(a)(3) Article 34 Amendments (Filed with the International Preliminary Examining Authority) [R-]
If entry of the page of translation causes inconsistencies in the description or claims of the international application the translation will not be entered
Amendments to the international application that were properly made under PCT Article 34 during the international preliminary examination phase (i.e., Chapter II) will be annexed by the International Preliminary Examining Authority to the international preliminary examination report (IPER) and communicated to the elected Offices. See PCT Article 36, PCT Rule , and MPEP § (e). If these annexes are in English, they will normally be entered into the U.S. national stage application by the Office absent a clear instruction by the applicant that the annexes are not to be entered. In this regard, the «Transmittal Letter To The United States Designated/Elected Office (DO/EO/US) Concerning A Submission Under 35 U.S.C. 371» (Form PTO-1390) available at includes a check box by which the applicant may expressly instruct the U.S. Designated/Elected Office
Non-entry of the annexes will be indicated on the «NOTICE OF ACCEPTANCE OF APPLICATION UNDER 35 U
Where an English translation of the annexes is provided, the translation must be such that the translation of the originally filed application can be changed by replacing the originally filed application page(s) (of translation) with substitute page(s) of translation of the annex. Thus, applicant should check to be sure that the English translation can be entered by substituting the pages of translation for corresponding pages of the description or claims of the international application without leaving an inconsistency. S.C. 371 AND 37 CFR 1.495″ (Form PCT/DO/EO/903). This enables the original translated first page of claims to be replaced by the translation of the annex without changing the subsequent unamended page(s). Alternatively applicant endment in accordance with 37 CFR 1.121. The fact that an amendment made to the international application during the international phase was entered in the national stage application does not necessarily mean that the amendment is proper. Specifically, amendments are not permitted to introduce «new matter» into the application. See PCT Article 34(2)(b). Where it is determined that such amendments introduce new matter into the application, then the examiner should proceed as in the case of regular U.S. national applications filed under 35 U.S.C. 111(a) by requiring removal of the new matter and making any necessary rejections to the claims. See MPEP §§ and .