PCT Application Amendment
There are two opportunities available for an applicant to amend the international application in the international phase, i.e., under Article 19 and Article 34 of the Patent Cooperation Treaty (PCT). To begin with, every PCT application filed is automatically subjected to a prior art search and a written opinion regarding the novelty, non-obviousness, and industrial applicability of the invention. The International Search Report (ISR) and Written Opinion (WO) are usually established 16 months from the priority date or nine months from the PCT application filing date if there is no prior application. The search and opinion are conducted by the International Searching Authority (ISA).
Article 19
If the applicant wishes to do a PCT application amendment for only the claims, they may do so under Article 19. Under this provision, the applicant cannot amend the description or the drawings. The amendments to the claims must be filed with the International Bureau and be in the language in which the international application was published. Amendment to the claims under Article 19 must be done within two months from the date of receiving the ISR and the WO or within 16 months from the priority date, whichever is later.
A brief statement explaining the impact of the amendments on the drawings and the description may also be filed. The International Bureau will receive amendments even after the expiry of the time limit if the technical preparations for the international publication have not been completed.
Any amendments that are made to the claims must not go beyond the scope of the disclosure in the application. This means that no new matter can be added to the application. Changes beyond the disclosure can be made if any of the contract states allow it. However, they will only be valid in those particular contracting states which have allowed it. No extra fees have to be paid by the applicant under this Article.
Why make the amendments under Article 19?
If the ISR or the WO reveals any prior art that overlaps with the invention, the existing claims made in the application may not contain strong arguments supporting the applicant’s claim. This may prevent the applicant from receiving a patent. By amending the claims under Article 19, the applicant is in a more secure position.
Article 34
If the applicant wishes to make amendments not just to the claims but also to the description and the drawings, the amendments may be done under Article 34. Under this Article, the applicant can amend claims based on the description or redefine the text in the specification without adding any new matter.
The applicant has to file a PCT Chapter II Demand to make amendments under Article 34. The Demand must be filed within three months from the issuance of the ISR or 22 months from the priority date, whichever is later. An additional fee is paid under Article 34.
Under Chapter II of the PCT, the applicant may request an International Preliminary Examination (IPE) of the international application. This is done to obtain “a preliminary and non-binding opinion on whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.”
The International Preliminary Examination Authority conducts this examination. This step allows the applicant to engage in formal discussions with the IPEA about the satisfaction of the novelty, non-obviousness, and industrial applicability criteria.
Under Article 34, the applicant has the right to communicate with the International Preliminary Examination Authority (IPEA) either orally or in writing. Whatever amendments the applicant wishes to make concerning the claims, description, and drawings (in the prescribed format and time), they must be done before the International Preliminary Examination Report is established.
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