What is the time limit for filing an Article 19 amendment?
The time limit for filing an Article 19 amendment is specified in PCT Rule 46.1. According to the MPEP, 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…
Read MoreWhat should be included in an Article 19 amendment submission?
An Article 19 amendment submission should include several components as outlined in the MPEP: A complete set of claims replacing the originally filed claims A letter indicating the differences between the original and amended claims An explanation of the basis for the amendments in the original application An optional statement under Article 19 The MPEP…
Read MoreWhat is the purpose of the statement accompanying an Article 19 amendment?
An optional statement can accompany an Article 19 amendment. The MPEP explains its purpose: 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. This statement…
Read MoreCan Article 19 amendments go beyond the original disclosure?
Article 19 amendments are subject to certain limitations regarding the scope of the changes. The MPEP states: The PCT provides that amendments are not to go beyond the disclosure in the international application as filed. However, it’s important to note that This requirement is not directly enforceable during Chapter I of the international phase, but…
Read MoreHow should claims be numbered in an Article 19 amendment?
When submitting an Article 19 amendment, proper numbering of claims is important. The MPEP provides guidance on this matter: 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…
Read MoreWhat constitutes an “appropriate amendment” when responding to a new ground of rejection by the Board?
An “appropriate amendment” in response to a new ground of rejection by the Board is one that addresses the specific issues raised in the new rejection. The MPEP provides guidance on what constitutes an appropriate amendment: “An amendment is ‘appropriate’ under the rule if it amends one or more of the claims rejected, or substitutes…
Read MoreWhat is the difference between withdrawing an appeal and abandoning an application?
Withdrawing an appeal and abandoning an application are two distinct actions with different consequences. According to MPEP 1215.02: “If an application contains allowed claims, as well as claims on appeal, the withdrawal of the appeal does not operate as an abandonment of the application” Withdrawing an appeal only affects the appealed claims and does not…
Read MoreWhat is the proper procedure if an applicant wants to appeal after filing an RCE?
If an applicant wants to appeal after filing a Request for Continued Examination (RCE), they must follow a specific procedure. According to MPEP 1204.01, the proper steps are: Wait for the examiner to issue a new Office action after the RCE is filed If the new Office action is a final rejection, file a new…
Read MoreWhat types of amendments are typically entered after allowance without withdrawal?
What types of amendments are typically entered after allowance without withdrawal? Certain types of amendments can be entered after allowance without withdrawing the application from issue. The MPEP 1303.01 provides examples: Amendments under 37 CFR 1.312 which do not affect the scope of the claims Amendments to the specification which do not affect the scope…
Read MoreWhat happens if an amendment is filed after a notice of appeal but before the appeal brief?
Filing an amendment after a notice of appeal but before the appeal brief does not negate the requirement to file the appeal brief. The MPEP 1205.01 states: “A brief must be filed to preserve appellant’s right to the appealed claims, notwithstanding circumstances such as: … (B) the filing of an amendment, even if it is…
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