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

[Scott Nielson]

Regarding question 1, I use Article 19 amendments to make amendments I would otherwise make in all jurisdictions when entering the national phase. It's a lot cheaper/easier to amend the claims in the international application then it is to send the same amendment to the attorney handling each national filing.

In practice, this means I only file Article 19 amendments to correct typographical errors, fix clarity issues identified in the ISR, and overcome novelty destroying references (standard for obviousness varies too much from place to place). However, since I have been using proofreading software, I rarely have typographical errors and/or clarity issues that would benefit from an Article 19 amendment. It's also rare for me to address novelty issues because I only do it when the following criteria is met: (1) the distinguishing amendment is apparent and the basis for the amendment is clear (e.g., move a dependent claim into an independent claim) and (2) the client likely intends to file in at least two or three jurisdictions (otherwise, just wait until national phase).

Regarding question 2, the examiner will apply Israel law to the question (just like how ISA/US and ISA/EP apply their respective law). If you want to dispute it, then you need to become familiar with Israel law or consult with someone who is. If you do not intend to file a national phase application in Israel and think that the issues raised likely do not apply to the places where you want to file, then just ignore the rejection.


Scott Nielson

801-660-4400

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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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