PCT Newsletter 07-08/2020: 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 furnishing of a correct element of an international application where the originally filed element was filed erroneously

Q:  I filed an international application, claiming the priority of an earlier application filed on 16 July 2019, with the Intellectual Property Office1 (United Kingdom) as receiving Office (RO/GB) on 14 July 2020 (that is, two days before the expiration of the 12‑month priority period).  A week later, I realized that I had erroneously submitted the claims from a different application, together with the correct abstract, description and drawings.  I would like to know whether I can replace the incorrect claims with the correct claims in the application in question, without being accorded a later international filing date and losing my right to claim priority of the earlier application.  Please could you confirm whether this is possible, and if so, what do I need to do?  Also, will the original (wrong) claims be made available to the public?

A:  Note that, where an applicant claims priority of an earlier application and notices that he/she has filed the wrong set of claims (or description or drawings) before the expiration of the 12‑month priority period, one option is to simply refile the international application with the correct claims immediately, and withdraw the original application.  Alternatively, in accordance with new PCT Rule 20.5bis(b) and (c), for all international applications filed on or after 1 July 2020, it is possible to request the receiving Office to exchange the claims with the correct ones.  However, if the correct claims are received by the receiving Office on a later date, the international filing date would be changed to the date of receipt of the correct claims by the receiving Office.  Since you only noticed the mistake after the expiration of the 12‑month priority period, if you took either of the above actions, you would no longer be able to validly claim priority of the earlier application (without attempting to request restoration of the right of priority).  In the first option, the date of receipt of the newly filed international application would fall outside the priority period, and in the second option, the date of receipt of the correct set of claims would become the international filing date, which would also fall outside the priority period. 

If it is important to retain the originally accorded international filing date, new PCT Rule 20.5bis(d) enables you to request confirmation of incorporation by reference of elements and parts in the case of an erroneously filed element or part (as opposed to PCT Rule 20.5, which covers the case of furnishing of a missing part of the application), where that element or part was completely contained in the earlier application concerned.  This means that if the “correct claims” were in fact completely contained in the priority application, you will be able to add the correct set of claims to your application, provided that you submit to RO/GB, within the applicable time limit under PCT Rule 20.7 (that is, two months from the date on which one or more elements referred to in PCT Article 11(1)(iii) were first received by the receiving Office2), a written notice confirming that the new (correct) set of claims is incorporated by reference in the international application under PCT Rule 4.18.  In accordance with PCT Rule 20.6, that notice should be accompanied by the following3:

  • a sheet or sheets embodying the entire element as contained in the earlier application, the priority of which is being claimed, and
  • if you have not yet furnished the priority document, a copy of the earlier application as filed.

Provided that the receiving Office determines that the correct set of claims is completely contained in the earlier application, those claims will, in accordance with PCT Rule 20.6(b), be considered to have been contained in the international application on the date on which one or more elements referred to in PCT Article 11(1)(iii) were first received by the receiving Office.  Therefore, the original international filing date will be retained. 

In accordance with PCT Rule 40bis.1, the International Searching Authority (ISA) may invite the applicant to pay additional fees where a missing part or a correct element or part is furnished later under PCT Rules 20.5(c), 20.5bis(c), 20.5(d) or 20.5bis(d), and the ISA has been notified that it has been included in the international application or that it is considered to have been contained in the international application on the date on which one or more elements referred to in PCT Article 11(1)(iii) were first received by the receiving Office, as the case may be, only after the ISA has begun to draw up the international search report (ISR).  Please note that the European Patent Office (EPO), which is the competent ISA for international applications filed with RO/GB, charges such an additional fee in respect of erroneously filed elements.  Therefore, in your case, where all the claims were erroneously filed, if the EPO as ISA has already begun to draw up the ISR in respect of the original, erroneously filed claims by the time it has been notified that the correct claims have been incorporated by reference, you might be requested to pay that additional fee (please refer to the decision of the EPO’s Administrative Council of 27 March 2020 (OJ EPO 2020, A36) (www.epo.org/law-practice/legal-texts/official-journal/2020/04/a36/2020-a36.pdf)).

In the situation where the correct set of claims has been incorporated by reference under PCT Rule 20.6(b), the erroneously filed set of claims will remain in the application (PCT Rule 20.5bis(d)).  The receiving Office will mark those erroneously filed sheets as “ERRONEOUSLY FILED (RULE 20.5bis)”, move those sheets to the end of the claims (without repagination), and will transmit them to the International Bureau (IB).  The IB will publish those sheets on PATENTSCOPE as part of the international application.  This contrasts with the situation under PCT Rule 20.5bis(c), where the applicant requests the receiving Office to simply replace the erroneously filed element with the correct one (without requesting incorporation by reference), in which case the correct element will replace the erroneously filed element, which will then be removed from the application and thus will not be published as part of the international application or made available on PATENTSCOPE4.

Please note that some Offices, in their capacities as receiving Office and/or designated (or elected) Office, have notified the IB under PCT Rule 20.8(a‑bis) and (b‑bis), respectively, that new Rules 20.5bis(a)(ii) and (d) are not compatible with their applicable national law (for those Offices which have submitted to the IB a notice of incompatibility under PCT Rule 20.8(a) or (b), it is deemed that the notice of incompatibility also applies to PCT Rule 20.8(a‑bis) or (b‑bis), respectively).  This means that not all receiving Offices would allow you to confirm incorporation by reference of an erroneously filed element, and not all designated Offices will take into account any decision made by a receiving Office to accept incorporation by reference of an erroneously filed element.  The list of Offices which have made such a notification of incompatibility can be found at:

www.wipo.int/pct/en/texts/reservations/res_incomp.html

In the case where an applicant has filed an international application with a receiving Office that has made such a notification under PCT Rule 20.8(a-bis), the applicant may request the receiving Office to transmit the international application under PCT Rule 19.4(a)(iii) to the IB as receiving Office, which does accept the incorporation by reference of correct elements or parts where erroneously filed elements or parts have been filed.  Note also that if a particular designated Office has made such a reservation, this does not mean that that Office will not accept the corrected set of claims as you could still proceed with those claims before it, provided that you were prepared to accept the consequences of a later international filing date.  In that case, you could still consider whether it would be worthwhile requesting restoration of the right of priority before that designated Office.

For further information on incorporation by reference, please refer to the PCT Applicant’s Guide, Introduction to the International Phase, paragraphs 6.024 to 6.031 (www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf)

  1. Intellectual Property Office is an operating name of the Patent Office.
  2. Or, if you have received an invitation under PCT Rule 20.5bis(a) from the receiving Office, the time limit is two months from the date of that invitation.
  3. If the earlier application is not in the language in which the international application was filed, or where a translation of the international application is required, please refer to PCT Rule 20.6(a)(iii).
  4. It is recalled that if a request under PCT Rule 20.5bis(c) is made after the date on which all of the requirements of PCT Article 11(1) were fulfilled, the international filing date would be changed to the date on which that correct element is received by the receiving Office.