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PCT Newsletter 09/2010: Practical Advice

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Indicating the basis for amendment of the international application

Q: Further to the entry into force of the amendment to PCT Rule 46.5 concerning the additional requirement to indicate in a letter the basis for the amendments to the claims under PCT Article 19, please could you explain how such indications should be made. What is the difference between this letter, and the statement under PCT Rule 46.4?

A: First of all, it is recalled that when filing amendments to the claims under PCT Article 19 or, if a demand for international preliminary examination has been filed, under PCT Article 34(2)(b), the applicant is required to submit, in the language of publication, replacement sheet(s) containing a full set of claims in replacement of all the claims originally filed (PCT Rules 46.5(a) and 66.8(c)).

On 1 July 2010, amendments to both PCT Rule 46.5, concerning amendments to the claims under PCT Article 19, and PCT Rule 66.8, concerning amendments to the claims, the description and the drawings under PCT Article 34, entered into force. As a result of these amendments, the applicant is required to include in the letter accompanying the amendments, an explanation of the basis for the amendments in the application as filed, in other words, an indication of where in the application as filed there is support for the amendments. This is required in addition to the previously existing requirements for an accompanying letter which, in the case of the claims, indicates the differences between the claims as filed and those as amended (PCT Rules 46.5 and 66.8(c)).

As far as the basis for the amendment is concerned, the letter must make specific references to particular parts of the description or the drawings. This is 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 (see PCT Articles 19(2) and 34(2)(b)). 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.

The following is an example of an explanation of the basis for some amendments to claims:

“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 paragraphs 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.”

Note that, in the case of amendments under PCT Article 19, which should be filed with the International Bureau (IB), where the international application is not in the same language as the accompanying letter (which should be furnished in English or French – see PCT Rule 92.2(d)), references may be made to the international application in the language of the application where to do so will facilitate the work of the examiner in finding the reference, for example:

“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 paragraphs Nos. 23, 46 and 85 in the description as filed.”

Note that substantive compliance with the requirement to submit a letter indicating the basis for amendments in the application is not checked during the international phase unless the applicant requests international preliminary examination. If the IPEA 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, it is not obliged to invite correction, and may establish the international preliminary report on patentability (Chapter II of the PCT) as if such amendment had not been made (PCT Rule 70.2(c-bis)). 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.

The PCT Applicant’s Guide will be updated shortly with guidance on how to include information on the basis of the amendments in the accompanying letter.

With regard to your question concerning the difference between the letter accompanying the amendments and the statement under PCT Rule 46.4: whereas the purpose of the accompanying letter is to help examiners understand exactly what the amendments consist of, and to give the examiner a tool to help him/her verify that no new matter was added, any amendment to the claims under PCT Article 19 may be accompanied by a brief statement by the applicant explaining why the amendments were made and indicating any impact it might have on the description and the drawings.

Unlike the letter, the statement is optional and is published together with the international application itself. Whereas the letter accompanying the amendments under PCT Article 19 must be in either English or French, the statement must be in the language in which the international application is published (for further information on the drafting of the statement, see PCT Rule 46.4). The statement explaining the amendments must therefore not 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 amendments (it is also distinct from the “statement concerning amendments” in Box No. IV of the demand form which should be completed when filing a demand for international preliminary examination). This is why it must be identified as such by a heading “Statement under Article 19(1)”, and presented on a separate sheet.