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.
Submitting replacement drawings where no invitation to correct defects has been issued
Q: Upon filing an international application, I submitted drawings which had been drawn up hastily, and which I do not think were good enough quality. However, I have not yet received an invitation by the receiving Office to submit replacement drawings of better quality. Is it possible to file replacement drawings even if an invitation to correct defects (Form PCT/RO/106) has not yet been issued by the receiving Office? If so, what is the time limit for doing this? Also, if they are received by the International Bureau after international publication, will they be forwarded to the designated Offices?
A: If the quality of the drawings you have submitted is poor, you do not need to wait for the receiving Office to issue an invitation to correct defects in the international application because substitute sheets under PCT Rule 26 may be submitted to correct formal defects in the drawings, on the applicant’s own initiative (see PCT Receiving Office Guidelines, paragraph 209, at: www.wipo.int/pct/en/texts/pdf/ro.pdf). The ability to submit replacement sheets without invitation by the receiving Office is not limited to drawings – it applies equally to the text matter of the international application. As far as your drawings are concerned, it may even be the case that the receiving Office does not intend to invite correction. You should bear in mind, however, that the omission by the receiving Office to invite correction does not prevent the designated (or elected) Offices from inviting the applicant to comply with the requirements under PCT Rule 11 in the national phase.
In order to assess whether the quality of any drawings or text matter filed in paper form is sufficient, you should bear in mind that the sheets will be scanned by the International Bureau (IB) for publication purposes. Furthermore, certain receiving Offices which do not require applications to be filed in more than one copy may prepare a copy of the application themselves for search purposes (whether by photocopying or scanning), and you should be aware that that a bad reproduction of the drawings might even affect the quality of the search.
It is recalled that replacement sheets should be sent directly to the receiving Office, and not to the IB – it is the receiving Office which forwards the sheets to the IB for international publication. Where there has been no invitation from the receiving Office to correct defects, there is no fixed time limit for sending the replacement sheets to the receiving Office. However, they must be sent early enough so that the receiving Office can transmit them to the IB before the completion of technical preparations for publication (normally 15 days prior to the publication date). If they are received in time, they will be published as part of the international application.
If the formal drawings are received late by the IB and are not published, they will not be forwarded to the designated Offices, and you would need to furnish the replacement sheets separately to each designated Office concerned later, during the national phase. Nor would the formal drawings be available on the database of International Patent Applications (PatentScope) published on the WIPO website. They would, nevertheless become part of the file held by the IB, and would be available as follows:
• under PCT Rule 94.1(a) they would be available, at any time, to anyone authorized by the applicant, subject to the reimbursement of the cost of the service; and
• under PCT Rule 94.1(b) they would be available to third parties after international publication of the international application, subject to the reimbursement of the cost of the service.
It is therefore recommended that the replacement drawings be submitted as soon as possible in the PCT procedure, even if you have not received an invitation to correct defects from the receiving Office, particularly if the originally filed sheets are such that if they are reproduced, the clarity and sufficiency of the disclosure might suffer.
For information on the formality requirements for drawings, see paragraphs 143 to 178 of Volume I of the PCT Applicant’s Guide:
See also the “Practical Advice” in PCT Newsletter No. 01/2005, page 7, for information on the importance of correcting defects in drawings.