PCT NEWSLETTER

www.wipo.int/pct/en

July-August 2019 | No. 07-08/2019

 

Practical Advice

Same day corrections before the International Bureau as receiving Office

Q:  I just filed an international application with the International Bureau as receiving Office using ePCT‑Filing, and realized after submitting the application that I had forgotten to include the drawings in the submission.  Is it possible, during the same day on which I filed the other elements of the international application, to add the drawings to the application, or do I have to re‑file the complete application?  I would like to make sure that I will be accorded today’s date as the international filing date.

A:  If you wish to be accorded today’s date as the international filing date, it is important to file the drawings on the same day as the rest of the application.  It is recalled that if missing drawings are filed after the day on which the requirements under PCT Article 11 have been met, that later date would be considered by the receiving Office as the international filing date (PCT Article 14(2))1.

Fortunately you appear to have noticed on the same day that the drawings were missing from the initial filing.  When filing an international application with the International Bureau as receiving Office (RO/IB) using ePCT‑Filing, you can rectify the situation on the same day by using a dedicated function in ePCT.  Note that, although this “Practical Advice” assumes that the international application has been filed with the RO/IB, it may also be possible to do this with other receiving Offices which accept international applications filed using ePCT‑Filing.2

After filing an international application using ePCT‑Filing, you can add documents that were omitted at the time of filing and which affect the according of the international filing date (such as the description, claims and/or drawings) as “same day corrections” up until midnight in the time zone applicable to the receiving Office and be accorded the same day as the international filing date.  Once that deadline has passed, the same day correction functionality will no longer be available.

When making a same day correction, you have the option of resubmitting the whole application (including the missing drawings), provided that you make it clear that the previous submission should be disregarded entirely, or of submitting only the missing drawings in order to complete the international application.  In both cases, you will be accorded today’s date as the international filing date, provided that the new submission of the application including the drawings, or just the drawings, as the case may be, are received by the receiving Office today, and that all the requirements under PCT Article 11 have been met. 

In order to upload a missing document to your ePCT‑Filing, you should click on “Same day corrections” from the drop‑down menu of the application (a downward‑facing arrow next to the international application number).  This will open the “Upload documents” action specifically to upload the missing document to the newly‑filed international application, and the “time remaining for same day corrections” will be displayed.  This is the time until midnight in the time zone relevant to the receiving Office.  When this time runs out, it is no longer possible to submit same day corrections using this dedicated function.  You should complete information relating to the receiving Office with which you have filed the international application, indicate the document type and sign the action.  It is also mandatory to provide a short explanation (in the box provided) regarding the nature of the same day correction.  A cover sheet is generated automatically when the document corresponding to the same day correction has been successfully uploaded.

The same day correction function can be used not only in the case where an element or part is missing, but also where the wrong one has been filed (for example the wrong description, the wrong claims or the wrong drawings), provided that the receiving Office concerned would permit you to exchange the erroneously‑filed document for the correct one.

Note that when using ePCT‑Filing, in addition to downloading a copy of what has been submitted after it has been filed, it is also possible to download a copy of the draft international application before filing – this will enable you to check the contents of the application before filing, and see whether all elements have been included or whether all elements are the correct ones for the application in question.  However, please note that there is no “Save draft” feature available for same day corrections. 

If you notice only on a later day that an element or part is missing, it is recalled that PCT Rule 20.6 permits the applicant, within the applicable time limit under PCT Rule 20.7, to confirm that the missing element or part is incorporated by reference in the international application, without affecting the international filing date.  In order to do this, the missing element or part must be completely contained in an earlier‑filed application the priority of which is claimed in the international application, and certain other conditions must be met.  Please note, however, that in the few Offices that have notified the IB of the incompatibility of this Rule with their national law3, missing elements or parts will not be recognized as being received on the international filing date.  For further details on incorporation by reference, please refer to the “Practical Advice” that was published in PCT Newsletter Nos. 05/2007 and 07-08/2015, and the PCT Applicant’s Guide, paragraphs 6.024 to 6.031 at:

www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf

For further information on the same day correction function in ePCT, please refer to:

www.wipo.int/pct/en/epct/learnmore.html?N=612       

  1. The time limit for furnishing missing drawings is two months from the date on which the rest of the papers constituting the international application were first received by the receiving Office (PCT Rule 20.7).  If the missing drawings are furnished within that time limit, the date of their receipt becomes the international filing date, unless the applicant is able to confirm in accordance with PCT Rule 20.6 that the missing part concerned was incorporated by reference under PCT Rule 4.18 (see last paragraph of this “Practical Advice”).
  2. Please note that the same day correction function in ePCT is not available for the receiving Offices of Canada, Israel and the United States of America;  although it is possible to prepare a .zip file using ePCT‑Filing for upload to the e‑filing system of those Offices, it is not possible to use ePCT to submit applications online to them.
  3. The Offices concerned are listed under PCT Rule 20.8(a) and (b) in the table of PCT Reservations, Declarations, Notifications and Incompatibilities at:  www.wipo.int/pct/en/texts/reservations/res_incomp.html