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Need to decide if you should file patent applications abroad? In this advanced webinar series, we'll take a look at strategies and best practices for key countries outside of the United States.
US vs. International: Claim Scope and Application Support
All patent specifications are not created equal. Find out what your application needs to avoid potentially narrow claims in foreign jurisdictions
Managing the Drafting and Filing of US Applications
Understand how corporate IP departments assign and distribute disclosures to outside counsel, track the status of applications, and perform quality reviews of outside counsel’s work.

Schwegman Lundberg & Woessner

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Optional PCT Procedures

Article 19 Amendments

After receiving the International Search Report (ISR), Applicants may file amendments to the claims with the International Bureau within the later of the 16-month date based on the earliest claimed priority date, or two months from the date of mailing of the ISR. Only claim amendments (and a brief statement of explanation) can be filed under Article 19 and these claim amendments will not change the International Preliminary Report on Patentability.

Supplementary International Search Request

After receiving the International Search Report (ISR), Applicants may file a supplementary international search request in order to have an additional search performed using a search authority that is different from the International Searching Authority that carried out the initial international search. Any request for a supplementary international search must be filed within the 19-month date based on the earliest claimed priority date. The additional search has the potential of reducing the risk of new patent documents and other technical literature being discovered in the national phase since, by requesting supplementary search Applicants can enlarge the linguistic and/or technical scope of the documentation searched.

Demand and Response to Written Opinion/Article 34 Amendments

Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating intellectual property offices. Any claims found to meet each of (1) industrial applicability, (2) novelty, and (3) inventive step during the PCT (either in a favorable Written Opinion (WO) or in a later favorable International Preliminary Report on Patentability (IPRP)) may be eligible for subsequent accelerated national-stage examination in countries participating in PPH. This can save time and can reduce costs.

For a partially or completely unfavorable WO, an Article 34 Demand for International Preliminary Examination can be filed to try to obtain a favorable IPRP to gain these advantages of the PPH, but the PPH restricts claims that can be presented for accelerated national-stage examination to those claims that obtained a favorable status in the WO or IPRP and claims that “sufficiently correspond” thereto.

Further information and a list of PCT-PPH Programs can be found at: http://www.wipo.int/pct/en/filing/pct_pph.html