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PCT Newsletter 01/2005: 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.

The importance of correcting defects in drawings

Q: I recently filed a PCT application containing several pages of drawings. I have received an invitation from the receiving Office to correct certain defects in the drawings within a time limit set in the invitation. What would happen if I failed to respond within the time limit set by the receiving Office?

A: Most international applications contain drawings since they provide an excellent means to better understand the invention. All drawings (including flow sheets and diagrams, which are considered drawings under PCT Rule 7(1)) must comply with the PCT standard for drawings contained in PCT Rules 11.10, 11.11 and, in particular, 11.13. Further details on the formality requirements for drawings can be found in paragraphs 143 to 178 of the PCT Applicant’s Guide, Vol. I/A (www.wipo.int/pct/guide/en/index.html).

If a receiving Office finds that the submitted drawings do not comply with the PCT requirements, it will invite the applicant (Form PCT/RO/106) to correct any defects within a time limit set in the invitation. This could, for instance, be the case where the applicant, for the purposes of filing the PCT application, simply copied informal drawings which he or she had used for an earlier filed national application. If the applicant cannot meet the set time limit, the extension of that time limit will be at the discretion of the receiving Office (PCT Rule 26.2). Some receiving Offices (for example, RO/US) prefer, however, that the applicant does not file a separate request for an extension of the time limit, but simply furnishes the replacement pages of drawings as soon as possible. It is important that such replacement sheets reach the International Bureau before the technical preparations for publication are completed, therefore the closer it is to the scheduled international publication date, the less likely receiving Offices are to grant further extensions of time.

If an applicant fails to correct the defects in the drawings, the receiving Office is empowered under the Treaty to declare the international application to be considered withdrawn (Form PCT/RO/117) if it finds that, in accordance with PCT Rule 26.5, the international application does not meet the formal requirements of PCT Rule 11 to the extent necessary for the purposes of reasonably uniform international publication. If, however, the defects noted are not of such a nature that this standard of “reasonably uniform publication” would be affected, the international application should not be declared to be considered withdrawn and the International Bureau will proceed with the international publication of the application.

Even if the application continues to be processed in the international phase, examiners in the international search and preliminary examination procedures may experience problems if the quality of the drawings is very poor. It is understandable that receiving Offices do not want to consider the entire application withdrawn because of defects in the drawings, but allowing such applications to proceed can also have the effect of slowing examiners down in their work, both in performing the original search and in identifying whether the drawing is relevant for later searches, which may thus affect the quality of later searches.

If the original defective drawings are published, further difficulties could arise in the national phase if the defects in the drawings have not been corrected, and similarly, examiners in the national phase may have difficulties performing their search. In principle, under PCT Article 27(1), no national law shall require compliance with requirements relating to the form or contents of the international application different from or in addition to those which are provided for in the Treaty and the Regulations. That provision applies to the physical requirements of PCT Rule 11. However, if the requirements of PCT Rule 11 have not been complied with, any designated Office may, in accordance with PCT Rule 49.5(g), invite the applicant to correct the defects in the drawings during the national phase. Therefore, the fact that a receiving Office did not enforce the compliance with the requirements of PCT Rule 11.13 does not constitute protection against an invitation from a designated or elected Office to comply with those requirements after entry into the national phase. Moreover, the relatively high standard of PCT Rule 26.5 of “necessary for the purpose of the reasonably uniform international publication,” does not bind designated or elected Offices to accept drawings as they are contained in international applications where the physical requirements provided in PCT Rule 11 have not been complied with.

Note that if essential elements of the invention are contained in a drawing, but that drawing has been so poorly executed that those essential elements did not properly appear in the publication, designated and elected Offices could also challenge that the invention has not been properly disclosed. This may happen, for example, where drawings which were initially executed in color have been scanned or copied by the applicant to produce black and white drawings which are inferior in quality. (It is recalled that, according to PCT Rule 11.13(a), “drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without colorings.” A “practical advice” article was written on the requirement to file drawings in black and white in PCT Newsletter No. 04/2003.)

We therefore strongly recommend that invitations from receiving Offices to correct formal defects in drawings be taken seriously and be resolved within the set time limits. This will avoid any loss of rights and will avoid unnecessary additional work, effort and cost, for both applicants and designated/elected Offices, during the national phase.

Further details on the correction of defects in drawings may also be found in the PCT Receiving Office Guidelines, paragraphs 153 to 159 (www.wipo.int/pct/en/texts/pdf/ro.pdf).

It is important to note that, when correcting formal defects in drawings, those drawings should not be modified. Should the applicant wish to correct an obvious error in a drawing, a request for rectification of an obvious error should be filed with the International Searching Authority (PCT Rule 91).

For the procedure which applies when drawings which are referred to in the description are missing, see PCT Newsletter No. 11/1996 and the PCT Applicant’s Guide, paragraphs 238(ii) and 239.