2.20.10.6 Amendments Resulting in a Claim to New Matter

Date Published

The PCT provides that the amendments made under Article 19, Article 34 and Rule 91 shall not go beyond the disclosure of the international application as filed.  Where it is subsequently found that a claim of a national phase application is based on matter first introduced by an Article 19, Article 34 or Rule 91 amendment, its priority date is determined to be the date that the amendment was made (sec 114 and reg 3.14).

Where a translation includes matter that was not disclosed in the specification as filed, the priority date of claim(s) to that matter is the date on which the translation was filed. However, examiners should normally assume that the translation does not introduce new matter, unless they have evidence to the contrary.

Examination Practice

Amendments filed during the international phase are deemed to amend the specification on the date those amendments were made. Thus, amendments of this type must be treated as having been already incorporated into the specification when national examination commences. Therefore, examiners are not permitted to object to the allowability of such amendments under sec 102 during examination, even if those amendments have resulted in claims which go beyond the disclosure of the international application as filed.

Note: Although an objection cannot be taken to the allowability of amendments to the claims, in certain circumstances a proposed amendment to insert the new matter into the description will not be allowable under sec 102 (see 2.23.8.2A Section 102(1) Examination Practice and in particular ‘Matter From Article 34 Amendments’).

Amendments which go beyond the original disclosure must be taken into account for the purposes of national examination.  This is despite the fact that such amendments are excluded from IPE.  (Where amendments are considered to go beyond the original disclosure at the establishment of the IPRPII, this will be identified at item 4 of Box I and/or the supplemental sheet(s) of that report).

Examiners should note that if new matter is claimed, the international search may be inadequate, in which case an additional search in respect of the new matter is required (see 4.1.3.3 Additional Searching).