The Subject Patent Already Has Underlining or ... - Bayhdolecentral

1852 MANUAL OF PATENT EXAMINING PROCEDURE
1852 International-Type Search
PCTRule 41.
Earlier Search Other Than International Search
41.I.Obligation to Use Results; Refund ofFee
Ifreference has been made in the request, in the form provided
for in Rule 4.11, to an international-typesearch carried out under
the conditions set out in Article 15(5) or to a search other than an
international or international-type search, the International
Searching Authority shall, to the extent possible, use the results of
the said search in establishing'the' international search report on
the international application. The International Searching Authority
shall refund the search fee, to the extent and under the conditions
provided for in the agreement under Article 16(3)(b) or in a
communication addressed to and published in the Gazette by the
International Bureau, if the international search report could
wholly or partly be based on the results of the said search.
37 CFR 1.104. Nature ofexamination.
(a) Examiners action.
*****
(3) An international-type search will be made in all
national applications filed on and after June 1, 1978.
(4) Any national application may also have an international-type
search report prepared thereon at the tinieoLthe
national examination on the merits, upon specific written request
therefor and payment of the international-type search report fee
set forth in § 1.21(e). The Patent and Trademark Office does not
require that a formal report of an international-type search be prepared
in order to obtain a search fee refund in a later filed international
application.
*****
PCT Rule 41 provides that the applicant may
request in a later filed international application that
the report of the results of the international-type
search, i.e., a search similar to an international search,
but carried out on a national application (37CFR
1.l04(a)(3) and (a)(4)), be usedin establishing an
international search report oil such international application.
An international-type search is conducted .on
all U.S. national nonprovisional applications filed
after June I, 1978. Upon specific request, at the time
of the examination of a U.S. national nonprovisional
application and provided that the payment of the
appropriate international-type search report fee has
been made (37 CFR 1.2l(e)) an international-type
search report Form PCTIISAl20l will also be prepared.
August 2001 1800"80
1853 Amendment Underrcr Article19
PCTArticle 19.
Amendment ofthe Claims before the International Bureau
(1) The applicant shall, after having received the .intemational
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.
PCTRule46.
Amendment ofClaims 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-timelimit shallbe 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 ofAmendments
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.
46.4.Statement
(a) The statement referred to in Article 19(1) shall bein 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.