[Pct] RO/106 and RO/107 received for drawings
Katherine Koenig
katherine at koenigipworks.com
Fri Jun 27 17:43:06 UTC 2025
Rick and Timothy, wow – those are pretty good answers from AI!
I apologize that I hadn’t posted the solutions to this issue to the group. Some of these replies ended up in my junk folder.
The AI recommendations generally track with what I’d learned from WIPO representatives (by the way, some very helpful folks from WIPO are on this listserv, and I can’t thank them enough for their quick and thoughtful answers).
Based on the feedback I’d received, I’m going to file a response with a replacement sheet containing the figure with the corrected figure number. The response will explain the issue identified by the reviewer, the changes that are now being made (only renumbering one drawing) under Rule 26, and will discuss why the amendment is not an impermissible broadening of scope (the amendments do not go beyond the disclosure in the international application as filed). The replacement drawing sheet will be labeled “SUBSTITUTE SHEET (RULE 26).”
While technically responding to the RO/106, the response will also acknowledge the RO/107 and will clearly state that there was nothing missing in the application as originally filed, and therefore there’s nothing else to supply.
The good news is that correcting this minor issue will not jeopardize the filing date. The RO/107 was sent because the RO wasn’t sure if something was missing or not – if something was missing, the filing date would be corrected to the date on which the missing something is received. Because nothing is missing, the filing date isn’t affected.
Alternatively, I’ve learned that you could simply not reply to either notification and address the issue at the National Phase. It’s up to you. However, the PCT application would be published with the misnumbered figure. So you’d have to reply to the RO/106 to correct before publication (obviously). I decided I’m too nervous to not reply and would rather clean it up now, before publication. The lesson of the day is to triple-check the numbering on the drawings, even when your eyes have crossed and you’re scrambling to beat midnight in Geneva (it’ll save you a heart attack weeks later)! I hope this is helpful to someone else
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>
[cid:image001.png at 01DBE765.917A5BF0]
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.
From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of Rick Neifeld via Pct
Sent: Friday, June 27, 2025 10:32 AM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Rick Neifeld <richardneifeld at gmail.com>
Subject: Re: [Pct] RO/106 and RO/107 received for drawings
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.
1. 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.
1. 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.
1. 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.
1. 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.
1. 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.
1. 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<mailto: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:
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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>
[cid:image001.png at 01DBE765.917A5BF0]
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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