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http://www.wipo.int/pct/en/faqs/amendments_19_and_34.html
10/04/2012
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has to be indicated 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. 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. Example: 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 paragraph 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. 1.04. What happens where the international application is not in the same language as the accompanying letter? The accompanying letter should be furnished in English or French. References may, however, be made to the international application in the language of the international application where to do so will facilitate the work of the examiner in finding the reference, for example: (i) Basis for the amendment: Concerning amended claim 2, the indication of paragraph Nos. 23, 46 and 85 in the description as filed. 1 is in
1.05. What is a statement accompanying an amendment? Any amendment may be accompanied by a brief statement by the applicant explaining the amendment and indicating any impact it might have on the description and the drawings. Such a statement is published together with the international application itself (see PCT Applicant's Guide paragraphs 9.012 to 9.024). Statements not referring to a specific amendment are not permitted. The statement must not exceed 500 words if in English or when translated into English. It may not contain disparaging comments on the international search report or on the relevance of any of the citations contained in that report. References to certain citations in the report may be made only in connection with an amendment made to a specific claim. The statement must be in the language in which the international application is published (see PCT Applicant's Guide paragraphs 9.017 and 9.018). 1.06. A statement explaining the amendment is not to 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 amendment (see paragraph 1.03). It is also distinct from the statement concerning amendments which must be included in a demand for international preliminary examination (see PCT Applicant's Guide paragraphs 10.024 to 10.027). It must therefore be identified as such by a heading Statement under Article 19 (1). Where the statement does not comply with the requirements, it is neither published by the International Bureau nor communicated to the designated Offices. 1.07. May the amended claims include new matter? The PCT provides that amendments are not to go beyond the disclosure in the international application as filed. This requirement is not directly enforceable during Chapter I of the international phase, but failure to comply with it may have adverse consequences for the applicant during the international preliminary examination and in the national phase (see PCT Applicant's Guide paragraphs 10.070 and 11.047). 1.08. What happens where the replacement sheets were not accompanied by a letter? The PCT requires that replacement sheets filed with Article 19 amendments must be accompanied by a letter indicating the basis for the amendment to the claims (see paragraph 1.03). Substantive compliance with this requirement is not checked during the international phase unless the applicant requests international preliminary examination but failure to comply with it may have adverse consequences for the applicant during international preliminary examination and in the national phase (see also paragraph 3.01). 1.09. Should a copy of amendments under Article 19 be filed with the International Preliminary Examining Authority? If the applicant submits a demand for international preliminary examination, he should file a copy of the amendments to the claims under Article 19, the letter which accompanied the amended claims and the statement under Article 19(1) (if any) with the International Preliminary Examining Authority with the demand (if the amendment has already been filed) or at the same time as he files the amendment with the International Bureau (if the amendment is filed after the demand). Where the International Preliminary Examining Authority requires a translation of the international application under Rule 55.2, the applicant should also furnish a translation of any amendments made under Article 19 and any letter that accompanied the amendments if he wishes those amendments to be taken into account for international preliminary examination. The International Bureau transmits a copy of any amendment, accompanying letter and any statement under Article 19 received prior to the filing of the demand to the International Preliminary Examining Authority unless that Authority indicates that it has already received a copy. If an amendment, the accompanying letter and any statement under Article 19 are received after the demand has been filed, the International Bureau transmits a copy to the International Preliminary Examining Authority in any event, but timely filing of a copy of these documents by the applicant direct with that Authority ensures that the international preliminary examination will proceed without undue delay or uncertainty. See PCT Applicant's Guide paragraphs 10.024 to 10.028 in connection with the demand form. 1.10. In what circumstances should the claims be amended under Article 19? Since any amendments of the claims under Article 19 are published with the international application (see PCT Applicant's Guide paragraph 9.015), such amendment may be useful to the applicant if there is a reason to better define the scope of the claims for the purposes of provisional protection in those designated States whose national law provides for such protection (see PCT Applicant's Guide paragraph 9.024). It is to be noted that, where international preliminary examination takes place, the applicant has the right under Article 34(2)(b) to file amendments to the claims (as well as to the description and the drawings) with the International Preliminary Examining Authority, regardless of whether or not he has filed amendments to the claims under Article 19 with the International Bureau (see PCT Applicant's Guide paragraphs 10.024, 10.028,
http://www.wipo.int/pct/en/faqs/amendments_19_and_34.html
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10.067 to 10.070, and 11.045 to 11.047). There is therefore normally no need to amend the claims under Article 19 where a demand for international preliminary examination is filed, unless there is a particular reason related to provisional protection or otherwise for amending the claims before international publication.
http://www.wipo.int/pct/en/faqs/amendments_19_and_34.html
10/04/2012