PCT Receiving Office Guidelines

Chapter VI: Article 14 Check and Other Formal Requirements

Ex Officio Corrections

161. In certain cases, the receiving Office may, instead of inviting the applicant to submit a correction of a formal defect in the international application, itself correct the defect. The applicant is then notified of the correction which will remain unless the applicant objects.

161A. The International Bureau will make the changes listed below during its processing of the international application. Ex officio corrections by the receiving Office need not be made to:

– reduce the number of characters of the file reference number to 25 (Section 109);

– delete any indications of titles, such as Esq., Dr., etc.;

– underline to identify the surname of the applicant, inventor and/or agent;

– modify the order of the information given in addresses, such as street before building number.

162. Defects Which May Be Corrected Ex Officio. Where the request contains matter other than that specified in Rules 4.1 to 4.18 or permitted in the Administrative Instructions, the receiving Office deletes that matter ex officio under Rule 4.19(b). Other specific cases in which ex officio corrections may be made are referred to in the Administrative Instructions, for example, renumbering of sheets of the international application (Section 311). Ex officio corrections may also be made where the international application contains an inconsistency or a minor defect with regard to formal requirements (Section 327). Where there is more than one possibility of correcting a formal defect, the receiving Office should, depending on the case, contact the applicant by telephone and/or in writing to clarify the applicant’s intention before making any ex officio correction. Where the receiving Office has, by mistake, changed ex officio any indication, it must correct the mistake ex officio as soon as it becomes aware of it. If the receiving Office finds that a check box in Box No. VIII of the request has been incorrectly marked, or that the number of declarations has been incorrectly indicated in the right column of that Box, the check box or indication concerned may need to be corrected (paragraph 192B). However, the receiving Office must not make any ex officio corrections to declarations which are contained in Boxes Nos. VIII (i) to (v) of the request, for example, it must not make any addition to, alter, strikethrough or otherwise delete, the text of a declaration (Section 327(d)).

163. Manner of Correcting Defects Ex Officio. The manner of making ex officio corrections by the receiving Office is referred to in the Administrative Instructions as follows (see also Annex B of these Guidelines):

(i) ex officio corrections of the request (Section 327);

(ii) deletion of additional matter in the request (Rule 4.19(b) and Section 303);

(iii) manner of marking the necessary annotations in the check list (Section 313(b));

(iv) renumbering in the case of deletion, substitution or addition of sheets of the international application (Section 311);

(v) cancellation of designations of non-Contracting States (Section 318);

(vi) the indication of dates if it does not comply with Section 110;

(vii) cancellation of the exclusion of a designation of a State (Section 319).

164. Notification about Ex Officio Correction. The receiving Office notifies (Form PCT/RO/146) the applicant of any ex officio correction. Where an ex officio correction was made following clarification obtained from the applicant, for example, on the basis of a letter from the applicant (or by telephone), the receiving Office should indicate that fact in the notification to the applicant.

165. Form PCT/RO/146 does not give any details about the nature of the ex officio correction but merely indicates on which sheet the correction was made by the receiving Office. Therefore, a photocopy of the corrected sheet(s) must be sent together with Form PCT/RO/146 to the applicant. Copies of that form and of the sheet(s) embodying the correction need to be sent to the International Bureau and the International Searching Authority only where the sheet(s) involved has (have) already (that is, before the correction was made) been transmitted to that Bureau and that Authority.