2. Corrections/Amendments and Priority/Benefit Claims in International and National Stage Applications
Susan C. Wolski PCT Special Programs Examiner
International Patent Legal Administration

3. Overview Correction of an International Application
Incorporation by Reference
Rectification of Obvious Mistakes
Amendment of an International Application
PCT Articles 19 and 34
Effect of correction/amendment in national stage
Claim for foreign priority or benefit of earlier U.S. filing date
Restoration of the right of priority
Certified copy of foreign application
Corrected line spacing
Sep 2015

4. Correction/Amendment of an International Application (IA) During International Stage
Correction of an IA in the International Stage is possible by
Incorporation by Reference
Rectification of Obvious Mistakes
Amendment of an IA not possible prior to issuance of the
International Search Report (ISR) and
Written Opinion of the International Searching Authority (WOISA)
Sep 2015

5. Incorporation By Reference
Legal Secretaries and Administrators Conference
Incorporation By Reference
Objective
Inclusion of omitted elements or parts contained in a priority application without affecting the international filing date
Conditions
Priority claim to an earlier application on the date on which one or more Article 11(1)(iii) elements were first received
Earlier application completely contains the element or part
Request contains statement of (conditional) incorporation by reference
Timely confirmation of incorporation by reference
2 months from issuance of either form PCT/RO/103 or PCT/RO/107 OR
2 months from date of first receipt of any Article 11(1)(iii) element
where no forms RO/103 or RO/107 were issued
Sep 2015
December 2014, International Patent Legal Administration, USPTO

6. Decision on Incorporation by Reference
Competent Authority – receiving Office (RO)
Where requirements are met
Element or part is considered to have been contained in the IA
On the date on which one or more Article 11(1)(iii) elements were first received
Sheets are marked “INCORPORATED BY REFERENCE (RULE 20.6)”
Sheets are published as part of the IA
See PCT Rules 20.6 and 20.7
Sep 2015

7. Effect of Incorporation by Reference in the National Stage
Legal Secretaries and Administrators Conference
Effect of Incorporation by Reference in the National Stage
Designated/Elected Offices (DO/EOs) may
Review the decision allowing the incorporation by reference, to a limited extent
Declarations of incompatibility with the national law (reservations)
Are in effect for a number of ROs (PCT Rule 20.8(a)) and DO/EOs (PCT Rule 20.8(b))
See the WIPO Web site at:
DO/EO/US has not taken a reservation
Incorporation by reference is effective in U.S. National Stage
Sep 2015
December 2014, International Patent Legal Administration, USPTO

8. Rectification of Obvious Mistakes During Chapter I - Description, Claims, or Drawings
An obvious mistake in an IA may be rectified under PCT Rule 91
Rectification of a mistake in the description, claims or drawings during Chapter I is authorized by the ISA
The abstract cannot be rectified, since it is established by the ISA
Rectification shall be authorized if
It is obvious to the ISA that, as of the international filing date
Something else was intended than what appears in the document concerned, and
Nothing else could have been intended than the proposed rectification
Sep 2015

9. Decision Authorizing Request for Rectification in International Stage
Where Rectification of the description, claims, or drawings is authorized during Chapter I
Form PCT/ISA/217 is mailed to Applicant
Form PCT/ISA/217, any accompanying letter, and any replacement sheets are transmitted to the IB and the RO
Rectified sheets are
Marked by the ISA with
The international application number and sheet receipt date
“RECTIFIED SHEET (RULE 91)”
Published as part of the IA
Accompanying letter is marked with the date of receipt
Sep 2015

10. Decision Refusing Request for Rectification in International Stage
Where rectification of the description, claims, or drawings is refused during Chapter I
Form PCT/ISA/217 is mailed to Applicant
Form PCT/ISA/217, any accompanying letter, and any replacement sheets are transmitted to the IB and the RO
Proposed replacement sheets are
Marked with international application number and sheet receipt date
Not published as part of the IA
Accompanying letter is marked
With the date of receipt
Applicant may pay a special fee and request publication by the IB of
Request for rectification
Reasons for refusal by the authority
Any further brief comments by applicant
Sep 2015

11. Effect of Rectification in the National Stage
Any designated Office need not take rectification into account
Where processing or examination of the IA has already started prior to date of notification
See PCT Rule 91.3(e)
A designated Office may disregard authorized rectification only
If it finds it would not have authorized the rectification if it had been the competent authority
Must provide applicant an opportunity to make observations within a reasonable time limit
See PCT Rule 91.3(f)
Sep 2015

12. Chapter I Claim Amendment - Article 19
Legal Secretaries and Administrators Conference
Chapter I Claim Amendment - Article 19
During Chapter I, only the claims can be amended
Article 19 – complete set of claims required
Sheets should be numbered following the last sheet of original claims
Must be filed directly with the IB (Rule 46.2) within the later of
2 months from the date of transmittal of the ISR & WOISA
16 months from the priority date (Rule 46.1)
May be uploaded to ePCT -
Must not go beyond the disclosure of the IA as filed (Article 19(2))
Shall be accompanied by a letter which
Identifies amended claims and the differences from the original claims
Identifies canceled claims
The basis for the amendments in the application as filed
Sep 2015
December 2014, International Patent Legal Administration, USPTO

13. Article 19 Claim Amendment – Brief Statement and Publication
Legal Secretaries and Administrators Conference
Article 19 Claim Amendment – Brief Statement and Publication
Applicant may file a brief statement
See Article 19(1), Rule 46.4
Explaining the amendments
Indicating any impact that amendments may have on the description and the drawings
Publication contains
Originally-filed claims and amended claims
Statement
See Rule 48.2(f)
Sep 2015
December 2014, International Patent Legal Administration, USPTO

14. Article 19 Claim Amendment - Purpose
Legal Secretaries and Administrators Conference
Article 19 Claim Amendment - Purpose
May be used to obtain provisional protection
Provisional rights accrue upon grant of a patent, where available
Reasonable royalties may be obtained from the time of publication, where
The invention claimed in the patent is substantially identical to the invention claimed in the published application
National laws may require additional acts to assert provisional rights
Amended claims may be in better condition for national stage examination
By reducing overall prosecution issues
Sep 2015
December 2014, International Patent Legal Administration, USPTO

15. Chapter II Amendment - Article 34
Legal Secretaries and Administrators Conference
Chapter II Amendment - Article 34
Article 34 amendments
Can be made to the description, claims and drawings
The abstract cannot be amended, since it is established by the ISA
Should be filed with the Demand or within the PCT Rule 54bis time period
May be a response to the WOISA
Entry of amendments filed at other times
Is at the discretion of the International Preliminary Examination Authority (IPEA)
Sep 2015
December 2014, International Patent Legal Administration, USPTO

16. Legal Secretaries and Administrators Conference
Article 34 Amendments
For description or drawing amendments - must submit
Replacement sheet for every sheet that differs from the prior sheet
For claim amendments – must submit
A complete replacement set of claims
Clean copy - no underlining, bracketing, or status identifiers
For description, drawing, or claim amendments - must submit a letter that
Draws attention to changes made
Indicates the basis for the amendment in the IA as filed
Preferably explains the reasons for the amendment
Failure to provide the letter may result in non-consideration of the amendment by the IPEA (Rule 70.2(c-bis))
Annexed to International Preliminary Report on Patentability (Ch II)
See Rule 66.8
Sep 2015
December 2014, International Patent Legal Administration, USPTO

17. Amendments in U.S. National Stage
New matter is determined as of the International Filing Date (IFD)
Based on the published IA or an English translation
Article 19/34 amendments are usually entered
Upon 371 entry, when in English
As originally provided or as translated
Canceled if translation not timely submitted
May request non-entry of amendments
Preliminary amendments under 37 CFR may be
Made in lieu of Article 19/34 amendment translation
Used to incorporate further changes to Article 19/34 amendments
Sep 2015

18. Priority Claims in the International Stage
Legal Secretaries and Administrators Conference
Priority Claims in the International Stage
The conditions for and effect of any priority claim are
Governed by Article 4 of the Paris Convention
The priority claim is made
In Box No. VI of the Request
Sep 2015
December 2014, International Patent Legal Administration, USPTO

19. Continuation (CON)/Continuation-in-part (CIP)
Legal Secretaries and Administrators Conference
Continuation (CON)/Continuation-in-part (CIP)
If the IA should be treated in the United States as a
CON or CIP of an earlier U.S. application
The earlier application number, filing date and relationship must be provided in the
Conventional Request (PCT/RO/101) - Supplemental Box OR
PCT Safe Request - Designations section
Allows indication of only one earlier application
Others may be furnished as recommended in the PCT Newsletter (12/2011) Practical Advice –
Sep 2015
December 2014, International Patent Legal Administration, USPTO

20. Certified Copy of Earlier Application
May request RO/US to prepare/transmit
When the earlier application was filed in the USPTO
May request IB to obtain
When the earlier application was filed in a participating WIPO Digital Access Service (DAS) depositing Office
Where certain conditions have been met
Sep 2015

21. Legal Secretaries and Administrators Conference
Priority Period
The period of 12 months
From the filing date of the earlier application to which priority is claimed
The day of filing of the earlier application is not included in that period
The IA should be filed within the priority period
Sep 2015
December 2014, International Patent Legal Administration, USPTO

22. Restoration of the Right of Priority
Legal Secretaries and Administrators Conference
Restoration of the Right of Priority
Objective
Allow a priority claim to an earlier application
Where the IA is not filed within the priority period
Eligibility
IA must have an international filing date that is
Later than the date on which the priority period expired, but
Within 2 months of the expiration of the priority period
Sep 2015
December 2014, International Patent Legal Administration, USPTO

23. Conditions for Restoration of the Right of Priority
Request for restoration must
State the criterion for restoration
In spite of due care or unintentional
Be filed with the RO within 2 months from the priority period expiration
State reasons for failure to file within the priority period
Preferably accompanied by any declaration or other evidence
May be subject to a fee by the RO
Sep 2015

24. Request for Restoration of Priority
Legal Secretaries and Administrators Conference
Request for Restoration of Priority
RO/US only applies the unintentional criterion (37 CFR 1.452)
Subject to a fee
Some DO/EOs apply only the due care criterion
An IA may be filed in RO/IB
To request restoration under the due care criterion
Due care restoration effective in all DOs where compatible with national law (PCT Rule 49ter.1)
Foreign filing license issues must be resolved prior to filing
Restoration not subject to a fee by RO/IB
Declarations of incompatibility with national law (reservations)
Are in effect for a number of ROs (PCT Rule 49ter.1(g)) and DO/EOs (PCT Rule 49ter.2(h))
See the WIPO Web site at:
Sep 2015
December 2014, International Patent Legal Administration, USPTO

25. Restoration of the Right of Priority in DO/EO/US
Effective in DO/EO/US since 18 Dec 2013
When PLT provisions of Patent Law Treaties Implementation Act of 2012 went into effect
Restoration by any RO in international stage
Is effective in U.S. national stage
Regardless of restoration criterion
Form PCT/RO/159 (in IFW) indicates restoration in IA
May request restoration in U.S. national stage
For the first time or due to international stage refusal
Delay must have been unintentional
Priority to a foreign application – 37 CFR 1.55(c)
Domestic benefit to a U.S. provisional application – 37 CFR 1.78(b)
Subject to a fee
Petition decision in IFW
Sep 2015

26. Claim for Foreign Priority in U.S. National Stage
Right of Priority (35 U.S.C. 119(a), 35 U.S.C. 365(b), and 37 CFR 1.55)
Prior foreign application
Prior IA designating at least one country other than the United States
Claim must identify application number, country or IP authority, and filing date
Must be indicated in one of
ADS
First page of published IA
PCT Request
May be added during U.S. national stage
Where delay was unintentional
By grantable petition under 37 CFR 1.55(e)
Sep 2015

27. Certified Copy of Foreign Application in U. S
Certified Copy of Foreign Application in U.S. National Stage Applications
Certified copy required
IB provides copy to DO/EO/US
If timely filed in international stage
This copy satisfies 37 CFR 1.55(a)(2)
Notice of Acceptance indicates receipt
Applicant should verify
If certified copy not filed in international stage
Applicant may provide in national stage
Time limit - See 37 CFR 1.55(f)(2) if commencement is on/after 18 Dec 2013
May be able to request retrieval through PDX or DAS
Once the priority claim and certified copy are timely received
The examiner in the next Office Action will
Acknowledge the claim for foreign priority
Indicate receipt/non-receipt of certified copy
using the Office Action Summary or form paragraph 2.26
Sep 2015

28. Claiming Benefit of an Earlier U.S. Filing Date in U.S. National Stage
U.S. National Stage application must
Contain or be amended to contain a reference to the earlier-filed application(s) - 37 CFR 1.78
Provisional application under 35 U.S.C. 119(e)
Provisional application number
Nonprovisional application under 35 U.S.C. 120
Nonprovisional application number and its relationship (e.g., CON, CIP, DIV) to the later-filed international application
Earlier-filed international application in which United States was designated, under 35 U.S.C. 365(c) and 35 U.S.C. 120
International application number, its international filing date, and its relationship (e.g., CON, CIP, DIV) to the later-filed international application
Sep 2015

29. Reference to an Earlier U.S. Filing Date
Must be contained in U.S. National Stage
Where IFD before 16 Sep 2012, in either
An ADS, or
The first sentence of the specification
Where the IFD is on/after 16 Sep 2012, in one of
An ADS
First page of the published IA
PCT Request
Must be provided in U.S. National Stage within the later of
4 months from commencement under 35 U.S.C. 371 (b) or (f)
16 months from the earlier filing date
Can be added later
Only by grantable petition for unintentionally delayed benefit claim
37 CFR 1.78
Sep 2015

30. PCT Help desk
Call
Staffed Monday – Friday, 8:30 am – 5:00 pm
Sep 2015

31. Thank You! Susan Wolski PCT Special Programs Examiner
International Patent Legal Administration
Sep 2015