1.3 Euro-PCT applications – Erroneous elements filed under Rule 20.5bis PCT

Rule 20.5bis PCT allows applicants to correct an erroneously filed element (description or claims) or part of the description, claims or drawings (including all drawings) contained in an international application.

The EPO has notified WIPO that this provision is partially incompatible with the current legal framework under the EPC and will therefore not be fully applicable in proceedings before the EPO as receiving and designated/elected Office (Rule 20.8(a‑bis) and (b‑bis) PCT; see the Official Notice published by the International Bureau in the PCT Gazette of 30 January 2020).

Incorporations by reference by the receiving Office under Rule 20.5bis(d) PCT, i.e. without changing the filing date, are effective before the EPO as designated or elected Office for international applications filed on or after 1 November 2022. For details, see the notice from the EPO dated 23 June 2022, OJ EPO 2022, A71. On entry into the European phase, the normal procedures apply on the basis that the correct and erroneously filed parts are thus part of the application as filed (see E‑IX, 2).

For international applications filed between 1 July 2020 and 31 October 2022, the provisions under Rule 20.5bis(d) PCT remain not fully applicable (see the notice from the EPO dated 14 June, OJ EPO 2020, A81). The EPO adopts the following practice in respect of those applications: Corrections corrections accepted by the receiving Office during the international phase under either Rule 20.5bis(b) PCT or Rule 20.5bis(c) PCT – i.e. where it accorded the date of receipt of the correct application documents or a later date as the filing date of the application or shifted the initial filing date of the application to the date of receipt of the correct application documents – will be effective in proceedings before the EPO as designated/elected Office (see OJ EPO 2020, A81).

However, if the receiving Office considered the correct application documents to be incorporated by reference under Rule 20.5bis(d) PCT, i.e. without changing the filing date, this incorporation will not be effective in proceedings before the EPO as designated/elected Office. In such cases, the EPO will, on entry into the European phase, consider the filing date of the application to be the date on which the correct application documents were received (Rule 20.8(c) PCT and Rule 20.5bis(b) PCT or Rule 20.5bis(c) PCT). Furthermore, it will consider the application as filed to include the correct application documents but not the erroneously filed ones. The EPO will inform the applicant about this in a communication under Rules 20.8(c) PCT and Rule 82ter.1(c) PCT and Rule 82ter.1(d) PCT, setting a time limit of two months for reply.

(i)If, within the time limit, the applicant requests that the correct application documents be disregarded under Rule 82ter.1(d) PCT, the EPO will issue an interlocutory decision changing the filing date to the date initially accorded by the receiving Office and confirming that the procedure before the EPO as designated/elected Office will be based on the application documents as filed on that date.

(ii)If the applicant files observations with regard to the communication under Rule 20.8(c) PCT and Rule 82ter.1(c) PCT and Rule 82ter.1(d) PCT within the time limit set, the EPO will also issue an interlocutory decision taking into account the observations made.

(iii)If the applicant does not file observations and does not request that the correct application documents be disregarded, an interlocutory decision will not be issued. In this case, the EPO will stick to its findings. 

Applicants interested in avoiding this procedure, namely the issuance of the communication under Rules 20.8(c) PCT and Rule 82ter.1(c) PCT and Rule 82ter.1(d) PCT and the setting of a time limit of two months for reply, may make use of the abridged procedure. According to it, they may, within the 31-month time limit under Rule 159(1) EPC, at the time of validly requesting early processing or, at the latest, before the communication under Rules 20.8(c) and 82ter.1(c) PCT and Rule 82ter.1(d) PCT is issued:

(a)request that the EPO disregard the correct application documents. In that case, no such communication but an interlocutory decision will be issued. This decision will confirm that the application maintains the initial filing date and that the correct application documents will be disregarded in the procedure before the EPO as designated/elected Office. 

(b)confirm that they wish to pursue the application with the filing date corresponding to the date of receipt of the correct application documents and with those correct application documents. In that case, no invitation and no interlocutory decision will be issued. The EPO will correct the filing date and consider the erroneously filed application documents not to have been filed. The applicant will be informed accordingly. 

Once the procedure described above has been finalised, a communication under Rules 161 and 162 EPC will be issued, and the applicant may amend the application within the scope of the disclosure on the filing date as determined in this procedure.

As a consequence of the procedure described above, it may happen that the application documents as originally filed differ from those that formed the basis for the search in the international phase. If the EPO acted as International Searching Authority, the examiner has to check carefully whether the invention forming the basis for the European phase was covered by a search in the international phase. If this is not the case, an invitation under Rule 164(2) EPC will be issued (see C‑III, 3.1 C‑III, 2.3).

If the subject-matter forming the basis for European phase processing is covered by the international search report, then examination continues as usual but taking into account that the potential change of the filing date might have an impact on intermediary documents cited in the international search report and that the priority might not be valid anymore.

For more details and examples, see OJ EPO 2020, A81.