Q) Correcting PCT Applications – PCT (MPEP 1800)

by patentbar on May 9, 2007 · 29 comments

in Exam Questions

Test takers report that MPEP Chapter 1800, PCT, is tested heavily on the Prometric Patent Bar Exam. Experiencing 3-4 questions on this topic is common and some test takers report as many as 10-15 questions (most likely some are beta questions).

No Address

A test taker reported a question with obscure facts, like how long you have to correct a PCT application with no address after you are invited to correct the problem. Answer – This information is from PCT Rule 20.6 (under the Patent Cooperation Treaty section at the end of the MPEP). 20.6 Invitation to Correct … (b) The receiving Office shall promptly mail the invitation to the applicant and shall fix a time limit, reasonable under the circumstances of the case, for filing the correction. The time limit shall not be less than 10 days, and shall not exceed one month, from the date of the invitation. If such time limit expires after the expiration of one year from the filing date of any application whose priority is claimed, the receiving Office may call this circumstance to the attention of the applicant.

This rule is also referenced in MPEP 1810 under the heading: THE “INTERNATIONAL FILING DATE”. The International Application (PCT) filing date accorded the application is the date of compliance with the invitation to correct. It should be noted that, based on my reading of this section, an applicant can apparently lose his/her rights to priority if the deficiency in the IA is not cleared up within 12 months from the date of priority, if any, claimed in the International Application–EVEN IF the time to respond to the invitation to correct has not expired.

Correcting Errors

A test taker reported a question where the applicant submits three different amendments to the UPSTO as the Receiving Office of a PCT application.

a) Correcting a misspelled word “ccar”

b) Adding a drawing that was accidentally left out but is in earlier filed provisional or non-provisional application benefit of which is claimed.

c) Adding a page to explain in the specification something clearly shown on a drawing.

Question is what will the USPTO do? Answer – The question targets MPEP 1836 – rectification of obvious errors.

Obvious errors in the international application or other papers submitted by the applicant may generally be rectified under PCT Rule 91, if the rectification is authorized, as required, within the applicable time limit. […] The omission of entire sheets of the description cannot be rectified, even if resulting from inattention at the stage of copying or assembling sheets. Applicants often attempt to rely upon the priority application to establish a basis for obvious error. The priority document (application) cannot be used to support obvious error corrections. The rectification is obvious only in the sense that anyone would immediately realize that nothing else could have been intended than what is offered as rectification.

Examples of obvious errors that are rectifiable include linguistic errors, spelling errors and grammatical errors so long as the meaning of the disclosure does not change upon entry of the rectification. Changes to chemical or mathematical formulas would not generally be rectifiable unless they would be common knowledge to anyone.< A missing chemical formula or missing line of text would not be considered >to be an< obvious error subject to rectification. **

{ 29 comments… read them below or add one }

1 sinkingNo Gravatar March 20, 2009 at 5:52 pm

Regarding the 2nd question, i believe only a) Correcting a misspelled word “ccar” may be rectified. b) can’t be rectified because priority document is needed. c) is adding new spefication, not qualified as obvious error.

Am I correct?

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2 SNo Gravatar June 5, 2010 at 6:31 am

I got this question, but it was coupled with other topics like a missing sheet of the spec and a missing drawing, both have disclosure in the prior application and the correction is to be forwarded to IB.

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3 BrandonNo Gravatar January 7, 2011 at 12:23 pm

S, where did you find that the correction is to be forwarded to IB? I thought Sinking was right on based on 1836, is that not the case?

4 FlashofGNo Gravatar July 22, 2011 at 9:18 pm

1836 is the correct basis for this question – “Ccar” is an obvious error regarding spelling and so can be rectified via 1836.

B – wrong b/c cannot use an app from which benefit was claimed to prove the error is an “obvious error” in order to rectify it

C – wrong b/c missing a whole page is not an obvious error, even if you’re just darn clumsy and didn’t intend too (“even if resulting from inattention”)

5 Art WilliamsNo Gravatar August 26, 2009 at 10:58 am

Regarding the time allowed to supply missing parts in an international application, isn’t the follow passage unambiguous?

20.7 Time Limit
(a)
The applicable time limit referred to in Rules 20.3(a) and (b), 20.4, 20.5(a), (b) and (c), and 20.6 (a) shall be:
(i)
where an invitation under Rule 20.3(a) or 20.5(a), as applicable, was sent to the applicant, two months from the date of the invitation;

20.5 is “missing parts”

I believe that I have read the passage cited above, but I don’t think it comes from 20.6.

Thanks, Art Williams

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6 Big TexNo Gravatar November 10, 2009 at 10:08 pm

Art, you are referring to the latest revision of the Rules. The version used on the test is 8 revision 4. The above information is correct regarding that revision. This also applies to another question you posted.

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7 AnneNo Gravatar January 19, 2011 at 3:58 pm

I got similar one today, asking which of the three errors can be corrected thru ISA i)typographical error ii) missing page iii)missing drawing contained in the earlier application with priority claim.

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8 DNo Gravatar March 27, 2011 at 11:23 am

1836 would fix a spelling error and would not work for the missing drawing.

Could the applicant use the “incoroporation by reference” [MPEP § 201.06(c)]
doctrine which allows for late submission of a drawing in a continuation where the continuation incorporates by reference the parent application which had the same drawing? (see #20 from October 2003 AM exam)

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9 HNo Gravatar March 28, 2011 at 9:43 pm

See MPEP 201.17 II G regarding incorporation by reference in this situation.

“Any amendment to an international application pursuant
to 37 CFR 1.57(a) will be effective only as to
the United States and shall have no effect on the international
filing date of the application. The incorporation
by reference relief provided in 37 CFR 1.57(a)
cannot be relied upon to accord an international filing
date to an international application that is not otherwise
entitled to a filing date under PCT Article 11,
and it cannot be relied upon to alter the international
filing date accorded under PCT Article 11. In addition,
no request to add the inadvertently omitted portion
of the specification or drawings in an
international application designating the United States
will be acted upon by the Office prior to the entry and
commencement of the national stage (37 CFR 1.491)
or the filing of an application under 35 U.S.C. 111(a)
which claims benefit of the international application.”

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10 OverworkkedNo Gravatar April 28, 2011 at 1:03 pm

VARIANT on 4/27/2011 MPEP E8R8:

Applicant filed a bunch of stuff in some way. Finds three errors.

1. Correcting a misspelled word “ccar”
2. Adding a drawing that was accidentally left out but is in earlier filed provisional or non-provisional application benefit of which is claimed.
3.Adding a description to a figure in the drawings which description is fully supported by the drawings.

The date is xx/yy/zz, which of these can he correct?

A. I
B. II
C. III
D. Combination
E. All 3

I don’t know the answer.

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11 trmckenzNo Gravatar November 23, 2013 at 6:03 pm

Can confirm via USPTO test review that the answer is A.

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12 jacquiegardnerNo Gravatar May 3, 2011 at 6:19 pm

I had this exact same question today. I though all 3 (E) was the answer. The misspelled word is very obvious.The missing drawing is obvious in light of the priority claim (I think). I denfinitely found in the rules that putting a figure on the drawing is also obvious. Because the first and last were correct, again I chose all three. Don’t know if I’m right, but I didn’t pass. 50/50 chance I got it right.

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13 ChloeNo Gravatar May 4, 2011 at 12:27 pm

Does this mean II can’t be corrected??
per 1836: A mistake shall not be rectifiable if: the mistake is in a priority claim or in a notice correcting or adding a priority claim under Rule 26bis.1(a), where the rectification of the mistake would cause a change in the priority date.

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14 zanNo Gravatar May 30, 2011 at 11:44 am

I agree with jacquiegardner that all 3 would be correct. As long as the mistakes are obvious, they should be rectifiable. Any thoughts?

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15 BenNo Gravatar May 30, 2011 at 1:10 pm

I went to Alexandria, VA to check my test and this was one of the questions.

The answer is A) I

Only the correction of ‘ccar’ to ‘car’ is allowed. The main point was this was an international application, so you can’t file additional papers, drawings, ADS, or descriptions. But you can correct an obvious misspelling.

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16 GeoNo Gravatar May 30, 2011 at 5:23 pm

Thanks for sharing Ben – your revelation is a gift!!!

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17 DannyNo Gravatar September 17, 2011 at 11:38 pm

to give some source material for what your saying… ” The
omission of entire sheets of the international application cannot be rectified under PCT Rule 91.” Thus, adding a drawing, which would require adding an entire sheet is not allowed. Of course there will be other means to correct that in this situation, but not via the obvious mistake provisions of Rule 91. This quotation was found in e8r8 at 1800-52 on the bottom right corner of the page.

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18 maggieNo Gravatar October 19, 2011 at 2:40 am

Thanks this was helpful:

RULE 91
(g) A mistake shall not be rectifiable under this Rule if:
(i) the mistake lies in the omission of one or more entire elements of the international application referred to in Article 3(2) or one or more entire sheets of the international application;
(ii) the mistake is in the abstract;
(iii) the mistake is in an amendment under Article 19, unless the International Preliminary Examining Authority is competent to authorize the rectification of such mistake under paragraph (b)(iii); or
(iv) the mistake is in a priority claim or in a notice correcting or adding a priority claim under Rule 26bis.1(a), where the rectification of the mistake would cause a change in the priority date;

19 PatrickNo Gravatar June 1, 2011 at 8:38 am

I don’t know how handy this will be, but I found a PCT Time Limit Calculator on WIPO’s website. It appears to let you type in the earliest priority date and will tell you the time limits for corrections, amendments, and so on.

I think I read that this forum won’t allow URLs in comments, so I’ll simply describe how I found it (you can also just search for “PCT Time Limit Calculator” on WIPO’s site).
1. Go to the WIPO home page.
2. Click on “Patents” under “Gateway To:” on the left-hand side.
3. Click on “PCT Resources” under “Related Links” on the left-hand side.
4. Click on “PCT Time Limit Calculator” at the bottom of the the right-hand “Filing” column.

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20 AxoNo Gravatar June 29, 2011 at 11:21 am

Got this one 6/28/11 (put answer A from Overworkked, above)

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21 PatfieldNo Gravatar July 6, 2011 at 1:26 pm

Can we confirm that overworkked’s question isn’t really…

The date is xx/yy/zz, which of these can he correct ___and retain the filing date__?

…or some other subtle variation?

Because then the answer A makes more sense. After reading PCT rule 20 several times it looks as though ii may be changed within 2 months however you would lose your filing date. Also article 34 amendments would appear to allow for the type of change needed in iii with out an effect on filing date. So I am confused.

Any thoughts and thanks for the heads up on these questions.

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22 PatfieldNo Gravatar August 2, 2011 at 6:51 pm

Here is a useful read

. In such case, the inter- national filing date will be the date on which a timely filed correction is received by the receiving Office. >In applications filed on or after April 1, 2007, if the defect under PCT Article 11(1) is that the purported international application fails to contain a portion which on its face appears to be a description or claims, and if the application, on its initial receipt date, contained a priority claim and a proper incorpo- ration by reference statement, the initial receipt date may be retained as the international filing date if the submitted correction was completely contained in the earlier application. See PCT Rules 4.18 and 20.6.20.4In applications filed on or after April 1, 2007, if the application, on its initial receipt date, contained a pri- ority claim and a proper incorporation by reference statement, the initial receipt date may be retained as the international filing date if the submitted correction was completely contained in the earlier application. Again see PCT Rules 4.18 and 20.6 .<

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23 PatfieldNo Gravatar August 2, 2011 at 6:57 pm

What I get out of this is that if the IA at the time of filing includes a claim for priority or incorporation by reference then any documents that were left out may be resubmitted within the set time period and the filing date may be retained.

The above question does not state that the application had asserted a claim for priority so I would assume that there was none in which case the documents couldn’t be submitted to retain the filing date. (The question must have stated something like ” and retain the filing date”) Though I wouldn’t know for sure.

Thanks for posting the question/answer Ben

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24 ENo Gravatar November 25, 2011 at 6:23 pm

I had a variant on 11/22/11. I choose the answer where you can just correct “ccar”

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25 HSNo Gravatar November 25, 2011 at 9:14 pm

Missing page, drawings can be fixed in PCT apps filed after 4-1-2007 by incorporation by reference.

MPEP 1800-page 41
The omission of an entire sheet of the claims cannot be rectified without affecting the international filing date>, except in applications filed on or after April 1, 2007, where, if the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the original international filing date may be retained if the submitted correction was completely contained in the earlier application.

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26 Matt DNo Gravatar November 25, 2011 at 11:35 pm

Just keep in mind that incorporation by reference is not the same as a claim to benefit. (B) above. B says nothing about an incorporation by reference and is thus not necessarily correct. This was covered in one of the practice exams. Can’t find the reference but I’ll post it after I take the test tomorrow. Hopefully I pass 😡

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27 TSBNo Gravatar November 28, 2011 at 6:11 pm

Was anybody able to confirm “the time limit to correct no address” question. According to E8R8, Rule 20.7(a)(i) is “two months from the date of the invitation;”.

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28 GDBNo Gravatar April 18, 2012 at 6:41 pm

I – can correct ccar = obvious error
II – can’t correct drawing because there is no incorporation by reference according to the question
III – can’t correct because no words allowed in drawing (see MPEP 1825 below, pg. 1800-43

“Drawings must be presented on one or more separate sheets. They may not be included in the description, the claims or the abstract. They may not contain text matter, except a single word or words when absolutely indispensable.”

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29 ZNo Gravatar March 31, 2013 at 2:53 pm

I had a variant on 3/30/13. I answered that only “ccar” can be corrected.

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