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

[Williams, Audrey]

This was my understanding as well regarding China years ago.  And while many associates do not tend to give very straight-forward answers on this - I have had quite a few say that the fees are calculated based on the claims as originally filed, not the publication if Article 19 claims were filed.  I have asked a number of associates this and the consensus seems to be that this is the case so Article 19 does not get around the fee issues.  If someone has heard something else in recent years, I would be very interested.

The only way around this that I could think of was adding all of the claims into the description and then having a reduced claim set as the actual claims.  The upon voluntary amendments add in the claims from the specification since you do not have to pay to add claims after filing.  However, I was informed this was extremely sneaky - although not illegal.

From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of Patent Lawyer via Pct
Sent: Tuesday, February 27, 2024 5:37 PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Patent Lawyer <patentlawyer995 at gmail.com>; David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Pct] What can I accomplish with an Article 19 Amendment? And question about "computer programmed to" claim?

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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<mailto:pct-bounces at oppedahl-lists.com>> on behalf of David Boundy via Pct <pct at oppedahl-lists.com<mailto: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<mailto: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<mailto:pct at oppedahl-lists.com>>
Cc: David Boundy <DavidBoundyEsq at gmail.com<mailto: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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