WIPO Journal - World Intellectual Property Organization

However, it was noted in the Working Group on Reform of the PCT that some of the proposed
amendments raised difficulties of possible inconsistency, to varying degrees, with the PCT articles—in
particular, in providing for the according of a filing date where no claims were present in an international
application. 43
Filing date requirement—PCT v PLT
Filing date requirements under the Patent Cooperation Treaty 181
The differences between the filing date requirements under the PCT as compared to the PLT cause friction.
If a state becomes a contracting party to the PLT, this state is obliged to accord a filing date to an application
which complies with the requirements applicable under PLT art.5. 44 No re-dating of the application will
be effected if the applicant supplies a set of claims within some time after the filing date, either of his own
volition or upon invitation by the office where the application was filed (cf. PLT r.2). Where an application
as filed does not contain one or more claims, which may be required under PLT art.6(1)(i) (with reference
to PCT art.3(2)), a PLT contracting party may require that at least one claim be subsequently filed under
PLT art.6(7), within the time-limit prescribed in PLT r.6(1). However, failure to file such claim(s) within
the prescribed time-limit would not result in the retroactive loss of the filing date, even if the application
were refused under PLT art.6(8)(a). 45
Suppose an applicant files an international application with the intention of, at a later date, entering the
national phase before the national office of that state. If his application, on filing, does not contain at least
one claim, no international filing date will be accorded by the receiving office acting under the PCT (PCT
art.11(1)(iii)(e)). The receiving office (which may be the national office of the PLT contracting party)
will invite the applicant to file at least one claim (PCT art.11(2)(a) and r.20.3(a)). If the applicant complies
with the invitation, the receiving office accords as the international filing date, the date of receipt of the
required correction (PCT art.11(2)(b) and r.20.3(b)). The question arises: will the national office of the
PLT contracting party, after entry of the international application into its national phase, accept the initial
filing date (when claims were not included) or the international filing date (when claims were received
by the receiving office)? The answer is that only the international filing date can be accepted as the filing
date under the national law of the state.
If, under the provisions of the PCT, the applicant upon invitation by the receiving office or of his own
volition does not file at least one claim, his international application will not be refused. Instead, the
receiving office will promptly notify the applicant that the application is not and will not be treated as an
international application (PCT r.20.4(i)). 46 As no international filing date will be accorded to the application,
this also implies that the international application will not have the effect of a regular national application
(PCT art.11(3)) and that no priority can be claimed from it (PCT art.11(4)).
Filing by reference to a previously filed application—PLT article 5(7)
As described above, PLT art.5(7) obliges a contracting party to accept, at the time of filing, the replacement
of the description and any drawings in an application by a reference to a previously filed application, 47
subject to certain formal requirements.
43 “Summary of the Session — Changes Related to the PLT” (prepared by the chair), Document PCT/R/WG/1/9, 2002, Item 21(iii); “Summary of
the Session — Other Matters” (prepared by the chair), Document PCT/R/WG/2/12, Item 59, at http://www.wipo.int/meetings/en/details.jsp?meeting
_id=4554 [Accessed March 29, 2011].
44 “Explanatory Notes on the Patent Law Treaty and Regulations”, Document PT/DC/48 Prov., 2000, Note 5.01.
45 “Explanatory Notes on the Patent Law Treaty and Regulations”, Document PT/DC/48 Prov., 2000, Note 5.01.
46 However, not all is lost in such a case. Pursuant to PCT art.26 the applicant would stand a good chance of proceeding with this application as a
“national” application with the original filing date if the national Office does not require a claim as a filing date requirement under its national law.
47 Note that a “previously filed application” need not be an application from which priority is claimed. Hence the previously filed application may
have been filed more than 12 months prior to the filing date of the international application.
(2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited