MPEP § 1871 — MPEP § 1871
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1800 

 Section 1871 
 

 
 
 
 
 
 1871 Processing Amendments Filed Under Article 19 and Article 34
 Prior to or at the Start of International Preliminary Examination [R-01.2024]
 

 
 PCT Rule 62 

 Copy of the Written Opinion by the
 International Searching Authority and of Amendments Under Article 19 for the
 International Preliminary Examining Authority 

 
 62.1 Copy of Written Opinion by International Searching
 Authority and of Amendments Made Before the Demand Is Filed
 

 Upon receipt of a demand, or a copy thereof, from the
 International Preliminary Examining Authority, the International Bureau shall
 promptly transmit to that Authority:
 

 
 (i) a copy of the written opinion established under
 Rule 43bis.1 , unless the
 national Office or intergovernmental organization that acted as
 International Searching Authority is also acting as International
 Preliminary Examining Authority; and
 

 (ii) a copy of any amendment under Article
 19 , and any statement referred to in that
 Article, and the letter required under Rule
 46.5(b) , unless that Authority has indicated that
 it has already received such a copy.
 

 
 

 

 
 62.2 Amendments Made After the Demand Is
 Filed
 

 If, at the time of filing any amendments under Article
 19 , a demand has already been submitted, the applicant
 shall preferably, at the same time as he files the amendments with the
 International Bureau, also file with the International Preliminary Examining
 Authority a copy of such amendments, and any statement referred to in that
 Article and the letter required under Rule
 46.5(b) . In any case, the International Bureau shall
 promptly transmit a copy of such amendments, statement and letter to that
 Authority.
 

 

 

 
 PCT Rule 62bis 

 Translation for the International
 Preliminary Examining Authority of the Written Opinion of the International
 Searching Authority 

 
 62 bis .1 Translation and Observations
 

 

 
 (a) Upon request of the International Preliminary Examining
 Authority, the written opinion established under Rule
 43bis.1 shall, when not in
 English or in a language accepted by that Authority, be translated into
 English by or under the responsibility of the International Bureau.
 

 (b) The International Bureau shall transmit a copy of the
 translation to the International Preliminary Examining Authority within two
 months from the date of receipt of the request for translation, and shall at
 the same time transmit a copy to the applicant.
 

 (c) The applicant may make written observations as to the
 correctness of the translation and shall send a copy of the observations to
 the International Preliminary Examining Authority and to the International
 Bureau.
 

 
 

 
 PCT Rule 66 

 Procedure before the International
 Preliminary Examining Authority 

 
 66.8 Form of Amendments

 
 (a) Subject to paragraph (b), when amending
 the description or the drawings, the applicant shall be required to
 submit a replacement sheet for every sheet of the international
 application which, on account of an amendment, differs from the sheet
 previously filed. The replacement sheet or sheets shall be accompanied
 by a letter which shall draw attention to the differences between the
 replaced sheets and the replacement sheets, shall indicate the basis for
 the amendment in the application as filed and shall preferably also
 explain the reasons for the amendment.
 

 (b) Where the amendment consists in the
 deletion of passages or in minor alterations or additions, the
 replacement sheet referred to in paragraph (a) may be a copy of the
 relevant sheet of the international application containing the
 alterations or additions, provided that the clarity and direct
 reproducibility of that sheet are not adversely affected. To the extent
 that any amendment results in the cancellation of an entire sheet, that
 amendment shall be communicated in a letter which shall preferably also
 explain the reasons for the amendment.
 

 (c) When amending the claims, Rule
 46.5 shall apply mutatis
 mutandis . The set of claims submitted under
 Rule 46.5 as applicable by virtue of this
 paragraph shall replace all the claims originally filed or previously
 amended under Articles 19 or
 34 , as the case may be.
 

 
 

 

 The documents making up the international application may include
 amendments of the claims filed by the applicant under PCT Article 19 .
 Article
 19 amendments are exclusively amendments to the claims and these
 amendments can only be made after the international search report has been established.
 Article
 19 amendments, any statement referred to in that Article, and the
 letter required under PCT Rule 46.5(b) will be
 transmitted to the International Preliminary Examining Authority (IPEA) by the
 International Bureau unless that Authority has indicated that it has already received
 such a copy. The International Bureau marks, in the upper right-hand corner of each
 replacement sheet submitted under PCT Article 19 , the international
 application number, the date on which that sheet was received under PCT Article 19 
 and, in the middle of the bottom margin, the words 
 "AMENDED SHEET (ARTICLE 19)."
 
 
 Where a demand for international
 preliminary examination has been submitted to the IPEA/US and a copy of the
 PCT Article
 19 amendments has not yet been received from the IB, applicant
 may consider filing a copy directly with the IPEA/US. If the copy of the
 PCT Article
 19 amendments has not been stamped as “AMENDED SHEET (ARTICLE
 19)” by the IB, the IPEA/US will treat the unstamped copy as an amendment under
 PCT Article
 34 . 
 

 The IPEA starts the international preliminary examination when it is in
 possession of the demand; the required fees; if the applicant is required to furnish a
 translation under PCT
 Rule 55.2 , that translation; either the international search
 report or a notice of the declaration by the International Searching Authority under
 PCT Article
 17(2)(a) that no international search report will be established;
 and the written opinion established under PCT Rule
 43bis.1 , unless the applicant expressly requests
 to postpone the start of the international preliminary examination until the expiration
 of the later of three months from the transmittal of the international search report, or
 declaration that no international search report will be established, and written
 opinion; or the expiration of 22 months from the priority date, with the exception of
 the following situations:
 

 
 (A) If the competent IPEA is part of the same national Office or
 intergovernmental organization as the competent International Searching
 Authority, the international preliminary examination may, if the IPEA so wishes,
 start at the same time as the international search, provided that the
 examination is not to be postponed according to the statement concerning
 PCT
 Article 19 amendments ( PCT Rule
 53.9(b) ); 
 

 (B) Where the statement concerning amendments contains an
 indication that amendments made with the International Bureau under
 PCT
 Article 19 are to be taken into account
 ( PCT Rule
 53.9(a)(i) ), the IPEA does not start the international
 preliminary examination before it has received a copy of the amendments
 concerned, any statement referred to in that Article and the letter required
 under PCT Rule 46.5(b) . These
 will be transmitted to the IPEA by the International Bureau. The applicant
 should preferably, at the time the applicant files the demand, also file a copy
 of the amendments, any statement referred to in that Article and the letter
 required under PCT Rule 46.5(b) with the
 IPEA;
 

 (C) Where the statement concerning amendments contains an
 indication that the start of the international preliminary examination is to be
 postponed ( PCT
 Rule 53.9(b) ), the IPEA does not start the international
 preliminary examination before:
 
 (1) it has received a copy of any amendments made under
 PCT Article 19 , any statement referred to in
 that Article and the letter required under Rule
 46.5(b) ; 
 

 (2) it has received a notice from the applicant that the
 applicant does not wish to make amendments under PCT Article
 19 ; or 
 

 (3) the later of two months from the transmittal of the
 international search report or the expiration of 16 months from the
 priority date;
 

 
 
 

 

 whichever occurs first; and

 

 (D) Where the statement concerning amendments contains an
 indication that amendments under PCT Article 34 are
 submitted with the demand ( PCT Rule 53.9(c) ) but no
 such amendments are, in fact, submitted, the IPEA does not start the
 international preliminary examination before it has received the amendments or
 before the time limit fixed in the invitation referred to in PCT Rule
 60.1(g) has expired, whichever occurs first.
 

 
 The applicant has the right to amend the claims, the description, and
 the drawings, in the prescribed manner and before the start of international preliminary
 examination. The amendment must not go beyond the disclosure in the international
 application as filed. These amendments are referred to as PCT Article
 34(2)(b) amendments. It should be noted that PCT Article 19 
 amendments are strictly amendments to the claims made during the Chapter I search phase
 while PCT Article
 34(2)(b) amendments to the description, claims, and drawings are
 made during the Chapter II examination phase.
 

 When amendments to the description or drawings are made under
 PCT Rule
 66.8 , the applicant shall be required to submit a replacement
 sheet for every sheet of the international application which, on account of an
 amendment, differs from the sheet previously filed. The replacement sheet or sheets
 shall be accompanied by a letter which shall draw attention to the differences between
 the replaced sheets and the replacement sheets, shall indicate the basis for the
 amendment in the application as filed and shall preferably also explain the reasons for
 the amendment. When amendments to the claims are made under PCT Rule 66.8 ,
 the applicant shall be required to submit a replacement sheet or sheets containing a
 complete set of claims in replacement of all the claims originally filed or previously
 amended under Articles
 19 or 34 , as the case may be. The
 replacement sheet or sheets must be accompanied by a letter that identifies the claims
 which, on account of the amendments, differ from the claims originally filed, and shall
 (A) draw attention to the differences between the claims originally filed and the claims
 as amended, (B) identify the claims originally filed which, on account of the
 amendments, are cancelled, and (C) indicate the basis for the amendments in the
 application as filed. These amendments may have been submitted to avoid possible
 objections as to lack of novelty or lack of inventive step in view of the citations
 listed in the international search report and the observations on novelty, inventive
 step, and industrial applicability set forth in the written opinion established by the
 International Searching Authority; to meet any objections noted by the International
 Searching Authority under PCT Article 17(2)(a)(ii) (i.e.,
 that all or at least some claims do not permit a meaningful search) or under
 PCT Rule
 13 (i.e., that there is a lack of unity of invention); or to meet
 objections that may be raised for some other reason, e.g., to remedy some obscurity
 which the applicant has noted in the original documents. 
 

 The amendments are made by the applicant of the applicant’s own
 volition. This means that the applicant is not restricted to amendments necessary to
 remedy a defect in the international application. It does not, however, mean that the
 applicant should be regarded as free to amend in any way the applicant chooses. Any
 amendment must not add subject matter which goes beyond the disclosure of the
 international application as originally filed. Furthermore, it should not itself cause
 the international application as amended to be objectionable under the PCT, e.g., the
 amendment should not introduce obscurity.
 

 As a matter of policy and to ensure consistency in handling amendments
 filed under Articles
 19 and 34 of the PCT, the following
 guidelines for processing these amendments have been established: 
 

 
 (A) Any argument or amendment which complies with 37 CFR
 1.485 will be considered;
 

 (B) Amendments filed after the demand:
 
 (1) will be considered if filed before the
 expiration of the applicable time limit under PCT Rule
 54bis.1(a) which is the
 later of: 
 
 (a) three months from the transmittal
 of either the international search report or a notice of the
 declaration by the International Searching Authority under
 PCT Article
 17(2)(a) that no international search
 report will be established, and the written opinion established
 under PCT Rule
 43bis.1 ; or
 

 (b) the expiration of 22 months from
 the priority date.
 

 
 
 

 

 Note however, that if applicant did not
 expressly request to postpone the start of the international preliminary
 examination until the expiration of the time limit under
 PCT Rule 54bis.1(a) , then the
 examiner is not required to consider the post-Demand amendment, even if
 such amendment is filed before the expiration of the applicable time
 limit under PCT Rule
 54bis.1(a) .
 

 

 (2) will be considered if filed before the application is
 docketed to the examiner. To ascertain if the application has been
 docketed to the examiner, check the USPTO patent electronic filing
 system or contact the PCT Help Desk. See MPEP §
 1730 , subsection III.
 

 (3) may be considered if filed after docketing. The examiner
 has discretion to consider such amendments if the examiner determines
 that the amendment places the application in better condition for
 examination or the examiner determines that the amendment should
 otherwise be entered.
 

 
 

 (C) Amendments and/or arguments filed after expiration of the period
 for response to the written opinion:
 
 (1) will be considered if the amendment was requested by the
 examiner,
 

 (2) need not be taken into account for the purposes of a
 further written opinion or the international preliminary examination
 report if they are received after the examiner has begun to draw up that
 opinion or report. The applicant may file an amendment to the
 description, the claims and the drawings in the prescribed manner, even
 if this is outside the time period set for reply in PCT Rule
 66.2(d) . Since the examiner may begin to draw up
 the final report once the time period set for reply in PCT Rule
 66.2(d) expires, amendments filed after the
 expiration of the time period set in for reply in PCT Rule
 66.2(d) may or may not be considered. There may
 be situations where it is advisable, to the extent possible, to take
 such amendments or arguments into account, for example, where the
 international preliminary examination report has not yet been completed
 and it is readily apparent to the examiner that consideration of the
 late-filed response would result in the issuance of a favorable
 report.
 

 
 

 
 It is expected, due to the relatively short time period for completion
 of preliminary examination, that the Chapter II application will be taken up promptly
 after docketing to the examiner for preparation of either a further written opinion, if
 necessary, or the international preliminary examination report (Form PCT/IPEA/409).
 

 Amendments timely filed but misdirected or otherwise late reaching the
 examiner will be considered as in the case of regular domestic applications and may
 require a supplemental written opinion and/or international preliminary examination
 report.
 

 Clearly, these guidelines offer the examiner flexibility. The examiner
 should be guided by the overriding principle that the international preliminary
 examination report should be established with as few written opinions as possible and
 resolution of as many issues as possible consistent with the goal of a timely and
 quality report. 
 

 See also Administrative Instructions Section 602 regarding
 processing of amendments by the IPEA.
 

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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 20:50:37