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PCT International Search and Preliminary Examination Guidelines


Chapter 20 Amendments

Appraisal of Amendments

Articles 5, 6, 19(2), 34(2)(b); Rule 66

20.09  The examiner makes sure that amendments filed do not add to the content of the application as filed, thus violating Article 19(2) or 34(2)(b). Furthermore, they must not itself cause the international application as amended to be objectionable under the PCT; for example, the amendment should not introduce obscurity. The examiner should consider as acceptable restriction of the scope of the claims or amendments that improve the clarity of the description or amendments to the claims in a manner clearly desirable, without changing their subject matter content or scope. An amended international application must, of course, satisfy all the requirements of the PCT including the matters listed in this chapter. However, especially when the claims have been substantially limited, the examiner should bear in mind that the following questions may require special consideration at the amendment stage:

(i) Unity of invention: Do the amended claims satisfy the requirement of Rule 13? When considering this matter, paragraphs of Chapter 10 are applicable;

(ii) Agreement of description and claims: If the claims have been amended, will the description require corresponding amendment to remove serious inconsistency between them? For example, is every embodiment of the invention described still within the scope of one or more claims? (See Chapter 5)

(iii) Conversely, are all of the amended claims supported by the description? (See paragraphs 5.43 and 5.44). Also, if the categories of claims have been altered, the examiner may draw this to the attention of the applicant if it means that the title is no longer appropriate.