6.3.9.1 Article 19 or Article 34(2)(b) Amendments

Also in this Chapter:​​​​​​​

• 6.3.9.2 Formalities
• 6.3.9.3 General Notes on Form Completion
• 6.3.9.4 Rule 91 Obvious Mistakes in Documents
• 6.3.9.5 Processing withdrawals of PCTs

Key Legislation:

Patent Cooperation Treaty (PCT):

• Article 19 Amendment of the Claims Before the International Bureau
• Article 33 The International Preliminary Examination
• Article 34 Procedure Before the International Preliminary Examining Authority

Administrative Instructions under the PCT:

• s205 Numbering and Identification of Claims upon Amendment
• s602 Processing of Amendments by the International Preliminary Examining Authority

Regulations under the PCT:

• Rule 9.2 Noting of Lack of Compliance
• Rule 26 Checking by, and Correcting before, the Receiving Office of Certain Elements of the International Application
• Rule 46.1 Time Limit
• Rule 66.2 Written Opinion of the International Preliminary Examining Authority
• Rule 70.16 Annexes to the Report
• Rule 91 Rectification of Obvious Mistakes in the International Application and Other Documents

PSCT ISPE Guidelines:

• para 18.04 Statement Concerning Amendments
• para 19.25 Claims for Which No International Search Report Has Been Established
• para 20.10 Additional Subject Matter

Related Chapters:

• 6.1.17 Rule 91 Obvious Mistakes in Documents

The standard for the marking of replacement and substitute sheets is:

Article 19 amendments need to be verified as having been received by the IB. If the applicant includes alleged Art 19 amendments with the Demand, a check of the correspondence file should be made to see if the IB have transmitted these amended sheets to the IPEA. If not, then a check of the published WO pamphlet on ESP@CE can be done to see if it has been published with amendments (and these checked against the amendments on file). If not then a check with PCT Unit should be made. PCT Unit will send a query to the IB.

If Article 19 amendments are not confirmed as received within the applicable time limits by the IB then the examiner should first consult the applicant/attorney regarding the amendments before deciding to consider the amendments as Art 34 amendments. [Ad. Inst. 602(c)]

Article 19 amendments are to be filed within 2 months from the date of mailing of the ISR or 16 months from the priority date, whichever time limit expires later. It should be noted, however, that the amendments will be considered as having been received on time if they are received by the IB after the expiration of the applicable time limit but before the completion of the technical preparations for international publication (Rule 46.1).

If the applicant indicates that any amendments under Article 19 are to be disregarded, the IPEA treats any such amendments as cancelled and marks the relevant sheets of amendments accordingly.

Where the applicant has marked the appropriate check box in Box No. IV of the Demand that amendments under Article 19 and any accompanying statement are to be taken into account, the IPEA indicates on the last sheet of the Demand whether a copy of such amendments and any accompanying statement were actually submitted with the Demand. Where amendments under Article 19 were submitted with the Demand to IB, a copy of such amendment and any accompanying statement will be transmitted by the IB promptly after the IB receives the Demand. If no amendments under Article 19 have been made at the time when the Demand is received by the IB, the IPEA is so informed by the IB.

"Any amendment", where new claims are substituted for old, is interpreted as "any individual claim". Where amended claims have been received then these should have been numbered in accordance with Administrative Instruction 205. [Ad. Inst 205]

Where the international preliminary examination is to take into account amendments under Article 34, but the applicant failed to submit them with the Demand, the IPEA shall invite the applicant (Form PCT/IPEA/431) within a reasonable time limit fixed in the invitation to submit the amendments. Whether the amendments are submitted with the Demand or subsequently, they shall be marked in accordance with Section 602(a)(i) to (iii) and (b) before the file is then forwarded to the examiner. [Ad. Inst. 602, PCT/GL/ISPE/12 at para 18.04]

Where amendments insert claims for which the search report is not appropriate (for example, claims for which the ISA requested additional fees which were not paid), the question of novelty, inventive step, and industrial applicability cannot be gone into since there are no documents to consider under Art 33(6), and such reasoning is added to the "Non-establishment" Box III of the opinion/report form. [Art 33(6) PCT/GL/ISPE/12 at para 19.25].

Note:  If the amended pages are not numbered, then the file should be sent to the PCT Unit with a note to ask the agent for numbered pages.

New Subject Matter

Amendments to the description and drawings, as well as the claims, must not go beyond the disclosure of the international application as originally filed.

An amendment should be regarded as introducing subject matter which extends beyond the content of the application as filed, and therefore impermissible, if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which was not expressly or inherently presented in the application as filed.  The term “inherently” requires that the missing descriptive matter is necessarily present in the disclosure, and that it would be recognised by persons of ordinary skill.  Inherency cannot be established by probabilities or possibilities.  The mere fact that a certain thing may result from a given set of circumstances is not sufficient.

The subject matter newly presented may be introduced by explicitly mentioning matter which was either not previously mentioned at all or only implied.  For example, if in an application relating to a rubber composition comprising several ingredients the applicant seeks to introduce the information that a further ingredient might be added, then this amendment should normally be regarded as going beyond the disclosure in the application as originally filed.

If, however, the applicant can show convincingly that the subject matter in question would, in the context of the claimed invention, be so well known to the person skilled in the art that its introduction could be regarded as an obvious clarification and, therefore, as not extending the content of the application, it is permissible.

Alteration or excision of text, as well as the addition of further text, may introduce new subject matter.  For instance, suppose a claimed invention related to a multi-layer laminated panel and the description included several examples of different layered arrangements, one of these having an outer layer of polyethylene, amendment either to alter the outer layer to polypropylene or to omit this layer altogether would not normally be regarded as permissible.  In each case, the panel disclosed by the amended example would be quite different from that originally disclosed and hence the amendment would be considered as introducing new subject matter.

Amendment by the introduction of further examples should always be carefully considered since prima facie any further example to illustrate a claimed invention may extend the disclosure of the application as originally filed.

For further guidance see PCT/GL/ISPE/12 20.10 et seq.

Note: The above provisions do not apply where a change to the application is for the purpose of rectifying an obvious mistake – see 6.1.17 Rule 91 Obvious Mistakes in Documents.

Where at least some claims go beyond the disclosure, this observation must be included in a written opinion (form PCT/IPEA/408) and IPRP (form PCT/IPEA/409) at Box 1 Item 4, with reasoning in the Supplemental Box of the last sheet.

• Where only some claims go beyond the disclosure, no further consideration is made of these claims or other claims in so far as they are appended thereto. [Rule 66.2(a)(iv)]

• Where all claims are considered to go beyond the disclosure the file is to be referred to the supervising examiner forthwith to obtain the supervising examiner’s agreement.

Note: It seems that, in any opinion, novelty and other questions should only be addressed to allowable or original claims. This course is not particularly useful where, as is likely, further amendment could overcome the problem. Some discretion may be desirable but it must be remembered that:

• further amendments might not be filed, and the examination report can be established only with respect to allowable claims
• at least one opinion addressing the allowability of the claims should precede the ultimate report.