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.

Filing Article 19 amendments using ePCT

Q: I am a new paralegal in a law firm and I have been asked to submit amendments to the claims of an international application under PCT Article 19 for a client. What is the correct way of doing this?

A: Under Article 19 of the PCT, following receipt of the international search report (ISR), the applicant is entitled to one opportunity to amend the claims of the international application. The amendments must be submitted to the International Bureau (IB) (not to the receiving Office nor to the International Searching Authority (ISA)) within the later to expire of the following time-limits (PCT Rule 46):

  • two months following the date of mailing of the ISR and the written opinion of the ISA; or
  • before the expiration of 16 months from the priority date1.

Submission of the amendments to the claims can be made most efficiently using ePCT in text format (DOCX or text-based PDF files) using the "Action":

Filing Article 19 amendments using ePCT

For Article 19 amendments that are not in text format, the "Document Upload" function can be used, which does not require strong authentication or access rights to the international application in ePCT. However, applicants are encouraged to submit Article 19 amendments in text format using ePCT with full access rights in order to benefit from real-time validation checks which verify that all the requirements are met.

The system will prevent you from proceeding if Article 19 amendments cannot be submitted for one of the following reasons:

  • if the ISR has not yet been issued or, at least, not yet been received at the IB and uploaded in ePCT;
  • amendments have already been received and processed by the IB;
  • if the time limit has expired and preparations for international publication have been completed;
  • where the ISA has declared, under Article 17(2), that no ISR will be established (see PCT Applicant's Guide paragraph 7.014).

Your submission should include the following:

(i) a complete set of claims in replacement of the claims originally filed

Please note that you must provide a complete set of claims as amended. The amended claims must be furnished in the language in which the international application is published and submitted as replacement sheets. The replacement sheets containing the amended claims should not contain any marked-up text - they should only contain clean text.

It is also important to note that under PCT Article 19, the amendments must not go beyond the disclosure in the international application as filed (unless the national law of any designated State permits this2).

If you submit the amendments using the ePCT Action you will need to indicate the total number of claims as amended. In the case of a DOCX file, the system will extract the total number of claims and, if possible, will also do so if a text-based PDF file is attached. Failing that, you can manually indicate the total number of claims as amended. Where a claim is cancelled, no renumbering of the other claims is required. However, if you do renumber the claims, they must be renumbered consecutively.

Links to sample files and templates are available in all PCT publication languages at, respectively:

  • https://pct.wipo.int/DocConverter/pages/amendedClaimsSampleFiles.xhtml; and
  • https://pct.wipo.int/DocConverter/pages/amendedClaimsTemplateFiles.xhtml

(ii) a letter which must indicate the differences between the claims as filed and those as amended, plus the basis for the amendments

In order to comply with Article 19 and Rule 46, you must submit a letter in English or French accompanying the amended claims explaining the differences between the claims as filed and those as amended and also indicating the basis for the amendments in the application as filed (in accordance with Section 205 of the Administrative Instructions under the PCT). This should be done by stating, in connection with each claim appearing in the international application, whether:

the claim is unchanged,

the claim is cancelled;

the claim is new;

the claim replaces one or more claims as filed;

the claim is the result of the division of a claim as filed, etc.

Indicating the basis for the amendments enables the examiner to assess whether the amendments contain subject-matter which goes beyond the disclosure of the application as filed by consulting your precise references in the application - non-specific indications such as "see the description as filed" or "see the claims as filed" are generally not considered sufficient. Please ensure that, based on the figure indicated as the total number of claims as amended, each claim number is accounted for on the list, including any claims that remain unchanged. (more information is available at /pct/en/faqs/amendments_19_and_34.html).

It is possible to attach an accompanying letter in PDF format. It is, however, recommended to prepare a standardized accompanying letter with the help of the ePCT interface to ensure that all the amendments are explained. The system will check that an explanation is given for each claim that is "Amended" or "New" for which it is mandatory to indicate a basis for the change.

Once all the mandatory values have been filled in, you will be able to preview the accompanying letter, which will be rendered as a document accompanying the amended claims when the action is submitted to the IB.

(iii) a statement under Article 19 (optional)

You may optionally include a brief statement under Article 19 when submitting amended claims, explaining the amendments and indicating any impact that such amendments might have on the description and the drawings. The statement must be in English or French and should not exceed 500 words if in English or when translated into English. This too, can also be attached in PDF format but, again, it is recommended to use the 'Prepare a statement' feature in ePCT to type the text of the statement directly into the interface for automatic formatting and rendering.

Before submitting the "Action", you must sign the Action by selecting one of the signature options. You can sign yourself if either you are the applicant or agent of the application, or if you have uploaded an accompanying letter signed by the authorized signatory. If this is not the case, you can select the 'external signature' option which allows an authorized signatory to apply a signature to your draft Action saved in ePCT without requiring access to the system. When 'external signature' is selected in ePCT as the signature option, an e-mail is sent to the signatory in question with a unique document identifier code plus a link to a dedicated web page where they can either type in a text string signature or attach an image file containing their signature. You must make sure that the e-mail address to which the external signature request will be sent is the individual e-mail address of the signatory and not a shared e-mail address. Once signed, the amendments of the claims may be submitted.

More detailed instructions can be found in the guidance on how to file amendments under Article 19 at:

  • /pct/en/faqs/amendments_19_and_34.html

and in the ePCT FAQ article "Action - Amendments under Article 19 (text format only)" at:

  • https://pct.eservices.wipo.int/direct.aspx?UG=4&T=en&N=840
  1. However, if you file the amendments after the later of these time limits has expired but before the completion of technical preparations for international publication at the IB (usually 15 calendar days before the actual publication date - see also /pct/en/texts/ro/ro337.html), the amendments will be considered to have been received by the IB on the last day of that time limit.
  2. If the national law of any designated State permits amendments to go beyond the said disclosure, failure to comply with paragraph (2) of Article 19 shall have no consequence in that State (see PCT Applicant's Guide paragraphs 10.070 and 11.047).