Quick Navigation
If amendments under Article 19 PCT are to be taken into account, the applicant must enclose a copy of these with the demand.
Amendments and/or arguments filed under Article 34 PCT should preferably be filed together with the demand. However, they also have to be taken into account by the EPO as IPEA if they are filed before expiry of the time limit for filing the demand (see point 323). Subsequently filed amendments and/or arguments will only be taken into account by the EPO as IPEA if they are received before the point at which preparation of a written opinion or the IPER has actually started. Moreover, if a second written opinion is established (see point 372), subsequently filed amendments and/or arguments will be taken into account together with the reply to the second written opinion. Amendments and/or arguments not taken into account by the EPO as IPEA may be (re-)filed with the elected Offices upon entry into the national phase.
OJ 2011, 532
If the EPO acted as ISA, the EPO as IPEA will consider the WO-ISA as a first written opinion for the purposes of international preliminary examination and, as a rule, commence the international preliminary examination immediately after expiry of the time limit for filing the demand (see points 323, 377). Therefore, it is important that amendments and/or arguments under Article 34 PCT are filed in due time.
Applicants must make sure that none of the amendments go beyond the disclosure in the international application as originally filed. Note that if an amendment contains a negative limitation, e.g. a "disclaimer", the EPO as IPEA in accordance with the discretion provided for in the ISPE Guidelines applies the same approach as in respect of a Euro-direct application (see Annex IV). Further, applicants must indicate in an accompanying letter
–
the differences between the application as originally filed and any amendments made,
–
the basis for the amendments in the application as filed, and
–
the reasons for any such amendments.