The Subject Patent Already Has Underlining or ... - Bayhdolecentral
The Subject Patent Already Has Underlining or ... - Bayhdolecentral
The Subject Patent Already Has Underlining or ... - Bayhdolecentral
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<strong>The</strong> applicant has the right to amend the claims, the<br />
description, and the drawings, in the prescribed manner<br />
and bef<strong>or</strong>e the start of international preliminary<br />
examination. <strong>The</strong> amendment must not go beyond the<br />
disclosure in the international application as filed.<br />
<strong>The</strong>se amendments are referred to as PCT Article<br />
34(2)(b) amendments. It should be noted that PCT<br />
Article 19 amendments are strictly amendments to the<br />
claims made during the Chapter I search phase while<br />
PCT Article 34(2)(b) amendments to the description,<br />
claims, and drawings are made during the Chapter II<br />
examination phase.<br />
When amendments to the description, claims, <strong>or</strong><br />
drawings are made under PCT Rule 66.8, they may be<br />
accompanied by an explanation. <strong>The</strong>se amendments<br />
may have been submitted to avoid possible objections<br />
as to lack of novelty <strong>or</strong> lack of inventive step in view<br />
of the citations listed in the international search<br />
rep<strong>or</strong>t; to meet any objections noted by the International<br />
Searching Auth<strong>or</strong>ity under PCT Article<br />
17(2)(a)(ii) (i.e., that all <strong>or</strong> at least some claims do not<br />
permit a meaningful search) <strong>or</strong> under PCT Rule 13<br />
(i.e., that there is a lack of unity of invention); <strong>or</strong> to<br />
meet objections that may be raised f<strong>or</strong> some other reason,<br />
e.g., to remedy some obscurity which the applicant<br />
himself/herself has noted in the <strong>or</strong>iginal<br />
documents.<br />
<strong>The</strong> amendments are made by the applicant of his/<br />
her own volition. This means that the applicant is not<br />
restricted to amendments necessary to remedy a<br />
defect in his/her international application. It does not,<br />
however, mean that the applicant should be regarded<br />
as free to amend in any way he/she chooses. Any<br />
amendment must not add subject matter which goes<br />
beyond the disclosure of the international application<br />
as <strong>or</strong>iginally filed. Furtherm<strong>or</strong>e, it should not itself<br />
cause the international application as amended to be<br />
objectionable under the PCT, e.g., the amendment<br />
should not introduce obscurity.<br />
As a matter of policy and to ensure consistency in<br />
handling amendments filed under PCT Articles 19<br />
and 34 of the PCT, the following guidelines f<strong>or</strong> processing<br />
these amendments have been established:<br />
(A) Any amendment which complies with<br />
37 CPR 1.485(a) will be considered;<br />
(B) Amendments filed after the Demand<br />
(1) will be considered if filed bef<strong>or</strong>e the.application<br />
is docketed to the examiner,<br />
PATENT COOPERATION TREATY 1872<br />
(2) may be considered if filed after docketing.<br />
<strong>The</strong> examiner has discretion to consider such amendments<br />
if the examiner determines that the amendment<br />
places the application in better condition f<strong>or</strong> examination<br />
<strong>or</strong> the examiner determines that the amendment<br />
should otherwise be entered;<br />
(C) Amendments filed after expiration of the<br />
period f<strong>or</strong> response to the written opinion<br />
(1) will be considered if the amendment was<br />
requested by the examiner,<br />
(2) may be considered if the examiner determines<br />
that the amendment places the application in<br />
better condition f<strong>or</strong> examination <strong>or</strong> the examiner<br />
determines that the amendment should otherwise be<br />
entered.<br />
It is expected, due to the relatively sh<strong>or</strong>t time<br />
period f<strong>or</strong> completion of preliminary examination,<br />
that the Chapter II application will be taken up f<strong>or</strong><br />
preparation of the written opinion promptly after<br />
docketing to the examiner and taken up f<strong>or</strong> preparation<br />
of the final rep<strong>or</strong>t promptly after the time expires<br />
f<strong>or</strong> response to the written opinion (i.e., after allowing<br />
f<strong>or</strong> mail processing). <strong>The</strong> examiner is not obliged to<br />
consider amendments <strong>or</strong> arguments which are filed<br />
after he/she has taken up the case f<strong>or</strong> preparation of<br />
the written opinion <strong>or</strong> the final rep<strong>or</strong>t.<br />
Amendments timely filed but misdirected <strong>or</strong> are<br />
otherwise.late reaching the examiner will be considered<br />
as in the case ofregular domestic applications<br />
and may require a supplemental written. opinion and!<br />
<strong>or</strong> final rep<strong>or</strong>t.<br />
Clearly, these guidelines offer the examiner flexibility.<br />
<strong>The</strong> examiner should be guided by the overriding<br />
principle that the final rep<strong>or</strong>t (the PCTIlPEA/409)<br />
should be established with as few written opinions as<br />
possible and resolution of as many issues as possible<br />
consistent with the goal of a timely and quality rep<strong>or</strong>t.<br />
See also Administrative Instructions Section 602<br />
regarding processing of amendments by the International<br />
Preliminary Examining Auth<strong>or</strong>ity.<br />
1872 Transmittal of Demand to<br />
the Examining C<strong>or</strong>ps<br />
peTAdministrative Instruction Section 605.<br />
File to be used f<strong>or</strong> International Preliminary Examination<br />
wherethe International Preliminary Examining Auth<strong>or</strong>ity is<br />
part of thesamenational Office<strong>or</strong>intergovernmental <strong>or</strong>ganization<br />
1800-97 August2001