Corrections/Amendments and Priority/Benefit Claims in International and National Stage Applications

Susan C. Wolski PCT Special Programs ExaminerInternational Patent Legal Administration

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Overview• Correction of an International Application

– Incorporation by Reference

– Rectification of Obvious Mistakes

• Amendment of an International Application– PCT Articles 19 and 34

• Effect of correction/amendment in national stage

• Claim for foreign priority or benefit of earlier U.S. filing date– Restoration of the right of priority

– Certified copy of foreign application

Sep 2015

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Correction/Amendment of an International Application (IA) During International Stage

• Correction of an IA in the International Stage is possible by– Incorporation by Reference

– Rectification of Obvious Mistakes

• Amendment of an IA not possible prior to issuance of the – International Search Report (ISR) and

– Written Opinion of the International Searching Authority (WOISA)

Sep 2015

Incorporation By Reference• Objective

– Inclusion of omitted elements or parts contained in a priority application without affecting the international filing date

• Conditions– Priority claim to an earlier application on the date on which one

or more Article 11(1)(iii) elements were first received– Earlier application completely contains the element or part – Request contains statement of (conditional) incorporation by

reference – Timely confirmation of incorporation by reference

• 2 months from issuance of either form PCT/RO/103 or PCT/RO/107OR• 2 months from date of first receipt of any Article 11(1)(iii) element

– where no forms RO/103 or RO/107 were issued

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Decision on Incorporation by Reference• Competent Authority – receiving Office (RO)• Where requirements are met

– Element or part is considered to have been contained in the IA

• On the date on which one or more Article 11(1)(iii) elements were first received

– Sheets are marked “INCORPORATED BY REFERENCE (RULE 20.6)”

– Sheets are published as part of the IA

• See PCT Rules 20.6 and 20.7

Sep 2015

Effect of Incorporation by Reference in the National Stage

• Designated/Elected Offices (DO/EOs) may‒ Review the decision allowing the incorporation by reference, to a

limited extent

• Declarations of incompatibility with the national law (reservations) ‒ Are in effect for a number of ROs (PCT Rule 20.8(a)) and DO/EOs

(PCT Rule 20.8(b))

‒ See the WIPO Web site at:www.wipo.int/pct/en/texts/reservations/res_incomp.html

‒ DO/EO/US has not taken a reservation• Incorporation by reference is effective in U.S. National Stage

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Rectification of Obvious Mistakes During Chapter I - Description, Claims, or Drawings

• An obvious mistake in an IA may be rectified under PCT Rule 91

• Rectification of a mistake in the description, claims or drawings during Chapter I is authorized by the ISA

– The abstract cannot be rectified, since it is established by the ISA

• Rectification shall be authorized if

– It is obvious to the ISA that, as of the international filing date • Something else was intended than what appears in the document

concerned, and

• Nothing else could have been intended than the proposed rectification

8Sep 2015

Decision AuthorizingRequest for Rectification in International Stage

• Where Rectification of the description, claims, or drawings is authorized during Chapter I– Form PCT/ISA/217 is mailed to Applicant

– Form PCT/ISA/217, any accompanying letter, and any replacement sheets are transmitted to the IB and the RO

– Rectified sheets are • Marked by the ISA with

– The international application number and sheet receipt date

– “RECTIFIED SHEET (RULE 91)”

• Published as part of the IA

– Accompanying letter is marked with the date of receipt

9Sep 2015

Decision Refusing Request for Rectification in International Stage

• Where rectification of the description, claims, or drawings is refused during Chapter I– Form PCT/ISA/217 is mailed to Applicant– Form PCT/ISA/217, any accompanying letter, and any replacement

sheets are transmitted to the IB and the RO– Proposed replacement sheets are

• Marked with international application number and sheet receipt date • Not published as part of the IA

– Accompanying letter is marked• With the date of receipt

– Applicant may pay a special fee and request publication by the IB of• Request for rectification• Reasons for refusal by the authority• Any further brief comments by applicant 10Sep 2015

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Effect of Rectification in the National Stage• Any designated Office need not take rectification into

account – Where processing or examination of the IA has already started

prior to date of notification• See PCT Rule 91.3(e)

• A designated Office may disregard authorized rectification only– If it finds it would not have authorized the rectification if it had

been the competent authority• Must provide applicant an opportunity to make observations within

a reasonable time limit

• See PCT Rule 91.3(f)Sep 2015

• During Chapter I, only the claims can be amended – Article 19 – complete set of claims required

• Sheets should be numbered following the last sheet of original claims

– Must be filed directly with the IB (Rule 46.2) within the later of

• 2 months from the date of transmittal of the ISR & WOISA • 16 months from the priority date (Rule 46.1)

May be uploaded to ePCT - https://pct.wipo.int/LoginForms/epct.jsp

– Must not go beyond the disclosure of the IA as filed (Article 19(2))

– Shall be accompanied by a letter which• Identifies amended claims and the differences from the

original claims• Identifies canceled claims • The basis for the amendments in the application as filed

Chapter I Claim Amendment - Article 19

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• Applicant may file a brief statement– See Article 19(1), Rule 46.4– Explaining the amendments– Indicating any impact that amendments may have

on the description and the drawings

• Publication contains– Originally-filed claims and amended claims – Statement – See Rule 48.2(f)

Article 19 Claim Amendment – Brief Statement and Publication

Sep 2015 13

• May be used to obtain provisional protection– Provisional rights accrue upon grant of a patent, where

available• Reasonable royalties may be obtained from the time of

publication, where – The invention claimed in the patent is substantially identical to

the invention claimed in the published application

• National laws may require additional acts to assert provisional rights

• Amended claims may be in better condition for national stage examination – By reducing overall prosecution issues

Article 19 Claim Amendment - Purpose

14Sep 2015

Chapter II Amendment - Article 34

• Article 34 amendments

– Can be made to the description, claims and drawings• The abstract cannot be amended, since it is established by the ISA

– Should be filed with the Demand or within the PCT Rule 54bis time period

• May be a response to the WOISA

– Entry of amendments filed at other times • Is at the discretion of the International Preliminary Examination

Authority (IPEA)

15Sep 2015

Article 34 Amendments• For description or drawing amendments - must submit

– Replacement sheet for every sheet that differs from the prior sheet

• For claim amendments – must submit– A complete replacement set of claims

• Clean copy - no underlining, bracketing, or status identifiers

• For description, drawing, or claim amendments - must submit a letter that– Draws attention to changes made– Indicates the basis for the amendment in the IA as filed– Preferably explains the reasons for the amendment

Failure to provide the letter may result in non-consideration of the amendment by the IPEA (Rule 70.2(c-bis))

• Annexed to International Preliminary Report on Patentability (Ch II)• See Rule 66.8

16Sep 2015

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Amendments in U.S. National Stage• New matter is determined as of the International Filing Date

(IFD)– Based on the published IA or an English translation

• Article 19/34 amendments are usually entered– Upon 371 entry, when in English

• As originally provided or as translated

• Canceled if translation not timely submitted

• May request non-entry of amendments

• Preliminary amendments under 37 CFR 1.121 may be– Made in lieu of Article 19/34 amendment translation

– Used to incorporate further changes to Article 19/34 amendments

Sep 2015

Priority Claims in the International Stage• The conditions for and effect of any

priority claim are – Governed by Article 4 of the Paris Convention

• The priority claim is made – In Box No. VI of the Request

18Sep 2015

Continuation (CON)/Continuation-in-part (CIP)• If the IA should be treated in the United States as a– CON or CIP of an earlier U.S. application

• The earlier application number, filing date and relationship must be provided in the

‒ Conventional Request (PCT/RO/101) - Supplemental Box OR

‒ PCT Safe Request - Designations section

• Allows indication of only one earlier application

• Others may be furnished as recommended in the PCT Newsletter (12/2011) Practical Advice –

http://www.wipo.int/pct/en/newslett/practical_advice/pa_122011.html

19Sep 2015

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Certified Copy of Earlier Application • May request RO/US to prepare/transmit

– When the earlier application was filed in the USPTO

• May request IB to obtain – When the earlier application was filed in a

participating WIPO Digital Access Service (DAS) depositing Office

• Where certain conditions have been met

Sep 2015

Priority Period

• The period of 12 months ‒ From the filing date of the earlier application to

which priority is claimed• The day of filing of the earlier application is not

included in that period

• The IA should be filed within the priority period

21Sep 2015

Restoration of the Right of Priority • Objective

– Allow a priority claim to an earlier application • Where the IA is not filed within the priority period

• Eligibility– IA must have an international filing date that is

• Later than the date on which the priority period expired, but

• Within 2 months of the expiration of the priority period

22Sep 2015

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Conditions for Restoration of the Right of Priority• Request for restoration must

– State the criterion for restoration• In spite of due care or unintentional

– Be filed with the RO within 2 months from the priority period expiration

– State reasons for failure to file within the priority period • Preferably accompanied by any declaration or other evidence

• May be subject to a fee by the RO

Sep 2015

Request for Restoration of Priority• RO/US only applies the unintentional criterion (37 CFR 1.452)

– Subject to a fee

• Some DO/EOs apply only the due care criterion– An IA may be filed in RO/IB

• To request restoration under the due care criterion– Due care restoration effective in all DOs where compatible with

national law (PCT Rule 49ter.1)

• Foreign filing license issues must be resolved prior to filing• Restoration not subject to a fee by RO/IB

• Declarations of incompatibility with national law (reservations) ‒ Are in effect for a number of ROs (PCT Rule 49ter.1(g)) and DO/EOs

(PCT Rule 49ter.2(h))

‒ See the WIPO Web site at:www.wipo.int/pct/en/texts/reservations/res_incomp.html

24Sep 2015

• Effective in DO/EO/US since 18 Dec 2013 – When PLT provisions of Patent Law Treaties Implementation Act

of 2012 went into effect

• Restoration by any RO in international stage– Is effective in U.S. national stage

• Regardless of restoration criterion • Form PCT/RO/159 (in IFW) indicates restoration in IA

• May request restoration in U.S. national stage– For the first time or due to international stage refusal– Delay must have been unintentional

• Priority to a foreign application – 37 CFR 1.55(c)• Domestic benefit to a U.S. provisional application – 37 CFR 1.78(b)• Subject to a fee• Petition decision in IFW

Restoration of the Right of Priority in DO/EO/US

25Sep 2015

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Claim for Foreign Priority in U.S. National Stage

• Right of Priority (35 U.S.C. 119(a), 35 U.S.C. 365(b), and 37 CFR 1.55)– Prior foreign application– Prior IA designating at least one country other than the United

States – Claim must identify application number, country or IP authority,

and filing date

• Must be indicated in one of – ADS– First page of published IA– PCT Request

• May be added during U.S. national stage– Where delay was unintentional– By grantable petition under 37 CFR 1.55(e)

Sep 2015

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Certified Copy of Foreign Application in U.S. National Stage Applications• Certified copy required• IB provides copy to DO/EO/US

– If timely filed in international stage– This copy satisfies 37 CFR 1.55(a)(2)– Notice of Acceptance indicates receipt

• Applicant should verify

• If certified copy not filed in international stage– Applicant may provide in national stage

• Time limit - See 37 CFR 1.55(f)(2) if commencement is on/after 18 Dec 2013• May be able to request retrieval through PDX or DAS

• Once the priority claim and certified copy are timely received– The examiner in the next Office Action will

• Acknowledge the claim for foreign priority• Indicate receipt/non-receipt of certified copy

using the Office Action Summary or form paragraph 2.26Sep 2015

Claiming Benefit of an Earlier U.S. Filing Date in U.S. National Stage

• U.S. National Stage application must– Contain or be amended to contain a reference to the

earlier-filed application(s) - 37 CFR 1.78• Provisional application under 35 U.S.C. 119(e)

– Provisional application number

• Nonprovisional application under 35 U.S.C. 120– Nonprovisional application number and its relationship (e.g., CON, CIP,

DIV) to the later-filed international application

• Earlier-filed international application in which United States was designated, under 35 U.S.C. 365(c) and 35 U.S.C. 120

– International application number, its international filing date, and its relationship (e.g., CON, CIP, DIV) to the later-filed international application

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Reference to an Earlier U.S. Filing Date• Must be contained in U.S. National Stage

– Where IFD before 16 Sep 2012, in either• An ADS, or • The first sentence of the specification

– Where the IFD is on/after 16 Sep 2012, in one of• An ADS• First page of the published IA• PCT Request

• Must be provided in U.S. National Stage within the later of– 4 months from commencement under 35 U.S.C. 371 (b) or (f)– 16 months from the earlier filing date

• Can be added later– Only by grantable petition for unintentionally delayed benefit claim

• 37 CFR 1.78

Sep 2015

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PCT Help desk

• Call 571-272-4300• Staffed Monday – Friday, 8:30 am – 5:00

pm

Sep 2015

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Thank You!

Susan WolskiPCT Special Programs ExaminerInternational Patent Legal Administrationsusan.wolski@uspto.gov 571.272.3304

Sep 2015