PA 03/2011: The (continuing) requirement to submit drawings (and where applicable, photographs) in black and white

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.

Q:  I am going to file an international application in electronic form which will include drawings.  Ideally, I would like to submit the drawings in the form of a series of color photographs, as this would greatly facilitate the understanding of the invention – is it acceptable to file color photographs with the international application?

A:  According to PCT Rule 11.13, drawings are to be “executed in durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without colorings”.  Although the PCT currently makes no provision for photographs, it is the practice of the International Bureau (IB) to accept black and white photographs where it is impossible to present in a drawing what is to be shown.  Paragraph 5.159 of the PCT Applicant’s Guide states that where, exceptionally, photographs are submitted, they must be black and white, on sheets of A4 size, respect the minimum margins, and it must be possible to reproduce them directly.  It also emphasizes that neither color photographs nor color drawings are accepted.

Please note, however, that even in “black and white” drawings or photographs there is shading (that is, any detail that is not represented in pure white or pure black, but in varying shades of grey).  You should therefore be aware that any such greyscale detail, even in photographs that are considered black and white, may be distorted during the IB’s current publication process, which is strictly black and white and does not faithfully reproduce shades of grey.  Therefore, even in the case of black and white drawings or photographs, 100% representation of the shades of grey in the original drawing or photograph cannot be guaranteed. 

Where the IB does receive “color” drawings or photographs (hereinafter: “color drawings”), and the applicant does not later furnish replacement drawings that comply with the requirement for them to be in black and white (either of their own volition or subsequent to an invitation to correct from the receiving Office), the IB will, nevertheless, reproduce them in black and white for publication purposes.  Despite the best efforts of the IB during the conversion or scanning of the color drawings into black and white, it cannot guarantee the clarity of the published application.  Please also bear in mind that, in some cases, the receiving Office may even do the conversion prior to the drawings being received by the IB, but again, the quality for publication purposes cannot be guaranteed.  If the applicant does have difficulty with the published black and white drawings upon entry into the national phase, the IB will furnish a color photocopy of the color drawings to the designated (or elected) Office upon the request of the applicant or the designated (or elected) Office. 

Despite the efforts that would be made by the IB (or the receiving Office) to convert the color drawings into black and white, however, the IB recommends that applicants submit any drawings in black and white (or convert any color drawings into black and white themselves) so that they can better control the quality of what is published. 

You may be interested to know that discussions have recently taken place concerning color drawings in international applications, notably, at the 3rd session of the PCT Working Group which “recognized the value of photographs and color drawings in making a clear and effective disclosure of certain types of invention and agreed that it was desirable to progress quickly on this matter, but that further study was required on the technical and legal issues which would be involved in permitting the filing and processing of such drawings as part of international applications…” – see paragraph 197 of document PCT/WG/3/14 rev. at:

http://www.wipo.int/meetings/en/details.jsp?meeting_id=19682

All delegations which spoke on this issue considered that it was likely to be acceptable to limit the possibility of filing color drawings to international applications filed in electronic form.  For detailed background information on this matter, see the document on which those discussions were based, entitled “Photographs and color drawings in international applications” (document PCT/WG/3/9), at the above-mentioned link.

Taking into account the evident need of applicants to file color drawings in order to disclose certain kinds of inventions, the IB is therefore currently studying the possibility of amending the PCT Regulations (which will be further considered by PCT member States) to allow for this in the future, as well as for the international publication of such applications to be made in color (note that this refers to the electronic publication only and excludes any specific requests made to the IB to provide paper copies of international publications).  However, many technical, legal and procedural considerations have to be addressed, and this can only be done after detailed consultation with the receiving Offices, International Searching Offices, International Preliminary Examining Authorities, designated/elected Offices, as well as with certain interested intergovernmental organizations and certain non-governmental organizations representing users of the PCT system.

Readers of the PCT Newsletter will be kept informed of any progress in this matter.

For further information on the presentation of drawings in international applications, see PCT Rules 11.10, 11.11 and 11.13, and the PCT Applicant’s Guide, paragraphs 5.128 to 5.163, at:

http://www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf

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