PCT Newsletter 03/2013: 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.

Modifying the abstract of an international application

Q: I filed an international application a few weeks ago and realize that I forgot to include some important information in the abstract. As abstracts are used as a scanning tool when searching for prior art, I feel that if the information in question is not included in the abstract, my application risks being missed in future searches. Is it possible to amend the abstract, and if so, with whom should I file such amendments and what is the time limit for submitting them? Would it be possible to amend the abstract by submitting a request for rectification of an obvious mistake under PCT Rule 91?

A. First of all, although PCT Rule 91 does provide for rectification of an obvious mistake in the description, claims, drawings or the request form, it does not provide for the rectification of a mistake in the abstract (see subparagraph (g)(ii)). However, it is possible to submit proposed modifications of the abstract under PCT Rule 38.3, as explained below.

If you are not satisfied with the abstract that you filed with the international application, it is possible, at any time prior to the expiration of one month from the date of mailing of the international search report (ISR), to submit proposed modifications of the abstract to the International Searching Authority (ISA) (not to the International Bureau or the receiving Office). It is the ISA that checks the contents of the abstract, whether it is the abstract as filed or as later modified by the applicant, and will establish the abstract itself if it finds that the abstract does not comply with PCT Rule 8.

Note that the ISA will also establish the abstract itself in the case where the abstract is missing from the international application, provided that the receiving Office has not already invited the applicant to furnish it (PCT Rule 38.2). The applicant would be then given an opportunity to propose modifications of, and/or comments on, that abstract. However, whether the applicant has submitted a modified abstract of his or her own accord, or whether the applicant has submitted comments on an abstract established by the ISA, it is the ISA that will decide on the final contents of the abstract (PCT Rule 38.3).

Any modification to the abstract by the applicant which has been approved by the ISA, or any modification which has been made by the ISA itself, will be forwarded to the International Bureau (IB) so that the modified version of the abstract will be published. If the international application has already been published, it will be republished with the modified abstract.

It is important to note that if you are adding new text to your abstract, it should preferably not exceed a total of 150 words (see PCT Rule 8.1(b)). It is recalled that the abstract should indicate the technical field to which the invention relates, and should be drafted in a way that clearly describes the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention, and where applicable should contain the chemical formula which best characterizes the invention. For detailed information on the requirements concerning the contents and form of the abstract, please refer to PCT Rule 8 and the PCT Applicant’s Guide, International Phase, paragraphs 5.164 to 5.174.