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Author
Marianna Boykova

Patent Attorney

23 January 2020

What amendments may be made in the PCT application at an international phase


Some amendments can be made within the framework of an international application filed according to the PCT procedure. This article is devoted to the amendments that can be made in the international application at an international phase and during the period, when which such amendments are allowed to be made.

Correcting or supplementing a priority claim. An applicant may correct or supplement the priority claim in the international application by filing a petition to the Receiving Office or the International Bureau within 16 months from the priority date or, if such correcting or supplementing can become a reason for the amendment of the priority date, within 16 months from such amended priority date, depending on which of these 16-month periods expires first, provided that such petition may be submitted before the expiration of four months from the international filing date. Any petition for correcting or supplementing the priority claims that is received by the Receiving Office or the International Bureau after the applicant’s petition for an early publication of the international application is considered to be unsubmitted, except the cases, when the petition is withdrawn before the completion of the technical preparations for an international publication. If correcting or supplementing the priority claim causes the amendment of the priority date, then any period calculated from the previous priority date and that has not expired yet is calculated from the amended priority date. The applicant may also withdraw the priority claim stated in the international application at any moment before the expiration of 30 months from the priority date. If the international application contains several priority claims, the applicant may withdraw the priority claims both regarding one priority sought and regarding all those indicated in the international application.  The withdrawal is considered to be exercised upon the receipt of a notification addressed by the applicant, at his discretion, to the International Bureau, the Receiving Office or the Authority of the International Preliminary Examination.

Amending the claims in the International Bureau. Upon the receipt of an international search report, the applicant is entitled to amend the claims of the international application once by submitting the amendments to the International Bureau within the specified period. At the same time, the applicant may submit a brief explanation of the amendments in accordance with the Instructions to the Patent Cooperation Treaty and indicate how they might influence on the description of the invention and the drawings. The amendments should not go beyond what is disclosed in the originally filed international application.

The amendments that are exercised within the framework of the International Preliminary Examination. The applicant is entitled to amend the claims, the description of the invention and the drawings in a prescribed manner and within a prescribed period before the preparation of the opinion of the International Preliminary Examination. The amendments should not go beyond what has been disclosed in the originally filed international application.

An additional opportunity for submitting the amendments or the arguments. The Authority of the International Preliminary Examination may prepare one or more additional written communications, and at the same time, in accordance with the Instructions to the Patent Cooperation Treaty, the Authority of the International Preliminary Examination may, at the request of the applicant, provide him with one or more additional opportunities for submitting the amendments or the arguments.

Considering the amendments, the arguments and the corrections of obvious errors. The Authority of the International Preliminary Examination may ignore, for the purposes of the written communication or the opinion of the International Preliminary Examination, the amendments, the arguments and the corrections of the obvious errors, if, as the case may be, this Authority received them, allowed or was notified of them after it has started drafting the written communication or the opinion. An amendment is considered to be any amendment, other than the correction of the obvious error, in the claims, the description of the invention or the drawings, including cancelling some claims of the claims, deleting particular places in the description of the invention, or deleting some particular drawings.

In addition, the International Bureau, at the request of the applicant or the Receiving Office, registers the amendments of the following information contained in the international application:

  1. the information on the applicant, including the name, the location or the residence and the citizenship;
  2. the information on the author and/or the applicant's agent, including the name or the address.

However, the International Bureau does not register the requested amendment, if the request for the registration was received by it after 30 months from the priority date. The amendments of such kind may be exercised an unlimited number of times. Usually, such amendments are made in the case of transferring the rights to obtain a patent.

All the amendments made at the stage of the international phase allow the applicants avoiding the amendments at the national/regional phases that should be made in each office, while amending at the international stage allows making this in a more unified manner. If the amendments are made at the national/regional phases, it will be necessary to take into account all subtleties and nuances of the patent legislation of the national/regional office, where the international application has been transferred to.

 

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