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: My company regularly files PCT applications electronically using ePCT‑Filing, and although filing this way certainly simplifies the filing process and helps us to avoid making formality errors, it is quite easy to select the wrong file when uploading the description or claims. I would like to know whether it is possible to have recourse to the PCT Regulations in the situation where, for example, the wrong set of claims is filed – would the PCT Regulations regarding incorporation by reference of missing elements or parts enable me, at a later date, to replace the incorrect set of claims with the correct ones (where the international application claims priority of an earlier application containing the set of claims which should have been filed), without affecting the international filing date already accorded?

A: The provisions of PCT Rules 4.18 (Statement of Incorporation by Reference), 20.5 (Missing Parts) and 20.6 (Confirmation of Incorporation by Reference of Elements and Parts) were designed to provide a safeguard for applicants in cases where any of the following are not contained in the international application:

– the entirety of the description or the entirety of the claims; or

– part of the description, claims or the entirety or part of the drawings

and where the element or part of the element concerned is completely contained in the earlier application the priority of which is being claimed. Provided that the necessary requirements have been met, the applicant can, in principle, incorporate by reference the missing element or part, while maintaining the international filing date. This means that the receiving Office would include the correct element in the international application (although it would not actually “replace” the incorrect element or part).

The majority of PCT receiving Offices (ROs) apply these Rules in the situation you describe above, where a set of claims (or a description) has been filed, but it later turns out that those claims were in fact the incorrect ones and the applicant wishes to include the correct ones.

However, please be aware that:

– a number of ROs and designated Offices (DOs) (or elected Offices) have submitted notifications of incompatibility between their national law and the Rules concerning incorporation by reference, as explained below, and

– even among those Offices which apply the Rules on incorporation by reference of missing elements or parts, not all of them interpret the Rules in the same way (as will be discussed later in this article).

Notifications of Incompatibility

The following Offices have submitted notifications of incompatibility under PCT Rule 20.8(a) in their capacities as ROs, and so will not accept incorporation by reference in any of the above‑mentioned circumstances:

BE                       Intellectual Property Office (Belgium)

CU                      Cuban Industrial Property Office

CZ                       Industrial Property Office (Czech Republic)

DE                       German Patent and Trade Mark Office

ID                        Directorate General of Intellectual Property (Indonesia)

IT                         Italian Patent and Trademark Office

KR                       Korean Intellectual Property Office

MX                      Mexican Institute of Industrial Property

The following Offices have submitted notifications of incompatibility under PCT Rule 20.8(b) in their capacities as DOs (or elected Offices) and thus applicants will not have the benefits of the incorporation by reference provisions in the national phase in any of the above‑mentioned circumstances:

CN                      State Intellectual Property Office of the People’s Republic of China

CU                      Cuban Industrial Property Office

CZ                       Industrial Property Office (Czech Republic)

DE                       German Patent and Trade Mark Office

ID                        Directorate General of Intellectual Property (Indonesia)

KR                       Korean Intellectual Property Office

MX                      Mexican Institute of Industrial Property

TR                       Turkish Patent Institute

You should, however, bear in mind that even if the DO concerned has not submitted a notification of incompatibility of PCT under PCT Rule 20.8(b), it may not necessarily accept a positive decision of the RO since DOs may, to a limited extent, review the decisions by ROs to allow incorporation by reference (see PCT Rule 82ter.1(b) to (d)).

The above‑mentioned lists are published (and updated when notifications of incompatibility are withdrawn) on the PCT website at:

https://www.wipo.int/pct/en/texts/reservations/res_incomp.html

It should be noted that under the PCT Roadmap (see documents PCT/WG/2/3 and PCT/WG/3/2), all States which maintain outstanding notifications of incompatibility under various provisions of the PCT Regulations are strongly encouraged to enact the necessary amendments to the national laws so that these notifications can be withdrawn.

Diverging interpretations

Among the Offices which in principle apply the provisions on incorporation by reference, there is a divergence of views as to the correct interpretation of those Rules in practice. Certain ROs, including for example the European Patent Office, take the view that, under PCT Rules 4.18, 20.5 and 20.6, the practice to allow the inclusion of a new complete set of claims or a new complete description, where the element concerned had been erroneously filed, is not permissible. These Offices argue that, by definition, the term “missing part” of the claims or description elements indicates that some part of such element was missing but other parts of that element had been filed. Incorporation by reference of a “missing part” would thus require that the “missing part” of the claims or description element that was to be incorporated by reference indeed “complete” that (incomplete) element as contained in the international application on the international filing date, rather than adding a new element.

Other ROs, for example the International Bureau (IB) and the United States Patent and Trademark Office, take the view that such practice is both permissible, and consistent with the letter and spirit of the Regulations. If not, it would result in the situation where an applicant who did not include any claim(s) and/or any description in the international application as filed would be allowed to have those elements included in the international application by way of incorporation by reference of a missing element, whereas an applicant who had attempted to include those elements in the international application as filed but who had erroneously submitted the wrong claims and/or the wrong description would not be allowed to correct the mistake by adding the correct elements. These Offices also refer to the fact that the PCT Working Group, at its first session (see paragraphs 126 and 127 of document PCT/WG/1/16), had suggested that such practice was indeed permissible (“the Working Group noted that, in a case where the international application, on the international filing date, contained the necessary claim(s) element and description element (see Article 11(1)(iii)(d) and (e)), it was not possible under Rules 4.18 and 20.6(a) for the claims or description contained in a priority application to be incorporated as a missing “element”. However, it appeared to be possible, in such a case, for part or all of the description, or part or all of the claims, contained in the priority application to be incorporated under those Rules as a missing “part.”), and that the Receiving Office Guidelines had been modified accordingly so as to clarify that, in the circumstances where incorporation by reference resulted in a duplicated set of description, claims or drawings, the set incorporated by reference was to be placed sequentially before the originally filed set. (By doing this, it will be clear which set of claims should be taken into account, for example, for the purposes of international search and searches in the national phase.)

Despite the fact that the diverging RO practices described above have been discussed in a number of PCT meetings (including in the recent meeting of the PCT Working Group which was held from 26 to 29 May 2015 (see document PCT/WG/8/4)), there appears to be no consensus among Member States on this issue.

It is clearly not ideal that there are diverging interpretations on this matter, and it is generally acknowledged that it would be best to attempt to clarify the legal provisions regarding incorporation by reference of missing parts. The PCT Member States and the IB are trying to find a way forward to resolve this long-standing problem. In the meantime, the IB has been requested to prepare, for discussion at the next session of the PCT Working Group in 2016, a draft of a new provision focusing on erroneously‑filed elements and parts (see Chair’s Summary – document PCT/WG/8/25, paragraph 122), and to work with Member States to modify the Receiving Office Guidelines with a view to clarifying the existing divergent practices of ROs (see paragraph 123 of the same document).

Of course, it is always very important that you take great care when selecting files for upload when preparing your international application to be electronically‑filed. It is also advisable to find out (before any such error occurs) what your RO’s practice is with regards to allowing incorporation by reference where the incorrect set of claims (or description) has been filed. If it does not agree to incorporate the correct claims or description by reference, one option which you may wish to consider is to withdraw the international application concerned and re‑file it with the correct claims or description (although if you do this, you would need to check whether the priority period had expired in the meantime).

For details on requesting incorporation by reference of missing parts or elements, please refer to PCT Rules 4.18, 20.5 and 20.6, the “Practical Advice” published in PCT Newsletter No. 05/2007, and the PCT Applicant’s Guide, paragraphs 6.027 to 6.031.