Introduction to Incorporation by Reference
According to the PCT Regulations, if any elements or parts are missing when an applicant files an international application, they may be incorporated by reference from a corresponding earlier application and the original filing date may be retained. "Elements" in this case refer to any description or claims, while "parts" pertain to part of the description, part of claims, or all or part of drawings.
Regulations on Incorporation by Reference in China
The Chinese National Intellectual Property Administration (CNIPA), as a receiving office, can accept incorporation by reference. However, as a designated office, CNIPA makes a reservation on the provisions of the PCT Regulations. This means that when a PCT application enters the Chinese national phase, if the original filing date has been retained through incorporation of missing elements or parts from an earlier application, CNIPA will not approve it.
In particular, according to requirements laid out in the Chinese Guidelines for Patent Examination 2010 for documents containing elements or parts that have been incorporated by reference: 1) If the applicant indicates this in their entering statement and requests to amend their filing date in China, then these elements and parts will be retained; however, if the filing date exceeds twelve months from priority date due to redetermination of its filing date, then a Notification Claiming Priority Not Having Been Made will be issued regarding said priority claim; 2) If the applicant does not indicate or request amending their filing date in China, then these elements and parts are not permitted to be retained in their documents and they cannot request retaining them through subsequent procedures.
Trade-offs of Incorporation by Reference upon Entering Chinese National Phase
Given these requirements in China, applicants must determine whether elements and parts incorporated by reference should be retained upon entry into its national phase. To better understand how to make this decision, we offer the following suggestions.
If the exclusion of elements or parts incorporated by reference will not affect the integrity of the application documents, then the applicant may consider leaving them out. For example, if tables describing data of effects achieved by examples have been embodied in other formats, such as figures of description, leaving out these tables would not have a negative effect on the patentability of this patent.
Conversely, if exclusion of elements or parts incorporated by reference will affect the integrity of application documents, then the applicant should consider whether to keep these elements or parts when entering the national phase. For instance, supposing that parts incorporated by reference are tables illustrating data of effects achieved by examples and that present invention effects are only embodied in these tables. In this case, leaving them out would noticeably affect the integrity of the application documents. To assist with selection, we offer two suggestions for reference:
- When the filing date is determined by incorporation by reference and has no effect on priority: keep these parts to ensure integrity as it would not hurt patentability due to priority being preserved;
- When filing date is determined by incorporation by reference and results in loss of priority: if retained upon entering Chinese national phase, then the application cannot enjoy priority, which could adversely or substantially influence patentability; if excluded upon entering Chinese national phase, then there may be a lack of proof for invention’s effect and it may impact application’s integrity and thus also its patentability. In this case, it could be beneficial to try and file data showing effects as supplementary experiments when responding to office action; however there is no guarantee that this will be accepted by the examiner. For this case, the applicant should consider which selection is more beneficial for the invention, even for saving cost, the applicant may consider abandoning entering Chinese national phase.
To summarize, it is best to avoid incorporating by reference when filing a PCT application for Chinese national phase entry.