WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Later furnishing of missing elements or parts of the international application

Q: I recently filed an international application in which a number of pages of the description were inadvertently omitted. The application claimed the priority of an earlier national application filed on 25 April 2006. Is it possible to submit those missing pages without affecting the international filing date which was originally accorded (4 April 2007), and if so, what must I do?

A: Following the recent entry into force of amendments to the PCT Regulations concerning the incorporation by reference of missing elements or parts of the international application, it is possible for you to submit the missing pages of the description without affecting your international filing date, provided that certain conditions are met (further details follow). Amended PCT Rule 20 enables the inclusion of accidentally omitted elements of the international application referred to in PCT Article 11(1)(iii)(d) or (e) (that is, the whole of the description or the whole of the claims) or parts of the international application (that is, part of the description, part of the claims or part or all of the pages of drawings) that were completely contained in an earlier filed application, the priority of which is claimed in the international application, without affecting the international filing date. Those amendments entered into force on 1 April 2007 and are applicable in respect of international applications filed on or after that date (hence they will not apply to international applications in respect of which one or more elements referred to in PCT Article 11(1)(iii) were first received by the receiving Office before 1 April 2007).

In order to make use of this new incorporation by reference procedure, the following requirements must be met:

(1) the priority of the earlier filed application must have been claimed in the international application;

(2) the missing element or part must be completely contained in the earlier application concerned (PCT Rule 20.6(b));

(3) the request must contain the statement of incorporation by reference under PCT Rule 4.18, which is preprinted in the request form dated 1 April 20071 or, if that version of the request form was not used, a separate statement of incorporation by reference must have been filed together with the international application;

(4) confirmation of the incorporation by a written notice submitted to the receiving Office, stating that the element or part is incorporated by reference in the international application. The time limit for doing this is two months from the date on which one or more elements referred to in PCT Article 11(1)(iii) were first received by the receiving Office, or, where the receiving Office has issued an invitation to correct the application, two months from the date of that invitation (see PCT Rule 20.7)2. The notice of confirmation should be accompanied by:

(a) the missing sheet or sheets which contain the element or part as contained in the priority application;

(b) a (simple) copy of the earlier application as filed, unless such copy has already been submitted in the form of the priority document under Rule 17.1(a), (b) or (b-bis);

(c) a translation of the earlier application, if required (see PCT Rule 20.6(a)(iii)); and

(d) in the case of a missing part, an indication as to where in the earlier application (and, if applicable, where in the translation) the missing part is contained.

Note that if the applicant does not realize that an element or part of the international application is missing but the receiving Office does so when determining whether the application fulfills the requirements of Article 11(1) and/or when checking whether the international application complies with the formality requirements of the PCT, it will invite the applicant either:

(1) in the case of a missing element:

(a) to furnish the missing element as a correction under PCT Article 11(2), in which case the international filing date will be the date of receipt by the receiving Office of the missing element (assuming that all other Article 11(1) requirements are fulfilled) (see Rule 20.3(b)(i)); or, alternatively,

(b) to confirm in accordance with Rule 20.6 the incorporation by reference of the missing element, in which case the missing element will be considered to have been contained in the international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received, and the international filing date will be the date on which all of the requirements of Article 11(1) are fulfilled (see Rule 20.3(b)(ii)); or

(2) in the case of a missing part:

(a) to complete the international application by furnishing the missing part, in which case:

(i) if no international filing date has yet been accorded, the missing part will be included in the international application and the international filing date will be the date on which all requirements of Article 11(1) are fulfilled (see Rule 20.5(b)); or

(ii) if an international filing date has already been accorded, the missing part will be included in the international application and the international filing date corrected to the date on which the missing part was received by the receiving Office (see Rule 20.5(c)); in this case, the applicant has the option, however, of maintaining the original filing date by requesting that the missing part be disregarded (see PCT Rule 20.5(e));

(b) to confirm in accordance with Rule 20.6 the incorporation by reference of the missing part, in which case the missing part will be considered to have been contained in the international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received, and the international filing date will be the date on which all of the requirements of Article 11(1) are fulfilled (see Rule 20.5(d)).

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)).

It is important to note that a number of receiving Offices3 and designated Offices4 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 Offices. 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 element or part:

(a) accord a later international filing date; or

(b) in the case 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)).

Similarly, those designated Offices which have so notified the IB may treat the international application, in the case of the later furnishing of a missing element or part:

(c) as if the international application had been accorded a later international filing date under Rule 20.3(b)(i) or 20.5(b); or

(d) in the case of a missing part, as if the international filing date had been corrected under Rule 20.5(c), in which case the designated (or elected) Office must, however, give the applicant the opportunity to maintain the original filing date by requesting that the missing part be disregarded (PCT Rule 82ter.1(d)).

Footnotes to Practical Advice:

1. If you filed your international application in electronic form, you should check with your receiving Office whether the software you used at the time of filing had been updated to include that statement.

2. If a notice confirming the incorporation by reference of an element is received by the receiving Office after the expiration of the applicable time limit under PCT Rule 20.7(a) but before that Office notifies the applicant under PCT Rule 20.4(i) that the application will not be treated as an international application, that applicant’s notice will be considered to have been received within that time limit (PCT Rule 20.7(b)).

3. The receiving Offices of the following States and intergovernmental organization have notified the IB under PCT Rule 20.8(a) of the incompatibility of PCT Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d) and 20.6 with the national law applied by them: Belgium, Cuba, Czech Republic, Germany, Hungary, Indonesia, Italy, Japan, Mexico, the Philippines, the Republic of Korea, Spain and the European Patent Office.

4. The designated Offices of the following States and intergovernmental organization have notified the IB under PCT Rule 20.8(b) of the incompatibility of PCT Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d) and 20.6 with the national law applied by them: China, Cuba, Czech Republic, Germany, Hungary, Indonesia, Japan, Lithuania, Mexico, the Philippines, the Republic of Korea, Spain, Turkey and the European Patent Office.