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.

Correcting drawings during the international phase

Q: Due to time constraints I sometimes file "informal" drawings with my PCT applications and then subsequently submit better quality drawings. Could you please explain why I sometimes receive an invitation to correct the drawings during the international phase while in other similar circumstances the drawings are just published as filed?

A: PCT applications should comply with the physical requirements listed in PCT Rule 11; full guidance on this can be found in the PCT Applicant's Guide (please refer to paragraphs 5.128-5.163 for more information about requirements on drawings). As long as the physical requirements are complied with during the international phase, the international application should be accepted as to its form when it enters the national phase noting that, PCT Article 27(1) states that "No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations".

During the international phase, the competent receiving Office and the International Bureau (IB) are expected to check international applications for compliance with the physical requirements of PCT Rule 11 to the extent that compliance is necessary for the purpose of reasonably uniform publication, as stated in PCT Rule 26.3: "Where the international application is filed in a language of publication, the receiving Office shall check (i) the international application for compliance with the physical requirements referred to in PCT Rule 11 only to the extent that compliance therewith is necessary for the purpose of reasonably uniform international publication". PCT Rule 26.3bis likewise states: "The receiving Office shall not be required to issue the invitation under Article 14(1)(b) to correct a defect under PCT Rule 11 where the physical requirements referred to in that Rule are complied with to the extent required under PCT Rule 26.3".

As a result, formality examiners at the receiving Offices and within the IB have the task of applying the standard of "reasonably uniform international publication". Given the diversity in national practices and differing personal judgements in certain cases, this naturally results in decisions that may vary across the various Offices. The IB, which publishes the PCT applications, is tasked with the responsibility of ensuring that this standard is applied as uniformly as possible, trying to balance uniformity with reasonableness; the IB itself may make certain corrections during the technical preparations for international publication.

In any case, applicants should be aware that it is in their interest to comply with the requirements of PCT Rule 11 to the greatest extent possible. In the case of non-compliance with PCT Rule 11, designated Offices may legitimately ask for new drawings during the national phase.

Please note that it is in the best interest of applicants to submit quality drawings at the time of filing the application rather than correcting subsequently - when replacement drawings are submitted, especially to replace "informal" drawings with formal drawings, there is a risk that the formality examiners may find it difficult to determine if the replacement drawings can be accepted as a correction under PCT Rule 26 or if additional matter has been introduced in the formal drawings. This could delay the procedure and the outcome of the attempted corrections may be uncertain.

It is important to remember that, even if you have not been invited to correct certain physical defects in the application during the international phase, if there are such defects that you would like to correct, nothing prevents you from submitting replacement sheets on your own initiative, drawing attention to any differences between the two sets of drawings (see PCT Rule 26.4). The replacement sheets must not contain any additions or modifications to the substance of the text or drawings as originally filed - only the physical aspects may be corrected. It is recommended that you submit any such replacement sheets to your receiving Office as early as possible to allow enough time for them to be reviewed, approved and forwarded to the IB before the completion of technical preparations for international publication.

For further information please refer to the "Practical Advice" published in past issues of the PCT Newsletter:

No. 01/2005: The importance of correcting defects in drawings;

No. 06/2007: Submitting replacement drawings where no invitation to correct defects has been issued;

No. 03/2016: The extent to which the physical requirements prescribed in the PCT Regulations must be complied with, and possible inconsistencies in the way in which such compliance is checked; and

No. 05/2019: Possible implications of submitting informal drawings when filing the international application.