MPEP § 1853 — MPEP § 1853
Current through: 2022-07-01

1853-Amendment Under PCT Article 19 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1800 

 Section 1853 
 

 
 
 
 
 
 1853 Amendment Under PCT Article 19 [R-10.2019]

 
 PCT Article 19 

 Amendment of the Claims before the
 International Bureau 

 
 (1) The applicant shall, after having received the international
 search report, be entitled to one opportunity to amend the claims of the
 international application by filing amendments with the International Bureau
 within the prescribed time limit. He may, at the same time, file a brief
 statement, as provided in the Regulations, explaining the amendments and
 indicating any impact that such amendments might have on the description and
 the drawings.
 

 (2) The amendments shall not go beyond the disclosure in the
 international application as filed.
 

 (3) If the national law of any designated State permits
 amendments to go beyond the said disclosure, failure to comply with
 paragraph (2) shall have no consequence in that State.
 

 
 

 
 PCT Rule 46 

 Amendment of Claims Before the
 International Bureau 

 
 46.1 Time Limit

 The time limit referred to in Article
 19 shall be two months from the date of transmittal of
 the international search report to the International Bureau and to the applicant
 by the International Searching Authority or 16 months from the priority date,
 whichever time limit expires later, provided that any amendment made under
 Article
 19 which is received by the International Bureau after
 the expiration of the applicable time limit shall be considered to have been
 received by that Bureau on the last day of that time limit if it reaches it
 before the technical preparations for international publication have been
 completed.
 

 

 
 46.2 Where to File

 Amendments made under Article 19 shall be filed
 directly with the International Bureau. 
 

 

 
 46.3 Language of Amendments

 If the international application has been filed in a language
 other than the language in which it is published, any amendment made under
 Article
 19 shall be in the language of publication. 
 

 

 
 46.4 Statement

 
 (a) The statement referred to in Article
 19(1) shall be in the language in which the
 international application is published and shall not exceed 500 words if
 in the English language or if translated into that language. The
 statement shall be identified as such by a heading, preferably by using
 the words “Statement under Article 19(1) ” or
 their equivalent in the language of the statement. 
 

 (b) The statement shall contain no disparaging comments on
 the international search report or the relevance of citations contained
 in that report. Reference to citations, relevant to a given claim,
 contained in the international search report may be made only in
 connection with an amendment of that claim.
 

 
 

 

 
 46.5 Form of Amendments

 
 (a) The applicant, when making amendments
 under Article 19, shall be required to submit a replacement sheet or
 sheets containing a complete set of claims in replacement of all the
 claims originally filed.
 

 (b) The replacement sheet or sheets shall be
 accompanied by a letter which:
 
 (i) shall identify the claims which,
 on account of the amendments, differ from the claims originally
 filed, and shall draw attention to the differences between the
 claims originally filed and the claims as amended;
 

 
 
 (ii) shall identify the claims
 originally filed which, on account of the amendments, are
 cancelled.
 

 
 
 (iii) shall indicate the basis for the
 amendments in the application as filed.
 

 
 

 
 

 

 
 PCT Administrative Instructions Section 205 

 Numbering and Identification of Claims
 Upon Amendment 

 
 (a) Amendments to the claims under Article
 19 or Article 34(2)(b) may be
 made either by cancelling one or more entire claims, by adding one or more
 new claims or by amending the text of one or more of the claims as filed.
 Where a claim is cancelled, no renumbering of the other claims shall be
 required. In all cases where claims are renumbered, they shall be renumbered
 consecutively in Arabic numerals.
 

 (b) The applicant shall, in the letter referred to in the
 second and third sentences of Rule 46.5(b) or
 Rule
 66.8(c) indicate the differences between the claims
 as filed and the claims as amended or, as the case may be, differences
 between the claims as previously amended and currently amended. He shall, in
 particular, indicate in the said letter, in connection with each claim
 appearing in the international application (it being understood that
 identical indications concerning several claims may be grouped),
 whether:
 
 (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;
 

 (vi) the claim replaces one or more claims
 as previously amended;
 

 (vii) the claim is the result of the
 division of a claim as previously amended
 

 
 

 
 

 The applicant is entitled, under Article 19 , to
 one opportunity to amend the claims of the international application in the
 international phase. Further opportunities to amend the claims, and also the description
 and the drawings, are available during the international phase under Article 34 if,
 and only if, the applicant files a Demand for international preliminary examination. Any
 amendment to the claims under Article 19 must be filed with the
 International Bureau – not with the receiving Office nor with the International
 Searching Authority. The amendments must be in the language in which the international
 application is published.
 

 The opportunity to make amendments under Article 19 is
 available after the applicant has received the international search report and the
 written opinion of the International Search Authority, and remains available until the
 end of 16 months from the priority date or two months after the transmittal (i.e., the
 date of mailing) of that report and opinion, whichever expires later. Amendments
 received by the International Bureau after the time limit are still accepted if they
 have been received before the technical preparations for international publication have
 been completed. Amendments to the claims under Article 19 are not allowed where
 the International Searching Authority has declared, under Article 17(2) ,
 that no international search report would be established. If the amendments to the
 claims are timely received by the International Bureau, such amendments will be
 published as part of the publication of the international application directly following
 the claims as filed. Article 19 offers applicants the opportunity to generally amend
 the claims before entering the designated Offices. The national laws of some designated
 Offices may grant provisional protection on the invention from the date of publication
 of the claims. Therefore, some applicants take advantage of the opportunity under
 Article
 19 to polish the claims anticipating provisional protection. See
 PCT Rule
 46.5 . 
 

 The submission of Article 19 amendments should
 comprise:
 

 
 (i) a complete set of claims in replacement of the
 claims originally filed
 

 (ii) a letter which must indicate the differences
 between the claims as filed and those as amended plus the basis for the
 amendments
 

 (iii) an optional statement under Article
 19 

 
 When filing amendments to the claims under
 Article
 19 , the applicant is required to file a sheet or sheets
 containing a complete set of claims in replacement of the claims originally filed. The
 replacement sheet or sheets must be accompanied by a letter drawing attention to the
 differences between the claims as filed and the claims as amended. It must also indicate
 the basis for the amendment to the claims with specific references to particular parts
 of the application as originally filed, as illustrated in the Example below. Where an
 amendment results in the cancellation of an entire sheet of the international
 application as originally filed, the amendment (i.e., the cancellation) is evidenced
 only by the letter addressed to the International Bureau. Amendments may consist in the
 cancellation of one or more entire claims, in the addition of one or more new claims, or
 in the amendment of the text of one or more of the claims as filed. All the claims
 appearing on a replacement sheet must be numbered in Arabic numerals (corresponding to
 the order of the claims). Where a claim is cancelled, no renumbering of the other claims
 is required. However, where the applicant does renumber claims, they must be renumbered
 consecutively.
 

 The letter, which must accompany the replacement sheets
 containing amendments to the claims, must indicate firstly the differences between the
 claims as filed and those as amended and secondly the basis for the amendments in the
 application as filed. This should be done by stating, in connection with each claim
 appearing in the international application, whether:
 

 
 (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.
 

 
 The replacement sheets containing the amended claims
 should not, however, contain marked-up text; they should contain clean text only. This
 should be followed by an indication of the basis for the amendments in the application
 as filed. The basis for the amendments has to be indicated so that the examiner may, by
 consulting those precise references in the application, assess whether the amendments
 contain subject-matter which extends beyond the disclosure of the application as filed.
 Therefore, non-specific indications such as “see the description as filed” or “see the
 claims as filed” are generally not considered sufficient for an indication of the basis
 for the amendment.
 

 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 the
 paragraphs numbered 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.”
 

 
 
 

 Any amendment may be accompanied by a brief statement by
 the applicant explaining the amendment and indicating any impact it might have on the
 description and the drawings. Such a statement is published together with the
 international application itself. Statements not referring to a specific amendment are
 not permitted. The statement must not exceed 500 words if in English or when translated
 into English. It may not contain disparaging comments on the international search report
 or on the relevance of any of the citations contained in that report. References to
 certain citations in the report may be made only in connection with an amendment made to
 a specific claim. The statement must be in the language in which the international
 application is published.
 

 A statement explaining the amendment is not to be confused
 with and must be clearly distinguished from the letter indicating the differences
 between the claims as filed and those as amended and the basis for the amendment. It is
 also distinct from the statement concerning amendments which must be included in a
 demand for international preliminary examination. It must therefore be identified as
 such by a heading “Statement under Article 19(1) .” Where the statement
 does not comply with the requirements, it is neither published by the International
 Bureau nor communicated to the designated Offices.
 

 The PCT provides that amendments are not to go beyond the
 disclosure in the international application as filed. This requirement is not directly
 enforceable during Chapter I of the international phase, but failure to comply with it
 may have adverse consequences for the applicant during the international preliminary
 examination and in the national phase.
 

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 1801-Basic Patent Cooperation Treaty (PCT) Principles 

 1802-PCT Definitions 

 1803-Reservations Under the PCT Taken by, and Notifications of Incompatibility Made by, the United States of America 

 1804-[Reserved] 

 1805-Where To File an International Application 

 1806-Applicants and Inventors 

 1807-Agent or Common Representative and General Power of Attorney 

 1808-Change in or Revocation of the Appointment of an Agent or a Common Representative 

 1809-Access to the USPTO patent electronic filing system 

 1810-Filing Date Requirements 

 1811-[Reserved] 

 1812-Elements of the International Application 

 1813 - 1816-[Reserved] 

 1817-PCT Member States 

 1818-[Reserved] 

 1819-Earlier Search 

 1820-Signature of Applicant 

 1821-The Request 

 1822-[Reserved] 

 1823-The Description 
 1823.01-Reference to Deposited Biological Material 

 1823.02-Filing Nucleotide and/or Amino Acid Sequence Listings in International Applications 

 
 

 1824-The Claims 

 1825-The Drawings 

 1826-The Abstract 

 1827-Fees 
 1827.01-Refund of International Application Fees 

 
 

 1828-Priority Claim and Document 
 1828.01-Restoration of the Right of Priority 

 1828.02-Continuation or Continuation-in-Part Indication in the Request 

 
 

 1829-[Reserved] 

 1830-International Application Transmittal Letter 

 1831-[Reserved] 

 1832-License Request for Foreign Filing Under the PCT 

 1833-[Reserved] 

 1834-Correspondence 
 1834.01-Filing of Correspondence by Facsimile 

 1834.02-Irregularities in the Mail or Electronic Communications Service 

 
 

 1835-[Reserved] 

 1836-Rectification of Obvious Mistakes 

 1837 - 1839-[Reserved] 

 1840-The International Searching Authority 
 1840.01-The European Patent Office as an International Searching Authority 

 1840.02-The Korean Intellectual Property Office as an International Searching Authority 

 1840.03-The Australian Patent Office (IP Australia) as an International Searching Authority 

 1840.04-[Reserved] 

 1840.05-The Israel Patent Office (ILPO) as an International Searching Authority 

 1840.06-The Japan Patent Office (JPO) as an International Searching Authority 

 1840.07-The Intellectual Property Office of Singapore (IPOS) as an International Searching Authority 

 
 

 1841-[Reserved] 

 1842-Basic Flow Under the PCT 

 1843-The International Search 
 1843.01-Prior Art for Chapter I Processing 

 1843.02-Certain Subject Matter Need Not Be Searched 

 1843.03-No Search Required if Claims Are Unclear 

 1843.04-Procedure for Claims Not Required To Be Searched and for Claims That Are Unclear 

 1843.05-Time Limit for Establishing the International Search Report and the Written Opinion of the International Searching Authority 

 
 

 1844-The International Search Report 
 1844.01-Preparing the International Search Report (Form PCT/ISA/210) 

 
 

 1845-Written Opinion of the International Searching Authority 
 1845.01-Preparing the Written Opinion of the International Searching Authority (Form PCT/ISA/237) 

 1845.02-Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority,
 or the Declaration (Form PCT/ISA/220) 

 
 

 1846 - 1847-[Reserved] 

 1848-Sequence Listings 

 1849-[Reserved] 

 1850-Unity of Invention Before the International Searching Authority 

 1851-Identification of Patent Documents 

 1852-Taking Into Account Results of Earlier Search(es) 

 1853-Amendment Under PCT Article 19 

 1854 - 1855-[Reserved] 

 1856-Supplementary International Searches 

 1857-International Publication 

 1858-[Reserved] 

 1859-Withdrawal of International Application, Designations, or Priority Claims 

 1860-International Preliminary Examination Procedure 

 1861-[Reserved] 

 1862-Agreement With the International Bureau To Serve as an International Preliminary Examining Authority 

 1863-[Reserved] 

 1864-The Demand and Preparation for Filing of Demand 
 1864.01-Amendments Filed Under PCT Article 34 

 1864.02-Applicant’s Right To File a Demand 

 1864.03-States Which May Be Elected 

 1864.04-Agent’s Right To Act 

 
 

 1865-Filing of Demand 

 1866-[Reserved] 

 1867-Preliminary Examination Fees 

 1868-Correction of Defects in the Demand 

 1869-Notification to International Bureau of Demand 

 1870-Priority Document and Translation Thereof 

 1871-Processing Amendments Filed Under Article 19 and Article 34 Prior to or at the Start of International Preliminary Examination 

 1872-Availability of the International Application File for International Preliminary Examination by the Examining Corps 

 1873-[Reserved] 

 1874-Determination if International Preliminary Examination Is Required and Possible 

 1875-Unity of Invention Before the International Preliminary Examining Authority 
 1875.01-Preparation of Invitation Concerning Unity 

 1875.02-Reply to Invitation Concerning Lack of Unity of Invention 

 
 

 1876-Notation of Errors and Informalities by the Examiner 
 1876.01-Request for Rectification and Notification of Action Thereon 

 
 

 1877-Nucleotide and/or Amino Acid Sequence Listings During the International Preliminary Examination 

 1878-Preparation of the Written Opinion of the International Preliminary Examining Authority 
 1878.01-Includes Subsections Regarding Prior Art, Novelty, Inventive Step, and Industrial Applicability for Purposes of the Written
 Opinion and the International Preliminary Examination Report 
 1878.01(a)-Prior Art for Purposes of the Written Opinion and the International Preliminary Examination Report 
 1878.01(a)(1)-Novelty for Purposes of the Written Opinion and the International Preliminary Examination Report 

 1878.01(a)(2)-Inventive Step for Purposes of the Written Opinion and the International Preliminary Examination Report 

 1878.01(a)(3)-Industrial Applicability for Purposes of the Written Opinion and the International Preliminary Examination Report 

 
 

 
 

 1878.02-Reply to the Written Opinion of the ISA or IPEA 

 
 

 1879-Preparation of the International Preliminary Examination Report 
 1879.01-Time Limit for Preparing Report 

 1879.02-Transmittal of the International Preliminary Examination Report and Related Documents 

 1879.03-Translations 

 1879.04-Confidential Nature of the Report 

 
 

 1880-Withdrawal of Demand or Election 

 1881-Receipt of Notice of Election and Preliminary Examination Report by the United States Patent and Trademark Office 

 1882 - 1892-[Reserved] 

 1893-National Stage (U.S. National Application Filed Under 35 U.S.C. 371) 
 1893.01-Commencement and Entry 
 1893.01(a)-Entry via the U.S. Designated or Elected Office 
 1893.01(a)(1)-Submissions Required by 30 Months from the Priority Date 

 1893.01(a)(2)-Article 19 Amendment (Filed With the International Bureau) 

 1893.01(a)(3)-Article 34 Amendments (Filed with the International Preliminary Examining Authority) 

 1893.01(a)(4)-Claim Amendment (Filed With the U.S. Designated or Elected Office) 

 
 

 1893.01(b)-Applicant for a U.S. National Stage Application 

 1893.01(c)-Fees 

 1893.01(d)-Translation 

 1893.01(e)-Inventor’s Oath or Declaration 

 
 

 1893.02-Abandonment 

 1893.03-Prosecution of U.S. National Stage Applications Before the Examiner 
 1893.03(a)-How To Identify That an Application Is a U.S. National Stage Application 

 1893.03(b)-The Filing Date of a U.S. National Stage Application 

 1893.03(c)-The Priority Date, Priority Claim, and Priority Papers for a U.S. National Stage Application 

 1893.03(d)-Unity of Invention 

 1893.03(e)-Documents Received from the International Bureau and Placed in a U.S. National Stage Application File 
 1893.03(e)(1)-Title of the Invention 

 
 

 1893.03(f)-Drawings and PCT Rule 11 

 1893.03(g)-Information Disclosure Statement in a National Stage Application 

 
 

 
 

 1894-[Reserved] 

 1895-A Continuation, Divisional, or Continuation- in- Part Application of a PCT Application Designating the United States 
 1895.01-Handling of and Considerations in the Handling of Continuations, Divisions, and Continuations-In-Part of PCT Applications 

 
 

 1896-The Differences Between a National Application Filed Under 35 U.S.C. 111(a) and a National Stage Application Submitted Under
 35 U.S.C. 371 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:29