Japanese Patent FAQs
PCT application filed with a missing page
Q.An applicant filed a PCT application in a receiving office that was missing one page of claims. However, the applicant included the missing page when they filed the priority application. The international date was maintained when the applicant filed a Confirmation of Incorporation by Reference of Elements and Parts.
Will the international filing date for the Japanese national phase of the PCT application be accepted by the JPO?
The JPO now follows the International Bureau with regard to incorporation by reference of material from a priority document. If an amendment based on incorporation by reference from a priority document is accepted in the international stage, the JPO will also accept the amendment without altering the international filing date. This will be applied to PCT applications filed on or after October 1, 2012.
For PCT applications filed before October 1, 2012, previous patent laws will be applied:
A PCT application nationalized in Japan will not be entitled to the benefit of confirmation of incorporation by reference of elements and parts made pursuant to PCT Rules 20.3(a)(ii) and 20.5(a)(ii) and (d), and 20.6. That is, the JPO will deem the international filing date to be the date of filing of the confirmation of incorporation by reference even if the receiving office accepts the international filing date by confirming the incorporation by reference made pursuant to Rules 20.6 and 20.7 at the international stage.
In that case, the JPO will issue a Notice informing the applicant that the international date has been corrected to the filing date of the confirmation of incorporation by reference of elements and parts. If the applicant would like to maintain the international date, it is necessary to cancel the added elements or parts that were contained in a priority application. In other words, in response to the Notice, the applicant may file a Request pursuant to PCT Rule 82ter.1 within 30 days from the date of the Notice together with an amendment to cancel the added elements or parts that were contained in the priority application but were missing from the PCT application.