1853 Amendment Under PCT Article 19 [R-08.2012]
PCT Article 19
Amendment of the Claims before the International Bureau
- (1) The applicant shall, after having received the international search report, be entitled to one opportunity to amend the claims of the international application by filing amendments with the International Bureau within the prescribed time limit. He may, at the same time, file a brief statement, as provided in the Regulations, explaining the amendments and indicating any impact that such amendments might have on the description and the drawings.
- (2) The amendments shall not go beyond the disclosure in the international application as filed.
- (3) If the national law of any designated State permits amendments to go beyond the said disclosure, failure to comply with paragraph (2) shall have no consequence in that State.
PCT Rule 46
Amendment of Claims Before the International Bureau
46.1. Time Limit
The time limit referred to in Article 19 shall be two months from the date of transmittal of the international search report to the International Bureau and to the applicant by the International Searching Authority or 16 months from the priority date, whichever time limit expires later, provided that any amendment made under Article 19 which is received by the International Bureau after the expiration of the applicable time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the technical preparations for international publication have been completed.
46.2. Where to File
Amendments made under Article 19 shall be filed directly with the International Bureau.
46.3. Language of Amendments
If the international application has been filed in a language other than the language in which it is published, any amendment made under Article 19 shall be in the language of publication.
- (a) The statement referred to in Article 19 (1) shall be in the language in which the international application is published and shall not exceed 500 words if in the English language or if translated into that language. The statement shall be identified as such by a heading, preferably by using the words “Statement under Article 19 (1)” or their equivalent in the language of the statement.
- (b) The statement shall contain no disparaging comments on the international search report or the relevance of citations contained in that report. Reference to citations, relevant to a given claim, contained in the international search report may be made only in connection with an amendment of that claim.
46.5. Form of Amendments
The applicant shall be required to submit a replacement sheet for every sheet of the claims which, on account of an amendment or amendments under Article 19 , differs from the sheet originally filed. The letter accompanying the replacement sheets shall draw attention to the differences between the replaced sheets and the replacement sheets. To the extent that any amendment results in the cancellation of an entire sheet, that amendment shall be communicated in a letter.
37 C.F.R. 1.415 The International Bureau.
- (a) The International Bureau is the World Intellectual Property Organization located at Geneva, Switzerland. It is the international intergovernmental organization which acts as the coordinating body under the Treaty and the Regulations ( PCT Art. 2 (xix) and 35 U.S.C. 351(h) ).
- (b) The major functions
of the International Bureau include:
- (1) Publishing of international applications and the International Gazette;
- (2) Transmitting copies of international applications to Designated Offices;
- (3) Storing and maintaining record copies; and
- (4) Transmitting information to authorities pertinent to the processing of specific international applications.
PCT Administrative Instruction Section 205
Numbering and Identification of Claims Upon Amendment
- (a) Amendments to the claims under Article 19 or Article 34 (2)(b) may be made either by cancelling one or more entire claims, by adding one or more new claims or by amending the text of one or more of the claims as filed. All the claims appearing on a replacement sheet shall be numbered in Arabic numerals. Where a claim is cancelled, no renumbering of the other claims shall be required. In all cases where claims are renumbered, they shall be renumbered consecutively.
- (b) The applicant shall,
in the letter referred to in the second and third sentences of
Rule 46.5 (a) or in
the second and fourth sentences of Rule
66.8 (a), indicate the differences between the
claims as filed and the claims as amended. He shall, in particular,
indicate in the said letter, in connection with each claim appearing in
the international application (it being understood that identical
indications concerning several claims may be grouped), whether:
- (i) the claim is unchanged;
- (ii) the claim is cancelled;
- (iii) the claim is new;
- (iv) the claim replaces one or more claims as filed;
- (v) the claim is the result of the division of a claim as filed.
The applicant has one opportunity to amend the claims only of the international application after issuance of the Search Report. The amendments to the claims must be filed directly with the International Bureau, usually within 2 months of the date of mailing of the Search Report. If the amendments to the claims are timely received by the International Bureau, such amendments will be published as part of the publication of the international application directly following the claims as filed. Article 19 offers applicants the opportunity to generally amend the claims before entering the designated Offices. The national laws of some designated Offices may grant provisional protection on the invention from the date of publication of the claims. Therefore, some applicants take advantage of the opportunity under Article 19 to polish the claims anticipating provisional protection. See PCT Rule 46.5 .