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.
What can be done if a request for rectification of an obvious mistake has been refused by the competent authority?
Q: I submitted hastily-prepared informal drawings with an international application. When later preparing the formal drawings, I realized that the original drawings contained a small mistake, which I corrected in the formal drawings. However, the receiving Office rejected the later submitted formal drawings as they were different from the originally-filed drawings. I therefore submitted a request for rectification of an obvious mistake under PCT Rule 91.1 to the International Searching Authority (ISA), along with the replacement drawings and an explanation of the correction. Unfortunately, that request for rectification was subsequently refused by the ISA. Is there any further action that I can take in the international phase to rectify this problem?
A: If the Authority competent to authorize a request for rectification (in this particular instance, the ISA) refuses to authorize a rectification under PCT Rule 91, you will have no further opportunity to correct the mistake in the international phase. However, you do have the possibility, in accordance with PCT Rule 91.3(d), of requesting the International Bureau (IB) to publish the request for rectification, the reasons for refusal by the authority of that request for rectification, and any further brief comments that you may wish to submit in defense of your request for rectification. The IB will already have received a copy of your request for rectification directly from the ISA, together with a notification of the ISA’s refusal of your request, and the reasons for their refusal.
Any request for publication of information regarding your request for rectification and the reasons for refusal, including any brief comments that you may wish to submit, should reach the IB within two months from the date of the refusal of the request for rectification, and is subject to the payment at the same time of a special fee, the amount of which is set in Section 113(b) of the Administrative Instructions under the PCT, and is also indicated in the PCT Applicant’s Guide, Annex B2(IB) (https://www.wipo.int/pct/guide/en/gdvol1/annexes/annexb2/ax_b_ib.pdf). The amount of the fee is currently 50 Swiss francs plus 12 Swiss francs for each sheet in excess of one. It is recalled that applicants can upload such requests for publication to the IB using the ‘Upload Documents’ function in ePCT (https://pct.wipo.int/ePCT).
The information on the refused request for rectification will be published at the same time as the international application, provided that your request for publication is received before the completion of technical preparations for international publication; otherwise it will be published later.
By requesting the publication of information on the refused request for rectification, together with any comments that you wish to submit on the matter, that information will be made publicly available on PATENTSCOPE, and designated (or elected) Offices (and third parties) will therefore be aware that the drawings contain a mistake and that there is a possibility that a request for correction of that mistake may be made in the national phase. You may then pursue the matter further before the designated Offices according to their national law and practice for the rectification of obvious mistakes.
For further information on requests for rectification of obvious mistakes, see the PCT Applicant’s Guide, International Phase, paragraphs 11.033 to 11.044 (https://www.wipo.int/pct/en/guide/text.jsp?page=ip11.html#_rectif_mistakes).