So you’ve just received an international search report on your PCT application and the searching authority has stated that all the claims are lacking in novelty. Well, all’s not lost, there are opportunities for making amendments to an international patent application. It’s possible to make an amendment, to the claims only, under Article 19 of the Patent Cooperation Treaty prior to the publication of the international patent application. It’s also possible to lodge amendments to the claims, description and drawings with a Demand for International Preliminary Examination. In either case your amendments must be supported by material in the international patent application as originally filed.
If an Article 19 amendment is lodged then your amended claims will be published in the WIPO pamphlet a little over eighteen months from the priority date. My motivation for lodging an Article 19 amendment is usually to deal with issues that have been raised in the International Search Report (ISR) and Written Opinion of the International Searching Authority.
For example, the ISR may have cited prior art which is clearly anticipatory of one or more claims in the application. In that case it may be possible to make claim amendments to avoid the citations.
The procedure for making Article 19 amendments involves making a submission to WIPO which includes the amended claims along with a cover letter explaining how each amended claim finds support in the patent specification as originally lodged. It’s also possible to submit a statement explaining why the applicant believes that the amended claims are novel and inventive over any relevant prior art cited in the ISR. That statement will go on the official case dossier and be available to the national patent offices during national phase examination.
The claims as amended under Article 19 aren’t examined unless the applicant subsequently decides to lodge a Demand for International Preliminary Examination.
The two main reasons why I advise clients to consider Article 19 amendments are firstly to ensure that there are valid claims on file when the patent is published and secondly to pre-empt adverse examination reports during the national phase based on the citations that have been raised in the ISR.
Another reason for making amendments under Article 19 in some cases is to reduce the number of claims in the application prior to national phase entry. This is because some countries do not allow for a reduction in the number of claims at national phase entry even though they charge excess claim fees. Therefore, even if the ISR indicates that all of the claims are both novel and inventive it may still be a good idea to lodge Article 19 amendments simply to reduce the number of claims so that excess claim fees are avoided at the time of national phase entry.
As I mentioned at the start, apart from making claim amendments under Article 19 it is also possible to make them later under Article 34 as part of International Preliminary Examination. An advantage of International Preliminary Examination is that an Authorised Officer of the International Searching Authority will examine the claim amendments, or if no amendments are made, consider arguments in support of the application. If those amendments / arguments are successful then the International Report on Patentability will be established indicating that the claims are novel and inventive prior to the deadline for national phase entry.