PCT Newsletter 04/2017: Practical Advice

Please note that, due to an error that was contained in the practical advice in PCT Newsletter No. 04/2017, the text which follows is not identical to that which was originally published in that issue.

WARNING: Although the information which follows was correct at the time of publication, 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 careful drafting of the abstract in a PCT application

Q:  I have received the international search report and see that the International Searching Authority has modified the abstract which I had drafted and also chosen a drawing other than the one I had selected to accompany the abstract.  How can I, in future, avoid modification of my abstract or choice of figure?

A:  When the International Searching Authority (ISA) performs the international search, it checks whether the abstract you have submitted complies with the PCT provisions relating to the drafting of abstracts.  If the international search report indicates that the abstract has been modified, it means that the ISA has found that the submitted abstract was not compliant with the relevant provisions set out below.  Under PCT procedure, it is the exclusive competence of the ISA to determine the contents of the abstract and to establish an abstract where one is missing (PCT Rules 38 and 44.2).

The purpose of the abstract in a PCT application is to provide a summary of the disclosure as contained in the description, claims and drawings (if any) and to define the technical field to which the invention belongs (PCT Article 3(3) and PCT Rule 8).  The abstract should be drafted in a way which allows “the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention” (PCT Rule 8.1(a)(i)).  Please note, however, that the abstract does not serve the purpose of interpreting the scope of the protection sought (PCT Article 3(3)).

The abstract should be drafted so as to “efficiently serve as a scanning tool for purposes of searching in the particular art, especially by assisting the scientist, engineer or researcher in formulating an opinion on whether there is a need for consulting the international application itself” (PCT Rule 8.3).  Whether the drafting of the abstract meets that purpose will, of course, depend on the subject-matter concerned, the field of technology, the language used and may also vary according to specific individual cases.

As the ISA has modified the abstract which you had filed, you may now comment and/or propose further modifications to that Authority within one month from the date of mailing of the international search report.  The ISA must take any such proposals and comments into consideration, but it is not obliged to respond or to amend the abstract further (PCT Rule 38.3).  Moreover, it is not possible to seek to make further changes to the abstract by requesting the rectification of obvious mistakes since PCT Rule 91.1(g)(ii) expressly excludes the rectification of mistakes in the abstract.

It is therefore important to take great care when drafting the abstract for submission at the time of filing in order to avoid the rewriting of the abstract by the ISA which may lead to delays in establishing the search report, and subsequently require translation rework and republication of the international application by the International Bureau (IB).  While the quality of an abstract in the international publication is important to allow effective prior art searches, a good abstract is also in the applicant’s best interest, not least of all by providing a good “advert” for the invention concerned.

Length and content of the abstract

It is important to keep the abstract as concise as the disclosure permits.  PCT Rule 8.1(b) recommends a certain length, defined in terms of the number of words when translated into English (“preferably 50 to 150 words if it is in English or when translated into English”).  It is recalled that the IB prepares an English translation for international publication and, unless the original is in French, also a French translation.

Where the language in which the application is published is not English, it may sometimes be difficult to judge whether the length of an abstract is in line with this requirement, taking into account that the recommended range of length is, under current provisions, only a guideline.  It is also generally recognized that the number of words in an abstract is not necessarily an indicator of quality, and that, for certain inventions, a longer description may be unavoidable; however it is important to avoid going significantly over the recommended number of words.

Generally, phrases which can be implied, such as, “This disclosure concerns”, “The invention defined by this disclosure” and “This invention relates to”, should not be used.

Each main technical feature mentioned in the abstract and illustrated by a drawing should be followed by a reference sign placed between parentheses (PCT Rule 8.1(d)).

Figure accompanying the abstract

You should select the figure which best characterizes the invention to accompany the abstract, bearing in mind that, as a general rule, only one figure should be selected.  If you do not indicate any figure, or if the ISA finds that a figure other than the one you have suggested better characterizes the invention, it will specify in the international search report the figure that should accompany the abstract.

Concerning figures more generally, they should comply with the physical requirements as set out in PCT Rules 11.10 to 11.13, and their compliance is checked during the international phase “only to the extent that compliance therewith is necessary for the purpose of reasonably uniform international publication” (PCT Rule 26.3(a)).  Where applicants do not comply with the formal requirements, note that, although compliance might not be “enforced” during the international phase, designated Offices may require correction in the national phase and this might be a more burdensome procedure.

Figures, generally, should not contain text matter, except for a single word or words when absolutely indispensable (PCT Rule 11.11) and any text (both in the original language of filing and as translated) must still be legible when reduced in size to fit on the front page of the published application.  Moreover, bear in mind that you may need to translate the text matter when you enter the national phase, which could result in additional overheads so it is generally preferable, therefore, to include reference signs only.

Further information relating to abstracts can be found in the PCT Applicant’s Guide, International Phase, paragraphs 5.164 to 5.174, and the “Practical Advice” in No. 08/2001 and 03/2013 of the PCT Newsletter.