In an event where an applicant wishes to make certain changes in only the claims of a direct PCT application, the applicant can invoke the procedure under Article 19. The applicant can only amend the claims under Article 19. The applicant cannot amend the description or the drawings. There are certain conditions for filing an amendment under this Article. The application must be filed within 2 months from the issuance of the International Search Report and no new matter can be added. No demand or fees is required to be filed under this Article for the amendments in the claims.
It is advisable that where the ISR (International Search Report) or the Written Opinion refers to any prior art against which the applicant believes that no strong arguments can be made; he may opt for an amendment under Article 19. Once the applicant proceeds under Article 19, he may not be required to make profuse changes in the description and the drawings. The applicant will also be in a stronger position to apply for a national phase application and the possibility of grant of a patent is comparatively high in such situations.
The option of amendment is also available under Article 34 which allows the applicant to make amendments in the description, drawings and the claims. This means that the applicant may shift information from one part of the specification to another part of the specification i.e. description can be used as claims or the text in the specification can be redefined. For filing an amendment under Article 34 the applicant has to file a PCT Chapter II Demand. The time limit for filing the demand is 3 months from the issuance of ISR or 22 months from the priority date, whichever is later. The prescribed fee is also required to be paid by the applicant. Chapter II provides an opportunity to the applicant to take part in the formal discussion with the International Examination Authority (IEA) . This also provides a scope to the applicant to put forth his view about the claims and satisfy the IEA about meeting the criteria of the novelty, utility and inventive steps.
The amendment done under Article 34 will be conveyed to the national patent office upon national phase entry of the particular application. Under this article the application will not be republished as an amended application but will be available on PATENTSCOPE after 30 months.
Authored By Anirudhh Singh