Chapter 2 – The EPO as a PCT receiving Office
2.4 How can missing elements or parts be incorporated into the international application by reference?
2.4.001If the applicant has omitted to file an entire element of the international application, i.e. the whole description or all of the claims, or a part of the description, the claims or the drawings (including the case where all drawings appear to be missing), this element or part may be incorporated into the international application under the conditions set out in Rules 4.18 and 20.6 PCT in conjunction with Rule 20.7 PCT. If all conditions are met, such incorporation will not affect the international filing date. This procedure may be summarised as follows:
R. 4.18 PCT, R. 20.3 PCT, R. 20.5 PCT, R. 20.6 PCT, R. 20.7 PCT
WIPO PCT Guide 6.028
2.4.002Firstly, such incorporation requires that the missing element or part be completely contained in an application from which priority was (validly) claimed on the date on which one or more elements referred to in Article 11(1)(iii) PCT were first received by the EPO as receiving Office (see points 2.15.001 ff). The test for "completely contained" requires that the later filed missing element or part – e.g. a paragraph, a page or a drawing – be identical to the corresponding text/drawing in the priority document.
2.4.003Secondly, the PCT request must contain a statement of incorporation by reference of missing elements or parts. Such a statement is already provided in Box VI of the PCT request form.
2.4.004If both conditions are met, an applicant who has omitted to file an element or part or may include it by confirming its incorporation by reference. This requires that the conditions for confirmation set out in Rules 20.6(a) and 20.7 PCT are also met.
2.4.005If all conditions are met, the missing element or part is considered to be incorporated by reference and the international filing date stays the same.
2.4.006If the EPO as receiving Office finds that not all the requirements of Rules 4.18 PCT and Rule 20.6(a) PCT have been complied with (within the time limit prescribed by Rule 20.7 PCT) or that the element or part concerned is not completely contained in the earlier application, it will proceed to a negative finding under paragraph 205D of the PCT Receiving Office Guidelines and notify the applicant that the element or part is not considered to have been contained in the international application.
2.4.007Applicants wishing to add a missing element or part to an international application which has no basis in a claimed priority application may do so under the conditions set out in Rule 20.5 PCT. However, the filing date of the application as a whole will then be the date on which the missing element or part was filed.
2.4.008The procedure before the EPO as ISA/IPEA in the case of a positive/negative decision by the receiving Office on a request for incorporation by reference is set out below (see points 3.2.017 ff and points 4.2.008).