8.15.5.1 Determining Whether Article 19 and Article 34 Amendments are Considered During Examination

Key Legislation

Patents Act:

• s104 Amendments by applicants and patentees

Patents Regulations:

• reg 8.3 (Superseded)

Patent Cooperation Treaty:

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

Related Chapters: 

• 2.20.10.3 Article 19 Amendments
• 2.20.10.1.3 The IASR

On this page

• Retrieval of IPRPII
• Determining Whether Article 19 and/or Article 34 Amendments are to be Considered During Examination
• Determination of Dates

This section outlines the procedure for retrieving the IPRPII (to determine whether Article 34 amendments exist) and then the steps examiners should follow to determine whether Article 19 amendments and Article 34 amendments are to be considered during examination (including expedited examination and examination of voluntary s104 amendments before acceptance).

Retrieval of IPRPII

Note: If there is no indication that a demand was filed before the national phase entry date, examination can proceed without further consideration of whether there are any Article 34 amendments.  However, examiners should still consider whether there are Article 19 amendments (see 2.20.10.3 Article 19 Amendments).

In certain circumstances where there is no IPRPII on file, COG will issue a notice requesting that an applicant provide a copy of the document (reg 8.3). In response, the applicant may:

• provide a copy of the IPRPII; or
• advise that:

a. no demand for international preliminary examination was filed; or

b. no Article 34 amendments were made; or

c. the demand for international preliminary examination was filed, or the IPRPII was established, after national phase entry; or​​​​​​​

• elect to abandon any Article 34 amendments.

Note: Where situation a. applies, there are no Article 34 amendments to consider. Where situation c. applies, any Article 34 amendments will not form part of the specification, unless pursued under s104.

Where the applicant fails to comply with the request within 6 months, COG will forward the case to the relevant examination section for processing.  In this situation, examiners should proceed as indicated in Step 2 below.

Where a notice does not appear to have been issued and there is no IPRPI/IPRPII on file, and the document is not available on Patentscope (or INTESS, if IP Australia was the IPEA), and a demand has been filed before national phase entry, then examiners should keep the Exam Request task and email COG requesting them to issue a notice as above.  Examination should not proceed until the applicant has replied or 6 months from the date of issue of the notice has expired.

Determining Whether Article 19 and/or Article 34 Amendments are to be Considered During Examination

The following procedure should be used to determine whether Article 19 and/or Article 34 amendments are to be considered during examination.

1. Are there Article 19 amendments?

• No – Go to Step 2 (see also note below).
• Yes – Determine whether the amendments form part of the specification.  See 2.20.10.3 Article 19 Amendments.

If the amendments do not form part of the specification, then they are excluded from examination.  Go to Step 2.

Note: If examiners have reason to believe that there are Article 19 amendments (for example, as indicated on the front page of the PCT pamphlet) and these are not on file, they should first check Patentscope.  (Article 19 amendments are filed directly with WIPO and therefore will not be available on INTESS).  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.

2. Is there an IPRPI or IPRPII on the PAMS case file?

2a.  Yes

• For an IPRPI there are no Article 34 amendments to consider, proceed with examination.
  • If an IPRPII has been established and there are no Article 34 amendments, proceed with examination (see also note below).
  • If an IPRPII has been established and there are Article 34 amendments, go to Step 3.

2b.  No

• If there is no IPRPI/IPRPII on the PAMS case file and the applicant has indicated that there are no Article 34 amendments to consider (see ‘Retrieval of IPRPII’ above), proceed with examination.
• If there is no IPRPI/IPRPII on the PAMS case file and the applicant has not complied with the request issued by COG, examiners should first check Patentscope. If the IPRPI/IPRPII is available a copy should be downloaded and attached to the case file. Proceed as in Step 2a above.
• If the IPRPI/IPRPII is not available from Patentscope, check the IASR on Patentscope to determine whether an IPRPII and Article 34 amendments exist. Where an IPRPII and Article 34 amendments exist and IP Australia was the IPEA, the amendments should be copied from INTESS to the PAMS case file. If an IPRPII and Article 34 amendments exist, but they are not available from either Patentscope or INTESS:
  • If a Chapter II demand was filed before the National Phase Entry (NPE) date:
    • Non-expedited Examination, Expedited Examination, Voluntary s104 Amendment Before Acceptance – issue a report indicating that the IPRPII is missing by selecting this option at the ‘Specification Examined?’ prompt in the Intelledox (DocGen) ‘Basis of the Report’ template.
• Intelledox will include an appropriate introductory paragraph in the report.
• If there is no indication that a demand was filed before the NPE date, proceed with examination.

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 check Patentscope or, if IP Australia was the IPEA, they should also check INTESS.  If the amendments are available from either of these sources, then a copy should be attached to the PAMS case file; proceed to Step 3.  If the amendments are not available from either of these sources, examiners should contact COG and request that a copy be obtained from WIPO.  Examination should not proceed until the amendments have been received.

3. Was the demand filed before the National Phase Entry (NPE) Date?

• Yes – Go to Step 4.
• No – Examine excluding Article 34 amendments (see also note below).

4. Was the IPRPII established before the NPE date?

• Yes – Examine including Article 34 amendments.
• No – Examine excluding Article 34 amendments (see also note below).

Note: Where Article 34 amendments do not form part of the specification and examiners consider their incorporation was intended and will facilitate examination, they may phone the attorney to discuss options for inclusion of the amendments.

Determination of Dates

To determine the date of:

• National Phase Entry – see the ‘Nat. Phase’ Date on the Ecase Summary screen in PAMS.
• Filing of the demand – see either the ‘Date of submission of the demand’ on the front page of the IPRPII or 2.20.10.1.3 The IASR.
• IPRPII establishment – see ‘Date of completion of this report’ on the front page of the IPRPII.