Incorporation by reference in a PCT application?

A member of the PCT listserv recently posted a question in that listserv:

Hello everyone.

Are there any nuances or limitations to incorporating the content of a provisional application by reference in a PCT application (other than, I believe, including such statement in the request and the requirement that the application disclosure to be incorporated is a valid priority application)?  The goal is to preserve the less important disclosure of a somewhat lengthy provisional application for use later on, if needed, even possibly after filing national applications.  I plan to trim much of the provisional app disclosure in the PCT application to save costs.

Also, are there time limits or deadlines to actually add the material to the current application from the previous application that was incorporated by reference?  I am sure this is country specific.  But, any general input would be appreciated.

The general answer is “don’t try to incorporate by reference in a PCT application”.  

There are 152 contracting states to the PCT.  Each patent office in which a PCT applicant might seek protection has its own law and rules regarding the extent (if at all) to which a statement of incorporation by reference (IBR) may be employed.  For a practitioner who is considering attempting to use IBR, the first advice is to check with competent counsel in each place where the applicant plans to attempt to obtain patent protection.

One place where an applicant might pursue patent protection is the Canadian Intellectual Property Office.  Alert listserv member Miriam Paton posted a very helpful comment:

Subsection 81(1) of the Patent Rules in Canada does not permit statements in the description that incorporate by reference other documents.

After the PCT application enters the national phase in Canada, the statement incorporating the provisional application by reference must be deleted from the description.

If Canada is a target country of interest, you should consider whether the PCT application without the statement of incorporation by reference has the description you need.

Another concern in Canada is section 84 of the Patent Rules, which requires:

The claims shall be clear and concise and shall be fully supported by the description independently of any document referred to in the description.

Another place where an applicant might pursue patent protection is the European Patent Office.  Alert listserv member Jim Boff posted a very helpful comment:

This is not possible in Europe.  In Europe the scope of “incorporation by reference” is very narrow and fraught with risk.  A generalized statement that the matter is “incorporated by reference” is of no use whatsoever.  You cannot file a divisional to matter that is in the provisional and not in the PCT application as filed.

Indeed, the majority of patent offices around the world do not permit the use of IBR.  This is why the general answer is “don’t try to incorporate by reference in a PCT application”.

There is a very narrow and specific type of IBR that can be used in PCT applications, which I call “PCT rule-based IBR”.   You can read about this in PCT Rule 4.18 and in the PCT Applicant’s Guide.  This rule-based IBR does not permit the applicant to generally bring in subject matter from other documents.  This rule-based IBR only permits subject matter to be brought in under particular extremely narrow circumstances.

The rule-based IBR works only if certain “magic words” were contained in the PCT application on the day it was filed.

The rule-based IBR works only if the applicant screwed up by omitting (for example) an element or part of the application.  And it works only if the omitted element or part can be found somewhere in the priority application.  Saying this differently, one can incorporate by reference only from the priority application, and not from other documents.  What’s more, one cannot incorporate any desired portion of the priority application into the priority application, but can only incorporate the element or part that was omitted in the PCT application.

The interested reader should study the Applicant’s Guide discussion of IBR to fully appreciate how it works.  As one example of how the IBR might not offer nearly as much benefit as one might think, while the IBR might help if the applicant omitted one figure among several, the IBR mechanism is not available in the case where the the applicant filed the wrong figures.

One might be tempted, when drafting a PCT application, to intentionally omit certain subject matter from the body of the PCT application, and to place that subject matter into a priority document, with a plan of using IBR.  One motive for doing this might be to avoid excess-page fees that would otherwise be incurred in the filing of the PCT application.  As may be seen from the above discussion, the practitioner that wishes to draft the PCT application in such a way as to maximize its prospects in many Offices around the world will avoid any attempt to rely upon IBR.