World Intellectual Property Organization

Chapter 6, International Phase of the PCT Applicant's Guide

CHAPTER 6:  PROCESSING OF THE INTERNATIONAL APPLICATION BY THE RECEIVING OFFICE

GENERAL

6.001.   What are the main procedural steps at the receiving Office?  The main procedural steps that any international application goes through at the receiving Office are the following:

Article 10

(i)  the international application and the related fees are received by the receiving Office;

Article 11(1)
14(1)(a)

(ii)  the international application is checked by the receiving Office to determine whether it meets the requirements prescribed by the PCT as to the language, form and contents of international applications (the checks performed by the receiving Office are of a formal nature and do not go into the substance of the invention);

Article 11(2)(a)
14(1)(b)
Rule 20.1
20.3
26.1

(iii)  where the checks made by the receiving Office show that the international application does not meet certain requirements as to fees, language, form and contents, that Office invites the applicant to furnish the necessary corrections;

Article 11(1)
11(2)(b)
Rule 20.2

(iv)  where – possibly after correction (see paragraphs 6.024 to 6.053) – the checks made by the receiving Office show that the international application meets the requirements prescribed for that purpose by the PCT, an international filing date is accorded to the international application by the receiving Office;

Article 12
Rule 22
23

(v)  copies of the international application, its translation, where applicable, and other related documents are transmitted by the receiving Office to the International Searching Authority and to the International Bureau so that they may carry out the procedural steps for which they are responsible in the further processing of the international application.

Rule 3.1
11
19
89ter

6.002.   What are the additional procedural steps at the receiving Office for processing a request form print-out prepared using the PCT-SAFE software?  For those receiving Offices which have indicated that they are prepared to accept such requests, in addition to those procedural steps listed in paragraph 6.001, the receiving Office will review each request form print-out prepared using the PCT-SAFE software to ensure that: 

(i)  the request is presented as a computer print-out prepared using the PCT-SAFE software; 

(ii)  the request is filed together with a computer diskette prepared using the PCT-SAFE software;  and

(iii)  the computer diskette contains a copy in electronic form of the data contained in the request and the abstract.

See paragraphs 5.189, 6.007, 6.033 and 11.094 to 11.101 for further details about the processing of requests prepared using the PCT-SAFE software.

Rule 92.4

6.003.   How does the international application reach the receiving Office?  The international application may be deposited with or mailed to the receiving Office.  It may also be filed by other means of rapid communication, notably by facsimile machine, provided that the receiving Office places such facilities at the disposal of applicants and that the original is furnished within 14 days, if so required by the receiving Office (see Annexes B). The requirements in relation to filing the international application and any subsequent documents by facsimile machine are explained in more detail in paragraphs 11.067 to 11.070.

Article 30

6.004.   Is the international application treated as confidential by the receiving Office?  Yes, it is.  Third parties are not permitted to have access to the international application, unless requested or authorized by the applicant, before the date of international publication. Designated Offices are, however, permitted to publish the fact that they have been designated, together with a limited amount of bibliographic data.  For further details as to confidentiality, see Article 30 and paragraphs 11.072 to 11.074.


INTERNATIONAL FILING DATE

Article 11(1)
Rule 20.1
20.2

6.005.   What are the conditions that must be fulfilled for the international application to be entitled to an international filing date?  The receiving Office must accord an “international filing date” to the international application if it finds that the following conditions are fulfilled:

(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office (see paragraphs 5.008, 5.020 and 5.023);

(ii) the international application is in the prescribed language (see paragraph 6.006);

(iii) the international application contains at least the following elements:

(a) an indication that it is intended as an international application,

(b) a request which constitutes the designation of a Contracting State bound by the PCT on the international filing date (under Rule 4.9(a) – see paragraph 5.052),

(c) the name of the applicant (for this purpose it is sufficient if the name of the applicant is indicated in a way which allows his identity to be established, even if the name is misspelled, or the given names are not fully indicated, or, in the case of legal entities, the indication of the name is abbreviated or incomplete),

(d) a part which on the face of it appears to be a description,

(e) a part which on the face of it appears to be a claim or claims.

Article 11(1)(ii)
and (iii)
Rule 12.1
20.1(c)
and (d)

6.006.   For the purposes of according an international filing date, the requirement that the international application be in a prescribed language is met, in most receiving Offices, if the description and claims (but not necessarily the other elements of the international application) are in a language accepted by the receiving Office under Rule 12.1(a) and (c) (see Rule 20.1(c) and paragraph 5.013).  If any of the other elements of the international application are not in a language accepted by the receiving Office, they may be corrected later without affecting the international filing date (see paragraphs 6.032 and 6.034).  A translation will need to be furnished by the applicant in respect of any international application which is filed in a language which is not a language accepted by the International Searching Authority which is to carry out the international search and/or a language of publication;  see paragraphs 6.013 to 6.020).  In certain Offices, however, Rule 20.1(c) is incompatible with the applicable national law.  For as long as that incompatibility continues, that Rule will not apply for those Offices;  all elements of an international application filed with those Offices as receiving Office must therefore comply with the language requirements of Rule 12.1 before an international filing date can be accorded (see Annex C for details).

Article 11(1)
Rule 3.1
11.3
20

6.007.   What is the effect of failing to file a paper copy of the international application when the request is prepared as a print-out using the PCT-SAFE software?  A PCT-EASY physical medium filed alone 
– without any corresponding application papers – does not meet the requirements for according an international filing date.  The paper form of the international application remains the legally determinative version.  Thus, the paper form of the international application which accompanies a request prepared using PCT-SAFE must contain the required elements in order to receive an international filing date.  See paragraph 6.033 for further details about receiving an international filing date for requests prepared using the PCT-SAFE software.

Article 11(1)
11(2)(b)
Rule 20.1
20.2

6.008.   What date is accorded as the international filing date?  The reply to this question depends on whether the requirements for according an international filing date (see paragraph 6.005) were fulfilled on the date on which the international application was received by the receiving Office, or, pursuant to Rule 20.6, considered to have been received (see paragraph 6.026 to 6.031), or – following correction of defects in relation to those requirements – on a later date.  The international filing date will, in the former case, be the date on which the international application was received by the receiving Office and, in the latter case, the date on which the correction was received by the receiving Office.  Naturally, any correction has to comply with some conditions;  in particular it has to be filed within a certain time limit.  More is said about this in paragraph 6.025.  Where all the sheets pertaining to the same international application are not received on the same day by the receiving Office, see paragraph 6.026.

Article 11(3)
11(4)
14(3)
Rule 27

6.009.   Does non-payment, incomplete payment or late payment of fees influence the international filing date?  No, it does not, however, those defects will eventually lead the receiving Office to declare that the international application is considered withdrawn (see paragraphs 5.195 and 5.196).  Although an international application which has not been accorded an international filing date and an international application which is considered withdrawn are both excluded from further processing in the international phase, an international application which fulfills the requirements necessary for it to be accorded an international filing date may be invoked as a priority application under the Paris Convention for the Protection of Industrial Property (if the conditions laid down by that Convention are fulfilled) even where the international application is considered withdrawn under the PCT (for non-payment of fees or other reasons).

Article 27(8)
Rule 22.1
Section 330

6.010.   Can the receiving Office refuse to treat an international application as such for reasons of national security?  Each Contracting State is free to apply measures deemed necessary for the preservation of its national security.  For example, each receiving Office has the right not to treat an international application as such and not to transmit the record copy to the International Bureau and the search copy to the International Searching Authority.  Compliance with national security prescriptions where the international application is filed with the International Bureau as receiving Office will not be checked by the International Bureau;  such compliance is the applicant’s responsibility.  Where an international filing date has been accorded but national security considerations prevent transmittal of the record copy, the receiving Office must so declare to the International Bureau before the expiration of 13, or at the latest 17, months from the priority date.

Rule 20.2
20.5(c)
20.4(i)
22.1
29.1(ii)

6.011.   How does the applicant know whether his application has been accorded an international filing date or that his application is not treated as an international application or is considered to have been withdrawn?  Where the receiving Office accords an international filing date to the international application, it promptly notifies the applicant of that date and of the international application number;  where it decides that the international application is not to be treated as an international application (because of a negative determination for lack of compliance with Article 11, or because national security considerations prevent it from being treated as such) or is to be considered withdrawn, it promptly notifies the applicant accordingly.

Article 14(4)
Rule 29.1
29.4
30.1
82ter.1
Section 312

6.012.   Can an international filing date once accorded be “taken away”?  If, after having accorded an international filing date, the receiving Office finds that it should not have accorded it, the international application is considered withdrawn and the receiving Office so declares and promptly notifies the applicant.  However, such a finding may validly occur only during the four months following the international filing date and must be preceded by a notification to the applicant of the intention to make the declaration which should, where applicable, also include an invitation to confirm the incorporation of missing elements in accordance with Rule 20.6(a).  The applicant has the right to submit arguments within two months from the notification or, where applicable, confirm the incorporation by reference of missing elements.  For the rectification of errors made by the receiving Office in according the international filing date, see Rule 82ter.1 and the National Phase, paragraph 6.028.


TRANSLATION OF INTERNATIONAL APPLICATIONS

Rule 12.1

6.013.   When is a translation of the international application required?  Every receiving Office must accept, for the purpose of filing international applications, at least one language which is both a language of publication and a language accepted by the International Searching Authority, or, if applicable, by at least one of the International Searching Authorities, competent for the international searching of international applications filed with that receiving Office.  In addition, any receiving Office may accept one or more other languages for the purpose of filing international applications.  A translation of the international application is required when the language in which the international application is filed is a language which is not a language of publication and/or a language accepted by the International Searching Authority which is to carry out the international search.

Rule 12.3

6.014.   What are the translation requirements if the international application is filed in a language which is not accepted by the International Searching Authority?  Where the language in which the international application is filed is not accepted by the International Searching Authority that is to carry out the international search, the applicant must furnish, to the receiving Office, a translation of the international application into a language which is both a language accepted by that Authority and a language of publication.  Moreover, unless the international application was filed in a language of publication (see paragraph 9.017), the language into which the international application is translated must also be a language in which international applications may be filed with the receiving Office concerned.  No translation is required of any sequence listing part of the description which complies with the standard provided for in Annex C of the Administrative Instructions.  (Concerning translation of the request, see paragraph 6.019.)

6.015.   The translation of the international application must be furnished to the receiving Office within one month from the date on which the international application was received by that Office.  Where, by the time the receiving Office notifies the applicant of the international application number and international filing date, the applicant has not furnished the required translation, the receiving Office will, preferably together with that notification, invite the applicant to furnish the required translation either within the time limit of one month from the date on which the international application was received by the receiving Office, or, in the event that the required translation is not furnished within that time limit, to furnish it and to pay, where applicable, the late furnishing fee (see paragraph 6.017), within one month from the date of the invitation or two months from the date of receipt of the international application by the receiving Office, whichever expires later.

6.016.   Where the receiving Office has sent to the applicant an invitation to furnish the translation and, where applicable, pay the late furnishing fee, and the applicant has not done so within the applicable time limit, the international application will be considered withdrawn and the receiving Office will so declare.  However, any translation and any payment which are received by the receiving Office before that Office makes the declaration that the international application is considered withdrawn, and before the expiration of 15 months from the priority date, will be considered to have been received before the expiration of the applicable time limit.

Rule 12.3(e)

6.017.   The late furnishing fee which any receiving Office may collect for translations which are furnished after the expiration of the time limit of one month from the date on which the international application is received by the receiving Office, is equal to 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.

Rule 26.3ter(c)

6.018.   What are the translation requirements if the abstract or text matter in the drawings of the international application are in a language which is different from the language of the description and claims?  If the abstract or text matter in the drawings of the international application is in a language which is different from the language of the description and claims, then the receiving Office will invite the applicant to furnish a translation of the abstract or the text matter of the drawings into the language in which the international application is to be published.  However, no such invitation will be issued if the abstract or text matter in the drawings is in the language in which the international application is to be published, or if a translation of the international application is required because the language in which the international application was filed is not accepted by the International Searching Authority which is to perform the international search.

Rule 12.1(c)
26.3ter(c)

6.019.   What are the translation requirements if the request is in a language which is not a language of publication accepted by the receiving Office for the purpose of filing the request?  Whatever the language in which the description and claims are filed, the request must always be filed in a language of publication accepted by the receiving Office for the purposes of filing the request.  If the request is in a language which does not fulfill this requirement, the receiving Office invites the applicant to file a translation that complies with it.

Rule 12.4
48.3

6.020.   What are the translation requirements if the international application is filed in a language which is accepted by the International Searching Authority, but is not a language of publication?  If the international application is filed in a language which is not a language of publication but is a language accepted by the International Searching Authority which is to carry out the international search, the applicant must furnish to the receiving Office a translation of the international application into a language of publication which the receiving Office accepts for that purpose.  No translation is required of any sequence listing part of the description which complies with the standard provided for in Annex C of the Administrative Instructions.  (Concerning the translation of the request, see paragraph 6.019.)

6.021.   The translation of the international application must be furnished to the receiving Office within 14 months from the priority date.  Where the applicant has not furnished the required translation within the applicable time limit, the receiving Office will invite the applicant to furnish the required translation, and to pay, where applicable, the late furnishing fee (see paragraph 6.023), within 16 months from the priority date.

6.022.   Where the receiving Office has sent to the applicant an invitation to furnish the translation and, where applicable, pay the late furnishing fee, and the applicant has not done so within the applicable time limit, the international application will be considered withdrawn and the receiving Office will so declare.  However, any translation and any payment which are received by the receiving Office before that Office makes the declaration that the international application is considered withdrawn, and before the expiration of 17 months from the priority date, will be considered to have been received before the expiration of the applicable time limit.

6.023.   The late furnishing fee which any receiving Office may collect for translations which are furnished after the expiration of the time limit of 14 months from the priority date, is equal to 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.


CORRECTION OF DEFECTS AND INCORPORATION BY REFERENCE OF MISSING ELEMENTS OR PARTS

6.024.   What defects in the international application may be corrected and within what time limits?  The following paragraphs attempt to give general answers to those questions in the characteristic cases of possible defects.

6.025.   What defects influence the international filing date?

(i)  Where the receiving Office finds that the international application does not comply with the requirements for according an international filing date – in other words:

Article 11(1)(i)

(a) that the applicant obviously lacks, for reasons of residence and nationality, the right to file an international application with the receiving Office (but see also paragraphs 6.035 and 6.036);

Article 11(1)(iii)(a)

(b) that the international application does not contain an indication that it is intended as an international application;

Article 11(1)(iii)(b)

(c) that the international application does not contain a request which constitutes the designation of all Contracting States bound by the PCT on the international filing date (under
Rule 4.9(a) – see paragraph 5.052);

Article 11(1)(iii)(c)

(d) that the international application does not contain the name of the applicant or does not contain at least the minimum indications concerning the name of the applicant which are indicated in paragraph 6.005(iii)(c);

Article 11(1)(iii)(d)and (e)

(e) that the international application does not contain a part which, on the face of it, appears to be a description and a part which, on the face of it, appears to be a claim or claims;

Article 11(1)(ii)
Rule 19.4
20.3
20.6
20.7

the receiving Office invites the applicant to correct the defect.  The time limit for filing the correction is two months from the date of the invitation to correct.  If the correction is made within the time limit, the date of receipt of the correction becomes the international filing date;  otherwise, the application is not treated as an international application (but see also paragraphs 6.035 and 6.036 in relation to the applicant’s residence and nationality, and paragraphs 6.013 to 6.020 for applications filed in a language which is accepted by the receiving Office but which is not both a language accepted by the International Searching Authority which is to carry out international searching, and a language of publication).  Where the defect concerns item (i)(e) above, the receiving Office will invite the applicant to confirm in accordance with Rule 20.6 that the missing element concerned was incorporated by reference under Rule 4.18 (see paragraphs 6.027 to 6.031), in which case it may be possible to retain the earlier date as the international filing date.  Where the required elements of the international application are not in a language accepted by the receiving Office, that Office will transmit the international application to the International Bureau as receiving Office under Rule 19.4 (noting that the International Bureau as receiving Office is prepared to accept international applications filed in any language;  see paragraph 6.034 and Annex C).

Article 14(2)
Rule 20.5(e)
20.7

(ii)  Where the receiving Office finds that parts of the description, claims, all drawings or parts thereof are, or appear to be, missing, it notifies the applicant accordingly and invites the applicant to correct the defect or else, where appropriate, to confirm in accordance with Rule 20.6 that the missing part was incorporated by reference under Rule 4.18 (see paragraph 6.027 to 6.031 for details).  The time limit for furnishing such missing parts is two months from the date of the invitation.  If there is no such invitation and if the applicant notices and wishes to correct the defect on his own initiative, this is also permitted within a time limit of two months from the date on which papers were first received by the receiving Office.  If the missing parts are furnished within that time limit, the date of their receipt becomes the international filing date, unless the applicant is able to confirm in accordance with Rule 20.6 that the missing part concerned was incorporated by reference under Rule 4.18 (see paragraphs 6.027 to 6.031), in which case it may be possible to retain the earlier date as the international filing date.  Where missing drawings referred to in the international application are not furnished within the time limit, any references to drawings in the international application are considered non-existent and the international filing date remains as originally accorded.  Note, however, that, where the international filing date is corrected to a later date, any priority claim will be considered void, for the purposes of the procedure under the PCT, if the accorded international filing date falls outside the two month period after the expiration of the priority period of the priority claim concerned (see paragraphs 5.060 and 6.038).  Where the international filing date has been corrected, the applicant may, in a notice submitted to the receiving Office within one month from the date of mailing of the notification of later submitted parts (Form PCT/RO/126), request that the missing part be disregarded in order to preserve the date on which papers were first received as the international filing date and, where applicable, to retain the priority claim (Rule 20.5(e)).

Rule 20.3(b)
20.5(b),
(c) and (d)
20.7

6.026.   What happens if all sheets of the international application are not received on the same day?   The receipt of further sheets after an invitation to correct has been sent under Article 11(2)(a) or 14(2) (see paragraph 6.025) generally results in the date of receipt of those further sheets being accorded as the international filing date, provided that they are received within the applicable time limit under Rule 20.7, and unless the applicant is able to include these later submitted sheets by way of incorporation by reference (see paragraphs 6.027 to 6.031).  If no invitation to correct has been sent but all the sheets relating to the same purported international application (apart from the abstract) are not received on the same day by the receiving Office, and the applicant has not confirmed the incorporation by reference of those later submitted sheets, the Office corrects the request by marking on it the date on which the papers completing the international application were received, and that later date is accorded as the international filing date, provided that the later sheets were received within two months from the date on which sheets were first received.  Each sheet is marked with the date on which it was actually received.  The absence or late receipt of the abstract does not, of itself, result in correction of the date marked on the request or in the according of a later international filing date.

Rule 19.4(a)(iii) 20.3
20.5
20.8

6.027.   Can missing pages be added to an international application without affecting the international filing date?  This is possible under certain circumstances, but the resulting international filing date will not be recognized in some Contracting States (see paragraph 6.031).  Under Rule 4.18, where an element of the international application referred to in Article 11(1)(iii)(d) or (e) or a part of the description, claims or drawings referred to in Rule 20.5(a) is not otherwise contained in the international application but is completely contained in the earlier application of which priority is claimed on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, it is possible to incorporate by reference these missing elements or parts into the international application.  Such incorporation by reference will have the effect that the elements or parts which have been incorporated by reference will be considered to have been received on the date on which one or more elements referred to in Article 11(1)(iii) were first received.  As a result, the international filing date would remain the date when one or more elements referred to in Article 11(1)(iii) were first received (provided that all other Article 11 requirements for the according of a filing date are met).  These procedures do not apply if the receiving Office has notified the International Bureau under Rule 20.8(a) that any of Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 are not compatible with its national law.  Such a receiving Office will therefore neither invite nor accept a confirmation of the incorporation by reference.  Instead, the receiving Office would apply the above described correction procedure (paragraph 6.025).  A list of Offices which have notified the International Bureau under Rule 20.8(a) and which will therefore not accept the incorporation by reference of missing elements or parts can be found on WIPO’s website at www.wipo.int/pct/en/texts/reservations/res_incomp.html#R_20_8_a.  If the need to incorporate certain missing elements or parts becomes apparent after the international application has been filed, the applicant may request the receiving Office to transmit the international application to the receiving Office of the International Bureau under Rule 19.4(a)(iii), which does accept the incorporation by reference of missing elements or parts.

Rule 4.18
20.6

6.028.   How should missing elements or parts be incorporated by reference into the international application?  A statement of incorporation by reference referred to in Rule 4.18 must have been included in the international application on the date when one or more elements referred to in Article 11(1)(iii) are first received by the receiving Office.  Such a statement is automatically included if Form PCT/RO/101 or PCT-SAFE is used to file the international application.  If such a statement was not contained in the request at the time of filing, it can only be added to the request if it was otherwise contained in, or submitted with, the international application on the date of filing.  Furthermore, one or several priority claims to earlier applications which completely contain the missing element or part must have been made in the international application at the time of filing.  Adding such priority claims under Rule 26bis.1(a) would not be sufficient.  If these requirements have been met, the applicant should confirm the incorporation by reference by way of a written notice to the receiving Office within the time limit indicated below.  Such notice should be accompanied by:

 

     – a sheet or sheets embodying the entire element or part as contained in the earlier application;

 

     – where the applicant has not already complied with the requirements of Rule 17.1(a), (b) or b-bis, a copy of the earlier application as filed;

 

     – where Rule 20.6(a)(iii) applies, a translation or translations of the earlier application;  and

 

     – in the case of a missing part, an indication as to where the missing part is contained in the earlier application and, where applicable, in any translation of the earlier application.

Rule 20.7

6.029.   What is the time limit for confirming the incorporation by reference of missing elements or parts?  Where no invitation by the receiving Office has been sent to submit missing elements or parts (Form PCT/RO/103 or PCT/RO/107), the time limit to confirm is two months from the date on which papers were first received by the receiving Office.  Where such an invitation has been issued, the time limit to confirm is two months from the date of mailing of this invitation.  If this time limit expires after the expiration of 12 months from the filing date of the earliest application, the priority of which is claimed, the receiving Office will draw this circumstance to the attention of the applicant (as a warning that, if the missing elements or parts are not confirmed to have been incorporated by reference and the international filing date is thus corrected to a date after the expiration of the priority period, the correction of the international filing date may result in the loss of the right of priority;  the same applies, even if the missing elements or parts are confirmed to have been incorporated by reference, with regard to those States which do not apply the provisions concerning incorporation by reference (see paragraph 6.031)).  For missing elements, where the applicant has neither submitted a correction under Article 11(2) nor a notice under Rule 20.6(a) confirming the incorporation by reference of missing elements referred to in Article 11(1)(iii)(d) or (e) prior to the expiration of this two-month time limit, any such correction or notice received by the receiving Office after the expiration of that time limit, but before it has sent a notification under Rule 20.4(i) (Form PCT/RO/104) to the applicant, is considered to have been received within the time limit (Rule 20.7(b)).

Rule 20.3(b)(i) 20.4
20.5(c)
20.5(e)

6.030.   What are the consequences if the requirements for the incorporation by reference are not complied with?  If not all of the requirements for the incorporation by reference are fulfilled (for example, if a missing element or part is not entirely contained in the earlier application), the international application will be assigned a later international filing date (the date of receipt of the missing element or part, to the extent that all other requirements of Article 11(1) are complied with on that date) (see paragraphs 6.025 and 6.026).  In the case of missing parts, the applicant may, however, request that the missing part be disregarded, in accordance with Rule 20.5(e).

Rule 20.8(c) 82ter.1

6.031.   What are the effects of the successful incorporation of missing elements or parts on designated or elected Offices?  In most Contracting States, the elements or parts will be treated as if they had actually been contained in the international application as originally filed.  Designated and elected Offices may, to a limited extent, review decisions by receiving Offices which have allowed incorporation by reference (Rule 82ter.1(b)).  If the designated or elected Office finds that:  the applicant did not comply with its obligation to furnish a priority document;  the statement of incorporation was missing or not submitted with the request;  no written notice confirming incorporation by reference was submitted;  no required translation was furnished;  or the element or part in question was not completely contained in the priority document;  then the designated or elected Office may treat the international application as if the international filing date had been accorded on the basis of the date on which the sheets containing the missing elements or parts were submitted, but only after giving the applicant the opportunity to make observations on this outcome and/or to request that, at least, the missing parts which had been furnished be disregarded, in accordance with Rule 82ter.1(d).

 

However, those designated Offices which have submitted notifications of incompatibility under Rule 20.8(b), may treat the international application as if the international filing date had been accorded on the basis of the date on which the sheets containing the missing elements or parts were submitted, but also only after having given the applicant the opportunity to make observations on this outcome and/or to request that, at least, the missing parts which had been furnished be disregarded, pursuant to Rule 20.8(c).

6.032.   What defects do not influence the international filing date?  Where the receiving Office finds that

Article 14(1)(a)(i)
Rule 2.3
4.1(d)
4.15

(i)  the international application is not signed (or, in the cases referred to in paragraph 5.091, does not bear a seal;  see also paragraph 11.027 for cases where an applicant refuses to sign or cannot be found or reached);

Article 14(1)(a)(ii)
Rule 4.4
4.5

(ii)  the international application does not contain the name of the applicant presented in the prescribed way (other than those referred to in paragraph 6.005(iii)(c), for which case see paragraph 6.025(i)(d)), or the prescribed indications in respect of at least one of the applicants – these indications are specified in Rules 4.4 and 4.5;  they include, in particular, the applicant’s address, residence and nationality;

Article 14(1)(a(iii)
Rule 4.3

(iii)  the international application does not contain a title (that is, a title for the claimed invention);

Article 14(1)(a)(iv)
Rule 8

(iv)  the international application does not contain an abstract;

Article 14(1)(a)(v)
Rule 11
26.3

(v)  the international application and, where applicable, the translation of the international application, does not comply, to the extent provided for in the Regulations, with the prescribed physical requirements (the physical requirements are specified in detail in Rule 11;  compliance with them must be checked only to the extent that such compliance is necessary for the purpose of reasonably uniform international publication, and no international application will be considered withdrawn for lack of such compliance if it complies to the extent necessary for the purpose of reasonably uniform international publication);

Article 3(4)(i)
Rule 12.1
26.3ter(a)

(vi)  any element of the international application, other than the description and claims, is not in an admitted language (see paragraphs 5.013, 6.005(ii) and 6.006);

Article 14(1)(b)
Rule 26.1
26.2
26.2bis(b)
26.3ter(b)
26.5
29.1

the receiving Office invites the applicant to correct the defect (however, regarding international applications which are filed in a language which is accepted by the receiving Office but require translation, see paragraphs 6.013 to 6.020).  The time limit for filing the correction is two months from the date of the invitation.  If the correction is made within the time limit (including any extension – see paragraph 6.037), the international filing date remains the date on which the international application was received by the receiving Office;  otherwise, the international application is considered withdrawn. In certain Offices, however, the provisions of Rule 26.3ter(a) for correction of elements not in an accepted language are incompatible with the applicable national law.  For as long as that incompatibility continues, that Rule will not apply for those Offices;  all elements of an international application filed with those Offices as receiving Office must therefore comply with the language requirements of Rule 12.1 before an international filing date can be accorded (see also paragraph 6.006 and see Annex C for details).

Article 11(1)
Rule 89ter
Section 102(i)
102bis

6.033.   What defects in request form print-outs prepared using the PCT-SAFE software do not affect the international filing date?  The following defects in requests prepared using the PCT-SAFE software do not affect the international filing date: 

(i)  the request in PCT-SAFE format is filed without the PCT-EASY physical medium; 

(ii)  the PCT-EASY physical medium does not contain an abstract;  or

(iii)  the PCT-EASY physical medium, accompanying a paper copy of the request, is defective or incomplete.

These defects may render the applicant ineligible to receive the fee reduction under Schedule of Fees, item 4(a).  However, if the applicant furnishes, before the receiving Office transmits the record copy to the International Bureau, a PCT-EASY physical medium which is not defective and which contains the required indications, the applicant is eligible to receive the fee reduction although he did not provide the diskette at the time of filing the application.  See paragraph 5.189 for further information on the fee reduction associated with PCT-SAFE;  see paragraph 6.002 for further details on the processing of request form print-outs prepared using the PCT-SAFE software.

Rule 19.4(a)(ii),
(b) and (c)

6.034.   What happens if the application is filed in a language which is not accepted by the receiving Office?  If the international application is filed in a language which is not a language accepted by the national (or regional) Office with which it is filed, but is in a language accepted by the International Bureau as receiving Office, that international application will be considered to have been received by that Office on behalf of the International Bureau as receiving Office.  In fact, the International Bureau as receiving Office accepts international applications filed in any language (see Annex C).  In such a case, the international application will be date-stamped by the national (or regional) Office concerned and promptly transmitted to the International Bureau (unless this is prevented by national security prescriptions).  That transmittal may be subjected to the payment of a fee equal to the transmittal fee (see paragraph 5.184(i) and Annex C), but other fees paid will be refunded by the national (or regional) Office to the applicant and the applicable fees will then have to be paid to the International Bureau as receiving Office (see Annex C).  The international application so transmitted will be considered to have been received by the International Bureau as receiving Office on the date on which it was received by the national (or regional) Office, except that, for the purposes of calculating the time limits for paying the fees due on filing the international application to the competent receiving Office, the date of receipt of the international application is considered to be the date on which the international application was actually received by the International Bureau as receiving Office.

Rule 19.4(a)(i),
(b) and (c)

6.035.   What happens if the applicant is a resident or national of a Contracting State but files the application with a “non-competent” receiving Office?  If the international application is erroneously filed with a national (or regional) Office which acts as a receiving Office under the Treaty by an applicant who is a resident or national of a Contracting State, but that Office is not competent under Rule 19.1 or 19.2 (having regard to the applicant’s residence and nationality) to receive the international application, the international application will be considered to have been received by the Office with which it was filed on behalf of the International Bureau as receiving Office (see paragraphs 5.008 and 5.009).  In such a case, the international application will be date-stamped by the national (or regional) Office concerned and promptly transmitted to the International Bureau (unless this is prevented by national security prescriptions).  That transmittal may be subjected by the national Office to the payment of a fee equal to the transmittal fee (see paragraph 5.184(i) and Annex C), but other fees paid will be refunded by the national Office to the applicant and the applicable fees will then have to be paid to the International Bureau as receiving Office (see Annex C (IB)).  The international application so transmitted will be considered to have been received by the International Bureau as receiving Office on the date on which it was received by the national (or regional) Office, except that, for the purposes of calculating the time limits for paying the fees due on filing the international application, the date of receipt of the international application is considered to be the date on which the international application was actually received by the International Bureau as receiving Office.

Article 11(1)(i)
14(1)(a)(ii)
Rule 4.5
Section 329

6.036.   May the applicant correct indications of residence and nationality?  If the indications of the applicant’s residence and nationality as stated in the request do not support the applicant’s right to file an international application (see paragraphs 5.020, 5.023 and 6.005(i)), that is, if the applicant appears not to be (or, where there are two or more applicants, none of the applicants appears to be) a resident or national of a Contracting State, there is prima facie a defect under Article 11(1)(i) and the receiving Office issues an invitation accordingly to correct that defect (see paragraph 6.025(i)(a)).  In such a case, it may be that the applicant is able to show that he had, on the date on which the international application was actually received by the receiving Office, the right to file an international application with that receiving Office.  In those circumstances, the applicant should submit evidence to the receiving Office accordingly, together with a proposed correction of the indications concerning his residence and/or nationality.  If the receiving Office is satisfied, on the basis of that evidence, of the applicant’s right to file the international application, the invitation to correct the defect under Article 11(1)(i) will be considered to be an invitation to correct a defect under Article 14(1)(a)(ii) and Rule 4.5 in the prescribed indications concerning the applicant’s residence and/or nationality, and the indications may be corrected accordingly.  If such a correction is made, no defect will be considered to exist under Article 11(1)(i), and the defect will thus not prevent the accordance of the actual date of receipt of the international application as the international filing date.  Note, however, that the United States Patent and Trademark Office as receiving Office has stated that it will not apply the procedure outlined above.

Rule 26.2

6.037.   Can time limits to correct certain defects be extended?  The time limit of two months for the correction of defects under Article 14(1) (see paragraph 6.032) may be extended by the receiving Office.  The receiving Office may extend the time limit ex officio or at the request of the applicant at any time – even after the time limit fixed in the invitation has expired – before a decision is taken on whether the applicant has submitted the correction within the time limit and whether or not the international application so corrected is to be considered withdrawn.  On the other hand, the time limits fixed by the receiving Office for the correction of defects under Article 11 or Article 14(2) (see paragraph 6.025) and for the payment of missing or underpaid fees under Rule 16bis (see paragraphs 5.193 and 5.195) may not be extended.

Rule 26bis.1(a)
26bis.2(b)

6.038.   Can defects in priority claims be corrected?  Any defective priority claim may be corrected and any missing priority claim added by a notice which may be submitted to the receiving Office or the International Bureau.  The time limit for correcting or adding a priority claim is 16 months from the priority date or, where the correction or addition would cause a change in the priority date, 16 months from the priority date as so changed, whichever 16 month period expires first, provided that a notice correcting or adding a priority claim may in any event be submitted until the expiration of four months from the international filing date.  If a correction of a priority claim is received before the receiving Office or the International Bureau, as the case may be, declares the priority claim void (see paragraph 6.043) and not later than one month after the expiration of the applicable time limit, it is considered to have been received before the expiration of that time limit.  To correct a priority claim, any indication relating to that priority claim may be changed, added or deleted.

6.039.   Where the applicant has made a request for early publication of the international application, any notice to correct or add a priority claim received by the receiving Office or the International Bureau after that request was made will be considered not to have been submitted, unless that request is withdrawn before the technical preparations for international publication have been completed.

Rule 26bis.1(c)

6.040.   Where the correction or addition of a priority claim causes a change in the priority date, any time limit which is computed from the previously applicable priority date and which has not already expired will be computed from the priority date as so changed.

Rule 26bis.2

6.041.   Can the applicant be invited to correct defects in a priority claim?  Where the receiving Office or, if the receiving Office fails to do so, the International Bureau, finds in relation to a priority claim that;

 

(i)  the international application has an international filing date which is later than the date on which the priority period expired and that no request for restoration of the right of priority has been submitted;

 

(ii)  the priority claim does not comply with the requirements of Rule 4.10 (see paragraph 5.057);  or

 

(iii)  any indication in a priority claim is not the same as the corresponding indication appearing in the priority document;

 

the receiving Office or the International Bureau, as the case may be, will invite the applicant to correct the priority claim.

Rule 26bis.2(a) 26bis.3

6.042.   Where the defect consists of the fact that the filing date of the international application is outside the priority period but is within two months from the date on which the priority period expired, the receiving Office also informs the applicant of the possibility of submitting a request for the restoration of the right of priority in accordance with Rule 26bis.3 (see paragraphs 5.062 to 5.069), except where the receiving Office has notified the International Bureau under Rule 26bis.3(j) of the incompatibility of Rule 26bis.3(a) to (i) with the national law applied by that Office.

Rule 26bis.2(c)

6.043.   If the applicant fails to respond to an invitation from the receiving Office or the International Bureau to correct a priority claim before the expiration of the time limit for doing so, that priority claim will, for the purposes of the procedure under the Treaty, be considered void and the receiving Office or the International Bureau, as the case may be, will so declare and inform the applicant accordingly.  However, a priority claim will not be considered void only because the indication of the number of the earlier application is missing, an indication in the priority claim is not the same as the corresponding indication appearing in the priority document, or the international application has an international filing date which is later than the date on which the priority period expired, provided that the international filing date is within two months of that date.

Rule 26bis.2(d)
26bis.2(e)

6.044.   Where the receiving Office or the International Bureau has made a declaration that a priority claim will be considered void, for the purposes of the procedure under the PCT, or where the priority claim has only not been considered void because Rule 26bis.2(c) applies (see last sentence of paragraph 6.043), the International Bureau will publish, together with the international application, information concerning the priority claim, as well as any information submitted by the applicant concerning such priority claim which is received by the International Bureau prior to the completion of the technical preparations for international publication.  Where the applicant wishes to correct or add a priority claim but the time limit to do so under Rule 26bis.1 has expired, the applicant may, prior to the expiration of 30 months from the priority date and subject to the payment of a special fee (see Section 113(c) of the Administrative Instructions), request the International Bureau to publish information concerning the matter.

Rule 26ter.1

6.045.   Can defects in declarations referred to in Rule 4.17 be corrected?  Can declarations be added?  Any defective declaration may be corrected and any new (missing) declaration may be added by a notice submitted to the International Bureau by the applicant, either in response to an invitation to correct (see paragraph 6.046) or on his own initiative.  The time limit for correcting or adding a declaration is 16 months from the priority date.  Any correction or addition which is received by the International Bureau after that time limit is considered to have been received on the last day of the time limit if it reaches the International Bureau before the technical preparations for international publication have been completed.

Rule 26ter.2(a)

6.046.   Which are the defects in declarations made under Rule 4.17 in respect of which the applicant may be invited to submit a correction?  Where the receiving Office or the International Bureau finds that any declaration contained in the request appears to be defective or incomplete, the receiving Office or the International Bureau, as the case may be, may invite the applicant to correct the declaration within the time limit referred to in paragraph 6.045.  The kinds of defects which may give rise to an invitation are, for example, the fact that a declaration does not contain the standardized wording as prescribed, or that the blank spaces have not been filled in with names, dates, etc., furthermore, in respect of the declaration of inventorship for the purposes of the designation of the United States of America, that it is not signed as prescribed.

Section 216
317

6.047.   How should a correction or addition of a declaration referred to in Rule 4.17 be presented?  Any correction or addition of a declaration must be made by way of a notice consisting of the corrected or added declaration itself accompanied by a letter explaining the correction or addition.  Such notice should be submitted directly to the International Bureau in all cases, even if that notice is in response to an invitation issued by the receiving Office.  Any notice nevertheless submitted to the receiving Office will be date stamped by that Office and transmitted to the International Bureau.

Section 214(c)

6.048.   In the case of a corrected declaration, the applicant must submit a replacement sheet, using the relevant Box (amongst Boxes Nos. VIII (i) to (v)).  In the case of an added declaration, the applicant may either use the relevant sub-box mentioned above or a blank sheet of paper.  Any corrected or added declaration of inventorship for the purposes of the designation of the United States of America should be signed and dated by the inventor and should be entitled "Supplemental declaration of inventorship (Rules 4.17(iv) and 51bis.1(a)(iv)".

Rule 48.2(b)(iv)

6.049.   What happens when the applicant fails to correct a declaration referred to in Rule 4.17?  The International Bureau will publish declarations, either as originally filed, or as corrected, whether or not they comply with Rule 4.17.  Furthermore, an indication about the fact that declarations were made will be included in the front page of the published international application.

Rule 26ter.1
Section 419(c)

6.050.   What happens where the International Bureau receives a correction or addition of a declaration referred to in Rule 4.17 after the applicable time limit?  Where the International Bureau receives a correction or addition of a declaration after the applicable time limit (see paragraph 6.045), it will notify the applicant accordingly.  It does not publish that declaration, or communicate that declaration to the designated Office(s), but informs the applicant that any such declaration should be submitted directly by him to the designated Office(s) concerned.  In the case of a declaration of inventorship signed by at least one of the inventors, the International Bureau will return the declaration to the applicant.

Rule 28
29.3

6.051.   Is the receiving Office the only authority which may note any of the above defects during the international phase?  If, in the opinion of the International Bureau or the International Searching Authority, the international application is not signed as provided in the Regulations by at least one of the applicants, or does not contain the name of the applicant presented in the prescribed way, or the prescribed indications in respect of at least one of the applicants, or does not comply to the extent provided in the Regulations with the prescribed physical requirements, the International Bureau or the International Searching Authority, as the case may be, brings such defects to the attention of the receiving Office.  Unless that Office believes that there is no defect, it must then invite the applicant to correct it, within a time limit of two months from the date of the invitation (see paragraph 6.032).

Rule 26.4
92.1

6.052.   How should a correction be presented?  The correction must generally be filed in the form of one or more replacement sheets incorporating the correction and accompanied by a letter.  The letter accompanying a replacement sheet must explain the differences between the replacement sheet and the one it replaces.  Correction by letter without replacement sheets is possible only for corrections of the request where the correction is of such a nature that it can be transferred from the letter to the request or other part of the record copy without any adverse effect on the clarity and the direct reproducibility of the sheet onto which the correction is to be transferred.  As to the signature and other requirements of such letters, see Rule 92.1

6.053.   Does a correction entail the payment of a fee?  Both the request for and the making of any correction are free of charge.  There is also no fee for the extension of a time limit for correction (see paragraph 6.037).

6.054.   Can the applicant appeal or file a petition against an unfavorable decision of the receiving Office?  The PCT does not expressly provide for any appeal or petition during the international phase. However, practice has shown that receiving Offices reconsider their decisions on petition, and that some national courts or appeal boards have accepted appeals against decisions taken by national (or regional) Offices in their capacity as receiving Offices.  However, the latter possibility, even where the applicant is successful in obtaining a revision of the decision of the receiving Office in his favor, may remain without effect in the States designated in the international application, particularly when the applicant has not performed the acts required under Article 22(1), 39(1)(a) or 25 within the applicable time limit.

Article 25
Rule 29.1
51

6.055.   The PCT provides for the review by designated Offices of any decision of the receiving Office refusing to accord an international filing date or declaring that the international application is considered withdrawn.  (For details of the procedure, including the time limit for requesting such review, see National Phase, paragraphs 6.018 to 6.021.)

Article 24(2)
48(2)
Rule 82bis

6.056.   Can failure to meet a time limit in the proceedings before the receiving Office or a delay in furnishing documents to that Office be excused?  The PCT provides that any Contracting State must, as far as that State is concerned, excuse, for reasons allowed by the national law, any delay in meeting any time limit.  Moreover, any Contracting State may, as far as it is concerned, excuse for other reasons any delay in meeting any time limit.  Finally, any designated Office may maintain the effect of an international application (see paragraphs 5.003 to 5.007), even where the decision of the receiving Office to the effect that the international application, or the designation of the State concerned, is considered withdrawn is found to be correct.  (For details, see National Phase, paragraph 6.021.)


RECORD COPY AND SEARCH COPY

Article 12(2)
12(3)
22(1)
24(1)(ii)
and (iii)
Rule 22.1
22.3

6.057.   How does the record copy reach the International Bureau?  What are the consequences if it does not reach the International Bureau within the prescribed time limit?  The record copy (see paragraph 5.180), which incidentally is, for the purposes of the procedure under the PCT, considered the true copy of the international application, must reach the International Bureau in time because, if the record copy has not been received by that Bureau within the prescribed time limit, the international application is considered withdrawn.  However, no international application is considered withdrawn in such a case without the applicant having been informed beforehand (see paragraph 6.058).  Failure to transmit the record copy does not relieve the applicant of the obligation to enter the national phase before the designated Offices within the applicable time limit (see National Phase, paragraphs 6.022 to 6.027).

Rule 20.2(c)
22.1(e)

6.058.   How does the International Bureau monitor the receipt of the record copy?  The International Bureau, once informed by the receiving Office of the international application number and of the international filing date, monitors the receipt of the record copy.  If the International Bureau has not received the record copy within 13 months from the priority date, it urges the receiving Office to send it. If, one month later, the record copy has still not been received, the International Bureau notifies the applicant of the fact.  The applicant can then ask the receiving Office either to transmit the record copy or to issue – and this must be done free of charge – a certified copy of the international application which he can himself transmit to the International Bureau.  Only after the expiration of three months from the above-mentioned notification from the International Bureau to the applicant may the International Bureau make the finding that no record copy has been received within the prescribed time limit.  Thus the applicant will always have been warned and offered the possibility of taking care of the transmittal of the record copy himself before any loss of rights can occur.  The certification of a copy of the international application must be made free of charge in such a case, and may be refused only in certain cases (for instance where national security considerations prevent the international application from being treated as such;  for details, see Rule 22.1(e)).

Article 12(1)
Rule 12.1(c)
23.1
25.1

6.059.   How does the search copy reach the International Searching Authority?  The search copy (see paragraph 5.180) is transmitted by the receiving Office to the International Searching Authority.  The search copy is only transmitted if the international search fee has been fully paid to the receiving Office (see paragraphs 5.184(ii), 5.193, 5.195 and 5.198), and, where the international application was filed in a language not accepted by the International Searching Authority, only after the required translation has been furnished (see paragraph 5.181).  Therefore, it is in the applicant’s interests to pay the search fee promptly, and, where applicable, furnish the translation promptly, in order to avoid any delay in establishment of the international search report.  The International Searching Authority notifies the International Bureau, the applicant and the receiving Office of the fact and date of receipt of the search copy.

Rule 21.2

6.060.   Can the applicant obtain certified copies of the international application?  On payment of a fee, the receiving Office must furnish to the applicant, at his request, certified copies of the international application as filed and of any corrections to it.  The certified copy of the international application is the priority document where the applicant claims the priority of that international application.  For copies of priority documents referred to in the international application, see paragraph 5.070.

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