Practical Advice
Correction of incorrectly submitted parts of an international application
Q: I filed a PCT application and mistakenly included a draft set of drawings rather than the final version. The priority period expired last week. I would prefer to have the version of the drawings in the PCT application as it was in the priority application. Is there any way of remedying this?
A: For situations where applicants have accidentally included an incorrect element or part in a PCT application, the PCT provides a safeguard procedure referred to as “incorporation by reference of erroneously filed elements and parts” (PCT Rule 20.5bis). This rule allows applicants to include elements or parts of a previously filed application to which priority is claimed in the PCT application (in the context of this Rule, elements are the description and the claims whereas a part is a portion thereof or part or all of the drawings). However, the correct element or part can only be added; it is not possible to remove any erroneously filed element or part from the international application without changing the international filing date.
In accordance with PCT Rule 4.18, the PCT Request form, in Box No. VI, contains a precautionary statement to the effect that where an element or part is not otherwise contained in the international application but is completely contained in the earlier application of which priority is claimed, it is incorporated by reference in the international application, subject to confirmation by the applicant under PCT Rule 20.6. Electronic filing systems automatically generate this precautionary statement for each application.
In your case, if you wish the drawings of your earlier application to be part of the PCT application, you need to send a notice to the receiving Office confirming that they are incorporated by reference and submit a copy of the drawings to be incorporated.
It is important to expressly mention that you are confirming incorporation by reference and not just submitting the drawings. If you do not so clarify, the receiving Office may consider the additional copy of the drawings as completing the application rather than being incorporated by reference, in which case it would change the international filing date to the date of receipt of the correct drawings, which would be outside the priority period.
The time limit for confirming incorporation by reference is two months from the international filing date or two months from an invitation by the receiving Office where it notices the error and invites correction (PCT Rule 20.7). If the priority document is not yet available to the receiving Office, you would also need to submit a simple copy of the earlier application, so that the Office can verify that the drawings you are now submitting are identical to those in the priority application.
Please note that priority must have been claimed on the international filing date; in other words, you cannot add a priority claim after filing the application and also use it as a basis to confirm incorporation by reference. If you forgot to claim the priority of the earlier application in the request at the time of filing, you would not be able to request incorporation by reference even though the correct drawings were indeed contained in the earlier application.
If all requirements for incorporation by reference are fulfilled, the receiving Office will mark the correct drawings as incorporated by reference and will add them to the application, placing them before the erroneously filed drawings and marking them as such. The ISA will not take the latter into account if it receives the correct ones in time before starting the search.
Because the erroneously filed drawings will remain in the PCT application and, additionally, a few Offices still have outstanding incompatibility notifications as designated Offices under PCT Rule 20.8(b-bis) (meaning that in the national phase they will not consider the drawings concerned as incorporated by reference), it is possible that this safeguard procedure may not entirely resolve your problem in all situations and in relation to all PCT Contracting States.
As you can see from the above, every precaution needs to be taken to avoid submitting an incorrect version of a PCT application element, which can sometimes occur when one is attaching files for submission during the process of filing electronically. Helpful best practices are to give clearly distinctive names to the files to be submitted and to check before and immediately after filing that the correct files have been attached and submitted. If any mistake is noticed on the same day as the application has been filed, it can be corrected under PCT Rule 20.5bis(b) before all receiving Offices without impacting the international filing date.
Nevertheless, should the mistake be noticed only after the priority period and you intend to resort to the procedure described above, it is of utmost importance that you carefully read each form you subsequently receive. If the receiving Office finds that the requirements to confirm incorporation by reference are not fulfilled, for example because the copy of the drawings you have submitted is not exactly identical to what is contained in the priority application, it will change the international filing date to the date of receipt of the copy in question (using Form PCT/RO/126) and give you a time limit of only one month, non-extendible, to request that the submitted pages be disregarded and the change of international filing date be reversed (Rule 20.5bis(e)).
For further information on incorporation by reference in general, please refer to the PCT Applicant’s Guide, paragraphs 6.024 to 6.031 at:
https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=pctip&doc-lang=en&doc-type=guide
For notifications of incompatibility under PCT Rule 20.8(a), (a-bis), (b) or (b-bis) please refer to:
https://www.wipo.int/pct/en/texts/reservations/res_incomp.html
More information on incorporation by reference, specifically where an incorrect element has been filed with the application, can be found in the Practical Advice published in PCT Newsletter No. 07-08/2020 at:
https://www.wipo.int/edocs/pctndocs/en/2020/pct_news_2020_7_8.pdf