Rule 23.1(b) Procedure
Rule 48.3(b) Languages of Publication
Rule 55.2 Translation of International Application
Rule 55.3 Language and Translation of Amendments and Letters
Rule 70.2(c) Basis of the Report
Rule 70.16(b) Annexes to the Report
Rule 91 Rectification of Obvious Mistakes in the International Application and Other Documents

PCT ISPE Guidelines:

para 17.22 Amendments Resulting in Gaps in Numbering
para 18.03 Statement Concerning Amendments

Related Chapters:

Substitute pages or sheets, filed in response to an invitation by the receiving Office to correct defects in the international application, are deemed to be part of the international application "as originally filed". If the applicant responds to the invitation to correct defects by substituting sheets of the application, these sheets are identified with "SUBSTITUTE SHEET (RULE 26)" stamped on them.

Rectified sheets filed as Rule 91 amendments (obvious mistakes (or, pre 1 April 2007, obvious errors)) are also regarded “as originally filed” sheets and are identified in Box I “Basis of the Opinion”/ “Basis of the Report” (they are transmitted as “RECTIFIED SHEET (RULE 91)” amendments to the IB by PCT unit once the examiner has accepted them).

The application may also contain sheets submitted after the international filing date and are identified with “INCORPORATED BY REFERENCE (Rule 20.6)”. These sheets are also deemed to be part of the international application “as originally filed” (see 6.1.9 Basis of the Search).

The application may also contain sheets stamped “ERRONEOUSLY FILED (RULE 20.5bis)”. These sheets usually need not be taken into account for examination.

A) Basis of Opinion for an ISO - Box I

Note: Box I of the ISO "Basis of the Opinion" must always be included in the ISO. (Note: in the ISO template, the “Box I (Basis of Opinion)” sheet is automatically included).

Item 1:

For language considerations refer to the PCT Rules (in practice, problems in this area rarely occur). [Rule 23.1(b) Rule 48.3(b) Rules 55.2 &/or 55.3]

Item 2:

Where there is an indication on the file that the rectification of an obvious mistake (or “obvious error” where the rectification has occurred before 1 April 2007) has been authorised the international report shall indicate this and the report should be established on the basis of this rectification. See 6.3.9.4 Rule 91 Obvious Mistakes in Documents for information regarding obvious mistakes.

Item 3:

The considerations for nucleotide and/or amino acid sequence listings may be found in 6.1.18.1 Background Nucleotide and/Or Amino Acid Sequence Listings.

Note: A sequence listing is a separate part of the description that is presented in a specific format (Annex C of the Administrative Instructions under the PCT). Nucleotide or amino acid sequences that appear in the figures or drawings, or in the text of the description, do not constitute a sequence listing.

Where a nucleotide or amino acid sequence listing is provided and the search and opinion are conducted in respect of this sequence listing, examiners should complete item 3 and item 4 (if appropriate) of Box I.

Where a sequence listing is provided, but the search and opinion are not conducted in respect of this sequence listing, items 3 and 4 of Box I are left blank. Examiners should indicate under item 5 of Box I (Additional comments) that:

“There was a sequence listing originally filed but it was not used for the purposes of this search and opinion.”

Where sequences are present in the drawings or figures, or in the text of the description (but not in the form of a sequence listing), and the search and opinion are conducted in respect of these sequences, items 3 and 4 of Box I are left blank. Examiners should indicate under item 5 of Box I that:

“A sequence listing was not filed, however the sequences depicted in (Figure 1, Table 3 etc.) were used for the purposes of this search and opinion.”

Item 4:

Check this item box to indicate that the applicant has submitted the required statements that the information in any subsequent or additional copies is identical to that in the application as filed or does not go beyond the application as filed.

The considerations for nucleotide and/or amino acid sequence listings may be found in 6.1.18.1 Background Nucleotide and/Or Amino Acid Sequence Listings.

Item 5:

Additional comments for example see Item 3 above.

If the Examiner notices that the incorporated elements or parts in the sheets marked with “INCORPORATED BY REFERENCE (Rule 20.6)” were not completely contained in the priority document (see 6.1.9 Basis of the Search), Examiners should indicate this under item 5 that:

“There are doubts as to whether the missing parts or correct elements or parts in the sheets marked with “INCORPORATED BY REFERENCE (Rule 20.6)” were actually completely contained in the priority document. Therefore, additional documents in the “L” category are included as they would be relevant if a re-dating of the application is made.”?

B) Basis of Opinion for IPEOs and IPRPs - Box 1

Item 1:

See Item 1 of the “Basis of Opinion for an ISO” above.

Item 2:

Where all documents examined are as originally filed, only the first check box (i.e. "the international application as originally filed") in Item 2 of Box I should be marked.

In response to an opinion an applicant may file amendments with a covering letter. On receipt of these amendments, PCT Unit will indicate on the top right hand corner of the Amended sheets the application number and the date of receipt. Note that the date stated on the covering letter may differ from the filing date. [PCT/GL/ISPE/12 at para 18.03 et seq]

Where amendments to the claims have been made under Art 19, they should be referred to in Box I Item 2 as "Nos....as amended (together with any statement) under Art 19". Note that under Article 19 only claims may be amended. These sheets are usually identified by "AMENDED SHEET (ARTICLE 19)"

Where amendments have been made to the description or drawings under Art 34, these should be referred to in Box 1 Item 2 as "pages....received by this Authority on....with the letter of ....". Where amendments have been made to the claims under Art 34, these should be referred to in Box 1 Item 2 as "Nos....received by this Authority on....with the letter of ....".

The latter should indicate the dates placed on the amendments by the IPEA as the "received by this Authority on" dates and the associated applicant's correspondence date as the "with the letter of" date. For all PCT applications, superseded amendments are not normally included, however, if the superseding amendments go beyond the original disclosure of the application as filed, both the superseded amendments and the superseding amendments are to be included.

In relation to the final checkbox of Item 2, which references a Supplemental Box Relating to a Sequence Listing, the considerations for nucleotide and/or amino acid sequence listings may be found in 6.1.18.1 Background Nucleotide and/Or Amino Acid Sequence Listings. See Item 3 of the “Basis of Opinion for an ISO” above, for details on the level of reporting required for sequence listings in the Supplemental Box (taking note that the relevant item numbers in Box I of the ISO differ to the relevant item numbers found in the Supplemental Box).

Item 3:

Where amendments under Art 19 or 34 have been made which result in cancellation or gaps in the numbering sequences of the description pages, claim numbers, and/or drawing sheets, these must be referred to in Item 3 of Box I of the IPEO/IPRP [PCT/GL/ISPE/12 at para 17.22]. Cancellation of claims that result in gaps in the numbering sequence of claim numbers must be indicated in Item 3. However, if the claims have been cancelled but there are no gaps in the numbering sequence of claim numbers, Item 3 is not to be used. More importantly, the report in Box V (the reasoned statement) must reflect the claims reported upon.

Refer to 6.3.9.1 Article 19 or Article 34(2)(b) Amendments for further Art 19/34 considerations.

Item 4:

Where amendments have been made which go beyond the original disclosure, this is indicated in Item 4 of Box I of the IPEO or IPRPII. The particular amendments are identified and brief reasons given in a Supplemental Box sheet(s). [Rule 70.2(c)]

For all PCT applications replacement sheets which are superseded by replacement sheets all of which go beyond the disclosure as filed are required to be annexed to the IPRPII, along with the superseding replacement sheets. (If there is more than one version of these superseding replacement sheets, then only the later or latest version is to be annexed.) The second checkbox at Item 3a of the IPRPII cover sheet is to be marked, and the total number of replacement sheets annexed is to be indicated. [Rule 70.16(b)]

See 6.3.8.1 Front Page and Notification Application Details for further details of the procedures in respect of annexes to be followed by examiners when amendments go beyond the disclosure.

In the case of abstracts, they cannot be amended under Article 34 and consequently if an applicant includes an amended abstract with their Article 34 amendments it should not be included in any Annex to an IPRPII. Examiners should ensure that a note stating that ‘the amendments to the abstract are of no effect since the abstract cannot be amended under Article 34’ is inserted after item 2 on the IPRPII cover sheet.

Item 5:

Item 6 of IPEO (Item 7 of IPRPII):

Where a supplementary international search report has been taken into account in establishing an opinion/report, the name of the Authority which conducted the supplementary international search shall be noted here. See 6.3.5.2 Supplementary International Search Report for information on Supplementary International Search Report.

Item 6 of IPRPII

Details of Top-up search shall be noted here. See 6.3.4.1 Demand and Top-up Search

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Publishing for prod	22 Aug 2023
Published for testing	09 Jun 2023
Published for testing	09 Jun 2023
Published for testing	06 Jun 2023
Initial publishing	01 Jun 2023