After a PCT applicant receives a search report and written opinion, he may wish to respond to the Examiner’s comments “on the record.” There are two ways this can be done – under Article 19 (Chapter I) or under Article 34 (Chapter II). Let’s compare these two procedures with a summary chart:
Comparison of Article 19 and Article 34 amendments
| Chapter I (Article 19) | Chapter II (Article 34) | |
| What is covered | Claims only | Description, claims, drawings |
| Number of occasions to respond | One opportunity only | Multiple opportunities possible, but amendments need not be considered if they are received after the examiner has begun to prepare another written opinion or the report. |
| Goal | For provisional protection and to overcome prior art applied by ISA | To overcome prior art applied by ISA and IPEA |
| Where it is effective | Effective in all designated offices | Effective in all designated offices |
| When the response is filed | Filed within the later of 2 months of transmittal of the ISR or 16 months from the priority date | Filed together with the Demand or within the 54bis. One time limit for filing a Demand; later amendments are possible |
| Where the response is filed | Filed directly with International Bureau | Filed directly with IPEA |
| How the response is reviewed | Formality review by International Bureau | Formality review and substantive examination by IPEA |
| When the response is published | Published together with the international application as filed | Are not published, but are available in PATENTSCOPE after 30 months. |
| How is effects patent prosecution | Serves as a basis for examination by IPEA where a Demand is filed, unless it is reversed | Serves as a basis for examination by IPEA, unless it is superseded |