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

[Scott Nielson]

I think you are right that there is supposed to be some common standard. Here<https://www.wipo.int/pct/en/texts/ispe/index.html> is the PCT guidelines for international search and preliminary examination. You might want to take a look in there for the applicable standard.


Scott Nielson

801-660-4400

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

Thanks for the answers to questions 1 and 2.   Here's a follow-up:

Question 3:  I have a memory that a PCT examiner is supposed to apply international norms and a "least common denominator" standard, not standards that are idiosyncratic to the national law of the ISA/IPEA.   I have looked for that in the Treaty itself and in the Administrative Instructions.  The closest hit is the Treaty Article 33(5), which I read to say "During national phase, do anything you want" but silent on the standards to be applied during Chapter I/II international phase.  Do you know of an instruction to PCT examiners to apply international norms?  Does such an instruction exist anywhere outside my clouded little mind?

(Dan Feigelson or other colleagues in Israel, this one's for you -- In this case, it's a rule that appears to be idiosyncratic to Israel about disregarding claim language -- kind of like our "intended use" or "printed matter" rule.  Reading between the lines, I gather that Israel has a rule that says "if the claim says "processor programmed to" and I think the claim should say whether the program is in memory or in the processor, then I get to blue pencil out the "programmed to" language and I can ignore it."  See question 2 below for a direct quote.)


On Tue, Feb 27, 2024 at 5:19 PM David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>> wrote:
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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