PCT Receiving Office Guidelines

Chapter VIII: Missing Parts in the International Application

Incorporation by Reference Cannot Replace Elements/Parts of the International Application as Originally Filed

205F.  Where the applicant wishes to completely replace an element or all elements of an international application as originally filed with different elements through incorporation by reference of missing parts, the receiving Office may only add any elements of the international application as missing parts but may not perform a substitution of the international application as filed with the subsequently furnished missing parts. The description, claims or drawings from the earlier application, which are to be incorporated by reference, cannot replace the description, claims or drawings of the international application as filed. The parts to be incorporated by reference (Rule 20.5) should be combined with the elements of the international application originally submitted and should be checked for compliance with the physical requirements referred to in Rule 11 to the extent that compliance is necessary for the purpose of reasonably uniform international publication (Rule 26.3(b)(ii)), including image scanning and OCR by the International Bureau. The receiving Office should invite the applicant to, or, if at all feasible and if the Office so wishes, by way of an ex officio correction, order the pages of the combined international application in such a manner that the sheets incorporated by reference are placed first, sequentially followed by the pages which were originally filed such as in the following example:

Description incorporated from earlier application

Description as originally filed

Claims incorporated from earlier application

Claims as originally filed

Drawings incorporated from earlier application

Drawings as originally filed