5.13.7.Incorporation by reference of a correct element or part under Rule 20.5bis(d) PCT 

5.13.026Since 1 July 2020, Rule 20.5bis(d) PCT has allowed applicants filing an erroneous element or part of an international application to incorporate the correct element or part by reference, provided it is completely contained in a priority application validly claimed on the date of filing. The initially accorded international filing date is then maintained, and the international application therefore contains both the erroneously filed application documents and the correct application documents. On 1 November 2022, a new Rule 56a EPC entered into force, bringing the EPC into line with Rule 20.5bis PCT by allowing erroneously filed application documents to be corrected without shifting the filing date. Following the entry into force of Rule 56a EPC, the EPO in its capacity as receiving Office and designated/elected Office withdrew its notification of incompatibility with Rule 20.5bis(a)(ii) PCT and Rule 20.5bis(d) PCT with effect from 1 November 2022. As a consequence, this PCT provision is now fully applicable at the EPO for international applications filed on or after 1 November 2022. If the receiving Office has granted a request for incorporation by reference under Rule 20.5bis(d) PCT, this incorporation is effective in proceedings before the EPO as designated/elected Office.

5.13.027For international applications filed prior to 1 November 2022, the notification of incompatibility remains applicable. Therefore, any incorporations by reference allowed by the receiving Office under Rule 20.5bis(d) PCT, i.e. without changing the filing date, are not effective in proceedings before the EPO as designated/elected Office. In such cases, the EPO establishes the filing date and the application documents on which processing in those proceedings will be based in accordance with the following special procedure.

The EPO will consider the filing date of the international application to be the date on which the correct element or part was received and the application as filed to include only the correct application documents. The EPO will inform the applicant accordingly in a communication under Rule 20.8(c) PCT and Rule 82ter.1(c) PCT and Rule 82ter.1(d) PCT. Within two months of notification of the communication, the applicant may request that the correct application documents be disregarded under Rule 82ter.1(d) PCT. The proceedings before the EPO as designated or elected Office will then be based on the original (erroneous) application documents, and the initial filing date will be maintained. The EPO will issue an interlocutory decision, confirming the initial filing date and informing the applicant that the correct application documents will be disregarded. In order to save time, applicants can abridge the procedure by clearly indicating on entry into the European phase whether they wish the erroneously filed application documents or the correct ones to be taken as the basis for the rest of the proceedings before the EPO as designated or elected Office. In such cases, the communication under Rule 20.8(c) PCT and Rule 82ter.1(c) PCT and Rule 82ter.1(d) PCT will not be issued. Instead, the EPO will immediately send confirmation that the further proceedings will be based on the chosen application documents and inform the applicant of the date of filing which applies as a result.

5.13.028If the correct element or part was furnished by the applicant in the international phase with the purpose of correcting the international application and no incorporation by reference was requested, the decision of the receiving Office to allow such correction will also be effective in proceedings before the EPO as designated/elected Office. The international filing date in such cases will be either the date on which all requirements under Article 11 PCT were met (if no international filing date could be accorded before receipt of the correct element or part) or the date on which the correct element or part was received by the receiving Office.