[Pct] RO/106 and RO/107 received for drawings
Timothy Snowden
tdsnowden at outlook.com
Fri Jun 27 13:28:21 UTC 2025
*/CONFIDENTIAL. PRIVILEGED./*
On a lark, I put Katherine's question, and then a follow-up question
into IronCrow's LLM and selected the special Interrogate option that is
pre-trained on "PCT Treaty, Regulations and Administrative
Instructions". I'm putting the actual answer here because I thought the
rest of the listserv might be interested in the state of patent practice
specific research tools. What I did not include is the verbatim cited
sources that are attached to the end of each answer automatically so
that you can verify the LLM's 'reasoning'. BTW -- I am not related to
IronCrow except as a user and a periodic offerer of rambling thoughts,
grumblings, and feature requests that Will is gracious enough to
consider helpful feedback.
I felt like Response 1 was maybe technically accurate but not as 'to the
point'. My follow-up request I felt like provided some nice citations
that I might find helpful to copy and paste into a response, for example
(after validating the citation!).
----
QUESTION 1 (slightly edited): I filed an application in which the
figures were mistakenly misnumbered and now I’ve received RO/106 and
RO/107 notices stating that my filing date will be corrected to the date
on which I file the corrected drawings. This is such a minor thing, I’m
hoping there’s a way to keep the priority date (the 1-year deadline has
passed) and, hopefully, the filing date. How should I respond and argue
that I have the right to keep my filing date since all the subject
matter was present, there was just some numbering issues.
RESPONSE 1:
Understanding the Issue
You've received RO/106 and RO/107 notices indicating that your
international filing date will be corrected to the date when you submit
corrected drawings due to misnumbered figures. This is concerning since
your priority period (1-year deadline) has already passed.
Legal Framework
The key provision that applies to your situation is *Article 14(2)* of
the PCT, which states:
"If the international application refers to drawings which, in fact,
are not included in that application, the receiving Office shall
notify the applicant accordingly and he may furnish them within the
prescribed time limit and, if he does, the international filing date
shall be the date on which the drawings are received by the
receiving Office. Otherwise, any reference to the said drawings
shall be considered non-existent."
Important Distinction to Make
The critical point to argue is that your situation does not involve
*missing drawings* but rather *misnumbered drawings* that were actually
present in the application. This is a significant distinction.
Recommended Response Strategy
1.
*Clarify that the drawings were present*: Emphasize that all
drawings were physically included in the application at filing -
they were merely misnumbered. This is not a case where drawings were
referenced but not included.
2.
*Argue for rectification of obvious mistake*: Request rectification
under *Rule 91* of the PCT, which allows for correction of obvious
mistakes. According to Rule 91.1(c):
"The competent authority shall authorize the rectification under
this Rule of a mistake if, and only if, it is obvious to the
competent authority that, as at the applicable date under paragraph
(f), something else was intended than what appears in the document
concerned and that nothing else could have been intended than the
proposed rectification."
1.
*Emphasize that this is a minor defect*: The misnumbering of figures
that were actually present should be treated as a correctable defect
under Article 14(1)(a)(v) and Rule 26.3, which deals with physical
requirements, rather than a case of missing drawings under Article
14(2).
2.
*Request maintenance of the original filing date*: Since the
drawings were physically present at filing (just misnumbered), argue
that the requirements of Article 11(1) were met at the time of
filing, particularly Article 11(1)(iii)(d) which requires "a part
which on the face of it appears to be a description."
Procedural Steps
1.
Submit your response within the time limit specified in the notices.
2.
Include a clear explanation that distinguishes between misnumbered
drawings (your case) and missing drawings (Article 14(2) case).
3.
Submit the corrected drawings with proper numbering.
4.
Request that the correction be treated as a rectification of an
obvious mistake under Rule 91 or as a correction of a physical
requirement defect under Rule 26.3.
5.
Cite Section 325 of the Administrative Instructions, which outlines
the procedure for corrections of defects under Rule 26.4 and
rectifications of obvious mistakes under Rule 91.
Conclusion
The key to your argument is establishing that this is not a case of
missing drawings (which would justify a change in filing date under
Article 14(2)) but rather a case of misnumbered drawings that were
physically present at filing (which should be correctable without
affecting the filing date).
If the receiving Office maintains its position, you may need to consider
further procedural options, but this initial response should present a
strong case for maintaining your original filing date.
QUESTION 2: What are the key limitations on the office's authority to
change the filing date? Please use quotes from the appropriate statutes,
rules, or guidelines. Would pointing to a provisional that referred to
the subject matter of the figures in the proper order help?
RESPONSE 2:
1. Requirements for Establishing Filing Date
Article 11(1) establishes the basic requirements for according an
international filing date:
"The receiving Office shall accord as the international filing date
the date of receipt of the international application, provided that
that Office has found that, at the time of receipt:
(i) the applicant does not obviously lack, for reasons of residence
or nationality, the right to file an international application with
the receiving Office,
(ii) the international application is in the prescribed language,
(iii) the international application contains at least the following
elements:
(a) an indication that it is intended as an international application,
(b) the designation of at least one Contracting State,
(c) the name of the applicant, as prescribed,
(d) a part which on the face of it appears to be a description,
(e) a part which on the face of it appears to be a claim or claims."
2. Missing Drawings vs. Defects in Drawings
Article 14(2) specifically addresses missing drawings:
"If the international application refers to drawings which, in fact,
are not included in that application, the receiving Office shall
notify the applicant accordingly and he may furnish them within the
prescribed time limit and, if he does, the international filing date
shall be the date on which the drawings are received by the
receiving Office. Otherwise, any reference to the said drawings
shall be considered non-existent."
This provision applies only when drawings are completely missing, not
when they are present but contain defects such as misnumbering.
3. Physical Requirements and Correctable Defects
Rule 26.3 limits the authority to reject applications for physical defects:
"The receiving Office shall check:
(i) the international application for compliance with the physical
requirements referred to in Rule 11 only to the extent that
compliance therewith is necessary for the purpose of reasonably
uniform international publication;"
Rule 26.5 further limits the consequences of physical defects:
"The receiving Office shall decide whether the applicant has
submitted the correction within the applicable time limit under Rule
26.2, and, if the correction has been submitted within that time
limit, whether the international application so corrected is or is
not to be considered withdrawn, provided that no international
application shall be considered withdrawn for lack of compliance
with the physical requirements referred to in Rule 11 if it complies
with those requirements to the extent necessary for the purpose of
reasonably uniform international publication."
4. Rectification of Obvious Mistakes
Rule 91.1(c) provides for rectification of obvious mistakes:
"The competent authority shall authorize the rectification under
this Rule of a mistake if, and only if, it is obvious to the
competent authority that, as at the applicable date under paragraph
(f), something else was intended than what appears in the document
concerned and that nothing else could have been intended than the
proposed rectification."
Rule 91.3(c)(i) states that when rectification is authorized:
"Where the rectification of an obvious mistake has been authorized
under Rule 91.1, it shall be effective:
(i) in the case of a mistake in the international application as
filed, from the international filing date;"
Would Pointing to a Provisional Help?
Pointing to a provisional application that referred to the subject
matter of the figures in the proper order could potentially help, but
not directly under the PCT framework. The key arguments should focus on:
1.
The misnumbered figures represent an "obvious mistake" under Rule
91.1 that should be rectifiable without changing the filing date.
2.
The drawings were actually present in the application (just
misnumbered), so Article 14(2) regarding missing drawings should not
apply.
3.
Misnumbering of figures is at most a physical defect under Rule
26.3, which should not result in the application being considered
withdrawn if it meets the minimum requirements for reasonably
uniform international publication.
While the provisional application might demonstrate the applicant's
intent regarding the correct numbering, the stronger argument is that
the misnumbering is an obvious mistake that should be rectifiable
without affecting the filing date, since all the drawings were
physically present at filing.
Example of Citations attached to end of each answer:
On 6/27/2025 6:59 AM, Katherine Koenig via Pct wrote:
>
> Would anyone be available today to talk with me briefly about the best
> way to respond to two notices I received from WIPO?
>
> Basically, the figures were mistakenly misnumbered and now I’ve
> received RO/106 and RO/107 notices stating that my filing date will be
> corrected to the date on which I file the corrected drawings. This is
> such a minor thing, I’m hoping there’s a way to keep the priority date
> (the 1-year deadline has passed) and, hopefully, the filing date.
> I’ve called and emailed WIPO and the officer who signed the forms, and
> haven’t managed to reach anyone. I’d like to file the response today,
> if possible. Thank you!
>
> Best regards,
>
> Katherine
>
> Dr. Katherine Koenig
>
> /Registered Patent Attorney/
>
> Koenig IP Works, PLLC
>
> 2208 Mariner Dr.
>
> Fort Lauderdale, FL 33316
>
> (954) 903-1699
>
> katherine at koenigipworks.com <mailto:katherine at koenigipworks.com>
>
> /Targeted Intellectual Property Strategy/
>
> /The information contained in this communication, including any
> attachments, is privileged and confidential information intended only
> for the use of the individual or entity named above. If //you are not
> the intended recipient, or the employee or agent responsible to
> deliver it to the intended recipient, you are hereby notified that any
> review, dissemination, distribution, or copying of this communication
> is strictly prohibited. If you have received this communication in
> error, do not read it. Please immediately reply to the sender that
> you have received this communication in error and then destroy all
> paper and electronic copies. Thank you./
>
>
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