Thinking Globally: Patent Application Amendments

By L&A’s Foreign Filing Paralegal Group: Scott Foley, Jessica Grover, Kelly Petrillo, Amanda Ramadan, and Peter Weatherill

After carefully writing a Patent Application to be used globally, there may be many reasons why amending the application should be considered.

The Applicant should consider amending their application to conform to local requirements and preferred local claim language. The Applicant might consider adding an Omnibus claim where allowable.

Many countries charge examination fees based on the number of claims in an application (a list of countries/fees can be found here). In order to save on examination fees, the Applicant could reduce the number of claims. Many countries will accept multiply dependent claims. Additionally, in the case of an International Phase application where a lack of unity has been found, the Applicant might consider proceeding with one invention, but work with the local agent to preserve rights to pursue the other inventions in a divisional(s) application.

Consider timing of amendments. While many jurisdictions allow claim amendments to be filed at time of national stage entry (or after) in order to reduce excess claims fees, certain countries require entry into the national phase based on the PCT publication. Additionally, some countries have only one or limited opportunities for voluntary amendments.

Applicants are typically allowed one opportunity to amend claims during the international phase. The claim amendments are filed with the International Bureau of WIPO in response to the International Search Report. The deadline to file these amendments is within two months of the search report or sixteen months from the earliest priority date, whichever is later. These amendments will be published with the International Application.

If an Applicant enters Chapter II Examination, an Applicant may amend either the specification and/or claims at the time of filing the Demand for Chapter II Examination or in response to a Written Opinion.

When filing Non-PCT filings and/or direct applications, amendments can be made at varying times depending on the type of amendment (bibliographic information, specification, claims, drawings, etc.) and the country law. In general, it is important that amendments be made promptly to ensure deadlines are met. However, it is also important to consider costs and future amendments to strategize the most effective plan of action (which may mean amendments are delayed).

At the time of requesting examination, if an application contains more than fifteen claims, reducing the number of claims can result in significant savings – conversely, if examination is requested without a careful review of the claims, an Applicant might be unpleasantly surprised by a costly examination bill depending on the country and the number of claims. Additionally, even if a country allows amendments after examination, it is smart to file amendments either prior to or at the time of requesting exam, this way the application will be examined on merits, rather than delaying prosecution later.