Conditions to be met when confirming incorporation by reference of a missing part of the international application
Q: When I was viewing an international application in ePCT private services that I had filed two weeks ago, I realized that the last page of the claims is missing. I would like to incorporate that missing page by reference under PCT Rule 4.18, as the missing claims were completely contained in an earlier application, the priority of which was claimed in the international application upon filing. However, I see that one of the requirements for confirming incorporation by reference is that a copy of the earlier application has to be furnished. As I have not yet been able to obtain the priority document, will this affect my ability to incorporate by reference the missing page of claims, and thereby add the page without affecting the international filing date? Also, please could you let me know what else I am required to do to request this?
A: One of the requirements under PCT Rule 20.6 for confirming incorporation by reference of a missing part is the furnishing of a copy of the earlier application, where PCT Rule 17.1(a), (b) or (b-bis) has not yet been complied with. However, this does not necessarily have to be a certified copy of the earlier application. It is sufficient, for the purposes of the requirements under PCT Rule 20.6, for you to submit a simple copy of the earlier application.1
In order to confirm, in accordance with PCT Rule 20.6, the incorporation by reference of your missing page of claims, you should submit to the receiving Office, within a time limit of two months from the day on which one or more elements referred to in PCT Article 11(1)(iii) were first received by the receiving Office (see PCT Rule 20.7), a written notice to the receiving Office confirming that the missing part is incorporated by reference in the international application under PCT Rule 4.18. The notice should be accompanied by:
– the missing page (you should include an indication in your notice as to where that part is contained in the earlier application);
– a simple copy of the earlier application if the certified copy of that earlier application has not yet been furnished or is not yet available;
– in cases where the earlier application is not in the language in which the international application is filed, a translation of the earlier application into that language or, where a translation of the international application is required under PCT Rule 12.3(a) or 12.4(a) (for the purposes of international search and international publication, respectively), a translation of the earlier application into both the language in which the international application is filed and the language of that translation.
Furthermore, the following text must have been included in the request form (PCT/RO/101) at the time of filing:
“Incorporation by reference: 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 this international application but is completely contained in an earlier application whose 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, that element or part is, subject to confirmation under Rule 20.6, incorporated by reference in this international application for the purposes of Rule 20.6.”
Provided that you used the latest version of the request form, this will not be an issue for you as this text is pre-printed at the bottom of Box No. VI of the request form, and is also automatically included in the electronic versions of the request in PCT-SAFE and ePCT-Filing.
You should also ensure that the receiving Office with which you filed the international application accepts requests for confirmation of incorporation by reference. A number of receiving Offices have notified the International Bureau (IB) of the incompatibility of certain PCT Rules relating to incorporation by reference of missing (elements or) parts with the national law applied by those Offices2. Consequently, those receiving Offices which have so notified the IB will not apply the Regulations concerning incorporation by reference but instead, in the case of the later furnishing of a missing part, correct the international filing date so that it is the date of receipt of the missing part, leaving the applicant the option, however, of maintaining the original filing date by requesting that the missing part be disregarded (PCT Rule 20.5(e)). If the need to incorporate missing parts becomes apparent after the international application has been filed with such a receiving Office, the applicant may request that receiving Office to transmit the international application to the receiving Office of the IB under PCT Rule 19.4(a)(iii), which does accept the incorporation of missing parts.
Note also that even if the receiving Office has accepted the incorporation of missing parts, some designated (and elected) Offices may, to a limited extent, review the decisions by receiving Offices to allow incorporation by reference (see PCT Rule 82ter.1(b) to (d)). Moreover, a number of designated Offices have also notified the IB of the incompatibility of certain PCT Rules relating to incorporation by reference of missing (elements or) parts with the national law applied by those Offices3. This means that even though a part has been considered to have been incorporated by reference in the international application by virtue of a finding of the receiving Office under PCT Rule 20.6(b), that incorporation by reference will not apply to the international application for the purposes of the procedure before the designated Offices concerned, and those designated Offices may treat the application as if the international filing date had been changed to the date of receipt of the missing part.
- In the case of the certified copy of the earlier application, it is recalled that this may be submitted up to 16 months after the priority date (or later if received by the International Bureau (IB) before the date of international publication of the international application (see PCT Rule 17.1)).
- The receiving Offices of the following States have notified the IB under PCT Rule 20.8(a) of the incompatibility of PCT Rule 20.5(a)(ii) and (d) and 20.6 with the national law applied by them: Belgium, Cuba, Czech Republic, Germany, Indonesia, Italy, Mexico and the Republic of Korea.
- The designated Offices of the following States have notified the IB under PCT Rule 20.8(b) of the incompatibility of PCT Rules 20.5(a)(ii) and (d) and 20.6 with the national law applied by them: China, Cuba, Czech Republic, Germany, Indonesia, Lithuania, Mexico, the Republic of Korea and Turkey.