File Substitute Claim Pages

46.5 Form of Amendments

Responses to PCT Search Reports and Written Opinions must include replacement sheets for claims, specification, abstract, and drawing. It is not sufficient, for example, to merely list the amended claims as is done in prosecution before the USPTO. The response must include a replacement sheet for every sheet of the claims that, on account of an amendment or amendments under Article 19, differs from the sheet originally filed . In addition, the letter accompanying the replacement sheets must draw attention to the differences between the replaced sheets and the replacement sheets. Of course, both replacement pages and the letter must be on A4 paper.

The PCT practice of renumbering claims is also different from practice before the USPTO. In PCT practice the claims are always renumbered upon each amendment so that the numbers are consecutive, without any voids. For example, if claim number six of twenty is canceled, the remaining claims must be renumbered one through nineteen. In USPTO practice, one would mark claim six as canceled, and leave the numbering of claims two through twenty alone. A typical format for the response includes the following:

1. Applicant herewith submits replacement sheets(s) number(ed) ________ to replace sheet(s) number(ed) ________, originally filed for this application.

2. In respect of each claim appearing in the international application based on the replacement sheets submitted herewith, the following claim(s) is/are:

(i) unchanged: claim(s) ---

(ii) cancelled: claim(s) ---

(iii) new: claim(s) ---

(iv) replacement of one or more claims as filed, as follows: ---

(v) the result of the division of one or more claims as filed, as follows: ---