A deep-dive on three technical changes in filing your PCT application with IP Australia.
This article reviews the details and implications of three recent changes to how IP Australia acts as a receiving office for international PCT patent applications filed with IP Australia.
The changes relate to the ability to include pre-conversion documents, expansion of the ability to incorporate by reference, and how colour drawings are treated.
Pre-conversion documents
The PCT rules provide the option of uploading pre-conversion documents.[1] Conversion may occur for example when a patent specification in a Word document is saved as a PDF, which is then filed. In addition, PDF documents containing colour or greyscale may be converted to black and white when uploaded as part of the PCT application process.
Any format conversion introduces the potential for errors and inaccuracies, so the PCT rules allow for the pre-conversion documents to be filed along with the application. While they do not technically form part of the application, if they are present and conversion errors are later discovered, the rules allow for correction to be requested for conformity with the pre-conversion files.
Our standard practice is to include pre-conversion files with a PCT application, maximise the ability to correct any inaccuracies that could result from conversions.
This option has been available for applicants filing at the International Bureau, but is now also available for applicants who want to file with IP Australia as their receiving office.
Incorporation by reference
Incorporation by reference attempts to pull the contents of some external document into a patent application simply by referring to it, rather than including the contents of the external document.
Some jurisdictions allow incorporation by reference, while others do not.
The PCT rules allow incorporations by reference to be included in PCT applications.[2] However, to have the referenced content treated as part of the application, the referenced content must be provided to the receiving office within two months.[3], [4]
With the recent rule change, IP Australia will now explicitly allow this practice for PCT applications filed with IP Australia as the receiving office.
While we do not recommend reliance on incorporation by reference, the rules can provide a useful last resort where there is an urgent filing deadline and uncertainty about what disclosure from other applications may be useful to include.
However, a lot of care is required when attempting an incorporation by reference as inclusion of information outside of the scope of the reference made, or which is not within the scope of the external document purportedly incorporated, will result in post-dating the application and loss of the international filing date. This can have catastrophic consequences for priority claims and the patentability of an invention.
Colour drawings
The final change in practice relates to the treatment of colour drawings.
Under the updated practice, colour drawings filed with a PCT application at IP Australia will now be received and sent to the International Bureau without comment, where previously they would attract a formalities objection.
The Australian Patents Act requires that drawings must be in black colouring.[5] However, since 2019, IP Australia has permitted colour if it is indispensable to understanding the invention.[6] In practice though, colour drawings will not be objected to unless they are deemed to be clearly inappropriate.
It seems this leniency in practice is now being on-applied in IP Australia’s role as a receiving office under the PCT.
It is still however generally unadvisable to file colour drawings. While colour drawings will be received and retained without objection now by both IP Australia and the International Bureau, the PCT rules explicitly require that drawings are to be “without coloring [sic].” This provides no backstop for uncertainty of how any colour drawings may eventually be treated by different national offices, which may or more likely may not allow for colour drawings under their national laws.
While WIPO advise that the gears of international law are grinding towards some longer-term clear acceptance of colour drawings, we recommend that outside of exceptional circumstances applicants continue filing their PCT drawings in black and white.
Have more questions?
The PCT system is complex to navigate, and the stakes are high. If you need advice on how to best pursue international patent protection through the PCT, please get in touch with one of our team.
[1] https://www.wipo.int/pct/en/texts/ai/s706.html
[2] https://www.wipo.int/pct/en/texts/rules/r4.html#_4_18
[3] https://www.wipo.int/pct/en/texts/rules/r20.html#_20_6
[4] https://www.wipo.int/pct/en/texts/rules/r20.html#_20_7
[5] Patents Regulations 1991, Schedule 3, Item 11
[6] Formalities Determination 2019
