Hongwei JI
One of the highlights in the upcoming "Implementation Regulations of the Patent Law," which will officially take effect on January 20, 2024, is that the procedure of Incorporation by Reference was added. Incorporation by Reference may sound unfamiliar to us. What exactly is it? Literally, " by reference" means to cite or quote, and " incorporation" can be simply understood as adding. Incorporation by Reference is essentially a way to add omitted content in a patent application. Specifically, if an applicant omits a part or all of the description, claims, or drawings when submitting a patent application, as long as the application claims a priority and the omitted parts are included in priority application, the applicant is permitted to add the omitted parts to the patent application within the prescribed period through the procedure of Incorporation by Reference without changing the filing date.
Both the Patent Cooperation Treaty (PCT) and the Patent Law Treaty (PLT) have provisions regarding Incorporation by Reference. Rule 20.6 of the PCT Rules specifies that if the applicant omits certain parts or elements when filing an international application and those parts or elements are fully included in the relevant prior application, the applicant is allowed to add the omitted parts or elements to the international application through Incorporation by Reference while retaining the original international filing date.
In essence, Incorporation by Reference is a measure for remedying deficiencies of the patent application.
I. Before the New Regulations – measures for remedying deficiencies are limited
Before the new regulations come into effect, if an applicant discovers omissions in a Chinese patent application after submission and wishes to make amendments, the remedies are quite limited. In the case of a patent application filed through the Paris Convention, once certain application content (such as the description or drawings) is omitted, submitting application documents after filing would result in the modification of the Chinese filing date by the China National Intellectual Property Administration (CNIPA). It is fine that if the modified filing date is still within the 12-month priority period. Otherwise, submitting application documents after filing would directly lead to the loss of priority rights.
Regarding PCT applications, CNIPA, as the Receiving Office for the PCT applications, accepts the provisions related to Incorporation by Reference. This means that for PCT international applications submitted to CNIPA, applicants can add omitted parts or elements based on the prior application while preserving the international filing date.
However, as the Designated Office for PCT applications, CNIPA, has reserved the right to make decisions regarding Incorporation by Reference due to reservations with national laws. In other words, once a PCT international application involving Incorporation by Reference enters into the national phase in China, the applicant must make a choice regarding the added parts or elements through Incorporation by Reference: either to retain them and re-determine the international filing date or to abandon them to preserve the international filing date.
In practice, most clients for national phase applications we handled choose to retain the added parts or elements through Incorporation by Reference. This is because the omitted content is often crucial, and failing to make amendments could incur risks of insufficient disclosure of the invention. Since the date of incorporation is often more than 12 months from the priority date, re-determination of the international filing date would result in the loss of the priority right. This is a difficult decision.
II. After the New Regulations - measures for remedying deficiencies are available
The Incorporation by Reference provisions in the new regulations undoubtedly offer an effective remedy for adding omitted content in patent applications. Article 45 of the new regulations states, "If an invention or utility model patent application lacks or erroneously submits a part of the claims, description, or drawings, but the applicant has claimed a priority, the applicant may add the omitted part by citing the documents of the prior application within 2 months from the filing date or within a period specified by CNIPA. If the incorporated documents comply with the relevant regulations, the initial filing date shall be retained."
As follows you may find a summary of key points we made from the above provision for reference:
1. Applicable Application Types for Incorporation by Reference
Invention or utility model applications.
Designs are not covered.
2. Four Scenarios for Incorporation by Reference
(1) Missing elements:
Lacking claim or description documents.
(2) Missing part of the claims or description.
The application includes claim and description documents, but some parts are omitted. It's essential to note that the drawings themselves are part of the description. If there's a loss, it should be considered a missing part, not a missing element.
(3) Erroneously submitted elements.
Although claim and description documents are submitted, their content is incorrect.
(4) Erroneously submitted part of the content.
Although claim and description documents are submitted, some parts of the content are incorrect.
3. Prerequisites for Incorporation by Reference
The patent application claims a priority.
There is no distinction between the authority of the claimed priority. No matter it is a domestic or foreign priority, Incorporation by Reference can be used.
It is worth noting that the new regulations provide procedures for restoring an expired priority right, adding a priority, and correcting a priority claim. However, the "Patent Examination Guidelines" specifically points out that the provisions for Incorporation by Reference and those for priority remedies cannot be applied simultaneously. In other words, the priority right on which the Incorporation by Reference relies, cannot be a restored, added or corrected priority.
4. Time Limits for Incorporation by Reference
Initiated by the applicant: within 2 months from the filing date.
Initiated by CNIPA: within a period specified by a notification.
III. Notes for the Procedure of Incorporation by Reference
1. Submission of Certified Copies of Priority Documents and their Chinese Translations
If the priority on which the procedure of Incorporation by Reference replies, is derived from a foreign patent application, the applicant must submit certified priority document and its Chinese translation within the prescribed period. Even if Incorporation by Reference involves only part of the content, a full Chinese translation is required.
In recent years, submissions of certified priority documents have been completed through electronic exchange of priority documents in many cases and priority documents are generally not physically available. In such cases, checking and ensuring the accuracy of the translation becomes crucial. In case the added content is deemed not to be included in the prior application in the examination, it is likely that the filing date has to be re-determined, leading to the loss of priority right.
2. Payment of Additional Official Fees
If the added application files incur additional claim or description fees, the applicant should pay the corresponding official fees within 2 months from the filing date or within 1 month upon receipt of the "Notice of Payment of Fees."
IV. Exclusions of the Procedure of Incorporation by Reference
The procedure of Incorporation by Reference does not apply to divisional applications.
V. Conclusion
In summary, the procedure of Incorporation by Reference in the new regulations is good news for applicants. It not only expands the possibilities of determining the filing date but also provides an opportunity to rectify mistakes in patent applications. This procedure may also play a role in the preparation for some urgent applications.
