Rule 20.5bis PCT allows applicants to correct an erroneously filed element (description or claims) or part of the description, claims or drawings (including all drawings) contained in an international application. The EPO has notified WIPO that this provision is partially incompatible with the current legal framework under the EPC and will therefore not be fully applicable in proceedings before the EPO as receiving and designated/elected Office (Rule 20.8(a-bis) PCT and Rule 20.8(b-bis) PCT; see the Official Notice published by the International Bureau in the PCT Gazette of 30 January 2020).
Corrections accepted by the receiving Office during the international phase under either Rule 20.5bis(b) PCT or Rule 20.5bis(c) PCT – i.e. where it accorded the date of receipt of the correct application documents or a later date as the filing date of the application or shifted the initial filing date of the application to the date of receipt of the correct application documents – will be effective in proceedings before the EPO as designated/elected Office (see OJ EPO 2020, A81).
However, if the receiving Office considered the correct application documents to be incorporated by reference under Rule 20.5bis(d) PCT, i.e. without changing the filing date, this incorporation will not be effective in proceedings before the EPO as designated/elected Office. In such cases, the EPO will, on entry into the European phase, consider the filing date of the application to be the date on which the correct application documents were received (Rule 20.8(c) PCT and Rule 20.5bis(b) PCT or Rule 20.5bis(c) PCT). Furthermore, it will consider the application as filed to include the correct application documents but not the erroneously filed ones. The EPO will inform the applicant about this in a communication under Rules 20.8(c) PCT and Rule 82ter.1(c) PCT and Rule 82ter.1(d) PCT, setting a time limit of two months for reply.
Applicants interested in avoiding this procedure, namely the issuance of the communication under Rules 20.8(c) PCT and 82ter.1(c) PCT and Rule 82ter.1(d) PCT and the setting of a time limit of two months for reply, may make use of the abridged procedure. According to it, they may, within the 31-month time limit under Rule 159(1) EPC, at the time of validly requesting early processing or, at the latest, before the communication under Rules 20.8(c) and 82ter.1(c) PCT and Rule 82ter.1(d) PCT is issued:
Once the procedure described above has been finalised, a communication under Rules 161 and 162 EPC will be issued, and the applicant may amend the application within the scope of the disclosure on the filing date as determined in this procedure.
As a consequence of the procedure described above, it may happen that the application documents as originally filed differ from those that formed the basis for the search in the international phase. If the EPO acted as International Searching Authority, the examiner has to check carefully whether the invention forming the basis for the European phase was covered by a search in the international phase. If this is not the case, an invitation under Rule 164(2) EPC will be issued (see C-III, 2.3).
If the subject-matter forming the basis for European phase processing is covered by the international search report, then examination continues as usual but taking into account that the potential change of the filing date might have an impact on intermediary documents cited in the international search report and that the priority might not be valid anymore.
For more details and examples, see OJ EPO 2020, A81.