PA 04/2016: Time limit for correcting physical defects in the international application

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 filed an international application containing informal drawings and would now like to submit formal drawings prepared by a professional. What is the time limit for submitting replacement drawings?

A: Normally, where informal drawings have been submitted at the time of filing and they do not meet the requirements under PCT Rule 11 (in particular PCT Rule 11.13), the receiving Office will, in accordance with PCT Article 14.1(b)), invite you as soon as possible, preferably within one month from the receipt of the international application (PCT Rule 26.1), to correct any such defects. However, if the receiving Office fails to invite you, initially, to correct the defects in the drawings, but the International Bureau (IB) subsequently, during its secondary formality check, draws the attention of the receiving Office to those defects, an invitation to correct may then be sent to you by the receiving Office. In such a case, this might be later than one month from the receipt of the application. This, and the following, would also apply to the correction of defects contained in the sheets containing the description or claims.

If you are invited to correct the drawings, the receiving Office will issue an invitation to correct (PCT Form PCT/RO/106) within a time limit of two months from the date of the invitation. This time limit may be extended by the receiving Office at its discretion (see PCT Rule 26.2). However, if deciding to extend the time limit, the receiving Office must take into account:

–  the fact that corrections which may be relevant to the international search are needed by the International Searching Authority (ISA) before the establishment of the international search report1; and

–  the fact that the replacement sheets must be received by the IB before the completion of technical preparations for international publication2.

Therefore, the closer it is to the scheduled time for the establishment of the ISR or the scheduled international publication date, the less likely the receiving Office is to grant a further extension of time.

If the receiving Office fails to invite you to correct the drawings, however, there is nothing to prevent you from sending replacement sheets containing the formal drawings to the receiving Office on your own initiative (see the PCT Receiving Office Guidelines, paragraph 209), asking the receiving Office, in an accompanying letter, to replace the informal drawings with the formal drawings, clearly pointing out the differences between the two sets of sheets (see PCT Rule 26.4). It is recommended that you send any such request to the receiving Office as early as possible, to allow enough time for it to be forwarded to the ISA, for the purposes of international search, and to the IB, so that it can be processed by the IB before the completion of technical preparations for international publication.

It is important to note that, when correcting physical defects in drawings under PCT Rule 26 before the receiving Office in the international phase, any modification made to correct those defects should not go beyond the disclosure in the international application as filed.

Note also that by submitting a set of formal drawings to correct physical defects, this will not result in a change in the international filing date, unless the revised set includes drawings which were not previously filed with the international application. If this is the case, and the drawings are submitted within the applicable time limit under PCT Rule 20.7, the inclusion of the new drawings would result in a change in the international filing date (which would be changed to the date on which the new drawings are received by the receiving Office (PCT Rule 20.5(c)), unless you are in a position to make use of incorporation by reference under PCT Rule 20.6.

For information on the importance of correcting defects in drawings, see the “Practical Advice” that was published in PCT Newsletter No. 01/2005. For information on the extent to which the physical requirements prescribed in the PCT Regulations must be complied with, and possible inconsistencies in the way in which such compliance is checked, see the “Practical Advice” that was published in PCT Newsletter No. 03/2016. Further details on the formality requirements for drawings can be found in 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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  1. The international search report should be established within three months from the receipt of the search copy by the ISA or nine months from the priority date, whichever time limit expires later (PCT Rule 42.1).
  2. Technical preparations for international publication are generally completed 15 calendar days before the actual publication date of the international application. The international application is published promptly after the expiration of 18 months from the priority date, except where early publication has been requested (PCT Article 21(1) and (2)).

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