PCT Rule 46 — Amendment of Claims before the International (MPEP Coverage Index) – BlueIron IP
PCT Rule 46 Amendment of Claims before the International
This page consolidates MPEP guidance interpreting PCT Rule 46, including 34 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
Applicants have two months from receiving the international search report to file amendments to their claims, which must be accompanied by a brief statement explaining the changes.
What this section covers
- This section covers the amendment process for claims following the receipt of an international search report in PCT filings.
- The core topic is the timing and procedure for filing amendments to claims in response to an international search report.
Key obligations
- Applicants must file amendments to claims within two months of receiving the international search report.
- A brief statement explaining the amendment must be filed with the claim amendments.
Practice notes
- Practitioners should carefully review the international search report before filing amendments to ensure proper modifications.
- Amendments must not exceed the scope of the international search report or introduce unsupported new matter.
Official MPEP § 46 — Amendment of Claims before the International
Source: USPTOLast Modified: 10/30/2024 08:50:22
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.
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- Pct Amendments Article 19
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- Pct Description Claims
- Pct International Preliminary Examination
- Pct International Search
| MPEP Section | Rules |
|---|---|
| MPEP § 1801 | |
| MPEP § 1824 | |
| MPEP § 1853 | |
| MPEP § 1864.01 | |
| MPEP § 1871 | |
| MPEP § 1878.02 | |
| MPEP § 1879 |