PCT Receiving Office Guidelines

Chapter VIII: Missing Parts or Erroneously Filed Elements or Parts in the International Application

Confirmation of Incorporation by Reference of Missing Parts or Correct Elements or Parts under Rule 20.6(a)

204. If, within the time limit under Rule 20.7, the receiving Office receives a notice confirming the incorporation by reference of a missing part or a correct element or part, it checks whether all the requirements of Rule 20.6 have been complied with, as outlined in the following paragraphs.

205. The receiving Office checks whether:

(a) the request (Form PCT/RO/101) contains a statement under Rule 4.18 or, if such a statement was not in the request at the time of filing, if it was otherwise contained in, or submitted with, the international application;

(b) sheets embodying the element or part concerned as contained in the earlier application have been submitted;

(d) the applicant has submitted the priority document for that earlier application or at least a simple copy of that earlier application;

(e) under the circumstances of Rule 20.6(a)(iii), the applicant submitted a translation or translations of the earlier application (see Section 305ter); and

(f) in the case of a part of the description, claims or drawings, the applicant has submitted an indication as to where the part is contained in the earlier application and, where applicable, in any translation of the earlier application.

205A. The receiving Office checks whether the missing part or the correct element or part submitted by the applicant is completely contained in the earlier application. For that purpose, the Office compares the relevant element or part in the earlier application with the sheets submitted by the applicant under Rule 20.6(a)(i). For any sequence listing part of the description to be incorporated by reference, see paragraphs 227B and 227C. Where the later submitted sheets seem to go beyond the correction of formal defects and to modify the substantive content of the application, the receiving Office may, where applicable, invite the applicant to request the authorization of the rectification of an obvious mistake from the competent ISA under Rule 91 (Form PCT/RO/108).

205B. Where the international application contains more than one priority claim at the time of filing, the applicant may incorporate by reference elements or parts from any of these earlier applications. If, in an effort to comply with the physical requirements of Rule 11, the sheets submitted contain a different numbering of claims, pages or paragraphs, differently numbered references or different reference signs in drawings than in the earlier application(s), these modifications as to formal aspects of the application should generally not be considered as changing what was contained in the earlier application(s).

205C. Positive Finding. Where the receiving Office finds that all the requirements of Rules 4.18 and 20.6(a) have been complied with, the Office proceeds as described in Section 309(b) and issues Form PCT/RO/114 accordingly. A copy of the notice, which should also include the indication by the applicant as to where the relevant element or part is contained in the earlier application, is sent to the International Bureau and to the International Searching Authority. The receiving Office considers that the missing parts or the correct elements or parts concerned have already been filed on the date on which one or more elements referred to in Article 11(1)(iii) were first received and maintains (or grants, if at this point this has not yet been done) the international filing date accordingly. In case the receiving Office does not receive all subsequently furnished sheets on the same day, the receiving Office issues as many Forms PCT/RO/114 as required, indicating on each Form on which date the later submitted sheets were received.

205D. Negative Finding. Where the receiving Office finds that not all the requirements of Rules 4.18 and 20.6(a) have been complied with or that the element or part concerned is not completely contained in the earlier application, the receiving Office issues Form PCT/RO/114 accordingly and treats the subsequently furnished sheets as if the incorporation by reference had not been confirmed and proceeds, after the expiration of the time limit under Rule 20.7, as described in Section 309(c) (see also paragraphs 200 to 203B). A copy of the notice (Form PCT/RO/114) is sent to the International Bureau and to the International Searching Authority.