Amendments and Deadlines
The applicant has the right to amend, once, the claims of the international application after receipt of the ISR and (A19.1 PCT together with R46.1 PCT):
- within 2 months from the date of transmittal of the ISR by the ISA; at least until the expiration of the 16-month period from the priority date.
However, if the ISA has declared (under A17.2 PCT) that an ISR will not be established, no amendment is possible (applicant’s guide §9.004).
Furthermore, a partial ISR inviting the applicant to pay additional official fees does not trigger the deadline (PCT Newsletter No. 7/2008).
These amendments must be sent to the IB (A19.1 PCT together with R46.2 PCT).
If the amendment is received before the completion of technical preparations for publication (i.e., 15 days before publication, applicant’s guide §9.013), the amendments are deemed to have been received in due time (R46.1 PCT).
The IB promptly notifies the designated Offices of these amendments and the applicant accordingly (R47.1.b PCT).
Form of Amendments
Submission of Amendments
Content
The applicant must submit replacement sheets containing a complete set of claims to replace all claims as filed (R46.5.a PCT).
The amendments may consist of deletions, additions, or modifications to the text. The claims must be numbered in consecutive Arabic numerals (Administrative Instructions 205.a).
Language
These amendments must be filed in the language of publication of the international application:
- see R12.2.a PCT if this language is the same as the language of filing, or see R46.3 PCT if a translation is required to be in a publication language.
For reference, the publication languages are (R48.3.a PCT):
- Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian, or Spanish.
Indication of Amendments
Content
The amendments must be indicated in a cover letter (R46.5.b PCT and Administrative Instructions 205.b). For each claim, it must be indicated whether:
- the claim is unamended; the claim is deleted;
- the claim is new;
- the claim replaces one or more claims as filed;
- the claim results from the division of a claim as filed;
- the claim replaces one or more claims as previously amended;
- the claim results from the division of a claim as previously amended.
The absence of such a cover letter or the absence of an indication of the amendments has no effect on the international phase (unless an international preliminary examination is requested, in which case the IPEA may refuse to consider these amendments, R70.2.c-bis PCT).
Language
The letter indicating the amendments must be in English or French, as it is sent to the IB (A19.1 PCT together with R46.2 PCT together with R92.2.d PCT).
Applicant’s Declaration
Contents
A brief statement (A19.1 PCT) may also be made by the applicant (max 500 words, R46.4.a PCT) if it relates to the amendments made (R46.4.b PCT).
This statement must be introduced by the wording « Statement under Article 19.1 » (R46.4.a PCT).
This statement is published at the same time as the international application (R48.2.a.vi PCT).
If it does not comply with the above rules, it is not published or communicated to the designated Offices (applicant’s guide §9.008).
Language
The brief statement must be in the language of publication of the application (R46.4.a PCT).
For reference, the publication languages are (R48.3.a PCT):
- Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian, or Spanish.
Prohibition of New Matter
The amendments must not go beyond the disclosure of the invention contained in the application as filed (A19.2 PCT).
This prohibition is examined in particular during the international examination (R66.2.a.iv PCT).
The designated States are not bound by this provision (A19.3 PCT).
Copy of Amendments to the IPEA
If the applicant amends the application under A19 PCT, a copy of these amendments (along with the other documents mentioned above) must also be filed at the same time as the request for examination (R53.9.a.i PCT).
A translation of the amendments may be requested by the ISA as for the rest of the application (R55.3.b.ii PCT).
In any event, even if the applicant fails to do so, the IB also transmits a copy unless the IPEA indicates that it has already received it (R62.2 PCT).