1

Is it possible to amend the description of a PCT to include content from a priority application? My drafter missed important content from my priority documents to include it in my PCT. Is there any way to fix that?

1

Yes, with some buts. Below I reproduce item 6.027 of the PCT Applicant's Guide; you should review the following items too, however. You have 2 months from either the date when you first filed the PCT documents or the date of the invitation issued by the Receiving Office if said Office has detected that there are missing parts in the documents making up your PCT application.

6.027. Can missing or correct pages be added to an international application without affecting the international filing date? This is possible under certain circumstances, but the resulting international filing date will not be recognized in some Contracting States (see paragraph 6.031). Under Rule 4.18, where an element of the international application referred to in Article 11(1)(iii)(d) or (e) or a part of the description, claims or drawings referred to in Rule 20.5(a), or an element or part of the description, claims or drawings referred to in Rule 20.5bis(a) is not otherwise contained in the international application but is completely contained in the earlier application of which priority is claimed on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, it is possible to incorporate by reference these missing or correct elements or parts into the international application. Such incorporation by reference will have the effect that the elements or parts which have been incorporated by reference will be considered to have been received on the date on which one or more elements referred to in Article 11(1)(iii) were first received. As a result, the international filing date would remain the date when one or more elements referred to in Article 11(1)(iii) were first received (provided that all other Article 11 requirements for the according of a filing date are met). These procedures do not apply to missing pages if the receiving Office has notified the International Bureau under Rule 20.8(a) that any of Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 are not compatible with its national law. Moreover, these procedures do not apply to correct pages if the receiving Office has notified the International Bureau under Rule 20.8(a-bis) that any of Rules 20.5bis(a)(ii) and (d) are not compatible with its national law. Such a receiving Office will therefore neither invite nor accept a confirmation of the incorporation by reference. Instead, the receiving Office would apply the above described correction procedure (paragraph 6.025). A list of Offices which have notified the International Bureau under Rule 20.8(a) and/or 20.8(a-bis) and which will therefore not accept the incorporation by reference of missing elements or parts can be found on WIPO’s website at www.wipo.int/pct/en/texts/reservations/res_incomp.html. If the need to incorporate certain missing or correct elements or parts becomes apparent after the international application has been filed, the applicant may request the receiving Office to transmit the international application to the receiving Office of the International Bureau under Rule 19.4(a)(iii), which does accept the incorporation by reference of missing or correct elements or parts.

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.