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Patent practice - tips on reducing the adverse impact of PCT international publication with a reproducibility issue
Time: 2021-04-06
Patent practice - tips on reducing the adverse impact of PCT international publication with a reproducibility issue

Queenie X. QIU | Mar 2021

Sometimes we run into a PCT national phase entry which has drawings or datasheets on WIPO publication in so low resolution that we can barely recognize the information. CNIPA, as an elected Office, may not accept replacements of clear drawings or datasheets when the PCT application enters the Chinese national phase. The reason is that clearer drawings or datasheets can be considered as amendments beyond the original disclosure. This could be a real problem for the grant of a patent right especially for a biochemical invention when drawings usually reflect the experimental effects that are not indicated in the original specification.

In our previous cases, the PCT international applications were submitted with clear drawings or datasheets, but the WIPO publication turned out to be a different case. According to PCT Rule 91, a request for rectification of obvious mistakes in the international application and other documents shall be submitted to the competent authority within 26 months from the priority date. Therefore,

If the reproducibility issue is noticed before 26 months from the priority date, the applicant shall promptly request WIPO to republish the international application with the drawings or datasheets in high resolution as filed. In this way, such a problem can be avoided when entering the Chinese national phase;

If unfortunately the issue is noticed only until after 26 months from the priority date, the applicant may try to file a voluntary amendment with clear drawings or datasheets according to the PCT Article 28/41 when entering the Chinese national phase.

Possible Results of such voluntary amendments (replacement with clear drawings or datasheets):

Generally, if the relevant information is basically legible after zooming, the Chinese examiners tend to accept the replacements according to our experience. Otherwise, it is possible that the examiners will not accept the replacements with the ground of amendment beyond the scope. In case a replacement is not accepted, we can try to further ask the examiner to take it as reference material during the examination. However, examiners have the discretion in deciding whether to accept that as reference material or not.

So, besides checking the correctness of the filing information, it is also very important to check out whether the WIPO publication is a “nice” one or not.

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