Amendments and Corrections

Allowability of PCT amendments in the national phase

7.44 When amendments are made under the PCT, a consideration is given at that stage as to the allowability of the amendments. These are set out in the PCT Guidelines at 20.09. Notably, the considerations are analogous to the considerations made under the Singapore law:

20.09 The examiner makes sure that amendments filed do not add to the content of the application as filed, thus violating Article 19(2) or 34(2 (b). Furthermore, they must not itself cause the international application as amended to be objectionable under the PCT; for example, the amendment should not introduce obscurity. The examiner should consider as acceptable restriction of the scope of the claims or amendments that improve the clarity of the description or amendments to the claims in a manner clearly desirable, without changing their subject matter content or scope.

7.45 If the International Authority has considered an amendment to add subject matter, this will be indicated in Box I of the International Report on Patentability II (IPRP II). It should be noted that a consideration of the allowability of amendments in the international phase is done only if the application has demanded Chapter II examination. This will include a consideration of both Article 19 and Article 34 amendments filed before expiry of the prescribed time limit. The opinion of the International Authority is not binding, and Examiners are not bound to follow it if they disagree. However, if the Examiner considers that the amendments are in fact allowable, they generally should review the search to ensure that the matter of the amendments is adequately searched.

7.46 If the applicant has not demanded Chapter II examination and has made Article 19 amendments, then there will have been no examination of these amendments during the international phase. Accordingly, Article 19 amendments will need to be checked carefully to ensure that they are allowable.

7.47 It should also be noted that practices differ between international authorities as to what constitutes added matter. For example, intermediate generalizations may not be recognized by all authorities. As a consequence, Examiners will need to consider whether all amendments made during the international phase of the application meet Singapore requirements.

7.48 In the event that amendments are considered to incorporate added matter, then this should be indicated at Box I.3, with a detailed explanation provided in a supplemental box.