WIPO Journal - World Intellectual Property Organization

Filing date requirements under the Patent Cooperation Treaty 175
PLT art.3(1) specifies the applications and patents to which the PLT applies: “national and regional
applications for patents for invention and for patents of addition”. The terms “national and regional
applications for patents for invention” and “applications for patents of addition” are to be construed in
the same sense as these terms in PCT art.2(i). 8 Under PLT art.3(1)(a)(i), the PLT also applies to those
types of applications for patents for invention and for patents of addition, which can be filed as international
applications under the PCT. 9
PLT art.3(1)(b) applies to contracting parties which are also party to the PCT. The phrase “Subject to
the provisions of the Patent Cooperation Treaty” is included in PLT art.3(1)(b) to ensure that the provisions
of the PCT continue to apply to international applications in the “national phase”. For example, a filing
date accorded to an international application under PCT art.11(2)(b) 10 cannot be challenged by the applicant,
once that application has entered the national phase, on the grounds that the application would be entitled
to an earlier filing date under PLT art.5(1)(a). 11
The purpose of PLT art.6(1) is to apply, to the extent possible, the requirements relating to the form or
contents of international applications under the PCT to national and regional applications. 12 It is implicit
that the expression “form or contents of an application” in PLT art.6(1) is to be construed in the same
manner as the expression in PCT art.27(1) stating that no national law may require compliance with
requirements relating to the “form or contents of the international application” different from or additional
to those which are provided for in the PCT and its Regulations. 13
PLT art.6(1)(i) prohibits a contracting party from imposing requirements in respect of the form or
contents of a national or regional application that are stricter than those applicable to international
applications under the PCT. 14 In addition, PLT art.6(1)(i) permits a contracting party to require that a
national or regional application complies with any requirements relating to the “form or contents” that
any PCT contracting state is allowed to apply after entry of the international application in the “national
phase”. 15
In preparation for the Diplomatic Conference for the Adoption of the PLT, the International Bureau
investigated how future changes to the PCT could be incorporated by reference in the PLT. This principle,
which was not explicitly incorporated into the provisions of the Basic Proposal of the PLT, 16 is implicitly
assumed in order to make the interface between the PLT and the PCT viable over time. The International
Bureau could not identify any identical or analogous provisions in other international treaties. 17
8 “Explanatory Notes on the Patent Law Treaty and Regulations under the Patent Law Treaty Adopted by the Diplomatic Conference on June 1,
2000” (prepared by the International Bureau), Diplomatic Conference for the Adoption of the PLT, Document PT/DC/48 Prov. (November 2000),
Note 16.01, at http://www.wipo.int/meetings/en/details.jsp?meeting_id=4057 [Accessed March 29, 2011].
9 “Explanatory Notes on the Patent Law Treaty and Regulations under the Patent Law Treaty”, Document PT/DC/48 Prov., 2000, Note 3.04.
10 PCT art.11(2)(b) refers to the situation where the receiving office did accord a later international filing date due to the applicant’s compliance
with an invitation from the receiving office stating that he did not fulfil the requirements of PCT art.11(1), e.g. because of the late filing of at least one
claim.
11 “Explanatory Notes on the Patent Law Treaty and Regulations under the Patent Law Treaty”, Document PT/DC/48 Prov., 2000, Note 3.07.
12 “Explanatory Notes on the Patent Law Treaty and Regulations under the Patent Law Treaty”, Document PT/DC/48 Prov., 2000, Note 6.01.
13 “Explanatory Notes on the Patent Law Treaty and Regulations under the Patent Law Treaty”, Document PT/DC/48 Prov., 2000, Note 6.02.
14 “Explanatory Notes on the Patent Law Treaty and Regulations under the Patent Law Treaty”, Document PT/DC/48 Prov., 2000, Note 6.06.
15 “Explanatory Notes on the Patent Law Treaty and Regulations under the Patent Law Treaty”, Document PT/DC/48 Prov., 2000, Note 6.07.
16 “Basic Proposal for the Patent Law Treaty” (submitted by the Director General of WIPO), Diplomatic Conference for the Adoption of the PLT,
Document PT/DC/3 (November 1999), at http://www.wipo.int/meetings/en/details.jsp?meeting_id=4057 [Accessed March 29, 2011].
17 “Results of the 28th (16th Extraordinary) Session of the PCT Assembly, March 13–17, 2000; Issues for Possible Discussion at the Diplomatic
Conference” (prepared by the International Bureau), Diplomatic Conference for the Adoption of the PLT, Document PT/DC/6 (April 2000), Item 14,
at http://www.wipo.int/meetings/en/details.jsp?meeting_id=4057 [Accessed March 29, 2011].
An example of such “incorporation by reference” in the field of intellectual property is found in PCT art.62(3), which states that the “provisions of
Article 24 of the Stockholm Act of the Paris Convention” apply to the PCT. This appears to cause no problem because membership to the PCT is, in
principle, limited to countries party to the Paris Convention (cf. PCT art.62(1) and Paris Convention art.1(1)). Another example is that art.2.1 of the
TRIPS Agreement incorporates by reference arts 1 through 12 and 19 of the Paris Convention (1967) (Stockholm Act). However, the TRIPS Agreement
does not incorporate future changes to the Paris Convention. Additional examples can be found in: “Results of the 28th (16th Extraordinary) Session
of the PCT Assembly, March 13–17, 2000; Issues for Possible Discussion at the Diplomatic Conference”, Document PT/DC/6 (April 2000), Item 14.
(2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited