PCT Newsletter 08/2001: 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.

Missing or defective abstracts

Q: Due to circumstances beyond my control, I recently had to file an international application at the last minute, just prior to the expiration of one year from the priority date, in order to benefit from the priority date of an earlier application. Unfortunately, I did not have enough time to shorten the abstract, which was rather long (300 words). Will I receive an invitation to correct the international application? Would it have been possible to submit the abstract at a later date, separately from the rest of the application?

A: According to PCT Rule 8.1(b), the abstract should be "as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English)". The receiving Office will check whether the international application contains an abstract as provided for in PCT Article 14(1)(a)(iv), but not whether the abstract complies with PCT Rule 8 (see PCT Receiving Office Guidelines, para. 147 (available in Adobe PDF format)).

Although there is no actual "requirement" to restrict the abstract to between 50 and 150 words (PCT Rule 8.1(b) uses the word "preferably"), it is important that applicants try to adhere to these parameters. Note that if the original abstract is in Chinese, French, German, Japanese, Russian or Spanish, the International Bureau must prepare an English translation of the abstract for publication in the PCT pamphlet (published PCT application), as well as in the electronic version of the PCT Gazette and, if the original abstract is in English, or in one of above-mentioned languages other than French, it must also prepare a French translation for publication in the electronic version of the PCT Gazette. Moreover, because an abstract serves as a summary of the disclosure contained in the description, the claims and any drawings, which will be used by scientists, engineers and examiners in searching in a particular technical field, it should be kept as brief as possible so as to help quickly assess whether there is a need to consult the description or the whole international application.

If the abstract is not filed at the same time as the international application, the late receipt of the abstract by the receiving Office does not affect the international filing date. The receiving Office may, in accordance with PCT Article 14(1)(b), invite the applicant to furnish the missing abstract (while at the same time sending a copy of that invitation to the International Bureau and the International Searching Authority (ISA)), in which case the abstract must be sent by the applicant to the receiving Office within the time limit indicated in the invitation (see PCT Rules 26.1 and 26.2).

If the ISA does not receive a notification from the receiving Office to the effect that the applicant has been invited to furnish a missing abstract, or if a long abstract has been filed and the ISA finds that the abstract does not comply with PCT Rule 8 for that or any other reason, PCT Rule 38.2(a) provides for the establishment of an abstract by the ISA. The international search report (ISR) indicates whether the ISA approves the abstract as submitted by the applicant; if the ISA does not approve that abstract or if an abstract has never been submitted by the applicant, the ISR is accompanied by the abstract as established by the ISA (PCT Rule 44). Where the ISA establishes an abstract, comments on that abstract may be sent by the applicant within one month from the date of mailing of the international search report; those comments may or may not be taken into account by the ISA. If the ISA decides to take those comments into account and (further) amend the abstract, it will notify the International Bureau of the final content of the abstract. (See PCT Rule 38.)

Note that it is in the interest of applicants, agents, ISAs and the International Bureau that abstracts comply with PCT Rule 8 at the time of filing the international application. This will avoid: unnecessary invitations to correct, the need for ISAs to establish or rewrite the abstract, the need for the International Bureau to translate lengthy abstracts or retranslate abstracts which have been rewritten by the ISA, and the need to publish the corresponding note in the PCT Gazette and republish the front page of the pamphlet.

For further information on the drafting of abstracts, see PCT Applicant's Guide, Vol. I/A, paras. 179–188.