Filing informal drawings in a PCT application

In ordinary domestic US utility patent practice, every practitioner is accustomed to the fact that you can get away with filing your patent application with informal drawings. And later when you get around to it, you can prepare formal drawings and file them in your application and it will almost never be a problem.

As I discuss at some length in this blog post, it is the exact opposite situation with PCT applications. The general rule is that if you try to hand in formal drawings after filing day in a PCT application, you will not succeed.

What should practitioners keep in mind about formal and informal drawings so far as PCT applications are concerned?

The first takeaway from this blog article is, file your PCT application with formal drawings. Do not file your PCT application with informal drawings.

The second takeaway is, if you somehow cannot manage to get formal drawings prepared in time for the filing of your PCT application, do not expect that you can hand in the formal drawings after filing day and accomplish anything with that filing.

The third is, if you file informal drawings at RO/US, you will likely receive a scary letter from the USPTO (Form PCT/RO/106, annex C) telling you that your drawings do not admit of “reasonably uniform international publication” and warning you that failure to correct the defect “will result in this international application being considered withdrawn by this receiving Office.” In this blog article I discuss what one might do in response to this scary letter.

So now a reminder of how we got here. How we got here is that most US practitioners are lulled into laziness about formal drawings because in domestic utility patent practice, there is almost never any penalty or problem that follows from failing to hand in formal drawings on filing day. You hand in informal drawings to the USPTO, and days, weeks, perhaps months later, when you are good and ready, you hand in your formal drawings. When the time comes for the Examiner to mail a first Office Action, the Examiner (who is technically trained in the relevant technology) decides whether the formal drawings do or do not constitute new matter. Assuming that the Examiner finds no problem with the formal drawings, they remain in the application and the patent issues with such drawings.

So far as US practice is concerned, yes the 18-month pub might use the informal drawings, but this is not particularly embarrassing because most people do not pay much attention to the 18-month pub from the USPTO. Even if the 18-month pub got published with the informal drawings, this perhaps mildly embarrassing event will not propagate through to any later event nor will it propagate through to any other patent office.

So what we face is a body of US patent practitioners, tens of thousands of them, who have spent their entire professional lives being able to be lazy about finalizing drawings and being able to postpone the pesky business of formal drawings until long after the patent application has been filed.

But not in the world of PCT.

Suppose you file a PCT application with informal drawings, and suppose a week or two later you hand in formal drawings. (The place where you filed the PCT application was the Receiving Office, so probably you might guess that the place to send the formal drawings is that Receiving Office.) If you are one of these tens of thousands of lazy US patent practitioners, you might sort of assume that what would happen next is that the PCT application would move forward with the formal drawings.

But a moment’s thought will prompt some realization as to why this is not a reasonable expectation. First, consider that by definition a Receiving Office is populated by people trained only to review matters as to form. The RO people are trained to count the pages and to see whether they are on paper of the correct dimensions. The RO people are trained to count up how much money they think you need to pay and to compare that with the amount of money you actually paid. The RO people are trained to check the details of the bibliographic data in the Request to see whether (for example) there is at least one named applicant that is either a resident or a citizen of a contracting State.

But in the PCT system, nobody in the RO is expected to be technically trained in whatever technical field relates to the subject matter of the PCT application. It is not the RO, after all, that is responsible in the PCT process for figuring out whether your invention is novel or has an inventive step.

If a line that was curved in the informal drawings is changed to a straight line in the formal drawings, there is no one in the RO who is in a position to stick their neck out and take the position that this does or does not introduce new matter into the patent application. If a shape was a sort of irregular oval in the informal drawings and is changed to a circle in the formal drawings, there is no one in the RO to say that this is not new matter.

If one reflects upon the normal flow path of a PCT application through the PCT system, one will appreciate that it is only much later in the process (after the application has passed from the RO to the ISA) that the application will reach the desk of a person who is technically trained in the relevant scientific or engineering discipline. Only at this much later time is the application on the desk of a person who would be able to evaluate whether a proposed drawing amendment does or does not add new matter.

When one appreciates this fact about the difference in the type of training that one may expect in ISA personnel on the one hand and RO personnel on the other hand, then one can understand why it is a waste of time trying to get the RO to agree to enter formal drawings into a PCT application that was filed with informal drawings.

For the practitioner who desperately wishes to get the formal drawings entered into a PCT application prior to its 18-month publication, there is a procedure which can be pursued. The procedure is called a request under PCT Rule 91 for rectification of an obvious error. The decision whether or not to grant a request under PCT Rule 91 is made not by the RO but by the ISA. Such a request should thus be filed with the International Searching Authority and not with the Receiving Office. (Which then raises the question how do you send stuff to the ISA, and I blogged about this.)

What are the consequences of failure? What harm might follow if the practitioner fails to accomplish the goal of getting the formal drawings (filed after the PCT filing date) into the application prior to the 18-month publication?

At a minimum what follows is that the 18-month publication of the PCT application will be embarrassing, since the IB will make use of the informal drawings rather than the formal drawings in carrying out the publication.

Oh, and so let’s dispel one other thing. Maybe the US practitioner who desperately wishes to get formal drawings into the application, and who did not succeed when asking the RO for such relief, might be tempted to turn to the IB. Will the practitioner have any better luck with the IB than with the RO? No, because the IB, like the RO, has no personnel technically trained in a full range of technical disciplines so as to be able to carry out judgment calls as to whether a particular proposed drawing amendment does or does not add new matter.

When the 18-month PCT pub happens with the informal drawings, this sets in motion that the various designated/elected Offices will use those informal drawings (not any formal drawings) at the point of entry into the national or regional phase. This is not only potentially embarrassing before that Office but will also require spending money to pay foreign counsel to prepare and file an amendment seeking entry of the formal drawings. Such expenditure of money will happen in each of the many Offices where the applicant decides to pursue patent coverage from the PCT application.

There is of course one more option for trying to get the formal drawings into the case after the 18-month PCT publication (in which the informal drawings were used) and before national/regional-phase entry. That one more option is the filing of a Demand and Article 34 amendment. In the Article 34 amendment, the practitioner can present the formal drawings and request their entry into the application. The International Preliminary Examining Authority, like the ISA, has technically trained personnel who can evaluate whether or not new matter is being added. If the IPEA decides that no new matter is being added (and that other procedural requirements are met), the IPEA will include the formal drawings in “the Annexes to the International Preliminary Report on Patentability under Chapter II”. Inclusion of the formal drawings in the Annexes is the PCT equivalent of a US examiner agreeing to enter a drawing amendment. Once the formal drawings have been included in the Annexes, then this development is binding upon the designated/elected Offices. There will be no need to pay foreign counsel to prepare and file any amendment to get the formal drawings into the application at national/regional entry phase because they will already have been entered into the application by the IPEA.

At this point in the discussion it might also be instructive to point out that this problem of “what to do if a PCT application was filed with poor quality informal drawings” is pretty much only a problem with US patent practitioners. Practitioners in places other than the US (for example practitioners in Europe and Japan and Korea and China) generally file their PCT applications with formal drawings from the outset. I have spoken with people who work at the PCT Help Desk at the International Bureau (who receive telephone calls from practitioners all around the world) who tell me that the calls from practitioners who filed informal drawings and now wish that they could file formal drawings come almost exclusively from the US. And I have spoken with people who work at the PCT Help Desk at the USPTO who tell me that this category of inquiry (dealing with a US practitioner who does not understand why his or her formal drawings did not get entered into the case by the RO) is one of the two most frequent and most frustrating categories of telephone call at that help desk. (The other frustrating category is the practitioner who did not file using a ZIP file and now faces serious problems that would never have arisen if the practitioner had filed using a ZIP file.)

What remains to discuss in this blog article is, what to do about the scary letter from the Receiving Office (Form PCT/RO/106, annex C) telling you that your informal drawings do not admit of “reasonably uniform international publication” and warning you that failure to correct the defect “will result in this international application being considered withdrawn by this receiving Office”?

By way of background, the International Bureau has written about drawings in several Practical Advice columns in the PCT Newsletter:

So what can be done about the scary letter in which the Receiving Office warns you that your PCT application might be considered withdrawn because your informal drawings do not permit “reasonably uniform international publication”? We will lay out the choices.

Arguing with the Receiving Office. It will be clear from the discussion above that there is not much chance of convincing the RO to agree to entry of formal drawings. Arguing with the RO is not likely to make a difference and might only annoy the RO. (Note that some commenters below say they have had no difficulty getting RO/US to take formal drawings after filing.)

Taking your case to the ISA. Clearly one choice is to launch into a vigorous effort under PCT Rule 91 to try to convince the ISA that there are “obvious errors” in the informal drawings and that the only possible way to correct the “obvious errors” is by entry of the formal drawings. Read the rule and you will see that the standard under this rule is not simply “look to see if the formal drawings don’t add new matter”. The standard to be applied by the ISA is:

something else was intended than what appears in the document concerned (the informal drawings) and that nothing else could have been intended than the proposed rectification (entry of the formal drawings).

It is easy enough to understand why an ISA might or might not feel that in a particular case the particular proposed formal drawings might or might not satisfy this standard.

One can look through Patentscope and can see many real-life cases where US practitioners did manage to convince ISAs to permit entry of formal drawings under Rule 91. Quite often this happened not because the practitioner did this correctly (citing Rule 91) nor even because the practitioner sought relief from the correct Office (asking the ISA rather than the RO) but simply because the RO in desperation passed the practitioners’s urgent request over to the ISA, and the ISA chose to construe the urgent request (which never mentioned Rule 91) as a request under Rule 91.

(Again as mentioned above, I have blogged about how to send things to an ISA.)

Using Article 34. The clear path is Article 34. For an IPEA to grant a drawings amendment under Article 34, there is no need for the practitioner to satisfy the complicated requirements of Rule 91 (that “something else was intended” and that “nothing else could have been intended” other than the proposed amendment). Instead, for an amendment under Article 34, it is enough merely to have avoided adding new matter. This path, however, has some potential drawbacks:

this path does nothing to avert the embarrassment of the highly visible 18-month PCT publication taking place with the informal drawings, and
this path costs a lot of money because it costs a lot of money to file a Demand, and
this path might not work and even if it does work, it will have left outstanding for a very long time the uncertainty about whether or not it would work.

Ignoring the scary letter. A practitioner might simply ignore the scary letter. What are the chances that a Receiving Office really would carry out the threat? What are the chances that the RO really would feel so strongly about the poor quality of the informal drawings that it would actually consider the application withdrawn, not even transmitting the Record Copy to the International Bureau?

Maybe one cannot generalize to all Receiving Offices, but the observed behavior of the RO/US, at least, is that no matter how much it disapproves of a set of informal drawings, the RO/US does always (or nearly always) transmit the Record Copy to the IB (after carrying out the security review, of course).

The observed behavior of the IB, in turn, is that no matter what the IB might think about the informal drawings, the IB does always (or nearly always) carry out the 18-month publication of the PCT application whenever it receives a Record Copy.

Over the span of many years, I have interacted with thousands of practitioners who have handled tens of thousands of PCT applications. I have only ever heard from one US practitioner about one PCT case that actually got deemed withdrawn at the RO/US because the drawings did not admit of reasonably uniform international publication. Meanwhile I have been advised informally by USPTO people that the RO/US never ever actually deems PCT applications to be withdrawn because the drawings did not admit of “reasonably uniform international publication”. And I have heard promise after promise (informally) from USPTO people that RO/US would never actually carry out this threat in the future.

Having said all of this, what suggestion can be made to the US practitioner who has filed informal drawings, who now regrets having done so, who has received this scary letter from the RO/US, and who is unwilling to pursue a Rule 91 request, and who is willing to suffer the embarrassment of allowing the case to be published with the informal drawings (so long as the case avoids being deemed withdrawn)?

The suggestion is this. Having received the scary letter from the RO/US, the practitioner can write back to the RO/US along these lines:

The undersigned is in receipt of Form PCT/RO/106 (annex C) in which the Receiving Office puts forth the view that the drawings as filed do not admit of “reasonably uniform international publication”. The undersigned is of the view that the drawings as filed do admit of “reasonably uniform international publication”.