[Pct] When would you file an Article 19 Amendment?

[Carl Oppedahl]

This is discussed at some length in Lecture 8 at 
https://blog.oppedahl.com/the-2022-schwegman-advanced-pct-training/ .

Reason 1 that I talked about in that lecture ...

Suppose you want to collect pre-grant damages.  Well, the pre-grant 
damages are predicated on the content of your published claims.  To 
collect the pre-grant damages, among other things it has to work out 
that the conduct of the infringer is covered by the published claims.

So now let's imagine you filed a PCT application.  And the ISR/WO shows 
up and you realize that the claims as filed are not the claims you will 
later be asserting against infringers.  Then an Article 19 amendment is 
the perfect way to arrange for publication of the claims that you will 
later be asserting against infringers.  And you will be able to collect 
your pre-grant damages based on the Article 19 claims.

Reason 2 that I talked about in that lecture ...

You realize, after you filed your PCT application, that there is some 
claim amendment that you want to make that is going to be appropriate in 
every place where you are going to enter the national phase.  Maybe this 
is because you now realize you misspelled a word.  Or you now realize 
that to overcome some anticipatory reference there is just no choice you 
need to roll claim 2 up into claim 1.  Anyway, I am supposing that 
whatever the amendment is, it is going to be the same in every place 
where you are going to enter the national phase.   Say EPO, KIPO, JPO, 
CNIPA, and USPTO.

Well, you can treat Article 19 as noise.  In that case, you will be 
doing that amendment in EPO, KIPO, JPO and CNIPA after having entered 
the national phase in those four places.  And you will be sending $1000 
to local counsel in each of those four places to carry out the amendments.

Or you can use Article 19.  And you have just saved $4000.

On 1/22/2024 4:17 PM, David Boundy via Pct wrote:
> Article 19 Amendments were useful long ago.   But since the PCT 
> changed the default about 10-15 years ago so that 30 months was the 
> default, instead of only by paid Chapter II, I can't remember seeing 
> any use for an Article 19 Amendment. Article 34, yes.  Article 19, no.
>
> Am I missing something?  Or have Article 19 Amendments become noise 
> that I ought to get off my docket?
>
> Thanks
>
> David
>
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