Administrative Instructions under the Patent Cooperation Treaty

Section 309
Procedure in the Case of Later Submitted Sheets
Furnished for the Purposes of Incorporation by Reference

(a)  This Section applies, subject to paragraph (f), to later submitted sheets which accompany a notice confirming under Rule 20.6 that an element or part embodied in those sheets was incorporated by reference.

(b)  Where later submitted sheets as referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 and the receiving Office makes a finding under Rule 20.6(b), the receiving Office shall:

(i) indelibly mark, in the middle of the bottom margin of each later submitted sheet, the words "INCORPORATED BY REFERENCE (RULE 20.6)", or their equivalent in the language of publication of the international application;

(ii) notify the applicant that the element or part contained in the later submitted sheets is considered to have been contained in the international application or purported international application on the date when sheets were first received and that that date has been accorded or retained, as the case may be, as the international filing date;

(iii) keep in its files a copy of the later submitted sheets marked under item (i) and of the notice under Rule 20.6(a);

(iv) where the later submitted sheets are furnished under Rule 20.5bis to correct any sheets that have been erroneously filed ("erroneously filed sheets"), indelibly mark, in the middle of the bottom margin of each erroneously filed sheet, the words "ERRONEOUSLY FILED (RULE 20.5bis)", or their equivalent in the language of publication of the international application, and move the erroneously filed sheets to the end of the corresponding element of the purported international application;

(v) where transmittals under Article 12(1) have already been made, notify the International Bureau and the International Searching Authority accordingly, and transmit the later submitted sheets marked under item (i) and the notice under Rule 20.6(a) to the said Bureau and a copy thereof to the said Authority; and

(vi) where transmittals under Article 12(1) have not yet been made, attach the later submitted sheets marked under item (i) and the notice under Rule 20.6(a) to the record copy and a copy thereof to the search copy.

(c)  Where later submitted sheets referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 and the receiving Office makes a finding under Rule 20.6(c), the receiving Office shall, subject to Section 310bis:

(i) effect the required correction of the international filing date or accord as the international filing date the date of receipt of the later submitted sheets;

(ii) notify the applicant that the content of the later submitted sheets is not considered to have been contained in the international application or purported international application on the date when sheets were first received and that the international filing date has been accorded as, or corrected to, as the case may be, the date on which the new sheets were received;

(iii) keep in its files a copy of the later submitted sheets and of the notice under Rule 20.6(a);

(iv) where the later submitted sheets are furnished under Rule 20.5bis to correct any erroneously filed sheets, remove the erroneously filed sheets from the international application and notify the applicant accordingly, and keep a copy of the removed sheets in the file;

(v) where transmittals under Article 12(1) have already been made, notify the International Bureau and the International Searching Authority accordingly and transmit a copy of the corrected first and last sheets of the request, the later submitted sheets and the notice under Rule 20.6(a) to the said Bureau and a copy thereof to the said Authority;  and

(vi) where transmittals under Article 12(1) have not yet been made, attach the later submitted sheets and the notice under Rule 20.6(a) to the record copy and a copy thereof to the search copy.

(d)  Where later submitted sheets referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 but the purported international application still does not fulfill the requirements of Article 11(1), the receiving Office shall proceed as provided in Rule 20.4, but not before the expiration of the time limit under Rule 20.7.

(e)  Where later submitted sheets referred to in paragraph (a) are received after the expiration of the applicable time limit referred to in Rule 20.7, the receiving Office shall proceed as provided in Section 310ter.

(f)  Where later submitted sheets referred to in paragraph (a) are received but a missing element or part contained in those sheets cannot be incorporated by reference in the international application under Rules 4.18 and 20.6 because of the operation of Rule 20.8(a), the receiving Office shall:

(i)  inform the applicant that the notice under Rule 20.6(a) confirming the incorporation by reference of the missing element or part has been disregarded;

(ii)  proceed in accordance with Section 310(b), which shall apply mutatis mutandis, as if the notice under Rule 20.6(a) were a correction furnished under Rule 20.3(b)(i), or a missing part furnished under Rule 20.5(b) or (c), as the case may be;  and

(iii)  proceed in accordance with Section 310bis(b) where the applicant requests, within the time limit under Rule 20.5(e), that the missing part concerned be disregarded.

(g)  Where later submitted sheets referred to in paragraph (a) are furnished under Rule 20.5bis to correct any erroneously filed element or part but the correct element or part embodied in those sheets cannot be incorporated by reference in the international application under Rules 4.18 and 20.6 because of the operation of Rule 20.8(a-bis), the receiving Office shall:

(i)  subject to subparagraph (ii), transmit the international application to the International Bureau as receiving Office;

(ii)  if the applicant does not authorize the transmittal of the international application under Rule 19.4(a)(iii) or does not pay the required fee within the applicable time limit, proceed in accordance with Section 333(c) and apply the procedure provided in paragraph (f) mutatis mutandis as if the notice under Rule 20.6(a) were a correction furnished under Rule 20.5bis(b) or (c), as the case may be.