Guidance on how to file amendments under Articles 19 and 34

• Amendments of the claims under Article 19
• Amendments of the claims under Article 34
• Consequences of not including an accompanying letter with the amendments  

Amendments of the claims under Article 19

1.01.   When and how may the claims of the international application be amended in the international phase?  The applicant is entitled, under Article 19, to one opportunity to amend the claims of the international application in the international phase.  (Further opportunities to amend the claims, and also the description and the drawings, are available during the international phase under Article 34 if, and only if, the applicant files a demand for international preliminary examination – see paragraphs 1.10 and 2.01 and PCT Applicant's Guide paragraphs 10.024 to 10.028, and 10.067 to 10.070).  Any amendment to the claims under Article 19 must be filed with the International Bureau – not with the receiving Office nor the International Searching Authority.  The amendments must be in the language in which the international application is published (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish – see PCT Applicant's Guide paragraphs 9.017 to 9.019).  The opportunity to make amendments under Article 19 is available after the applicant has received the international search report and the written opinion of the International Search Authority, and remains available until the end of 16 months from the priority date or two months after the transmittal (that is, the date of mailing) of that report and opinion, whichever expires later.  Amendments received by the International Bureau after the time limit are still accepted if they have been received before the technical preparations for international publication have been completed.  Amendments to the claims under Article 19 are not allowed where the International Searching Authority has declared, under Article 17(2), that no international search report would be established (see PCT Applicant's Guide paragraph 7.014).  Upon entry into the national phase, if the claims have been amended under Article 19, a translation of both the claims as filed and as amended (in the form of a translation of the complete set of claims furnished under Rule 46.5(a) in replacement of all the claims originally filed) and any statement may have to be furnished to the designated/elected Offices, instead of, or in addition to, the translation of the claims as filed (see PCT Applicant's Guide National Chapters (Summary)).  (As to amendments in the national phase, see PCT Applicant's Guide paragraphs 5.111, 5.127 and 5.162, the National Phase and National Chapters.) The submission of Article 19 amendments should comprise:

(i)  a complete set of claims in replacement of the claims originally filed (see paragraph 1.02)

(ii)  a letter which must indicate the differences between the claims as filed and those as amended plus the basis for the amendments (see paragraphs 1.02-1.04)

(iii)  an optional statement under Article 19 (see paragraphs 1.05-1.06)

1.02.   When filing amendments to the claims under Article 19, the applicant is required to file a sheet or sheets containing a complete set of claims in replacement of the claims originally filed.  The replacement sheet or sheets must be accompanied by a letter drawing attention to the differences between the claims as filed and the claims as amended.  It must also indicate the basis for the amendment to the claims with specific references to particular parts of the application (description, claims, drawings) as originally filed (see paragraph 1.03).  Where an amendment results in the cancellation of an entire sheet of the international application as originally filed, the amendment (that is, the cancellation) is evidenced only by the letter addressed to the International Bureau.  Amendments may consist in the cancellation of one or more entire claims, in the addition of one or more new claims, or in the amendment of the text of one or more of the claims as filed.  All the claims appearing on a replacement sheet must be numbered in Arabic numerals (corresponding to the order of the claims).  Where a claim is cancelled, no renumbering of the other claims is required.  However, where the applicant does renumber claims, they must be renumbered consecutively.

1.03.   What should the accompanying letter contain?  The letter, which must accompany the replacement sheets containing amendments to the claims, must indicate firstly the differences between the claims as filed and those as amended and secondly the basis for the amendments in the application as filed.  This should be done by stating, in connection with each claim appearing in the international application, 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, etc.

The replacement sheets containing the amended claims should not, however, contain marked-up text;  they should contain clean text only.  This should be followed by an indication of the basis for the amendments in the application as filed.  The basis for the amendments has to be indicated so that the examiner may, by consulting those precise references in the application, assess whether the amendments contain subject-matter which extends beyond the disclosure of the application as filed.  Therefore, non-specific indications such as “see the description as filed” or “see the claims as filed” are generally not considered sufficient for an indication of the basis for the amendment.

Example:

“Claim 1 amended;  claims 2 to 7 unchanged;  claims 8 and 9 amended;  claims 10 to 14 cancelled;  claims 15 to 17 unchanged;  new claim 18 added.

(i)  Basis for the amendment: Claim 1 has been amended at lines 4 and 11 to 14 and now indicates that the filter comprises a periodic backwashing means serially coupled to a first and second chamber.  The basis for this amendment can be found in original claims 2 and 4 as filed.

(ii)  Basis for the amendment: Concerning amended claims 8 and 9, the indication of ‘quick-fire piston’ is in paragraph Nos. 2 and 19 in the description as filed.

(iii)  Basis for the amendment: Claim 18 is new, the indication is in drawing No. III of the original application.”

1.04.   What happens where the international application is not in the same language as the accompanying letter?  The accompanying letter should be furnished in English or French.  References may, however, be made to the international application in the language of the international application where to do so will facilitate the work of the examiner in finding the reference, for example: 

(i)  Basis for the amendment: Concerning amended claim 2, the indication of “請求項1に基づくパーキングアシストシステム” is in paragraph Nos. 23, 46 and 85 in the description as filed. 

1.05.   What is a statement accompanying an amendment?  Any amendment may be accompanied by a brief statement by the applicant explaining the amendment and indicating any impact it might have on the description and the drawings.  Such a statement is published together with the international application itself (see PCT Applicant's Guide paragraphs 9.012 to 9.024).  Statements not referring to a specific amendment are not permitted.  The statement must not exceed 500 words if in English or when translated into English.  It may not contain disparaging comments on the international search report or on the relevance of any of the citations contained in that report.  References to certain citations in the report may be made only in connection with an amendment made to a specific claim.  The statement must be in the language in which the international application is published (see PCT Applicant's Guide paragraphs 9.017 and 9.018). 

1.06.   A statement explaining the amendment is not to be confused with and must be clearly distinguished from the letter indicating the differences between the claims as filed and those as amended and the basis for the amendment (see paragraph 1.03).  It is also distinct from the statement concerning amendments which must be included in a demand for international preliminary examination (see PCT Applicant's Guide paragraphs 10.024 to 10.027).  It must therefore be identified as such by a heading “Statement under Article 19(1).”  Where the statement does not comply with the requirements, it is neither published by the International Bureau nor communicated to the designated Offices.

1.07.   May the amended claims include new matter?  The PCT provides that amendments are not to go beyond the disclosure in the international application as filed.  This requirement is not directly enforceable during Chapter I of the international phase, but failure to comply with it may have adverse consequences for the applicant during the international preliminary examination and in the national phase (see PCT Applicant's Guide paragraphs 10.070 and 11.047).

1.08.   What happens where the replacement sheets were not accompanied by a letter?  The PCT requires that replacement sheets filed with Article 19 amendments must be accompanied by a letter indicating the basis for the amendment to the claims (see paragraph 1.03).  Substantive compliance with this requirement is not checked during the international phase unless the applicant requests international preliminary examination but failure to comply with it may have adverse consequences for the applicant during international preliminary examination and in the national phase (see also paragraph 3.01).

1.09.   Should a copy of amendments under Article 19 be filed with the International Preliminary Examining Authority?  If the applicant submits a demand for international preliminary examination, he should file a copy of the amendments to the claims under Article 19, the letter which accompanied the amended claims and the statement under Article 19(1) (if any) with the International Preliminary Examining Authority with the demand (if the amendment has already been filed) or at the same time as he files the amendment with the International Bureau (if the amendment is filed after the demand).  Where the International Preliminary Examining Authority requires a translation of the international application under Rule 55.2, the applicant should also furnish a translation of any amendments made under Article 19 and any letter that accompanied the amendments if he wishes those amendments to be taken into account for international preliminary examination.  The International Bureau transmits a copy of any amendment, accompanying letter and any statement under Article 19 received prior to the filing of the demand to the International Preliminary Examining Authority unless that Authority indicates that it has already received a copy.  If an amendment, the accompanying letter and any statement under Article 19 are received after the demand has been filed, the International Bureau transmits a copy to the International Preliminary Examining Authority in any event, but timely filing of a copy of these documents by the applicant direct with that Authority ensures that the international preliminary examination will proceed without undue delay or uncertainty.  See PCT Applicant's Guide paragraphs 10.024 to 10.028 in connection with the demand form.

1.10.   In what circumstances should the claims be amended under Article 19?  Since any amendments of the claims under Article 19 are published with the international application (see PCT Applicant's Guide paragraph 9.015), such amendment may be useful to the applicant if there is a reason to better define the scope of the claims for the purposes of provisional protection in those designated States whose national law provides for such protection (see PCT Applicant's Guide paragraph 9.024).  It is to be noted that, where international preliminary examination takes place, the applicant has the right under Article 34(2)(b) to file amendments to the claims (as well as to the description and the drawings) with the International Preliminary Examining Authority, regardless of whether or not he has filed amendments to the claims under Article 19 with the International Bureau (see PCT Applicant's Guide paragraphs 10.024, 10.028, 10.067 to 10.070, and 11.045 to 11.047).  There is therefore normally no need to amend the claims under Article 19 where a demand for international preliminary examination is filed, unless there is a particular reason related to provisional protection or otherwise for amending the claims before international publication.

Amendments of the claims under Article 34

2.01.   What must be done to effect amendments to the international application before the International Preliminary Examining Authority?  The applicant must submit a replacement sheet for every sheet which, on account of an amendment, differs from the sheet previously filed.  The amendment must be submitted with an accompanying letter which explains the difference between the replaced sheet and the replacement sheet and which preferably explains the reasons for the amendment.  In addition, the letter must indicate the basis for the amendment in the application.  The basis for the amendment must always refer to the application (description, claims, drawings) as originally filed, even if multiple amendments were made during the international phase.  When filing amendments to the claims, a complete set of claims in replacement of the claims as originally filed (or previously amended under Article 19) shall be submitted.  For an example of how the basis for the amendment should be indicated, see paragraph 1.03.  For the consequences of not furnishing an accompanying letter with the replacement sheets, see paragraph 3.01.  Where the amendment consists in the deletion of passages or in minor alterations or additions, the alterations or additions may be made on a copy of the relevant sheet of the international application, provided that the clarity and direct reproducibility of that sheet are not adversely affected.  No replacement sheet is required where the amendment results in the cancellation of an entire sheet;  such an amendment may be communicated in a letter which preferably explains the reasons for the amendment.  For amendments to the claims, see also paragraphs 1.02 and 1.03 in relation to the international search, which apply mutatis mutandis.  Where the international application was not filed in the language of publication, any amendments under Article 34 and any accompanying letter (as well as any letter accompanying Article 19 amendments) must be in the language of publication.  Where the international preliminary examination is carried out on the basis of a translation of the international application (see paragraphs 10.011, 10.054 and 10.055), any amendments under Article 34 and any amendments under Article 19, which are to be taken into account, and any accompanying letter any amendments must be in the language of that translation.  Where such amendments have been or are filed in another language, a translation of the amendments into the language in which the international preliminary examination is carried out must also be furnished (see PCT Applicant's Guide paragraphs 5.013, 10.011 and 11.046).  No fee is payable in respect of filing any amendments under Article 34(2)(b).  If the amendments or accompanying letter are not in the required language, the International Preliminary Examining Authority will invite the applicant to furnish them within a reasonable time limit.  If the applicant fails to furnish the amendments and/or the accompanying letter within the time limit set in the invitation, the International Preliminary Examining Authority shall not take such amendments into account for the purposes of the international preliminary examination. 

Consequences of not including an accompanying letter with the amendments

3.01.   What happens where the claims, description or drawings have been amended, but the replacement sheets were not accompanied by a letter?  The PCT requires that replacement sheets submitted with Article 19 or Article 34 amendments must be accompanied by a letter indicating the basis for the amendment in the application as filed (see PCT Applicant's Guide paragraphs 1.02, 1.03 and 2.01).  Substantive compliance with this requirement is not checked during the international phase unless the applicant requests international preliminary examination.  If the International Preliminary Examining Authority finds that the replacement sheets were either not accompanied by such a letter or that the letter failed to indicate the basis for the amendment, the International Preliminary Examining Authority may establish the international preliminary report on patentability (Chapter II of the PCT) as if such amendment had not been made.  Compliance with this requirement may also be important during the national phase, when it may be checked by the designated Offices, and failure to comply may result in disallowance of the amendments.