PCT Newsletter 03/2016: 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 extent to which the physical requirements prescribed in the PCT Regulations must be complied with, and possible inconsistencies in the way in which such compliance is checked.

Q: My clients have the option of filing with three different receiving Offices, and I have filed PCT applications on their behalf with each of those Offices. Even though I know that it is not good practice, I occasionally have to file an application in a hurry, in order to meet the priority year deadline, while being aware that some of the physical requirements under PCT Rule 11 have probably not been fully complied with, but knowing that any such defects can be corrected later without affecting the international filing date. However, I have noticed that there is sometimes an inconsistency in the extent to which each Office requests the correction of physical defects. Sometimes I think that there is a defect in an application that will be objected to, but am not requested to correct that defect, whereas I might be requested to correct a similar defect in a different application. Why is there an inconsistency in the way in which the physical requirements of PCT applications are checked?

A: It is recalled that the receiving Office checks, in accordance PCT Article 14(1)(a)(v), whether the international application contains any defects with regard to the physical requirements as prescribed under PCT Rule 11, and if the receiving Office finds any such defects, it invites the applicant to correct the international application within the time limit prescribed in the invitation.

If the physical requirements of the PCT are complied with in the international phase, then the international application, when it enters the national phase, should normally be accepted without the need to correct any physical requirements (according to 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 additional to those which are provided for in this Treaty and the Regulations”).

Note, however, that even though PCT Rule 11 lists a significant amount of physical requirements relating to PCT applications, there is in fact a “ceiling” on how strictly these Rules are supposed to be applied in the context of the PCT. PCT Rule 26.3 states: “Where the international application is filed in a language of publication, the receiving Office shall check (i)  the international application for compliance with the physical requirements referred to in Rule 11 only to the extent that compliance therewith is necessary for the purpose of reasonably uniform international publication [emphasis added];…” and PCT Rule 26.3bis likewise states: “The receiving Office shall not be required to issue the invitation under Article 14(1)(b) to correct a defect under Rule 11 where the physical requirements referred to in that Rule are complied with to the extent required under Rule 26.3”. Formality examiners therefore have the role of attempting to balance the PCT Rule 11 requirements with this standard, which is not always easy and may result in inconsistencies of treatment (or not) of any defects.

Uniformity of practice, and application of the standards which are set out in the PCT Regulations, Administrative Instructions under the PCT and PCT Receiving Office Guidelines is a challenge—with more than 100 national and regional patent offices, as well as the International Bureau (IB), which act as PCT receiving Offices, and levels of experience of the formality examiners in those offices which differ widely and can suffer from high turnover rates, it is an ongoing challenge for the PCT to have all offices treat applications the same way. But the formality examiners of the IB are indeed supposed to play the role of “second pair of eyes” in order to ensure that approaches to such issues are more uniformly applied, stepping in to spot and prompt correction of issues which may not have initially been noticed by the formality examiner at the receiving Office. This double‑check by the IB is provided for under PCT Rule 28.1, and if, in the opinion of the IB, the PCT application contains any of the defects referred to in PCT Article 14(1)(a)(i), (ii) or (v) , it will send Form PCT/IB/313 (“Notification of Defects in the International Application”) to the receiving Office, pointing out what those defects are.

It is certain that if the PCT formality rules were more strictly applied, there would be greater compliance on the part of applicants. On the other hand, many PCT applications would also be considered withdrawn under PCT Article 14(1)(b) and the PCT seeks to avoid such situations. The PCT Receiving Office Guidelines in fact state (paragraph 159): “In any event, in view of Rule 26.3, the receiving Office should, in general, not declare the international application withdrawn for failure to comply with the physical requirements under Rule 11; only in extreme cases of non‑compliance with those requirements should the receiving Office make such declaration.” The “reasonably uniform international publication” standard, which tempers the application of the physical requirements in PCT Rule 11, is manifestly a difficult one for PCT receiving Offices to apply, since only the IB actually does the publishing of PCT applications. For applicants, compliance with the PCT Rule 11 requirements is supposed to provide them with a safe harbor—they should not be asked to make corrections if they comply with them, even if not all of the requirements are strictly applied.

Although the current PCT system may not be as satisfying as one in which all requirements were strictly enforced, and that inefficiencies can certainly result where broader standards are in play, this is the PCT system as it stands today, trying to balance uniformity with reasonableness, especially when taking into account the diversity of all the Offices under the PCT, and the likewise diversity of the applicants who use the PCT system in all of its member States.

Remember that, even if the receiving Office fails to invite you to correct certain physical defects in the application, if there are such “defects” that you would like to correct, there is nothing to prevent you from sending replacement sheets containing the correction to the receiving Office on your own initiative (see the PCT Receiving Office Guidelines, paragraph 209), asking the receiving Office, in an accompanying letter, to replace the “defective” sheets with the replacement sheets, clearly drawing attention to the differences between the two sets of sheets (see PCT Rule 26.4). It is recommended that you send any such request to the receiving Office as early as possible, to allow enough time for it to be forwarded to the IB and then processed by the IB before the completion of technical preparations for international publication. As an extra precaution, you could also follow‑up with the receiving Office to check whether the sheets have been submitted promptly to the IB.