Key Takeaways

  • PCT Article 41 allows applicants to amend claims, drawings, and descriptions in the national phase within prescribed time limits.
  • Amendments must comply with national laws of elected states and cannot broaden the scope of original disclosures.
  • Voluntary amendments are permitted before substantive examination or within three months of notice of entry into that phase.
  • New claims generally cannot be added, and strict restrictions apply to amendments that attempt to introduce new subject matter.
  • The PCT Rule 43bis.1(a)(i) novelty standard ensures that the written opinion of the International Searching Authority (ISA) evaluates novelty under Article 33(2) of the PCT.
  • Additional experimental data submitted post-filing is rarely admissible except to counter novelty or obviousness objections.
  • Claims may be canceled or combined during invalidation proceedings, but procedural rules prevent expanding the scope of protection.
  • Applicants should pay close attention to both international novelty standards and national-phase requirements to avoid rejection or invalidation.

According to PCT article 41, applicants can contact elected offices to amend the drawings, descriptions, and claims in their patent application within the time limit prescribed. Without applicants' consent, elected offices can't grant or refuse to grant patents before the prescribed time limit has expired.

National Laws of Elected States

Patent Cooperation Treaty amendments should go beyond the disclosure filed in the international application, unless the national laws of elected states permit them to exceed this disclosure. The amendments must be in line with the national laws of elected states in every respect except those not provided for in the Regulations and Treaty.

Where elected offices require translations of an international application, all amendments must be represented in the language of translation.

Understanding the PCT Novelty Standard

Under the PCT framework, novelty is assessed using the criteria set out in Article 33(2), which defines an invention as novel if it is not anticipated by prior art. This standard is explicitly applied in the written opinion of the International Searching Authority (ISA) under PCT Rule 43bis.1(a)(i). In practice, this means that applicants receive an early indication of whether their claims are considered new before entering the national phase.

The novelty determination is crucial, as it impacts the likelihood of patentability across elected states. Importantly, although national offices ultimately apply their own patentability standards, the ISA’s written opinion provides persuasive guidance that can streamline or complicate prosecution in multiple jurisdictions.

Voluntary Amendment of Applications

Applicants are allowed to voluntarily amend their applications as long as they make these amendments before the application is filed for substantive examination. Applicants can also voluntarily amend applications within three months after receiving notice from the patent's office that their application has entered the phase of substantive examination.

For the national phase of a patent cooperation treaty application, applicants may voluntarily amend their applications subject to PCT Article 28/41.

There are no additional restrictions that can be applied to voluntary amendments other than the restrictions contained in Article 33. Applicants may also amend their international patent applications when responding to office actions. However, any amendment that is submitted in response to office actions is governed by strict limitations.

Role of the International Preliminary Examination

In addition to voluntary amendments, applicants may seek an International Preliminary Examination Report (IPER) under Chapter II of the PCT. This report extends the ISA’s opinion and examines not just novelty, but also inventive step and industrial applicability. Because the IPER relies on the same novelty standard set out in Rule 43bis.1(a)(i), applicants gain further insight into how national offices may interpret their claims.

While not binding, the IPER provides valuable opportunities for applicants to amend claims proactively and address objections before entering national phases. This reduces the risk of costly disputes later.

Addition of New Claims

New claims cannot be added whether they are dependent claims or independent claims. In view of these limitations, applicants should carefully review all claims before submitting their patent applications. They should make sure that the claims include all the rights they want to protect before the patent application comes under substantive examination.

Procedure Saving Principle

The principle of procedure saving was designed to speed up the examination phase and reduce the search burden after the original search has concluded. In this instance, a broadening of the claim's scope would require a new search.

At this point, all further amendments do not broaden the scope of the patent claim(s). For instance, further amendments are not allowed to change or delete claim limitations, even if these amendments are supported by the original specifications. The basis for this rule is the principle of "procedure saving," which was adopted by the United States Patent and Trademark Office.

Novelty Standard in Practice

The procedure saving principle emphasizes efficiency, but it works hand-in-hand with the novelty assessment under Rule 43bis.1(a)(i). Examiners avoid conducting redundant searches once novelty has been evaluated under Article 33(2). For applicants, this underscores why claims should be carefully drafted early: once the novelty standard has been applied, amendments broadening scope will not be entertained.

Thus, novelty evaluation is not merely academic; it directly influences the amendment opportunities available throughout international and national phases

Strict Restrictions

There are also very strict restrictions for amendments made to specifications. For instance, during a prosecution, applicants may want to add additional experimental data that was obtained after the patent application was filed in order to satisfy the support requirements. These kinds of amendments are generally not allowed.

Additional Data

In some limited situations, applicants may be allowed to introduce additional data when responding to office actions. In these cases, the additional data will be used only to counter objections based on lack of novelty or obviousness, like in comparative experiments.

However, even if the new data is entered, it cannot be used to support patent claims. This means that no post-filing data can be used to remedy deficiencies.

Impact of Novelty Findings on Amendments

Applicants sometimes attempt to introduce post-filing experimental data to bolster novelty arguments. However, while such data may occasionally be considered in countering objections, it cannot serve as the sole basis for establishing novelty. The Rule 43bis.1(a)(i) novelty standard requires that novelty be supported by the disclosure as filed, not by subsequent additions.

This reinforces the importance of drafting thorough specifications from the outset. Comparative examples or supporting evidence of novelty should ideally be included at the initial filing stage to ensure compliance with both PCT requirements and national-phase examination rules.

Petition for Invalidation

Under the current patent law, a granted patent can be challenged by any entity provided this entity files an invalidation petition with the re-examination board.

If the validity of the patent is challenged, owners can amend the patent claims by:

  • A combination of claims.
  • Canceling one or more claims.
  • Deleting one or more group members in a claim.

Special attention should be paid to the timing of these amendments.

Cancellation of Claims

Group members may be deleted or claims canceled at any point during the course of the invalidation procedure.

However, the incorporation of a claim is only allowed:

  • When new arguments or evidence that was not previously presented by the petitioner is introduced by the Board.
  • When new evidence and/or argument is introduced by the petitioner.
  • When sending a reply to the invalidation petition.

When combining different claims, the claims to be combined should not depend on each other. They should depend on the same independent claim.

Frequently Asked Questions

1. What is the PCT Rule 43bis.1(a)(i) novelty standard?

It requires that the ISA’s written opinion apply the PCT Article 33(2) definition of novelty, ensuring an invention is new compared to prior art.

2. How does the novelty assessment affect national phase entry?

Although non-binding, the ISA’s novelty findings strongly influence how national offices assess patentability, guiding applicant strategies.

3. Can applicants add new claims to overcome novelty rejections?

No. New claims are not allowed under Article 41; applicants must rely on existing disclosure to respond to novelty objections.

4. Is post-filing experimental data useful for novelty?

It can sometimes rebut objections but cannot establish novelty on its own, as novelty must be supported by the original disclosure.

5. How does the International Preliminary Examination relate to novelty?

The IPER extends the novelty review to inventive step and industrial applicability, providing further guidance for national-phase filings.

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