International:

International Incorporation By Reference

By Phillip M. Pippenger - December 24, 2013

The practice of incorporation by reference has been accepted for many years in certain countries such as the United States.

The practice of incorporation by reference has been accepted for many years in certain countries such as the United States. Under this practice, for example, an applicant wishing to change the scope or direction of their claims in a child application may change the application to expressly include material in the child that was previously only incorporated by reference in the parent. As long as the incorporation statement in the parent application is proper and of the necessary scope, the later-added material will not constitute “new matter,” and thus will not affect the priority date of the new claims.1

However, it is often remarked, with some truth, that this doctrine of incorporation does not apply to child applications filed under the Patent Cooperation Treaty (PCT). No doubt, the forgoing example of changing the content of the application to redirect the child application will not be effective when the child application is a PCT application. Nonetheless, there is one aspect of international filing where the doctrine of incorporation by reference can be critical to the applicant.

In particular, a parent application can be wholly incorporated by reference in a PCT child application; this occurs for example when the applicant utilizes PCT request form PCT/RO/101 or other form which contains or is modified to contain an appropriate incorporation statement.2 With this statement in place, the applicant has some amount of protection against an error wherein only a portion of the parent application is included in the PCT application. Thus, for example, if the applicant is notified of a missing section after the PCT application is filed, the incorporation statement may be perfected and the missing material added from the parent application into the PCT application without losing the international filing date.

There are certain limitations to keep in mind regarding the use of this tool. The PCT defines application “elements” and application “parts,” and these definitions affect the ability to correct an error or omission in the PCT application. Application “elements” include any required application sections, such as the description section and the claim section, while application “parts” include any portion of an element or a portion (or the entirety) of the drawings. Under Rule 20.5, the Applicant may belatedly furnish any missing part without losing their international filing date.3 However, if a required element is missing in the PCT application, the international filing date will only be accorded as of the date that all required elements are submitted.

Other factors to keep in mind include the time limit within which a correction by incorporation, if allowed, may be made. This limit is set by Rule 20.7 at two months from the date of any invitation to correct the error or omission, or two months from the actual filing date of the PCT application itself if no invitation has been sent. Failing to meet this deadline, the application will be processed as is, without the correction, with whatever result that entails.4 Thus, if all required elements of a complete application are not present as of the deadline, a filing date will not be assigned. Similarly, if the application is formally complete as of the two-month deadline but the applicant has not met the requirements for perfecting an incorporation by reference when adding missing material, the applicant may either keep the added material (with the international filing date set at the date when the added material was received) or cancel the added material (and maintain the original international filing date).

Even when the receiving office allows a correction of omitted material via incorporation by reference, any designated offices may perform a limited additional review of this aspect of the application. In particular, each designated office is permitted to check that the added material was indeed expressly contained in the priority application. Moreover, when choosing a receiving office, it should be kept in mind that some receiving offices have issued reservations such that certain of the PCT rules and procedures do not apply in those offices.

Here at Miller, Matthias & Hull LLP, we work to provide the best advice to our clients in pursuing international applications, and in perfecting and nationally prosecuting such applications, whether they are original applications or child applications. For more information, or for assistance with a specific matter, please call us at (312) 977-9902.

1 A statement incorporating by reference a specific section of an identified document is preferred, but in some cases a general statement has sufficed. Such a statement usually incorporates, as a class, in their entireties, all external materials listed in the application. 2 Incorporation by reference is not applicable if the receiving Office has issued a reservation under Rule 20.8(a) of the incompatibility of Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 with the national law applied by that Office. 3 PCT Rule 20.5 (Missing Parts)(a) Where…a part of the description, claims or drawings is or appears to be missing, including the case where all of the drawings are …missing but not including the case where an entire element referred to in Article 11(1)(iii)(d) or (e) is or appears to be missing… 4 Under Rule 20.7, a late correction or notice confirming incorporation may be accepted if the receiving office has not yet sent a notice informing the applicant that neither item was received.