Inventors who file an international application under the Patent Cooperation Treaty (PCT) have an opportunity to amend their application before moving onto filing national applications in participating countries. Articles 19 and 34 are the two provisions from the PCT that allow applicants to amend their applications before transitioning to the national phase.
What is a PCT application?
The Patent Cooperation Treaty (PCT) is an international patent law treaty that allows for an inventor to file a single international patent application that preserves a priority date and gives the inventor more time to file national applications in particular countries. The treaty was originally signed in 1970 and became effective in 1978. Over the past few decades, the PCT has become more and more popular with over 250,000 applications filed in 2019.
It is important to note that a PCT application does not mature into an internationally granted patent, but allows an inventor to maintain a priority date while filing individual applications in each target country during the national phase. The national phase refers to the period of applying for patent protection in specific countries by going through the respective patent offices. The deadline for filing in the various patent offices varies, but it generally must be done within 30 months of the PCT application’s effective filing date. The patent offices in each country will likely consider the results of the search report from the PCT application, but countries are not bound by the PCT results since each country has its own patent laws. Filing a PCT application is a step toward international patent protection but without further action, no protection will be afforded.
Changing a PCT application with an Article 19 or 34 amendment
Chapter I (Article 19)
After filing a PCT application in a national patent office that has been designated as a receiving office, an International Searching Authority (ISA) will conduct an international search of the application. The ISA will search relevant prior art around the world. The results of this search are returned to the applicant and published in an international search report and written opinion on the potential patentability of the invention.
Article 19 of the PCT provides that “[t]he applicant, shall, after having received the international search report, be entitled to one opportunity to amend the claims of the international application.” Therefore, an Article 19 amendment allows the applicant to revise only the claims and nothing else in the application such as the drawings or written description/specification. Additionally, no fees are required to file an amendment under Article 19.
After an Article 19 amendment is filed, the ISA will not conduct a further substantive examination of the application. However, this does not mean that an Article 19 amendment is not worthwhile. After amendment, the claims may be in a better position for patentability in the national phase, saving an iteration of amendment and/or argument in each country.
Chapter II (Article 34)
If the PCT applicant desires to receive another substantive review of the application before transitioning to the national phase, a Chapter II demand may be filed with an amendment under Article 34 and additional fees. An Article 34 amendment allows for amendment of not only the claims, but also of the written description and drawings, without adding new matter. Following the demand and filing of the amendment, the application will go to an International Preliminary Examining Authority (IPEA) which will carry out the preliminary examination considering the amendments and arguments presented by the applicant. The IPEA is usually the same as the ISA that previously examined the application and will issue at least one additional written opinion to which the applicant may respond. If the PCT applicant responds quickly enough, it is possible to receive more than one written opinion, increasing the amount of dialogue and argument before entering the national phase of prosecution.
Filing amendments under Articles 19 and 34 of the PCT
Applicants may file Article 19 amendments up to two months after transmittal of the written opinion. These types of amendments should be filed with the International Bureau of the World Intellectual Property Organization (WIPO) and not with the receiving Office or the ISA. Additionally, the amendments should be in the same language that the application is published in. Article 19 amendments should include a complete set of replacement claims, a letter that indicates the differences between the claims as amended and the basis for the amendments, and an optional statement explaining the amendment. All of these submitted documents will be published along with the application.
Article 34 amendments are very similar to those filed under Article 19. Replacement sheets of the claims as amended should be included along with an accompanying letter explaining the basis for the amendments. If this letter is not submitted along with the amendments, the IPEA may examine and render a report on patentability that does not consider the amendments. Failing to include an accompanying letter may also prove damaging to prosecution of the patent in the national phase where designated offices may disallow the amendments.
PCT applications and amendments can save costs when considering the high price of international patent protection. The patent attorneys at TraskBritt are experts in obtaining broad protection for your intellectual property, both domestically and internationally. For more information on how to file PCT applications and amendments, get in touch with one of the lawyers at TraskBritt today.
Article written by K. Russell Griggs