Chapter IV: Article 11(1) Check: Requirements for International Filing Date
Confirmation of Incorporation by Reference of Missing Elements under Rule 20.6(a)
49. If the receiving Office timely (see paragraph 46) receives a notice confirming the incorporation by reference of a missing element, the Office checks whether all the requirements of Rule 20.6 have been complied with, as outlined in the following paragraphs.
49A. The receiving Offices checks:
(a) whether the request (Form PCT/RO/101) contains a statement under Rule 4.18 or, if such a statement was not in the request at the time of filing, if it was otherwise contained in, or submitted with, the international application;
(b) whether the applicant had claimed priority of an earlier application at the time of filing;
(c) whether the applicant has submitted the priority document for that earlier application or at least a simple copy of that earlier application; and
(d) under the circumstances of Rule 20.6(a)(iii), whether the applicant submitted a translation or translations of the earlier application.
If the applicant has already complied with Rule 17.1(a) to (b-bis), the applicant should not be required to furnish another copy of the relevant priority document to the receiving Office. If the priority document has already been submitted by the applicant or transmitted by the receiving Office to the International Bureau, the receiving Office requests a copy of said document from the International Bureau.
49B. The receiving Office checks whether the sheets submitted by the applicant together with the notice confirming the incorporation by reference of the missing element, embody the entire element as contained in the earlier application. For this, the Office compares the relevant element in the earlier application with the later submitted sheets submitted by the applicant under Rule 20.6(a)(i). Where the later submitted sheets seem to go beyond the correction of formal defects and to modify the substantive content of the application, the receiving Office may, where applicable, invite the applicant to request the rectification of an obvious mistake from the competent ISA under Rule 91 (Form PCT/RO/108).
49C. Where the international application contains more than one priority claim at the time of filing, the applicant may incorporate by reference elements from any of these earlier applications. If, in an effort to comply with the physical requirements of Rule 11, the sheets submitted contain a different numbering of claims, pages or paragraphs, differently numbered references or different reference signs in drawings than in the earlier application(s), these modifications as to formal aspects should generally not be considered as changing what was contained in the earlier application(s).
49D. Where the receiving Office finds that all the requirements of Rules 4.18 and 20.6(a) have been complied with, the Office proceeds as described in Section 309(b) and issues Form PCT/RO/114 accordingly. The receiving Office considers that the missing element concerned has already been filed on the date on which one or more elements referred to in Article 11(1)(iii) were first received and grants the international filing date accordingly (Rule 20.3(b)(ii)) (see also paragraph 43).
50. Negative Determination (Rule 20.4). If the receiving Office finds that the corrections of defects under Article 11(1) have not been timely received or have been received but the application still does not fulfill the requirements of Article 11(1) or if the defects could not be resolved by way of incorporation by reference of a missing element under Rules 4.18 and 20.6, it proceeds, once the time limit under Rule 20.7(a) has expired, as follows:
(i) it deletes the letters “PCT” from the indication of the international application number on any papers marked previously with that number, and uses the said number without such letters in any future correspondence relating to the purported international application (Section 308(d));
(ii) it notifies (Form PCT/RO/104) the applicant that the application will not be treated as an international application and that the number marked on the papers will no longer be used as an international application number (Rule 20.4(i) and (ii)); it sends a copy of that notification to the International Bureau;
(iii) it abstains from transmitting the record copy and the search copy but keeps the application and any correspondence relating thereto (Rule 20.4(iii)); it sends a copy of the said papers to the International Bureau only upon special request in case of a review under Article 25(1) (Rule 20.4(iv)); and
(iv) it refunds (Form PCT/RO/119) any international filing fee and/or search fee received, (Rules 15.4(i) and 16.2(i)); it may also refund any transmittal fee received, subject to the provisions applied by the receiving Office; for the procedure for refunding fees, see paragraphs 268 to 271.