[Pct] RO/106 and RO/107 received for drawings

[Rick Neifeld]

Hmmm. On a lark, I popped question 1 into Google's free Gemini AI.  Copied
in below is Gemini's response:

You're facing a common and frustrating issue in patent prosecution. The
RO/106 and RO/107 forms from WIPO (World Intellectual Property
Organization) indicate that there's a defect in your international
application, specifically regarding the drawings, and that correcting it
will result in a change to your international filing date (IFD). This is a
critical concern, especially since your one-year priority deadline has
passed.

Here's how you should respond and argue to keep your original filing date,
focusing on the principle that all subject matter was present from the
start:

*Understanding the Problem and the Forms:*

   -

   *RO/106 (Invitation to Correct Defects in the International
   Application):* This form is generally used for formal defects, including
   issues with drawings (e.g., non-compliance with physical requirements,
   missing numbers, or incorrect presentation).
   -

   *RO/107 (Notification Concerning a Later Submitted Part of the
   International Application):* This form comes into play when the
   Receiving Office believes that a part of your application (like the
   corrected drawings) constitutes "new" matter that wasn't present on the
   original filing date, thus necessitating a new filing date for that "new"
   matter.

The core of the problem is that the Receiving Office views your misnumbered
figures as a fundamental defect that impacts what was *originally disclosed*.
Their default position is that a correction to the drawings, even just
renumbering, is akin to adding new content if it's not clearly supported by
the initial filing.

*Your Argument Strategy: "Incorporation by Reference" and "Clerical Error"*

Your best approach is to argue that the renumbering is a *clerical error*
and that the corrected drawings contain *no new subject matter* but are
merely a *clarification* or *correction of presentation* of subject matter
that was *fully disclosed and supported* in the original application.
You'll lean heavily on the concept of "incorporation by reference" if
applicable, and if not, on the clear disclosure of the content itself.

Here's how to structure your response:

   1.

   *Acknowledge and Respond to the Forms:*
   -

      Reply to both RO/106 and RO/107 within the given deadline.
      -

      Clearly reference your international application number and the
      specific forms you are responding to.
      2.

   *State Your Position Clearly:*
   -

      Begin by stating that you respectfully disagree with the Receiving
      Office's preliminary finding that a correction to the drawings
would result
      in a change of the international filing date.
      -

      Affirm that all the subject matter shown and described in the
      corrected drawings was fully contained and unambiguously disclosed in the
      international application as originally filed.
      3.

   *Explain the Nature of the Defect (Clerical Error):*
   -

      Describe the specific nature of the misnumbering. For example: "The
      figures in the originally filed application were inadvertently
misnumbered
      due to a clerical error during preparation. Figure 'X' was incorrectly
      labeled as Figure 'Y', and so on."
      -

      Emphasize that this was a *numbering error*, not a situation where
      figures were missing or new figures are being introduced.
      4.

   *Demonstrate Support in the Original Application (Crucial):*
   -

      This is the most important part. You need to show that even with the
      misnumbering, the *content* of each figure was clearly identifiable
      and described in the original application's description.
      -

      *Directly correlate:* For each corrected figure number, explain what
      it *was* called in the original filing (if it was referenced, even
      incorrectly) and what it *is now* called.
      -

      *Provide specific examples:* Quote passages from your original
      description that refer to or describe the features shown in the
misnumbered
      figures. For instance: "Although Figure 10 was incorrectly labeled as
      Figure 12 in the original submission, the description on page 5,
paragraph
      3 clearly refers to 'the exploded view of the assembly shown in
Figure 10,'
      which corresponds precisely to the subject matter of the
renumbered Figure
      10."
      -

      *Highlight consistency:* Argue that a person skilled in the art,
      reading the original application, would have been able to understand the
      figures and their relationship to the description despite the numbering
      errors.
      5.

   *Address "Incorporation by Reference" (If applicable):*
   -

      If you had originally intended to incorporate any element by
      reference (e.g., from an earlier priority application), and the
      misnumbering somehow relates to that, confirm that the element
or part was
      incorporated by reference under PCT Rule 4.18.
      -

      You would typically need to furnish a written notice confirming this
      and demonstrate that the element was completely contained in the earlier
      application. However, for simple figure renumbering, this is
less likely to
      be the primary argument unless the figures themselves were literally
      incorporated by reference.
      6.

   *Request Maintenance of the Original Filing Date:*
   -

      Conclude by reiterating that since no new subject matter is being
      introduced, and the original application clearly supported all
the elements
      of the corrected drawings, the international filing date should
remain the
      original date.
      -

      Request that the Receiving Office reconsider its preliminary finding
      and maintain your original international filing date.
      7.

   *Submit the Corrected Drawings:*
   -

      You *must* submit the corrected drawings as replacement sheets.
      Follow the instructions on RO/106 carefully for submitting replacement
      sheets:
      -

         Each replacement sheet must be clearly marked "REPLACEMENT SHEET"
         and the number of the sheet (e.g., "Sheet 3/10").
         -

         Include a letter accompanying the replacement sheets that draws
         attention to the differences between the replaced sheets and the
         replacement sheets (i.e., specifying the renumbering).

*Important Considerations:*

   -

   *Time Limits:* Adhere strictly to the deadlines provided in the RO/106
   and RO/107 forms. Missing these deadlines can lead to the application being
   considered withdrawn.
   -

   *Clarity and Detail:* Be extremely clear, concise, and detailed in your
   arguments. The more precisely you can cross-reference the original
   application to support your claim of no new matter, the stronger your case.
   -

   *No New Matter:* The key is *absolutely no new matter*. If the corrected
   drawings introduce anything that wasn't clearly derivable from the original
   filing, you will likely lose the original filing date for those parts.
   -

   *Professional Language:* Maintain a professional and respectful tone in
   your communication with the Receiving Office.
   -

   *Consult IP Counsel:* Given the critical nature of the filing date and
   priority, it is highly advisable to *consult with a qualified patent
   attorney or agent* experienced in PCT applications. They can review your
   specific application and the notices, help draft the strongest possible
   response, and navigate the intricacies of WIPO procedures. They might
   also be aware of specific WIPO or national phase office practices regarding
   such defects.


While it feels like a minor issue, misnumbered figures, if not properly
rectified, can have significant consequences for your patent rights. A
strong, well-reasoned argument focused on the original disclosure of the
subject matter is your best chance to preserve your filing and priority
dates.

Sources


On Fri, Jun 27, 2025 at 9:30 AM Timothy Snowden via Pct <
pct at oppedahl-lists.com> wrote:

> *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
>
>
>
> *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.*
>
>
>
>
>
> --
> Pct mailing list
> Pct at oppedahl-lists.com
> Click here to unsubscribe:
> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/pct_oppedahl-lists.com/attachments/20250627/9f9a3354/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: nq2hF5ZiPZGMHG04.png
Type: image/png
Size: 99771 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/pct_oppedahl-lists.com/attachments/20250627/9f9a3354/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 7679 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/pct_oppedahl-lists.com/attachments/20250627/9f9a3354/attachment-0001.png>