[Pct] What can I accomplish with an Article 19 Amendment? And question about "computer programmed to" claim?

[David Boundy]

Ah.  That makes sense, and it's a tangible benefit -- pay for translation
of one set of claims instead of two.

On Tue, Feb 27, 2024 at 5:36 PM Patent Lawyer <patentlawyer995 at gmail.com>
wrote:

> David,
>
>
>
>                 As always, others here can correct me.  But here’s one
> reason to use Article 19 amendments.
>
>
>
>                 When you enter the national phase in some countries (I
> believe, e.g., China), you must use the claims from the PCT application.
> You may have a later opportunity to amend the claims, but at the time of
> entry, you are stuck with the PCT claims.  And in some countries (again, I
> believe, e.g., China), you pay a fee per claim.
>
>
>
>                 So, if you have a PCT application with, say, 100 claims,
> you can use the Article 19 amendments to reduce the number of claims for
> fee purposes in some countries.  Then, you can enter the national phase
> with the Article 19 claim set (the reduced number of claims) in those
> countries.
>
>
>
>                 At least in the US, you can enter the national phase with
> or without the Article 19 amendments.  That may be the same for other
> countries/regions.  In that case, you are not stuck with the Article 19
> amendments if you don’t want them.
>
>
>
>                 Again, others here can correct me on the above.
>
>
>
>
>
>
>
>
>
> *From: *Oppedahl Lists <pct-bounces at oppedahl-lists.com> on behalf of
> David Boundy via Pct <pct at oppedahl-lists.com>
> *Reply-To: *"For users of the PCT and ePCT. This is not for laypersons to
> seek legal advice." <pct at oppedahl-lists.com>
> *Date: *Tuesday, February 27, 2024 at 5:22 PM
> *To: *for users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>
> *Cc: *David Boundy <DavidBoundyEsq at gmail.com>
> *Subject: *[Pct] What can I accomplish with an Article 19 Amendment? And
> question about "computer programmed to" claim?
>
>
>
> *Question 1.*  I still don't get the theoretical underpinning of Article
> 19 amendments.  On what I understand today, they're kind of notes in a
> bottle -- you throw them in the ocean and sooner or later they wash up on
> some foreign shore, and then maybe somebody reads them.   But I don't see
> that an ISA has to do anything with them during Chapter I?   If you want an
> ISA/IPEA to actually read the "informal remarks" and do anything with them,
> you have to file a Chapter II Demand?  Is that right?
>
>
>
> *Question 2.*   I've got a device-with-embedded-software invention, and
> it's being examined in ISA/Israel.   The invention is claimed as "a
> computer processor and memory, the processor programmed to..."  The IL
> examiner ignores the functional description of what the programs do, and
> reads the claim on a totally unrelated reference that uses a few similar
> keywords to explain that it does the prior art, before my invention comes
> along and improves it.  The ISA/IL examiner says
>
>
>
> The scope of the protection sought is defined as an apparatus by the
> claims, yet the tangible aspects of such
> an alleged apparatus are not sufficiently clear and not adequately
> exemplified by the description, contrary to
> article 5 and 6. Particularly, it is not clear which is the specific unit
> which should be responsible for the recited
> operations and what its interdependencies with other systems which is
> involved in the execution of the invention.
>
>
>
> My reaction as a U.S. attorney is that the examiner is cheating.   But
> that's probably not helpful.  Is the examiner right, is there any such
> provision in Articles 5 and 6?   If so, is the solution to rewrite the
> claim as "a processor, and a memory having programs stored therein, that
> when executed, cause the processor to..."  and then point out that the
> examiner's reference has nothing to do with the claim?
>
> --
>
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>
> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA  02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
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> <http://www.potomaclaw.com>*
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-- 


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*David Boundy *| Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

*dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*

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