1. Patent Cooperation Treaty (PCT) Amendment & Response Practice
June 2015

2. PCT Amendments Common Tactics
No Amendments (Most Common Approach)
PCT Application is a glorified Extension of Time
Article 19 Amendments to Claims
Only when ISR Cites Novelty Destroying Art
Article 34 Amendments
Arguments, claim amendments, etc. in hopes of getting positive IPER for national stage

3. PCT Timetable PCT Timetable Months from Earliest Priority Date
Deadline/Action
18th Month
1 Month Prior to File Demand For Chapter II Examination for Article 22/Chapter I Countries & 2 Months Prior to Directly Nationalize in Chapter I Countries
Only applies to a limited number of countries Luxemburg, Tanzania & Uganda. Even if you do not file a Demand by the 19th Month deadline and do not nationalize by the 20th Month Chapter I deadline, you can still enter these countries by the Chapter II deadline through regional patent offices (EPO or ARIPO).
What you need to do- Normally, nothing (unless client has specific instructions).
19th Month
Deadline to File Demand For International Preliminary Examination (Chapter II)
The Chapter I deadline only applies to a limited number of countries, Luxemburg, Tanzania & Uganda. Even if you do not file a Demand by the 19th Month deadline and do not nationalize by the 20th Month Chapter I deadline, you can still enter these countries by the Chapter II through regional patent offices (EPO or ARIPO).
20th Month
Deadline to Nationalize in Chapter I Countries if Demand was Not Filed

4. PCT- Short Flow Chart Article 19 Amendments (Usually 2 Months From
Search Report)
Priority
PCT Application Filed
Restoration of Priority Deadline
Search by ISA
Int’l Publication + ISR
Deadline to File Demand for Chapter 1 Countries O
Months
< 12
Months 14
Months 16
Months 18
Months 19
Months

5. PCT- Short Flow Chart 20 Months 22 Months 28 Months 30 Months 31
Chapter 1 Deadline to Nationalize
Deadline- Demand Examination & Response to Written Opinion
Examination by IPEA
Target Date to Issue IPRP by ISA (for Chapter 1) or IPEA (Chapter 2)
Chapter 2 Deadline (Most Countries)
Chapter 2 Deadline (A Few Countries) 20
Months 22
Months 28
Months 30
Months 31
Months

6. PCT Timetable PCT Timetable Months from Earliest Priority Date
Deadline/Action
2 Months From Mailing Date of International Search Report
Deadline to File Response to International Search Report (ISR) to Have Claim Amendments Entered (Article 19)- When only responding to the ISR (and not the Written Opinion), you can only amend the claims. In order to amend the specification and/or provide substantive comments regarding the Written Opinion/prior art (in addition to amending claims), you will need to file a Demand for Substantive Examination along with a Response to the Written Opinion.
What you need to do- Normally, nothing (unless you want to only amend the claims). Even if you amend the claims, the International Preliminary Report on Patentability (IPRP) will not change based on these amendments.
21st Month or 2 Months From Mailing Date of International Search Report, (which ever is later)
1 Month Prior to File Demand and Response to Written Opinion- A Demand must be filed along with the Response in order to have the Response considered by the Examiner. You will be able to amend the claims, amend the specification, and/or present arguments as to the patentability of the claims if you file a Response to the Written Opinion. If you file a Response, an IPRP will be issued. Normally, the IPRP is not issued until after the application was nationalized, so there is no real point to responding to the Written Opinion, unless you would like to make amendments before nationalization. Although very rare, a clean IPRP could save you some patent filing fees if you nationalize in the U.S. The IPRP might change based on your amendments or remarks.
What you need to do- Normally, nothing. If you would like to make amendments to the claims and/or specification before nationalization, then you might want to consider submitting a Demand along with a Response to the Written Opinion.

7. Written Opinion- Rare)
PCT- Short Flow Chart
(or 3 Months From
Written Opinion- Rare)
Article 34
Amendments
Chapter 1 Deadline to Nationalize
Deadline- Demand Examination & Response to Written Opinion
Examination by IPEA
Target Date to Issue IPRP by ISA (for Chapter 1) or IPEA (Chapter 2)
Chapter 2 Deadline (Most Countries)
Chapter 2 Deadline (A Few Countries) 20
Months 22
Months 28
Months 30
Months 31
Months

8. PCT Timetable PCT Timetable Months from Earliest Priority Date
Deadline/Action
22nd Month or 3 Months From Mailing Date of International Search Report, (which ever is later)
Deadline to File Demand and Response to Written Opinion- A Demand must be filed along with the Response in order to have the Response considered by the Examiner. You will be able to amend the claims, amend the specification, and/or present arguments as to the patentability of the claims if you file a Response to the Written Opinion. If you file a Response, an IPER will be issued. Normally, the IPER is not issued until after the application is nationalized, so there is no real point to responding to the Written Opinion, unless you would like to make amendments before nationalization. Although very rare, a clean IPER could save you some patent filing fees if you nationalize in the U.S.
What you need to do- Normally, nothing. If you would like to make amendments to the claims and/or specification before nationalization, then you might want to consider submitting a Demand along with a Response to the Written Opinion.
28th Month
Target Date to Issue IPRP Established by International Searching Authority (ISA) (for Chapter I) or IPEA (Chapter II)- This almost never happens. The Examination Report is usually issued after the Chapter II deadline for nationalizing the case.
What you need to do- Normally, nothing. If for some rare reason you receive the IPRP in time, report it to the client and send to the foreign associate(s) where you are nationalizing the application.
Send Letter to Client Requesting Nationalization Instructions- Send a letter to the client containing a checklist of countries in which they can nationalize the PCT application. Request instructions by the 29th Month.
What you need to do- Send nationalization letter to the client.

9. How to Make Changes Changes to Application Information (Formalities)
Fix Typo’s
Change, Add, or Delete Applicants/Inventors
Change Claims
Article 19 Amendment (Response to ISR)
Article 34 Amendment (Response to WO)
Change Specification and Drawings
Article 34 Amendment (Only)
Argue Against Cited Prior Art

10. Formality Changes What can be amended?
Information provided on the request (e.g., Applicant, Typo’s, etc.)
When- anytime before Chapter II Deadline
How- File Replacement Sheets from Request with the updated information.
Where- File with
Receiving Office (RO) or
International Bureau (IB)
Paperwork
(1) Cover Letter- explains changes
(2) Substitute Sheets of Updated Request

11. Formality Changes Paperwork
(1) Cover Sheet Explaining Changes
(2) Substitute Sheet(s) of Request Containing the Changes

12. Article 19 Amendments (Response to ISR)
What can be amended?
Claims only
The only way to make substantive changes if only using Chapter 1 route
When- After received International Search Report (ISR) and Written Opinion (WO), and Later of
16 Months from priority date
2 Months from transmittal of ISR and WO
(OR received before technical preparations of international publication has been complete)
Article 19 NOT allowed when International Search Authority (ISA) indicated that no ISR will be established.
Where- Filed with IB
But if file Demand for International Preliminary Examination is filed send a copy to International Preliminary Examining Authority (IPEA)
Paperwork
(1) Cover letter indicating differences between claims filed and amended plus basis for amendment.
(2) Complete set of replacement claims
(3) Optional Statement under Article 19

13. Article 19 Paperwork
(1) Cover Letter indicating differences between claims filed and amended plus basis for amendment.
Indicators
(i) the claim is unchanged,
(ii) the claim is cancelled;
(iii) the claim is new;
(iv) the claim replaces one or more claims as filed;
(v) the claim is the result of the division of a claim as filed, etc.
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.”

14. Article 19 Paperwork (2) Complete set of replacement sheets for claims
Clean Claim Set Only (no mark-ups)
Only Cancel Claims – No renumbering of other claims is required
However, if renumber, claims must be renumbered consecutively

15. Rarely Done Article 19 Paperwork
(3) Statement Under Article 19 (Optional)
Brief statement explaining the amendment and indicating any impact it might have on the description and the drawings
Must be clearly identified “Statement under Article 19(1)”
Published with the international application
MUST NOT
Exceed 500 words
Contain disparaging comments about the International Search Report (ISR) or relevance of cited art
Rarely Done

16. Article 34 Amendments (Response to WO)
What can you do?
Amend Claims
Amend Specification
Amend Drawings
Present arguments as to the patentability of the claims
When? (Later of)
22 Months from Priority Date
3 Months from Mailing of Search Report
Where?- Can Pick IPEA in Demand
USPTO (if RO) or EP (if ISA)
Paperwork
(1) Demand for International Preliminary Examination under Article 31
And Fee
(2) Response to Written Opinion- indicating changes + arguments
(3) Replacement sheets for any amended Claims, Specification, Drawings

17. Article 34 Paperwork (Response to WO)
(1) Demand for International Preliminary Examination under Article 31
Demand
FEE

18. Article 34 Paperwork (Response to WO)
Demand Paperwork
Very Similar to Request
Will only discuss significant differences
Identify Here: International Preliminary
Examination Authority
(IPEA)
Identify Applicants &
Inventors (supplemental pages)

19. Article 34 Paperwork (Response to WO)
Demand Paperwork
Common Representative
Basis for Examination

20. Article 34 Paperwork (Response to WO)
Demand Paperwork
Checklist
Signature
Identify What
You Are Filing
Sign Here

21. Article 34 Paperwork (Response to WO)
(2) Response to Written Opinion.
Explanation of Changes Made to Application
Arguments

22. Article 34 Paperwork (Response to WO)
(3) Complete set of replacement sheets for amended claims, specification, and/or drawings
Clean Set Only (no mark-ups)

23. Article 19 v. 34 Amendments
If Demand filed, no need to amend claims under Article 19, unless you want provisional protection.
Article 19 Amendments are published, so you may gain provisional rights to the published Article 19 claim amendments (i.e., damages clock)
Article 19
Only need to amend the claims (not drawings or specification)
Don’t want to make any arguments
Article 34
Does not require to first file Article 19 Amendments
Want to Argue
Need to makes changes to specification, drawings (or claims)

24. PCT Examination Report
Type of Examination Report Depends on Whether Applicant Requested Examination (Chapter II) or Not

25. PCT Search (ISA)- Typical Flow
ISA Written
Opinion (WO)
PCT Application
Searching
Authority (ISA)
Not Public
Int’l Bureau (IB)
Int’l Search
Report (ISR)

26. PCT Chapter 1 Only- Typical Flow
(i.e., no Demand
for Examination)
Published
Not Public
International Preliminary
Report on Patentability
(IPRP)
ISA Written
Opinion (WO)
30 Months

27. PCT Chapter 1 Only
From:

28. PCT Chapter 1 Examination Report
Paperwork
International Preliminary Report on Patentability (IPRP)- preliminary, non-binding report on whether the claimed invention appears to be patentable. It is issued by the International Bureau on behalf of the International Searching Authority (ISA) under Chapter I of the PCT where an international preliminary examination report has not been or will not be established. The report has essentially the same contents as the written opinion of the International Searching Authority. In other words, if the Applicant does not file a demand for Chapter II examination, IPRP will be the WO.

29. PCT Search (ISA)- Typical Flow
ISA Written
Opinion (WO)
PCT Application
Searching
Authority (ISA)
Not Public
Int’l Bureau (IB)
Int’l Search
Report (ISR)

30. PCT Chapter 2- Typical Flow
Published
Chapter 2 (i.e., Demand
for Examination)
ISA Written
Opinion (WO)
Int’l Preliminary
Examination Authority
(IPEA)
Int’l Preliminary
Examination Report
(IPER)
30 Months

31. PCT Chapter 2
From:

32. PCT Chapter Examination Report
Paperwork
International Preliminary Examination Report (IPER)- is a preliminary, non-binding opinion, established by the International Preliminary Examining Authority (IPEA) on the request of the applicant, on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. As of 1 January 2004, this report is also known as the "international preliminary report on patentability (Chapter II of the PCT)"..

33. PCT National Phase
Please see Nationalizing PCT Applications in the US presentation that compares the 371 National Stage Procedure with the Bypass Continuation Application Procedure
Presentation is Dated- Some Changes Required Due to AIA
Updated Presentation Coming Soon!

34. PCT Timetable PCT Timetable Months from Earliest Priority Date
Deadline/Action
29th-30th Month
Send Reminder Letter(s)/Call Client for Nationalization Instructions- If instructions are not received, you need to remind the client.
What you need to do- Send a copy of the nationalization letter stamped “Reminder” and/or call the client.
30th Month
Deadline to Nationalize the PCT Application- For most countries, this is the deadline when you need to nationalize the application. Note that you can nationalize the PCT application at any time, but it might be helpful to at least wait until after you receive the International Search Report before deciding whether or not to nationalize.
What you need to do- Send the application to the foreign associate(s) in the countries where the client wishes to seek patent protection

35. Sign up for PCT Newsletter at www.wipo.int
Final Item
Sign up for PCT Newsletter at
Updates on Fee, ISA’s, etc.

36. Woodard, Emhardt, Moriarty, McNett & Henry LLP
Need More Information?
Please Contact:
Chuck Schmal
Woodard, Emhardt, Moriarty, McNett & Henry LLP
111 Monument Circle, Suite 3700
Indianapolis, IN 46204
(317)