The PCT patent application or the International patent application has an effect of a national patent application for a certain period of time. After that period, the PCT patent application is converted into national phase patent applications where patent protection is required. The PCT patent application can be amended under Article 19 and Article 34 of the Patent Cooperation Treaty (PCT).

Examination of the PCT Patent Application

The PCT patent application is automatically subjected to both search and examination. The International Search Authority (ISA) conducts the search and examination and issues international Search Report (ISR) and Written Opinion of International Search Authority (WOISA) typically within 16 months from the priority date of the PCT application or nine months from the filing date of PCT patent application if PCT is the first filing. At the international phase or PCT stage, the Applicant has two opportunities to amend the PCT patent application under Article 19 and 34 of the PCT.

Amendments under Article 19 of the PCT

Under Article 19, the Applicant entitles one opportunity to amend only claims of the PCT patent application in the PCT stage. No amendments to the description, drawings, and abstract are allowable under Article 19 of the PCT. The applicant has to file a brief statement, explaining the amendments such as explaining the amendments made to the claims, the basis for the amendments, etc. and indicating any impact that might have on the description and the drawings. The amendments should not go beyond the disclosure in the PCT patent application as filed.

The amendments of the claims have to be filed in the language in which the PCT patent application is published and must be filed only with the International Bureau. The Applicant can file the amendments under Article 19 after receiving the ISR and the WOISA, and until the end of 16 months from the priority date or within two months from the date of mailing of the ISR and the WOISA, whichever expires later. No fee is required to file the amendments under Article 19 of the PCT.

Amendments under Article 34 of the PCT

The Applicant has a right to amend the claims, the description, and the drawings of the PCT patent application under Article 34 of the PCT. In order to make amendments under Article 34 of the PCT, the applicant has to file a PCT chapter II demand by paying an additional fee. The applicant can amend the description or drawings in line with the amendments to the claims, provided, the amendments should not go beyond the disclosure of originally filed specification or PCT patent application. The amendments have to be filed with the International Preliminary Examining Authority (IPEA) in the language in the language in which the PCT patent application is published. The PCT chapter II demand has to be filed within the expiration of 3 months from the date of mailing of the ISR and WOISA, or 22 months from the priority date, whichever time limit expires later.

Under PCT chapter II demand, the IPEA examines the PCT patent application and provides a preliminary and non-binding opinion on novelty, inventive step (to be non-obvious), and industrially applicability. The Applicant has a right to communicate orally and in writing with the IPEA under PCT Chapter II demand.

Article 19 Amendments Vs. Article 34 Amendments

In case, the Applicant requires only claim amendments against closely relevant prior art and strongly believes that amending only claims would help to secure a patent, then it is advisable to go with the Article 19 amendments.

Article 34amendments are advisable only when the applicant requires to amend description or drawings and to interact with the IPEAto address one or more objections expressed in a negative WOISA to receive a positive IPRP. The PCT chapter II demand would be useful for the Applicants who wish to file a patent application in EPO, where the examination essentially continues from the international examination.

Conclusion

 Article 19 and Article 34 of the PCT provide an opportunity for the applicant to correct or cure the deficiency of the international (PCT) patent application at the PCT stage. The applicant can make use of these articles to amend the description, drawings, or claims of the PCT patent application at the PCT stage itself and avoid the amendments in each of the national phase patent applications.

About the author: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.