PCT Newsletter 04/2019: Practical Advice

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.

Issues to be aware of when submitting drawings in color

Q:  I will shortly be filing an international application in respect of an invention that consists of a device which produces results in color.  The drawings should therefore preferably be available in color to facilitate the understanding of the invention.  Is it possible to submit color drawings as part of the application?  If so, how should they be prepared, and should I alert the International Bureau to the fact that I am purposefully filing color drawings?

A:  The PCT makes no provision for color drawings (or photographs1) and, furthermore, according to PCT Rule 11.13, drawings are to be “executed in durable, black, sufficiently dense and dark, uniformly thick and well defined, lines and strokes without colorings” [emphasis added].  If at all possible, you should adhere strictly to that rule from the outset and provide any necessary explanation of the relevant colors in the description, since you may be required to provide black and white drawings in the national phase before some Offices and this may prove difficult or impossible without adding subject matter.

However, although the filing of color drawings is not generally permitted under the PCT, any color drawings received will be retained by the receiving Office and/or the International Bureau (IB), although their subsequent availability will vary, depending on a number of factors.

Where, exceptionally, color drawings are submitted, they must be on sheets of A4 size and respect the minimum margins prescribed under PCT Rule 11.6(c), and generally meet the requirements under PCT Rule 11.11 and Rule 11.13.  While the receiving Office will not necessarily require replacement sheets where color drawings are submitted, it is important to be aware that, where the applicant does not later furnish replacement black and white drawings (either of their own volition or subsequent to an invitation to correct from the receiving Office), the IB will, for international publication purposes, convert all drawings into black and white (not greyscale).  Please also bear in mind that, in some cases, the receiving Office may even do the conversion prior to the drawings being submitted to the IB, and again, the quality for publication purposes cannot be guaranteed.  Despite the best efforts of the IB during the conversion or scanning of the color drawings into black and white, it cannot guarantee the clarity of the drawings in the published application.  As a result, details may be lost, which could impact the disclosure of the invention in the international application and affect the processing of the international application in the international and national phases.  

Given that there is the risk that the conversion to black and white may result in certain inaccuracies when compared with the original document, if you file an application electronically using ePCT-Filing2, the IB has made available a dedicated preview function that enables applicants to view, pre-filing, the content of any application body provided in either PDF or DOCX format as it will be rendered by the IB for subsequent processing and publication.  The applicant therefore has an opportunity, prior to filing the application using ePCT‑Filing, to verify that the content of the converted images will be as originally intended.  Since the preview function “view document as it will be rendered at the IB” is based on the same conversion process (the “DocConverter”) as that which is used for document import and publication at the IB, it should closely resemble what will be published by the IB, provided that the receiving Office does not make any further conversions of the page images prior to transmitting the record copy to the IB. 

The DocConverter preview function is also available as a standalone function, without needing to sign in, at:

https://pctdemo.wipo.int/DocConverter/pages/pdfValidator.xhtml

https://pctdemo.wipo.int/DocConverter/pages/home.xhtml

By clicking on the dropdown menu icon, you will have access to the complete set of conversion functions and also a user guide.

Please note that, although it is mentioned above that the same preview function is already offered directly as part of ePCT‑Filing, this excludes filings with receiving Offices which do not allow upload of the application body within ePCT (namely, the receiving Offices of the Israel Patent Office and the United States Patent and Trademark Office).

Where the receiving Office transmits to the IB a copy of an electronically filed application body in its original format as filed, the IB will make it available on PATENTSCOPE.  If the electronic filing software used allowed for the specific indication that color content was filed as part of the international application (this is the case for international applications filed using ePCT‑Filing or, in certain cases, PCT‑SAFE), such indications will trigger a notice on the front page of the published international application to indicate that the application as filed included color (or greyscale, if that is the case) content and that this is available on PATENTSCOPE.

When using ePCT‑Filing, you do not need to indicate specifically that you are purposefully filing color content as ePCT will normally automatically detect color or greyscale in the application body files that are uploaded, and will pre‑check the corresponding box.  However, the box can be unchecked manually in cases where the user determines that the system detected this in error, such as in cases where the software used by the applicant to prepare the application body converted a pure black and white image into a different file format which, although it appears to be black and white, is then detected as color or greyscale.

When using PCT‑SAFE, the checkbox is only available where the receiving Office selected is the IB and must be checked manually, although there will continue to be a validation warning that the drawings are not, but should be, in black and white. 

On PATENTSCOPE, in the list of documents, one of the following icons, will appear to the right of the entry “Application Body as Filed” and will serve as a shortcut to the file containing the originally‑filed color (or greyscale) content:

The color icon is used for those cases for which there is a specific indication published on the front page that the international application contains color (or greyscale) images.  The grey icon is used where there is no such indication on the front page (that is, where color has not been automatically detected or has not been notified specifically by the applicant).

The provision of the drawings as originally filed may assist national phase processing in Offices where color drawings are accepted, and those Offices will be able to consult those drawings in order to decide what is acceptable for the purposes of national phase processing according to their national laws and procedures.  However, as has already been mentioned, all drawings are nevertheless converted to pure black and white formats for further processing and publication by the IB, and this will not overcome the need to provide to other Offices, when required, true black and white drawings representing the color images without adding subject matter.

The IB hopes that at some point in the future, it will be possible to permit the filing and publication of color content in the application body, and there has been much discussion, in particular within the framework of the PCT Working Group, about the future possibility of the acceptance of color drawings during the international phase.  However, many technical, legal and procedural considerations have to be addressed, and consultations on these matters are taking place regularly with receiving Offices, International Searching and Preliminary Examining Authorities, designated/elected Offices, as well as certain interested intergovernmental and non‑governmental organizations representing users of the PCT System.

For the time being, however, most national phase procedures still require pure black and white content for the application body.  Even if the designated Office can access, via PATENTSCOPE, the version that was originally filed, it may remain difficult or impossible to subsequently produce an acceptable black and white version without new subject matter being considered to have been added.

  1. Any reference to color drawings also applies to photographs for the purposes of this Practical Advice.
  2. Note that other electronic filing systems used by certain receiving Offices explicitly preclude the electronic filing of color drawings.