MPEP § 1878.02 — Reply to the Written Opinion of the ISA or IPEA (Annotated Rules)

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

USPTO MPEP version: BlueIron's Update: 2025-12-31

This page consolidates and annotates all enforceable requirements under MPEP § 1878.02, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.

Reply to the Written Opinion of the ISA or IPEA

This section addresses Reply to the Written Opinion of the ISA or IPEA. Primary authority: 37 CFR 1.484(b), 37 CFR 1.485, and 37 CFR 1.484(d). Contains: 8 requirements, 1 prohibition, 1 guidance statement, 6 permissions, and 7 other statements.

Key Rules

Topic

Article 19 Amendment Scope

8 rules
StatutoryRequiredAlways
[mpep-1878-02-1845e811c15916e36fa95359]
Replacement Sheets Must Accompany Description and Drawing Amendments
Note:
Applicants must submit replacement sheets for any sheet of the international application that differs due to amendments, along with a letter highlighting the changes.

(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.

Jump to MPEP SourceArticle 19 Amendment ScopeStatement Under Article 19PCT Description Requirements
StatutoryRequiredAlways
[mpep-1878-02-39b9cab8abaac5d8ab7bf33c]
Replacement Sheets Must Accompany Letter Explaining Differences
Note:
When amending the description or drawings, a replacement sheet must be accompanied by a letter highlighting differences and providing the basis for the amendment in the original application.

(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.

Jump to MPEP SourceArticle 19 Amendment ScopeStatement Under Article 19Request Content and Form
StatutoryPermittedAlways
[mpep-1878-02-2bc49d8d4b5ff746d2589676]
Amendment Replacement Sheet May Contain Minor Changes
Note:
The replacement sheet for minor amendments can be a copy of the original sheet if it remains clear and reproducible.

(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.

Jump to MPEP SourceArticle 19 Amendment ScopeStatement Under Article 19PCT Article 19 Amendments
StatutoryInformativeAlways
[mpep-1878-02-449a87d95426e4ae9e01392f]
Amendments Must Rectify Obvious Mistakes Only
Note:
Applicant may only amend the claims, description, or drawings to correct obvious mistakes; cancellation of claims or omission of passages is not permitted.

Any change, other than the rectification of obvious mistakes in the claims, the description, or the drawings, including the cancellation of claims, omission of passages in the description or omission of certain drawings will be considered an amendment (PCT Rule 66.5). The Patent and Trademark Office when acting as the International Preliminary Examining Authority will not accept any non-English applications or amendments.

Jump to MPEP Source · 37 CFR 1.485Article 19 Amendment ScopeStatement Under Article 19PCT Description Requirements
StatutoryRequiredAlways
[mpep-1878-02-eb52a1dc69c20b2fffe0e1ec]
Claims Must Be Replaced Entirely on Reply to Written Opinion
Note:
When responding to a written opinion, all claims must be replaced with a complete set of new claims instead of making partial amendments.

Any amendment to the claims in reply to a written opinion must be made by submitting 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 in accordance with PCT Rule 66.8. 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.

Jump to MPEP Source · 37 CFR 1.485Article 19 Amendment ScopeStatement Under Article 19Amendments in National Stage
StatutoryRequiredAlways
[mpep-1878-02-bc7af6c1b22c5233000b48c5]
Letter Required for Claim Amendments During PCT Examination
Note:
A letter must accompany replacement claim sheets, identifying amended claims, cancelled claims, and the basis for amendments as per the application filed.

Any amendment to the claims in reply to a written opinion must be made by submitting 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 in accordance with PCT Rule 66.8. 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.

Jump to MPEP Source · 37 CFR 1.485Article 19 Amendment ScopePCT Article 19 AmendmentsArticle 34 Amendments
StatutoryRequiredAlways
[mpep-1878-02-2a04009eb3597e9ed1792b22]
Amendment Cancelling Entire Sheet Must Be Submitted as Letter
Note:
When an amendment cancels claims, passages in the description, or certain drawings resulting in the cancellation of an entire sheet, it must be submitted in the form of a letter cancelling the sheet.

In the particular case where the amendment cancels claims, passages in the description or certain drawings resulting in the cancellation of an entire sheet, the amendment must be submitted in the form of a letter cancelling the sheet (PCT Rule 66.8(a)).

Jump to MPEP Source · 37 CFR 1.485Article 19 Amendment ScopeStatement Under Article 19PCT Description Requirements
StatutoryInformativeAlways
[mpep-1878-02-68ae00dc1a09fa2ecf09d7a0]
Remainder of Replacement Sheet Considered for Report
Note:
The international preliminary examination report will consider the amendments on a replacement sheet that do not introduce new matter, even if new matter is present.

The examiner should make sure that amendments filed in accordance with the PCT, which are necessary to correct any deficiencies notified to the applicant, do not go beyond the disclosure of the international application as filed, thus violating PCT Article 34(2)(b). In other words, no amendment should contain matter that cannot be substantiated by the application as originally filed. In a situation where new matter is introduced by amendment in reply to a written opinion, the international preliminary examination report will be established as if the amendment had not been made, and the report should so indicate. It shall also indicate the reasons why the amendment goes beyond the disclosure (PCT Rule 70.2(c)). Although new matter which appears on a replacement sheet will be disregarded for the purpose of establishing the report, the remainder of the replacement sheet, including any amendments which do not constitute new matter, will be taken into consideration for the purpose of establishing the report.

Jump to MPEP Source · 37 CFR 1.485Article 19 Amendment ScopeStatement Under Article 19Article 34 Amendments
Topic

Period for Reply (37 CFR 1.134)

6 rules
StatutoryRequiredAlways
[mpep-1878-02-d20a7bfdc30fd2c46f2c653b]
Amendments Must Be Received Within Reply Period
Note:
All amendments in reply to a written opinion must be received within the time limit set for reply to be considered in the international preliminary examination report.

A reply to the written opinion of the ISA in the form of arguments and/or amendments will be considered by the IPEA if a demand has been filed with the IPEA. All amendments in reply to a written opinion must be received within the time limit set for reply in order to be assured of consideration in the international preliminary examination report. Amendments filed at or before expiration of the period for reply will be considered. Since the examiner will begin to draw up the international preliminary examination report rather promptly after the time period expires, amendments filed after expiration of the reply period may not be considered. However, as indicated in MPEP § 1871, 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. In view of the short time period for completion of preliminary examination, applicants are strongly encouraged to file any amendments promptly. 37 CFR 1.484(d) does not allow for extensions of time to reply to a written opinion. The policy of not allowing extensions of time is to ensure that the USPTO can meet its treaty deadline for transmission of the international preliminary examination report.

Jump to MPEP Source · 37 CFR 1.484(d)Period for Reply (37 CFR 1.134)Patent Term ExpirationPatent Term
StatutoryPermittedAlways
[mpep-1878-02-050fe651d08ef1e1511fff06]
No Extensions for Reply to Written Opinion
Note:
The USPTO does not permit extensions of time for responding to the written opinion, ensuring timely transmission of the international preliminary examination report.

A reply to the written opinion of the ISA in the form of arguments and/or amendments will be considered by the IPEA if a demand has been filed with the IPEA. All amendments in reply to a written opinion must be received within the time limit set for reply in order to be assured of consideration in the international preliminary examination report. Amendments filed at or before expiration of the period for reply will be considered. Since the examiner will begin to draw up the international preliminary examination report rather promptly after the time period expires, amendments filed after expiration of the reply period may not be considered. However, as indicated in MPEP § 1871, 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. In view of the short time period for completion of preliminary examination, applicants are strongly encouraged to file any amendments promptly. 37 CFR 1.484(d) does not allow for extensions of time to reply to a written opinion. The policy of not allowing extensions of time is to ensure that the USPTO can meet its treaty deadline for transmission of the international preliminary examination report.

Jump to MPEP Source · 37 CFR 1.484(d)Period for Reply (37 CFR 1.134)Patent Term ExpirationPatent Term
StatutoryRequiredAlways
[mpep-1878-02-ec6e475d598da8db3638c6f6]
Timely Reply Required for Consideration
Note:
The applicant must file a reply to the written opinion within the specified time limit to ensure it is considered. Extensions are not granted.

If the applicant desires to reply to the written opinion, such reply must be filed within the time limit set for reply in order to assure consideration. No extensions to the time limit will be considered or granted. If no timely reply is received from the applicant, the international preliminary examination report will be established by the examiner, treating each claim substantially as it was treated in the written opinion. Replies to the written opinion which are not filed within the time limit set but which reach the examiner before the examiner takes up the application for preparation of the final report may be considered. Thus, only timely replies can be assured of consideration.

Jump to MPEP Source · 37 CFR 1.485Period for Reply (37 CFR 1.134)
StatutoryInformativeAlways
[mpep-1878-02-04e5b84a207a5fef000b8fd9]
Timely Reply Required for Consideration
Note:
Applicant must file a reply within the set time limit to ensure it is considered; no extensions will be granted.

If the applicant desires to reply to the written opinion, such reply must be filed within the time limit set for reply in order to assure consideration. No extensions to the time limit will be considered or granted. If no timely reply is received from the applicant, the international preliminary examination report will be established by the examiner, treating each claim substantially as it was treated in the written opinion. Replies to the written opinion which are not filed within the time limit set but which reach the examiner before the examiner takes up the application for preparation of the final report may be considered. Thus, only timely replies can be assured of consideration.

Jump to MPEP Source · 37 CFR 1.485Period for Reply (37 CFR 1.134)
StatutoryInformativeAlways
[mpep-1878-02-57f80f5a038f36ea6219dd3d]
Timely Reply to Written Opinion Required for Consideration
Note:
If no timely reply is received from the applicant, the international preliminary examination report will be established based on the written opinion.

If the applicant desires to reply to the written opinion, such reply must be filed within the time limit set for reply in order to assure consideration. No extensions to the time limit will be considered or granted. If no timely reply is received from the applicant, the international preliminary examination report will be established by the examiner, treating each claim substantially as it was treated in the written opinion. Replies to the written opinion which are not filed within the time limit set but which reach the examiner before the examiner takes up the application for preparation of the final report may be considered. Thus, only timely replies can be assured of consideration.

Jump to MPEP Source · 37 CFR 1.485Period for Reply (37 CFR 1.134)
StatutoryPermittedAlways
[mpep-1878-02-df864ce751f354f0a83edd8a]
Timely Reply Required for Consideration
Note:
Applicant must file a reply to the written opinion within the set time limit to be considered; late replies may still be reviewed if they reach the examiner before final report preparation.

If the applicant desires to reply to the written opinion, such reply must be filed within the time limit set for reply in order to assure consideration. No extensions to the time limit will be considered or granted. If no timely reply is received from the applicant, the international preliminary examination report will be established by the examiner, treating each claim substantially as it was treated in the written opinion. Replies to the written opinion which are not filed within the time limit set but which reach the examiner before the examiner takes up the application for preparation of the final report may be considered. Thus, only timely replies can be assured of consideration.

Jump to MPEP Source · 37 CFR 1.485Period for Reply (37 CFR 1.134)
Topic

Article 34 Amendments

5 rules
StatutoryPermittedAlways
[mpep-1878-02-7fc4913748da871adb571c2d]
Applicant May Amend at Filing or Within Time Limit for PCT Reply
Note:
The applicant can make amendments when filing the demand and within any time limit set by the International Preliminary Examining Authority for responding to notifications or opinions.

The applicant may make amendments at the time of filing the Demand. The applicant may also make amendments within the time limit set by the International Preliminary Examining Authority for reply to any notification under § 1.484(b) or to any written opinion. Any such amendments must be made in accordance with PCT Rule 66.8.

Jump to MPEP Source · 37 CFR 1.484(b)Article 34 AmendmentsDemand for Preliminary ExaminationInternational Preliminary Examination (Chapter II)
StatutoryRequiredAlways
[mpep-1878-02-17481ce5112ac130b0edd8a7]
Letter Must Highlight Differences Between Replaced and Replacement Sheet
Note:
The letter must draw attention to the differences between the replaced sheet and the replacement sheet when submitting amendments during international preliminary examination.

Any paper submitted by the applicant, if not in the form of a letter, must be accompanied by a letter signed by the applicant or agent (PCT Rule 92.1). The letter must draw attention to the differences between the replaced sheet and the replacement sheet.

Jump to MPEP Source · 37 CFR 1.485Article 34 AmendmentsInternational Preliminary Examination (Chapter II)Request Content and Form
StatutoryRecommendedAlways
[mpep-1878-02-3afddf889c303a47dca15e60]
Amendments Must Not Add New Matter
Note:
The examiner requires that any amendments filed in response to deficiencies do not introduce new matter beyond the original application disclosure.

The examiner should make sure that amendments filed in accordance with the PCT, which are necessary to correct any deficiencies notified to the applicant, do not go beyond the disclosure of the international application as filed, thus violating PCT Article 34(2)(b). In other words, no amendment should contain matter that cannot be substantiated by the application as originally filed. In a situation where new matter is introduced by amendment in reply to a written opinion, the international preliminary examination report will be established as if the amendment had not been made, and the report should so indicate. It shall also indicate the reasons why the amendment goes beyond the disclosure (PCT Rule 70.2(c)). Although new matter which appears on a replacement sheet will be disregarded for the purpose of establishing the report, the remainder of the replacement sheet, including any amendments which do not constitute new matter, will be taken into consideration for the purpose of establishing the report.

Jump to MPEP Source · 37 CFR 1.485Article 34 AmendmentsInterviews in National StagePatent Cooperation Treaty
StatutoryPermittedAlways
[mpep-1878-02-9c2ba0cd9b466c63533af30c]
Request for Interview During PCT Examination
Note:
Applicants may request a telephone or personal interview after filing a demand and within the time limit for responding to the written opinion.

The examiner or applicant may, after the filing of a demand and during the time limit for reply to the written opinion, request a telephone or personal interview. Only one interview is a matter of right, whether by telephone or in person. Additional interviews may be authorized by the examiner in a particular international application where such additional interview may be helpful to advance the international preliminary examination procedure.

Jump to MPEP Source · 37 CFR 1.485Article 34 AmendmentsDemand for Preliminary ExaminationInterviews in National Stage
StatutoryPermittedAlways
[mpep-1878-02-73341569bf17089d3ffe44b7]
One Interview Is Required, Additional Interviews May Be Authorized
Note:
Only one interview is mandatory; additional interviews can be permitted by the examiner to help advance the international preliminary examination procedure.

The examiner or applicant may, after the filing of a demand and during the time limit for reply to the written opinion, request a telephone or personal interview. Only one interview is a matter of right, whether by telephone or in person. Additional interviews may be authorized by the examiner in a particular international application where such additional interview may be helpful to advance the international preliminary examination procedure.

Jump to MPEP Source · 37 CFR 1.485Article 34 AmendmentsInterviews in National StageInternational Preliminary Examination (Chapter II)
Topic

Patent Term Expiration

5 rules
StatutoryInformativeAlways
[mpep-1878-02-7879846548d2f18850ee5978]
Requirement for Filing Reply to ISA Written Opinion with IPEA
Note:
Applicants must file a reply to the written opinion of the ISA within the time limit set for reply in order to be considered during the international preliminary examination.

A reply to the written opinion of the ISA in the form of arguments and/or amendments will be considered by the IPEA if a demand has been filed with the IPEA. All amendments in reply to a written opinion must be received within the time limit set for reply in order to be assured of consideration in the international preliminary examination report. Amendments filed at or before expiration of the period for reply will be considered. Since the examiner will begin to draw up the international preliminary examination report rather promptly after the time period expires, amendments filed after expiration of the reply period may not be considered. However, as indicated in MPEP § 1871, 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. In view of the short time period for completion of preliminary examination, applicants are strongly encouraged to file any amendments promptly. 37 CFR 1.484(d) does not allow for extensions of time to reply to a written opinion. The policy of not allowing extensions of time is to ensure that the USPTO can meet its treaty deadline for transmission of the international preliminary examination report.

Jump to MPEP Source · 37 CFR 1.484(d)Patent Term ExpirationPatent TermPeriod for Reply (37 CFR 1.134)
StatutoryInformativeAlways
[mpep-1878-02-51a3b560eaa24f4a1cee98a0]
Amendments Must Be Filed By Reply Deadline
Note:
All amendments in reply to a written opinion must be received by the deadline to be considered in the international preliminary examination report.

A reply to the written opinion of the ISA in the form of arguments and/or amendments will be considered by the IPEA if a demand has been filed with the IPEA. All amendments in reply to a written opinion must be received within the time limit set for reply in order to be assured of consideration in the international preliminary examination report. Amendments filed at or before expiration of the period for reply will be considered. Since the examiner will begin to draw up the international preliminary examination report rather promptly after the time period expires, amendments filed after expiration of the reply period may not be considered. However, as indicated in MPEP § 1871, 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. In view of the short time period for completion of preliminary examination, applicants are strongly encouraged to file any amendments promptly. 37 CFR 1.484(d) does not allow for extensions of time to reply to a written opinion. The policy of not allowing extensions of time is to ensure that the USPTO can meet its treaty deadline for transmission of the international preliminary examination report.

Jump to MPEP Source · 37 CFR 1.484(d)Patent Term ExpirationPatent TermPeriod for Reply (37 CFR 1.134)
StatutoryProhibitedAlways
[mpep-1878-02-5257e3be3d653acb023b1420]
Late Amendments Not Considered Unless Favorable Report Likely
Note:
Amendments filed after the reply period will not be considered, but may be taken into account if it is clear that they would result in a favorable report.

A reply to the written opinion of the ISA in the form of arguments and/or amendments will be considered by the IPEA if a demand has been filed with the IPEA. All amendments in reply to a written opinion must be received within the time limit set for reply in order to be assured of consideration in the international preliminary examination report. Amendments filed at or before expiration of the period for reply will be considered. Since the examiner will begin to draw up the international preliminary examination report rather promptly after the time period expires, amendments filed after expiration of the reply period may not be considered. However, as indicated in MPEP § 1871, 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. In view of the short time period for completion of preliminary examination, applicants are strongly encouraged to file any amendments promptly. 37 CFR 1.484(d) does not allow for extensions of time to reply to a written opinion. The policy of not allowing extensions of time is to ensure that the USPTO can meet its treaty deadline for transmission of the international preliminary examination report.

Jump to MPEP Source · 37 CFR 1.484(d)Patent Term ExpirationPatent TermPeriod for Reply (37 CFR 1.134)
StatutoryInformativeAlways
[mpep-1878-02-7c47377e0049bb3d918446bb]
Amendments Must Be Filed Promptly During International Preliminary Examination
Note:
Applicants are encouraged to file any amendments promptly within the time limit set for reply to ensure consideration in the international preliminary examination report.

A reply to the written opinion of the ISA in the form of arguments and/or amendments will be considered by the IPEA if a demand has been filed with the IPEA. All amendments in reply to a written opinion must be received within the time limit set for reply in order to be assured of consideration in the international preliminary examination report. Amendments filed at or before expiration of the period for reply will be considered. Since the examiner will begin to draw up the international preliminary examination report rather promptly after the time period expires, amendments filed after expiration of the reply period may not be considered. However, as indicated in MPEP § 1871, 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. In view of the short time period for completion of preliminary examination, applicants are strongly encouraged to file any amendments promptly. 37 CFR 1.484(d) does not allow for extensions of time to reply to a written opinion. The policy of not allowing extensions of time is to ensure that the USPTO can meet its treaty deadline for transmission of the international preliminary examination report.

Jump to MPEP Source · 37 CFR 1.484(d)Patent Term ExpirationPatent TermPeriod for Reply (37 CFR 1.134)
StatutoryInformativeAlways
[mpep-1878-02-5016ce6e9671219a7b9e5251]
No Extensions for Written Opinion Replies
Note:
Applicants cannot request extensions of time to reply to a written opinion from the ISA.

A reply to the written opinion of the ISA in the form of arguments and/or amendments will be considered by the IPEA if a demand has been filed with the IPEA. All amendments in reply to a written opinion must be received within the time limit set for reply in order to be assured of consideration in the international preliminary examination report. Amendments filed at or before expiration of the period for reply will be considered. Since the examiner will begin to draw up the international preliminary examination report rather promptly after the time period expires, amendments filed after expiration of the reply period may not be considered. However, as indicated in MPEP § 1871, 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. In view of the short time period for completion of preliminary examination, applicants are strongly encouraged to file any amendments promptly. 37 CFR 1.484(d) does not allow for extensions of time to reply to a written opinion. The policy of not allowing extensions of time is to ensure that the USPTO can meet its treaty deadline for transmission of the international preliminary examination report.

Jump to MPEP Source · 37 CFR 1.484(d)Patent Term ExpirationPatent TermPeriod for Reply (37 CFR 1.134)
Topic

Statement Under Article 19

3 rules
StatutoryRequiredAlways
[mpep-1878-02-a6bc9256dd531d26cd65d49b]
Amendment Cancellation Requires Explanation Letter
Note:
An amendment that cancels an entire sheet must be communicated via a letter, which should explain the reasons for the change.

(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.

Jump to MPEP SourceStatement Under Article 19PCT Article 19 AmendmentsRequest Content and Form
StatutoryProhibitedAlways
[mpep-1878-02-65193a21ea97261a91ea43aa]
Amendments Must Be Substantiated by Original Application
Note:
No amendment should introduce matter not supported by the original international application as filed.

The examiner should make sure that amendments filed in accordance with the PCT, which are necessary to correct any deficiencies notified to the applicant, do not go beyond the disclosure of the international application as filed, thus violating PCT Article 34(2)(b). In other words, no amendment should contain matter that cannot be substantiated by the application as originally filed. In a situation where new matter is introduced by amendment in reply to a written opinion, the international preliminary examination report will be established as if the amendment had not been made, and the report should so indicate. It shall also indicate the reasons why the amendment goes beyond the disclosure (PCT Rule 70.2(c)). Although new matter which appears on a replacement sheet will be disregarded for the purpose of establishing the report, the remainder of the replacement sheet, including any amendments which do not constitute new matter, will be taken into consideration for the purpose of establishing the report.

Jump to MPEP Source · 37 CFR 1.485Statement Under Article 19Amendments in National StagePCT Article 19 Amendments
StatutoryRequiredAlways
[mpep-1878-02-48df8b1a1215b506d769e905]
Amendments Must Not Introduce New Matter
Note:
Amendments in response to a written opinion must not introduce new matter beyond the original disclosure, and the examination report should indicate if this has occurred.

The examiner should make sure that amendments filed in accordance with the PCT, which are necessary to correct any deficiencies notified to the applicant, do not go beyond the disclosure of the international application as filed, thus violating PCT Article 34(2)(b). In other words, no amendment should contain matter that cannot be substantiated by the application as originally filed. In a situation where new matter is introduced by amendment in reply to a written opinion, the international preliminary examination report will be established as if the amendment had not been made, and the report should so indicate. It shall also indicate the reasons why the amendment goes beyond the disclosure (PCT Rule 70.2(c)). Although new matter which appears on a replacement sheet will be disregarded for the purpose of establishing the report, the remainder of the replacement sheet, including any amendments which do not constitute new matter, will be taken into consideration for the purpose of establishing the report.

Jump to MPEP Source · 37 CFR 1.485Statement Under Article 19Article 34 AmendmentsAmendments in National Stage
Topic

International Preliminary Examining Authority (IPEA)

3 rules
StatutoryRequiredAlways
[mpep-1878-02-a4fa0afae10c67a05776a1fa]
Applicant May Amend Within Time Limit Set by IPEA
Note:
The applicant is permitted to make amendments within the time limit set by the International Preliminary Examining Authority in response to a notification or written opinion, provided such amendments comply with PCT Rule 66.8.

The applicant may make amendments at the time of filing the Demand. The applicant may also make amendments within the time limit set by the International Preliminary Examining Authority for reply to any notification under § 1.484(b) or to any written opinion. Any such amendments must be made in accordance with PCT Rule 66.8.

Jump to MPEP Source · 37 CFR 1.484(b)International Preliminary Examining Authority (IPEA)Patent Cooperation TreatyArticle 34 Amendments
StatutoryInformativeAlways
[mpep-1878-02-892f8c6a02758893aef4a721]
IPEA Does Not Accept Non-English Applications Or Amendments
Note:
The Patent and Trademark Office, when acting as the International Preliminary Examining Authority, will not accept any non-English applications or amendments except for obvious mistake corrections.

Any change, other than the rectification of obvious mistakes in the claims, the description, or the drawings, including the cancellation of claims, omission of passages in the description or omission of certain drawings will be considered an amendment (PCT Rule 66.5). The Patent and Trademark Office when acting as the International Preliminary Examining Authority will not accept any non-English applications or amendments.

Jump to MPEP Source · 37 CFR 1.485International Preliminary Examining Authority (IPEA)Article 34 AmendmentsInternational Preliminary Examination (Chapter II)
StatutoryRequiredAlways
[mpep-1878-02-1b3d43338e5206be185f981a]
Informal Communication with Applicant Must Be Recorded Using PCT/IPEA/428 Notice
Note:
All interviews of substance must be documented using the PCT/IPEA/428 Notice on Informal Communication with the Applicant.

All interviews of substance must be made of record by using PCT/IPEA/428 Notice on Informal Communication with the Applicant.

Jump to MPEP Source · 37 CFR 1.485International Preliminary Examining Authority (IPEA)International Preliminary Examination (Chapter II)Patent Cooperation Treaty
Topic

35 U.S.C. 103 – Obviousness

1 rules
StatutoryRequiredAlways
[mpep-1878-02-5b82df501c06fbdc31d69304]
Claims and Description Amendments Prohibited
Note:
Changes to claims, description, or drawings other than obvious mistake corrections are considered amendments.

Any change, other than the rectification of an obvious mistake, in the claims, the description, or the drawings, including cancellation of claims, omission of passages in the description, or omission of certain drawings, shall be considered an amendment.

Topic

PCT Description Requirements

1 rules
StatutoryRequiredAlways
[mpep-1878-02-8772dacbdc27983529b27d17]
Amendments Must Use Replacement Sheets
Note:
Applicant must submit replacement sheets for any differing application pages and describe the changes in accordance with PCT Rule 66.8.

Any amendments to the description and the drawings in reply to a written opinion must (1) be made by submitting a replacement sheet for every sheet of the application which differs from the sheet it replaces unless an entire sheet is cancelled and (2) include a description of how the replacement sheet differs from the replaced sheet in accordance with PCT Rule 66.8.

Jump to MPEP Source · 37 CFR 1.485PCT Description RequirementsPCT Description and ClaimsPatent Cooperation Treaty
Topic

Request Content and Form

1 rules
StatutoryRequiredAlways
[mpep-1878-02-ce452d268475fc3d448e3931]
Letter Accompanying Non-Letter Paper Required
Note:
Any paper submitted by the applicant that is not in letter form must be accompanied by a signed letter drawing attention to its differences from the previous sheet.

Any paper submitted by the applicant, if not in the form of a letter, must be accompanied by a letter signed by the applicant or agent (PCT Rule 92.1). The letter must draw attention to the differences between the replaced sheet and the replacement sheet.

Jump to MPEP Source · 37 CFR 1.485Request Content and FormSignature RequirementsPCT Request Form
Topic

Maintenance Fee Payment

1 rules
StatutoryRecommendedAlways
[mpep-1878-02-5cd3dd32d953a0d8d1b2c004]
Interview Records Must Indicate Examiner's Next Steps
Note:
The records of interviews or telephone conversations must indicate whether a reply is due from the applicant or agent, or if an additional written opinion or international preliminary examination report is needed.

The records of interviews or telephone conversations should indicate, where appropriate, whether a reply is due from the applicant or agent or whether the examiner wishes to issue an additional written opinion or establish the international preliminary examination report.

Jump to MPEP Source · 37 CFR 1.485Maintenance Fee Payment
Topic

Patent Cooperation Treaty

1 rules
StatutoryPermittedAlways
[mpep-1878-02-502bee5460d0293274d3ee51]
Applicant May Amend or Argue Against Authority Opinion
Note:
The applicant can respond to an invitation by either amending the application or presenting arguments against the authority's opinion, or both.

The applicant may reply to the invitation referred to in Rule 66.2(c) by making amendments or, if the applicant disagrees with the opinion of the authority, by submitting arguments, as the case may be, or both (PCT Rule 66.3).

Jump to MPEP Source · 37 CFR 1.485Patent Cooperation TreatyArticle 34 AmendmentsInternational Preliminary Examination (Chapter II)

Citations

Primary topicCitation
Article 34 Amendments
International Preliminary Examining Authority (IPEA)
37 CFR § 1.484(b)
Patent Term Expiration
Period for Reply (37 CFR 1.134)
37 CFR § 1.484(d)
Patent Term Expiration
Period for Reply (37 CFR 1.134)
MPEP § 1871
Article 19 Amendment Scope
Article 34 Amendments
Statement Under Article 19
PCT Article 34(2)(b)
Article 19 Amendment Scope
Article 34 Amendments
International Preliminary Examining Authority (IPEA)
PCT Description Requirements
Patent Cooperation Treaty
PCT Rule 66.3
Article 19 Amendment Scope
Article 34 Amendments
Statement Under Article 19
PCT Rule 70.2(c)
Article 34 Amendments
Request Content and Form
PCT Rule 92.1

Source Text from USPTO’s MPEP

This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.

BlueIron Last Updated: 2025-12-31