request that a copy be obtained from WIPO.  Examination should not proceed until the amendments have been received.

Note: If the Australian Patent Office is the IPEA and the IPRPII is missing, it may be accessed from the PCT file held by the Office or from INTESS.  Paper files may be requested from Registry Manager via email.

IPE Proceeding in Parallel With National Examination

In the situation where Australia is the IPEA and international preliminary examination is proceeding in parallel with national examination, the only amendments relevant to national examination are the sec 104 amendments. To the extent that there are any differences between Australian law and the PCT, those differences will need to be reflected in the content of the reports issued under the respective procedures.

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