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