WIPO Journal - World Intellectual Property Organization

180 The WIPO Journal
application). However, the definition in PCT r.20.1(b) does not address the situation “allowing the applicant
to be contacted” as prescribed in PLT art.5(1)(ii). This relates to situations where, for example, only the
name and address of the patent attorney of the applicant and/or only the address or fax number of the
attorney are known. The receiving office contacting the attorney and through him the applicant is not
encompassed in the definition of PCT r.20.1(b). PCT r.20.1(b) could easily be adapted so as to bring it
into alignment with PLT art.5(1)(ii). 37
Description
The requirement under PCT art.11(1)(iii)(d) (“description”) is in alignment with that under PLT art.5(1)(iii).
Claims
The requirement under PCT art.11(1)(iii)(e) (“claim or claims”) is different from that under PLT art.5(1).
For the accordance of a date of filing under the PLT, it is not permitted to require that the application
contains one or more claims. 38
As mentioned earlier, the PCT cannot become a “contracting party” to the PLT, so there is no obligation
to comply with the requirements of the PLT. However, attempts were undertaken in the Working Group
on the Reform of the PCT to align the PCT with the PLT with respect to the compulsory presence of
claims as prescribed in PCT art.11(1)(iii)(e). In particular, the Working Group on Reform of the PCT
indicated that it would be prepared to consider other ways of dealing with international applications having
no claims pending revision of the PCT articles. 39
A way to circumvent the requirement of PCT art.11(1)(iii)(e) is to regard claims as a “legal fiction”. 40
A proposal to this effect, prepared in great detail by the International Bureau, included the introduction
of a suitably-worded pre-printed statement to be included in the request form (PCT/RO/101) as well as
the presence of “claim-like” wording in the description. To this end a new item would be added to PCT
r.20.4, 41 worded as follows:
“For the purposes of Article 11(1)(iii)(e), it shall be sufficient that there is wording in any part of the
international application which makes it clear what is the matter for which protection is sought.”
This “claim-like” wording would be sufficient to constitute “a part which on the face of it appears to be
a claim or claims” and, hence, support the accordance of an international filing date. It should be noted
that PCT art.11(1)(iii)(e) does not prescribe where the part that appears to be a claim is to be included in
the international application and, in addition, does not require that the claims be expressly identified as
such. Where compliance with PCT art.11(1)(iii)(e) relies solely on either of these two possibilities, the
international application would be considered to contain a formal defect under PCT art.14, which can be
remedied by the furnishing of “formal” claims as a correction under PCT r.26. 42 The later furnishing of
claims would be consistent with PLT art.6(1)(i).
37 “Changes Related to the Patent Law Treaty (PLT): Other PLT-Related Changes” (prepared by the International Bureau), Working Group on
Reform of the PCT, Document PCT/R/WG/2/6 (2002), Item 21, at http://www.wipo.int/meetings/en/details.jsp?meeting_id=4554 [Accessed March
29, 2011].
38 “Explanatory Notes on the Patent Law Treaty and Regulations”, Document PT/DC/48 Prov., 2000, Note 5.02.
39 “Summary of the Session — Changes Related to the PLT” (prepared by the chair), Document PCT/R/WG/1/9, 2002, Item 26.
40 “Changes Related to the Patent Law Treaty (PLT): Absence of ‘Formal’ Claims” (prepared by the International Bureau), Working Group on
Reform of the PCT, Document PCT/R/WG/2/8 (March 2002), at http://www.wipo.int/meetings/en/details.jsp?meeting_id=4554 [Accessed March 29,
2011].
41 After the reform of the PCT in view of the PLT (April 2007), such an item would have been included in PCT r.20.1.
42 “Changes Related to the Patent Law Treaty (PLT): Absence of ‘Formal’ Claims” (prepared by the International Bureau), Working Group on
Reform of the PCT, Document PCT/R/WG/2/8, 2002, Items 3–4.
(2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited