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. The description, the set of claims and/or the set of drawings as contained in the earlier application which are to be incorporated by reference after a positive determination (see paragraph 205C) cannot replace the description, the set of claims and/or the set of drawings already contained in the international application as filed.  Rather, and subject to paragraph 205G, the description, the set of claims and/or the set of drawings to be incorporated by reference should be combined with the description, the set of claims and/or the set of drawings contained in the international application as filed 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 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 (alternatively, if at all feasible and if the Office so wishes, the receiving Office may so order the pages of the combined international application by way of an ex officio correction):

Example:  the international application contains what is or appears to be a complete description, a complete set of claims and a complete set of drawings;  the applicant requests the incorporation by reference of the drawings as contained in the earlier application;  the receiving Office makes a positive finding (paragraph 205C) and orders the pages of the combined international application as follows:

Description as originally filed

Set of claims as originally filed

Drawings incorporated from earlier application

Drawings as originally filed