General/common

G1) When did these amended Regulations generally enter into force and to which international applications do they apply?

In general, and subject to the more detailed information and exceptions indicated below in relation to each of the sets of amendments, the amended Regulations entered into force on April 1, 2007, and apply to international applications the international filing dates of which are on or after April 1, 2007, and do not apply to international applications the international filing dates of which are before April 1, 2007.

Detailed information on entry into force and transitional arrangements for all Rules that entered into force on April 1, 2007 is contained in the following documents: Annex III (page 55 of 58) of document PCT/A/34/6 and Annex III (page 21 of 28) of document PCT/A/35/7.

G2) Where can I find more background information on these amendments?

The preparatory documents which ultimately gave rise to the amendments relating to restoration of the right of priority, missing parts and incorporation by reference and rectification of obvious mistakes were discussed at the seventh session of the Working Group on Reform of the PCT in 2005 and later at the 2005 PCT Assembly (see especially pages 19 and 28 of Annex II of document PCT/A/34/6 for the restoration of the right of priority, pages 11 and 12 of Annex II of document PCT/A/34/6 for the missing parts and incorporation by reference and page 39 of Annex II of document PCT/A/34/6 for the rectification of obvious mistakes).

Rule 20.8 dealing with incompatibility with national laws (in connection with missing parts and incorporation by reference) was further discussed at the eighth session of the Working Group on Reform of the PCT in 2006 and later at the 2006 PCT Assembly (see especially page 5 of Annex I of document PCT/A/35/7).

Restoration of the Right of Priority

1) Briefly, what do the amendments to the PCT Regulations concerning restoration of the right of priority provide?

Firstly, the objective of these amendments is to allow the maintaining of the right of priority from an earlier filed application the priority of which is claimed in an international application even if that international application is accidentally filed after the expiration of the priority year (in which case the right of priority under the Paris Convention would normally be lost). The exact conditions under which the rights can be maintained vary, depending on both the receiving Office and on the law in each State where the application eventually enters the national phase. Secondly, the amended rules provide that the applicant has the option to request the receiving Office (or the designated Offices as the case may be) for the restoration of the right of priority.

2) What is the origin of these amendments?

This is one of a number of sets of amendments that were introduced into the PCT in order to align it with the provisions of the Patent Law Treaty (PLT).

3) What are the conditions governing the new PCT restoration of the right of priority procedure?

The conditions are the following:

a) a request by the applicant for the restoration of the right of priority;

b) the priority claim concerned must have been made at the time of filing of the PCT application or must have been added under Rule 26bis.1(a) within 2 months from the date on which the priority period expired;

c) the request must be filed within 2 months from the date on which the priority period expired;

d) the request needs to state the reasons for failure to comply with the time limit;

e) the request shall preferably be accompanied by a declaration or other evidence to support such request--if the office requires such additional evidence, it shall provide an additional reasonable time limit in which to submit it;

f) where required, payment of the corresponding fee;

g) satisfaction of one of the criteria applied by the office (see Question 6).

4) If I don't request restoration during the international phase, can I still do so in the national phase?

Yes, you can still request the restoration of the right of priority in the national phase, as set out in Rule 49ter.2. Note, however, that it does not apply to Contracting States which have opted out of the system by way of notifications of incompatibility (see Question 13 below).

5) If I include a claim to priority from an application the priority period of which expired 2 months or less prior to the international filing date, but do not request restoration of the right of priority, or if a request is refused by the receiving Office, what will happen?

All claims to priority with dates falling in the relevant period will be listed in the international application and used for calculating time limits within the international phase, even if restoration of the right of priority is not requested in the international phase or if the receiving Office refuses the restoration. This means that the dates for international publication and for entry into the national phase under Articles 22(1) and 39(1)(b) may be up to 14 months earlier than if the priority claim was considered not to have been made ("void"). The priority claims will also be used in determining relevant dates for the purposes of international search and preliminary examination.

6) What are the criteria for restoration?

There are two possible criteria for restoration:

a) failure to file the application within the priority period occurred in spite of due care required by the circumstances having been taken;

b) failure to file the application within the priority period was unintentional.

7) Can Offices apply both criteria, or consider them in the alternative?

All Offices to which these Rules are applicable (see Question 13) must apply at least one of the criteria set out in the answer to Question 6, and may apply both. In connection with the adoption of amended Rule 26bis.3(a), the PCT Assembly noted that a receiving Office may, if it wishes, apply both criteria for restoration and leave the choice to the applicant as to which criterion is sought to be applied in a specific case, noting that it would be advantageous for the applicant to obtain a positive finding by the receiving Office on the stricter criterion of "due care" since such a finding would in general be effective in all designated Offices, unlike a finding on the less strict "unintentionality" criterion. Furthermore, a receiving Office is free to apply, upon request of the applicant, first the "due care" criterion and then, if the receiving Office finds that that criterion is not complied with, the "unintentionality" criterion. The same applies to designated Offices, except that designated Offices may even apply a less strict criterion than "unintentionality". Further information on which criteria are applied by receiving Offices and designated Offices is published in the PCT Applicant's Guide and in a table that is available on the website.

8) What evidence will the Offices require in support of a request for the restoration of the right of priority?

Receiving Offices and designated Offices may require the submission of a declaration or other evidence in support of the statement of reasons for the failure to file the international application within the priority period. In connection with the adoption of Rule 26bis.3, the PCT Assembly noted that the question of what information or evidence each receiving Office is entitled to require under Rule 26bis.3(f) is a matter left to national law and practice. The same applies to designated Offices. Details concerning the specific types of evidence or declarations that might be required will, to the extent provided to the International Bureau by those Offices which apply these provisions, be published in the PCT Applicant's Guide.

9) Will I have an opportunity to try to convince the office that it should not refuse my request?

Yes, if the receiving Office intends to refuse the request for the restoration of the right of priority, it is required to notify the applicant of this intention (Form PCT/RO/158). The applicant then has an opportunity to make observations on the intended refusal within a reasonable time limit. Note that the notice of intended refusal may in practice be sent to the applicant together with an invitation to file a declaration or other evidence. The same practice applies to designated Offices.

10) What will the effect be of a decision by a receiving Office on a designated Office?

Restorations granted on the basis of "due care" will usually be binding on all designated Offices (save those which have submitted a notification of incompatibility under Rule 49ter.1(g), see Question 13), though a review is possible in certain limited circumstances.

Restorations granted on the basis of "unintentionality" will only be binding on those designated Offices which apply that criterion in their national law (again, a review is possible in limited circumstances).

A refusal to grant restoration, or a grant which is not binding on the particular Office, can always be reviewed in the national phase.

A review of a positive decision of a receiving Office is possible where the designated Office, a court or any other competent organ finds that a substantive requirement for restoration of the right of priority by the receiving Office has not been complied with. Note that a decision by a receiving Office to restore a right of priority will not be ineffective in a designated State merely because a procedural requirement for such restoration has not been complied with, for example, because a required fee has not been paid.

11) How will a designated Office know which criterion or criteria were used by the receiving Office when it authorized the restoration?

Information as to the criterion for restoration upon which the decision by the receiving Office was based ("due care", "unintentionality", or both criteria), as well as other details will be included in the publication of the international application under new Rule 48.2(a)(xi), (b)(vii) and (b)(viii). The International Bureau will also specifically publish Form PCT/RO/159 (Notification of Decision on Request to Restore Right of Priority) which contains the decision of the receiving Office and the criteria applied by that office.

12) What international applications does this Rule change apply to?

As stated in Question G1 above, the amended Regulations dealing with restoration of priority apply to international applications the international filing dates of which are on or after April 1, 2007, and do not, in general, apply to international applications the international filing dates of which are before April 1, 2007.

Note that, as an exception, Rule 49ter.2 (restoration of right of priority by a designated Office) applies to international applications the international filing dates of which are before April 1, 2007, and in respect of which the acts referred to in Article 22(1) are performed on or after April 1, 2007. In other words, Rule 49ter.2, which provides for restoration of the right of priority by the designated Offices, does apply to all international applications having a date of entry into national phase on or after April 1, 2007, irrespective of their international filing dates.

13) How can I find out which States have made notifications that the new restoration of priority scheme is not compatible with their existing laws?

For background, as a general rule all receiving Offices and designated Offices will have to provide for the restoration of the right of priority, any exception to that general rule being provided only by way of an incompatibility statement from the Office concerned.

In connection with the adoption of amended Rule 49ter.2(h), the Assembly noted that any designated Office the national law of which provides for a criterion more stringent than the "due care" criterion or does not provide for restoration of the right of priority at all may make use of the incompatibility provision in Rule 49ter.2(h). Designated Offices the applicable national laws of which provide for the restoration of the right of priority based on requirements similar but not identical to the requirements under Rule 49ter.2(a) and (b) will not need to make use of the incompatibility provision if the requirements under the applicable national law are, from the viewpoint of applicants, at least as favorable as the requirements under Rule 49ter.2(a) and (b).

Notifications which are made by receiving Offices and designated Offices that the new Rules relating to restoration of priority do not apply to them due to incompatibility with their current national laws are announced in the Official Notices (PCT Gazette), in the PCT Newsletter and in a table that is available on the website. Contracting States had until April 5, 2006 to submit those notifications of incompatibility.

The following links indicate which Offices notified the International Bureau of the incompatibility of Rule 26bis.3(a) to (i), Rule 49ter.1(a) to (d) and/or Rule 49ter.2(a) to (g) with their national/regional law, within the applicable time limit:

Incompatibility as receiving Office (Rule 26bis.3(j))

Incompatibility of effect of decision of receiving Office on designated Office (Rule 49ter.1(g))

Incompatibility as designated Office (Rule 49ter.2(h)):

A number of the Offices that have made reservations are in the process of amending their national laws so as to enable them to withdraw their incompatibility notices.

In connection with the adoption of amended Rule 49ter.1(g), the PCT Assembly noted that the giving of a notification of incompatibility under Rule 49ter.1(g) will have both procedural and substantive effects; for example, there will be consequences both in terms of calculating the time limit for national phase entry before the designated Office concerned and in terms of the assessment of novelty and inventive step during the national search and examination.

14) When will all PCT Contracting States have withdrawn their notifications concerning the incompatibility of this change with their national laws?

Unfortunately, this is impossible to predict. In some countries, this matter is related to the implementation of the Patent Law Treaty.

Missing Parts and Incorporation by Reference

15) Briefly, what do the amendments to the PCT Regulations on missing elements and parts provide?

The amended Rules dealing with missing parts relate to the according of the international filing date in cases where certain elements or parts of the application are, or appear to be, missing when the application is filed. Remedies are afforded to applicants in relation to the correction of defects under Article 11(1), the later furnishing of parts of the description, claims or drawings, and the incorporation by reference of certain elements or parts which are contained in the priority document. The intention of the "incorporation by reference" provisions is to enable the inclusion of accidentally omitted elements or parts that are contained in the priority application without affecting the international filing date. Depending on the action taken by the applicant, either on his own initiative or following an invitation to furnish an element or a part of the description, claims or drawings which is or appears to be missing, the international filing date may or may not be affected.

16) What is an "element" for the purposes of these Rules? What is a "part" for the purposes of these Rules?

For the purposes of these Rules, an "element" would be, for example, the entire portion of the international application containing the description, or the entire portion containing the claims (see Article 11(1)(iii)(d) and (e)). For the purposes of these Rules, a "part" would refer to a portion within an element, for example, a portion of the description or a portion of the claims. Also, a "part" refers to part or all of the pages of drawings.

17) What are the conditions governing the new PCT incorporation by reference procedure?

The conditions governing the incorporation by reference provisions are as follows:

a) the application the priority of which is claimed (the priority document) contains the element or part which is sought to be incorporated into the international application (Rule 20.6(b));

b) the PCT request contains a statement of (conditional) incorporation by reference (Rule 4.18); and

c) timely confirmation of incorporation by reference (Rules 20.6 and 20.7) to the receiving Office, by means of a written notice confirming that the element or part in question is incorporated by reference in the international application, accompanied by:

i) a sheet or sheets which contain the element or part as contained in the priority document;

ii) a copy of the priority document, if not already furnished;

iii) a translation of the priority document into the language of filing of the international application, where necessary, or where a translation of the international application is required into a language of search or of international publication, a translation of the priority document into both the language of filing of the international application and that other language;

iv) an indication as to where the part in question is located in the priority document, if what is sought to be incorporated by reference is a part of the description, claims or drawings.

18) What is the applicable time limit for confirming the incorporation by reference of a missing part?

Rule 20.7 provides for the time limits within which the applicant may confirm the incorporation by reference of elements or parts: (i) where an invitation has been sent by the receiving Office, 2 months from the date of that invitation; (ii) where no invitation has been sent, 2 months from the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office. Furthermore, in accordance with Rule 20.7(b), where a notice confirming the incorporation by reference of an element referred to in Article 11(1)(iii)(d) or (e) (entire description or all claims) is received by the receiving Office after the expiration of the applicable time limit under Rule 20.7(a) but before that Office sends a notification to the applicant under Rule 20.4(i) (to the effect that the application is not and will not be treated as an international application), that notice is considered to have been received within that time limit.

19) What usually starts the procedure where incorporation by reference might be obtained?

The first thing that the applicant might receive in relation to this issue after filing is an invitation by the receiving Office (Form PCT/RO/103) to correct a defect under Article 11(1) (Rule 20.3). For example, where the entire description or all the claims are missing, the receiving Office would invite the applicant to either:

a) furnish a correction under Article 11(2) (adding the missing element) which would have the effect of changing the international filing date to the date on which the missing element was received and the resulting potential loss of the priority claim (although, see the discussion above about restoration of the priority claim); or

b) confirm under Rule 20.6(a) that the missing element is incorporated by reference under Rule 4.18, the result of which would be, if accepted by the receiving Office, the maintenance of the international filing date.

20) What is the effect of responding to an invitation under Rule 20.3 after the date on which all of the requirements to get an international filing date were fulfilled and not confirming that the missing part is incorporated by reference to the priority application?

Where the applicant furnishes a missing part to the receiving Office after the date on which all of the requirements of Article 11(1) were fulfilled but within the applicable time limit under Rule 20.7, that part will be included in the international application and the international filing date will be corrected to the date on which the receiving Office received that part (see Rule 20.5(c)). In such a case, the applicant will be given the opportunity to request the receiving Office to disregard the missing part concerned (see Rule 20.5(e)), in which case the missing part would be considered not to have been furnished and the correction of the international filing date would be considered not to have been made.

21) What is the effect of responding to an invitation under Rule 20.3 after the date on which all of the requirements to get an international filing date were fulfilled and confirming incorporation by reference?

Where the applicant confirms, in accordance with Rule 20.6(a), that a part of the description, claims or drawings was incorporated by reference under Rule 4.18 and the receiving Office finds that all the requirements of Rule 4.18 and 20.6(a) are complied with, that part will be considered to have been contained in the purported international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, and the international filing date will be the date on which all of the requirements of Article 11(1) are fulfilled (see Rule 20.5(d)).

22) What if the conditions for the applicability of incorporation by reference have not been complied with?

If not all of the requirements for incorporation by reference are fulfilled (for example, if a missing element or part is not entirely contained in the earlier application), the international application would be assigned a later filing date (the date of receipt of missing element or part), except that the applicant may request that missing part be disregarded, in accordance with Rule 20.5(e), thus preserving his filing date.

23) What international applications does this Rule change apply to?

As stated in Question G1 above, the amended Regulations dealing with missing parts and incorporation by reference in general apply to international applications the international filing dates of which are on or after April 1, 2007, and do not apply to international applications the international filing dates of which are before April 1, 2007. However, these amended Rules do not apply to international applications in respect of which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office before April 1, 2007, even if a later international filing date is subsequently accorded.

24) How can I find out which States have made notifications that the new incorporation by reference system is not compatible with their existing laws?

Incompatibility provisions are included under Rule 20.8 as amended in respect of both receiving Offices and designated Offices the applicable national law of which are not compatible with the amendments of the PCT Regulations concerning the incorporation by reference of elements referred to in Article 11(1)(iii)(d) and (e) and parts of the description, claims or drawings.

In connection with the adoption of amended Rule 20.8(a), the PCT Assembly noted that the availability of the procedure under that Rule depends on the existence of an incompatibility with the Rules referred to in that Rule of the national law applicable to a national Office in its capacity as a PCT receiving Office, as distinct from its capacity as a designated Office, and that such incompatibility might arise either from express national law provisions dealing with the subject matter in question or from the more general operation of the national law.

Notifications which are made by receiving Offices and designated Offices that the new Rules relating to missing elements and parts do not apply to them due to incompatibility with their current national laws are announced in the Official Notices (PCT Gazette), in the PCT Newsletter and in a table that is available on the website. Contracting States had until April 5, 2006 to submit those notifications of incompatibility.

The following links indicate which Offices have notified the International Bureau of the incompatibility of Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 with their national/regional law:

Incompatibility as receiving Office (Rule 20.8(a))

Incompatibility as designated Office (Rule 20.8(b))

25) When will all PCT Contracting States have withdrawn their notifications concerning the incompatibility of this change with their national laws?

Unfortunately, this is impossible to predict.

26) Are all designated Offices and elected Offices required to accept decisions concerning missing parts and incorporation by reference made during the international phase?

Designated and elected Offices may, to a limited extent, review decisions by receiving Offices which have allowed incorporation by reference (Rule 82ter.1(b)). If the designated or elected Office finds that:

(a) the applicant did not comply with its obligation to furnish or arrange for the furnishing of a priority document;

(b) the statement of incorporation was missing or not submitted with the request, no written notice confirming incorporation by reference was submitted, or no required translation furnished; or

(c) the element or part in question was not completely contained in the priority document;

the designated or elected Office may treat the international application as if the international filing date had been accorded on the date the missing elements or parts were submitted, but only after having given the applicant the chance to make observations on this outcome or to request that the missing parts which had been furnished be disregarded, in accordance with Rule 82ter.1(d).

Those designated Offices which have submitted notifications of incompatibility (see Question 24) can be expected to refuse to give effect to the receiving Office decision in relation to incorporation by reference.

27) I can see potential for confusion where a receiving Office accepts the incorporation by reference of an element or part but the designated or elected Office either cannot accept the incorporation by reference because its national law is incompatible with the PCT provisions governing incorporation, or finds that the incorporation by reference was not justified because of failure to comply with the conditions for its application (see Rule 82ter.1(b)). What happens to the priority date, the international filing date and the time limit for the entry into the national phase in such cases?

When these Rules were adopted, the PCT Assembly noted that where an element or part is considered to have been incorporated by reference in the international application by virtue of a finding of the receiving Office under Rule 20.6(b), but that incorporation by reference does not apply to the international application for the purposes of the procedure before a designated or elected Office because of the operation of Rule 20.8(b) (incompatible national law), the time limit for entering the national phase before such designated or elected Office would be calculated on the basis of the priority date as defined in Article 2(xi) having due regard to the international filing date as accorded by the receiving Office. This same outcome is also applied where incorporation by reference does not apply to the international application for the purposes of the procedure before a designated or elected Office because of the operation of Rule 82ter.1(b) (see Annex IV of document PCT/A/35/7).

Rectification of Obvious Mistakes

28) Briefly, what do the amendments to the PCT Regulations on rectification of obvious mistakes provide?

These amended Rules rationalize the operation of PCT Rule 91 (previously entitled "Obvious Errors in Documents"), the provisions of which had been open to different interpretations and had at times led to inconsistent decisions. The amended Rules introduce more consistent practices in PCT Offices and Authorities and bring PCT practice into line, to the extent possible, with the provisions of the PLT relating to rectification of mistakes. Speaking concretely, the main changes in the amended Rule are:

a) the former term "obvious error" becomes "obvious mistake";

b) the standard in the Rule has been changed--in order to be rectified, a mistake must now only be obvious to "the competent Authority" and no longer to "anyone";

c) a new time limit applies to requests for rectification of obvious mistakes: they must be submitted to the competent authority within 26 months from the priority date.

As in the previous version of the Rule, competence to authorize a rectification of an obvious mistake depends on the part of the application which contained the mistake and the stage in the proceedings during the international phase.

29) What types of mistakes are not rectifiable under the amended Rule?

It has been clarified that the following mistakes are not rectifiable under Rule 91 (see PCT Rule 91.1(g)):

a) missing elements or sheets;

b) mistakes in the abstract;

c) mistakes in Article 19 amendments (unless the International Preliminary Examining Authority is competent to authorize the rectification because a demand has been filed and the date on which international preliminary examination is to start has passed);

d) mistakes in priority claims to the extent that the rectification would affect the priority date (see the separate and specific basis for correction of mistakes in priority claims in Rule 26bis).

30) What information or documents should be submitted together with and in support of the request for the rectification of an obvious mistake?

The request itself should specify the mistake to be rectified and the proposed rectification, and, at the option of the applicant, may contain a brief explanation. The procedure under Rule 26.4 for indicating corrections in the request to the receiving Offices also applies here--the mistake and its proposed rectification can be set out in a letter if that would be clear to the authority, or if the proposed rectification would be to an element of the international application other than the request, the applicant is required to submit replacement sheets and a letter drawing attention to the differences between the as filed and as rectified sheets.

31) What happens to requests for rectification? What responsibility do the authorities have?

The competent Authority has the responsibility to promptly decide whether to authorize or refuse the rectification, and to promptly notify both the applicant and the International Bureau of the authorization or refusal. In the case of refusal, the Authority should also provide the reasons for the refusal.

32) If an Office or Authority notices what appears to be an obvious mistake in an international application or other document, is it required to notify the applicant?

Under Rule 91.1(h), where the receiving Office, International Searching Authority, International Preliminary Examining Authority or International Bureau discovers what appears to be a rectifiable obvious mistake in the international application or other document, it may invite the applicant to request rectification--it is however not required to do so.

33) Are all designated Offices required to accept rectification of obvious mistakes that have been authorized during the international phase?

There are two situations in which a designated Office is permitted to disregard an authorized rectification of an obvious mistake. They are:

a) if "processing or examination of the international application has already started prior to the date on which that Office is notified under Rule 91.3(a) of the authorization of the rectification by the competent authority" (Rule 91.1(e));

b) "if it finds that it would not have authorized the rectification if it had been the competent authority" (Rule 91.3(f)), but it must give the applicant the opportunity to make observations.

With relation to (b), the PCT Assembly noted when these Rules were adopted that where a designated Office has notified the International Bureau that its national law is not compatible with the newly applicable provisions concerning incorporation by reference of missing elements or parts, that designated Office will not be obliged to take into account the contents of any description, claims or drawings which were incorporated by reference under Rule 20.6 when it determines whether it would have authorized the rectification (under Rule 91.3(f)).

34) What international applications does this Rule change apply to?

The amendments related to rectification of obvious mistakes apply to international applications the international filing dates of which are on or after April 1, 2007, and do not apply to international applications the filing dates of which are before that date. (see Transitional Provisions, Annexes III to 2005 Assembly Report and 2006 Assembly Report)

Related Links