WIPO Journal - World Intellectual Property Organization

184 The WIPO Journal
with (cf. PLT r.2(3) and (4)). 58 The PLT leaves the question whether, in a particular case, a missing part
of the description or a missing drawing is “completely contained” in the earlier application to be treated
as a clerical check by the office, based on the indications provided by the applicant. 59
The wording of PLT art.5(6)(b) is very specific with respect to the nature of the earlier application and
by when that application must be mentioned (emphasis added):
“Where the missing part of the description or the missing drawing is filed under subparagraph (a) to
rectify its omission from an application which, at the date on which one or more elements referred
to in paragraph (1)(a) were first received by the Office, claims the priority of an earlier application,
the filing date shall … be the date on which all the requirements applied by the Contracting Party
under paragraphs (1) and (2) are complied with.”
The italicised part of the above citation makes it clear that when the applicant desires to make use of the
provision of PLT art.5(6)(b) to incorporate a missing part of the description or a missing drawing into an
already filed application without loss of the filing date initially accorded by the office, the earlier application
must not only be a priority application but also that the priority of this earlier application must have been
claimed on “the date on which one or more elements” referred to in PLT art.5(1)(a) “were first received
by the Office”, i.e. on the initial filing date.
Filing missing parts of the description or missing drawings—PCT rule 20.5
The requirements as set out in PLT art.5(6) for filing missing parts of the description or missing drawings
have been taken over in PCT r.20. In particular, “missing parts” are defined in PCT r.20.5 (emphasis
added):
“Where, in determining whether the papers purporting to be an international application fulfill the
requirements of Article 11(1), the receiving Office finds that a part of the description, claims or
drawings is or appears to be missing, including the case where all of the drawings are or appear to
be missing but not including the case where an entire element referred to in Article 11(1)(iii)(d) or
(e) is or appears to be missing”.
According to the above definition a “missing part” includes any part of the description, any part of the
claims and/or any part or all of the drawings of the international application as long as it is not the “entire”
description (PCT art.11(1)(iii)(d)) or the “entire” set of claims (PCT art.11(1)(iii)(e)). As can be seen, the
definition also refers to a missing part of the claims (see section “Missing part of the claims—PCT rule
20.5” below).
Most patent laws already had a provision allowing the applicant to late file missing drawings. In the
PCT this is dealt with in PCT art.14(2):
“If the international application refers to drawings which, in fact, are not included in that application,
the receiving Office shall notify the applicant accordingly and he may furnish them within the
prescribed time limit and, if he does, the international filing date shall be the date on which the
drawings are received by the receiving Office. Otherwise, any reference to the said drawings shall
be considered nonexistent.”
58 “Explanatory Notes on the Patent Law Treaty and Regulations” , Document PT/DC/48 Prov., 2000, Note 5.21.
59 “Explanatory Notes on the Patent Law Treaty and Regulations” , Document PT/DC/48 Prov., 2000, Note R 2.04.
(2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited