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What amendments can be filed at the same time as entering U.S. national stage? I know that the claims can be amended, but is it possible to file amendments for the descriptions/drawings at the same time as entering U.S. national stage?

I would really appreciate it if someone could point me in the direction of the relevant laws and regulations that state this specifically as well.

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  • It is normally not possible to amend the description without filing a new patent. The US regulations however allow for this easier than the EU's for example. A patent attorney could help you with this. If for whatever reason you chose not to contact one, the USPTO's website should have the relevant laws for the US and the PCT regulations could help too. However, finding sth that might not be allowed and therefore not mentioned can be a lot of work (time reading possibly relevant parts).
    – user18033
    Jan 11, 2017 at 6:48
  • I think your question is highly specialized. I suggest you ask the same question at "Intellectual Property Law Server". Most people there are US-based, I am confident that you will find an answer there.
    – chempatent1981
    Jan 12, 2017 at 7:45

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Is it possible to file amendments for the descriptions/drawings at the same time as entering US national phase?

Yes.

Preliminary amendments can be filed when a PCT application enters the national phase in the US. This is apparent from 37 CFR 1.115, which provides:

(a) A preliminary amendment is an amendment that is received in the Office (§ 1.6 ) on or before the mail date of the first Office action under § 1.104.

…

(b)…(3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than: …

(iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application.

The types of amendments are governed by 37 CFR 1.121. In particular, 37 CFR 1.121(b) makes clear that the description can be amended and 37 CFR 1.121(d) makes clear that the drawings can be amended.

There are limits on the amendments. Notably, 37 CFR 1.121(f) provides:

No amendment may introduce new matter into the disclosure of an application.

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  • "No amendment may introduce new matter into the disclosure of an application." You should really stress the importance of this in your answer!
    – user18033
    Jan 12, 2017 at 15:32
  • Thank you, that is what I thought. That's why I was so confused when I read in a book published in 2013 on U.S. patents that only claims could be amended. I also found another major mistake, and I'm only on page 3. I guess that the book is going in the bin! Thank you for your very helpful clarification.
    – JCML
    Jan 14, 2017 at 7:46

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