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Consideration of PCT amendments in the national phase (Section 86(6))

7.38 Amendments during the international phase of PCT applications may be made under Article 19 or, if the applicant demands Chapter II examination, Article 34. In most cases these will need to be taken into account during the national prosecution. They will always be superseded by amendments made to the same claim(s) in the national phase by using Patents Form 13 or Patents Form 13A, where applicable.

7.39 The provisions relating to the manner in which such amendments are dealt with in the national phase are set out in Section 86(6) as follows:

(6) Where, during the international phase, the application is amended in accordance with the Patent Co-operation Treaty, the amendment shall be treated as made under this Act if, and shall be disregarded unless –

(a) when the prescribed period expires, where –

(i) the amendment is not in English; and
(ii) if any copy of the amendment has been communicated to the Registry in accordance with the Treaty, that copy is in a language other than English, an English translation of the amendment has been filed at the Registry; or

(b) where the applicant expressly requests the Registrar to proceed earlier with the national phase of the application, there is filed at the Registry –

(i) a copy of the amendment, if none has been communicated to the Registry in accordance with the Treaty; and
(ii) an English translation of the amendment, if –

(A) the amendment is not in English; and
(B) where any copy of the amendment has been communicated to the Registry in accordance with the Treaty, that copy is in a language other than English.

7.40 In most cases, the Registry will process Article 19 and 34 amendments communicated from International Bureau and translations thereof in accordance with the Rules, and the application received from the Registry should have all the necessary documents. As such, the Examiners need not routinely check these details. However, ifthe  Examiner discovers any irregularity in the documentation that may affect thescope of the application (e.g. if there is doubt over whether any Article 19 and 34 amendments have been made in the international phase), then the Examiner may, after checking the available databases such as Patentscope and the EP Register, refer the matter to the Registry.

7.41 Where the amendments made under the PCT are in a foreign language, the applicant  shall file at the Registry an English translation of the amendments accompanied by a copy of a verification document upon entry into the national phase or request the International Bureau to send an English translation of the amendments under the PCT to the Registry after entry into the national phase. If the Registry does not receive the required translation at filing, a notice is issued under Rule 86(6) and the applicant is given 2 months to provide a translation. If the Registry considers that the translation filed at the Registry is inaccurate, a notice is issued and the applicant is given 2 months to provide another translation. In the event that any prescribed requirement for the English translation filed at the Registry has not been met, the amendments under the PCT will be disregarded and the application will proceed in its unamended form.

7.42 Where the applicant expressly requests a PCT application to enter the national phase early, the applicant shall file at the Registry a copy of the amendments, if no such amendments have been communicated to the Registry. The applicant shall also file at the Registry an English translation, if the amendments filed at the Registry are in a foreign language or amendments in a foreign language are communicated to the Registry. In the event that any prescribed requirement for the English translation filed at the Registry has not been met, the amendments under the PCT will be disregarded and the application will proceed in its unamended form.

7.43 The Examiner should refer to Section G in this Chapter to determine whether the Article 19 and 34 amendments are allowable.