Amendments to the Regulations for the Patent Cooperation Treaty (III)

As previously announced in previous issues of this InfoPi magazine, we continue with our information pills on the modifications of various Rules of the Regulation of the Patent Cooperation Treaty (hereinafter, PCT) that will come into force on July 1, 2020.

We remind you that the modifications can be classified into the following groups:

1. Safeguard in the event of interruptions affecting the Offices (Rule 82quater)
2. Corrections and additions of indications under Rule 4.11 (Rule 26quater)
3. Elements and parts of international applications filed in error (Rules 4, 12, 20, 40bis, 55 and 82ter)
4. Transfer of PCT fees (Rules 15, 16, 57 and 96)
5. Availability of the file held by the Administration in charge of the international preliminary examination (Rules 71 and 94)

In this InfoPI we will focus on the third point.

3. Elements and parts of international applications filed by mistake

The PCT Regulations are amended to allow the applicant, in very limited and exceptional circumstances, to replace the claims and / or the description of an international application filed in error (or a part of them, or the drawings filed in error) by the equivalent "correct" version of the claims, the description or the drawings (or a part thereof) contained in the priority application.

The new Rule 20.5bis covers three different hypothetical cases:

1. the presentation of correct elements or parts, no later than the date on which all the requirements regarding the filing date are fulfilled (that is, no later than the date on which an international filing date can be granted to an alleged international application); in such a case, the elements or parts submitted in error would be removed from the application, the correct elements or parts would be included in the application, and the international application would be granted as the international filing date the date on which all requirements regarding the filing date (on the date the correct elements or parts have been received, or later) (new Rule 20.5bis.b));
2. the delivery of correct elements or parts after the date on which all the requirements regarding the filing date are met (that is, after the international filing date has been granted to the international application); in such case, the elements or parts of the application submitted in error would be deleted from the application; the correct elements or parts would be included in the application, and the international filing date would be corrected to the (subsequent) date the correct elements or parts were received (new rule 20.5bis.c)); As in cases of missing parts, the applicant may request that the correct elements or parts not be taken into account (in order to maintain the initial filing date) (new Rule 20.5bis.e));
3. the valid incorporation by reference of correct elements or parts contained in a previous application; in such a case, the correct elements or parts would be deemed to have been included in the alleged international application on the date the receiving Office initially received one or more elements of the application, and the receiving Office would grant as the international filing date the date all requirements regarding the filing date are met; the elements or parts submitted in error would still appear in the international application, in addition to the “correct” elements or parts incorporated by reference, since the designated Office that had submitted a “notification of incompatibility” with respect to incorporation by reference of correct elements or parts would not recognize such incorporation, and the international application would have to be processed before said Office as it was initially filed, that is, with the elements or parts presented in error (new Rule 20.5bis.d)).

In addition, the following is modified:

1. Rule 20.5 in order to clarify that said Rule only applies to the delivery of parts of an application that have been “truly” omitted, but not to the delivery of correct elements or parts in the case of elements or parts presented by error;
2. Receiving Offices and designated / elected Offices are offered the possibility of filing a notification of incompatibility of the provisions relating to the incorporation by reference of “correct” elements or parts in the case of elements or parts presented in error, provided that the Member States be invited to adopt, in addition, guidelines according to which the receiving Offices that submit this notification of incompatibility will accept any request from the applicant so that, under Rule 19.4.a) iii), it is transmitted to the International Bureau any request in respect of which the applicant has confirmed the incorporation of correct elements or parts, in the case of elements or parts submitted in error;
3. when the incorporation by reference of correct elements or parts in the case of elements or parts presented in error is notified to the International Search Administration only after it has begun to draft the international search report, to allow said International Search Administration charges an additional search fee (for the amount determined by the Administration, but in any case less than the search fee); For the sake of balancing the delivery of parts that have been "truly" omitted and the correct elements or parts, it is further proposed that the same provision apply to cases where the incorporation by reference of a "truly" omitted part The Administration has been notified only when the Administration has already begun to draft the international search report.

However, taking into account that this new PCT Rule is incompatible with national legislation, in particular with articles 24 of the Patent Law and 19 of the Patent Regulation, it will not apply in Spain.

More information:

https://www.wipo.int/pct/es/