PCT Newsletter 09/2022: Practical Advice

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.

Submitting replacement sheets

Q: I am the agent for a PCT application and have received an invitation to correct defects in the international application (Form PCT/RO/106) indicating that replacement sheets of the description, claims and drawings are required. Who should I send the replacement sheets to and what do I need to include?

A: Upon receipt of an international application, the receiving Office (RO) checks the application for any defects in accordance with PCT Article 14. This includes checking, for example, that the Request Form is signed as provided in the PCT Regulations, that it contains the prescribed indications concerning the applicant, that it contains a title, and that the application complies with the prescribed physical requirements under PCT Rule 11.

Form PCT/RO/106 relates to the physical requirements of the international application under PCT Rule 11 and is issued by the RO to invite you to correct, within the applicable time limit under PCT Rule 26.2 (that is, within two months of the notification), the defects it has found.

The physical defects found in the application by the RO are listed in one or more of the following Annexes to Form PCT/RO/106:

Annex A: for defects in the signature of the international application and request, the applicant’s details, the language of certain elements of the application, the title of the invention and the abstract.

Annex B1: for defects in the presentation of the text matter of the international application as filed

Annex B2: for defects in the presentation of the text matter of the translation of the international application

Annex C1: for defects in the presentation of the drawings of the international application as filed

Annex C2: for defects in the presentation of the drawings of the translation of the international application

The Form PCT/RO/106 that you received should therefore have indicated in Annexes B1 and C1 that corrected sheets need to be submitted for defects in the presentation of the description, claims and/or the drawings of the international application as filed. More precise information on the physical defects will also have been provided in those Annexes. If the defect concerns only certain pages, the RO will have specified the page numbers and only those pages need to be replaced.

If the replacement sheets are not timely submitted to the RO they will neither be accepted by the RO nor be transmitted to the International Bureau (IB). However, you may request an extension of this time limit and the RO will consider your request in accordance with paragraphs 154-155 of the PCT Receiving Office Guidelines, which can be found at:

/en/web/pct-system/texts/ro/ro153_159#_153

Your response to the invitation to correct defects should be submitted to the RO and not to the IB (although they will later be forwarded by the RO to the IB for processing if they are accepted), and it should include the replacement sheet(s) containing the corrections for all sheets which do not meet the physical requirements. It is important to note that you should not include on the replacement sheets themselves the international application number or the indication that the sheets are replacement sheets. Rather, the international application number and the purpose of the transmittal should be included in an accompanying letter, which should also draw attention to the differences between the replaced sheets and the replacement sheets. It is the RO which will mark the replacement sheets with the international application number and the stamp "SUBSTITUTE SHEET (RULE 26)". It is also important to respect the correct margins (please refer to PCT Rule 11.6) so that any stamps added by the Offices do not cover any part of the text or drawings in the application, and to ensure that, if the correction affects the continuity with pages before or after, those pages are also submitted as part of the correction in accordance with Section 207 and 311 of the Administrative Instructions which can be found at, respectively:

/en/web/pct-system/texts/ai/s207.html

/en/web/pct-system/texts/ai/s311.html

The corrected 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. If the RO finds any differences which are not related to the physical requirements, it will refuse the replacement sheets and will invite the applicant to submit new sheets containing only the corrections of the formal defects concerned. In some cases, the RO forwards a copy of the refused proposed replacement sheets to the IB, which will not bear the stamp "SUBSTITUTE SHEET (RULE 26)", together with Form PCT/RO/132 explaining the refusal.

Where applicable, the RO may draw the applicant’s attention to the possibility of submitting the sheets to the International Searching Authority (ISA) as a request for rectification of obvious mistakes under PCT Rule 91 (paragraphs 208(ii) and 302 to 308 of the PCT Receiving Office Guidelines). Alternatively, with the applicant’s consent, the RO may itself forward the sheets containing the discrepancy to the ISA. In any case, the RO will not insert a copy of those sheets into its files as part of the “home copy” of the RO and it will not send them to the IB.

Depending on the RO, you may be able to upload your response to the invitation to correct defects using ePCT with strong authentication providing that you have access rights to the international application. You can check if your RO allows applicants to upload documents using ePCT by looking at the processing settings of the office profile at:

https://pct.wipo.int/ePCTExternal/pages/OfficeProfile.xhtml

If it is not indicated that “applicants have the ability to upload documents using ePCT” then you will need to submit your response to the RO using their individual means of communication.

Upon receipt of the applicant’s response to Form PCT/RO/106, the RO verifies that the applicant has submitted the corrections within the applicable time limit under PCT Rule 26.2 (if applicable, as extended by the RO) and whether the international application so corrected is, or is not, to be considered withdrawn. However, as stated in PCT Rule 26.5, “no international application shall be considered withdrawn for lack of compliance with the physical requirements referred to in PCT Rule 11 if it complies with those requirements to the extent necessary for the purpose of reasonably uniform international publication”. In practice, this means that an RO will only in rare circumstances declare an application to be considered withdrawn for lack of compliance with the formal requirements of the PCT. Nevertheless, it will greatly help applicants in the further processing of their applications in the national phase if all formality issues pointed out to them are already fully addressed during the international phase, thus avoiding further correction requests by designated Offices later on.

Please note that certain minor defects such as in the numbering of pages, margins, page format, sheet size, photocopy marks and askew drawings can be corrected by the IB during the technical preparation of the publication. Where such defects were already corrected by the IB when preparing the publication copy, a communication (Form PCT/IB/345) will be issued by the IB to explain this to the applicant and the replacement sheets will not be used.

In principle, if replacement sheets are accepted, they are stamped by the RO and forwarded to the IB for replacement and are published. If they reach the IB after completion of technical preparations, the IB will schedule a republication in order to include the replacement sheets.