WIPO Journal - World Intellectual Property Organization

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186 The <strong>WIPO</strong> <strong>Journal</strong> Generally, the “priority period” is 12 months from the filing date of the earlier application from which priority is claimed. 63 If the corrected international filing date falls outside this 12-month period but within a period of two months after the expiration of the priority period of the claim concerned, the applicant may file a request for restoration of right of priority at the receiving office under the applicable condition (PCT r.26bis.3). 64 Filing missing parts without re-dating—incorporation by reference Under certain circumstances, missing parts of the description or missing drawings can be added to an international application without affecting the international filing date. In line with PLT art.5(6) and r.2(4), this is possible when the missing parts of the description or the missing drawings are “completely contained” in an earlier application from which priority is claimed on the initial filing date. As a first step the applicant must declare, upon filing the international application containing at least some of the elements referred to in PCT art.11(1)(iii) and while claiming priority from an earlier application, that he reserves the right to later on rely on parts or elements which are completely contained in the priority application. To this end Box No.VI “Priority Claim” of the request form (PCT/RO/101) includes a pre-printed statement, stating: “Incorporation by reference: where an element of the international application referred to in Article 11(1)(iii)(d) or (e) or a part of the description, claims or drawings referred to in Rule 20.5(a) is not otherwise contained in this international application but is completely contained in an earlier application whose priority is claimed on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, that element or part is, subject to confirmation under Rule 20.6, incorporated by reference in this international application for the purposes of Rule 20.6”. 65 The formulation of this statement is based on PCT r.4.18 and is formulated in line with PLT art.5(6)(b) and r.2(4)(5). The priority claim must have been included in the request on the initial filing date and cannot be added later on, for example, by applying PCT r.26bis.1(a). 66 The latter requirement is in line with PLT art.5(6). If the applicant files a missing part of the description or a missing drawing based on the content of the application from which priority is claimed on the initial filing date, the following requirements must be met (cf. PCT r.20.6(a)): • The applicant must confirm the incorporation by reference by way of a written notice to the receiving office. • Such notice should be accompanied by: — a sheet or sheets embodying the missing part as contained in the application from which priority is claimed; — where the applicant has not already complied with the requirements of PCT r.17.1(a), (b) or (b-bis), 67 a copy of the priority application as filed; 63 cf. PCT art.8(2) referring to art.4 of the Paris Convention. Article 4A(1) and 4C(1) of the Paris Convention regulate a right of priority of 12 months for patents and utility models. 64 A number of receiving offices have declared that PCT r.26bis.3 is not compatible with the national law applied by the receiving office (PCT r.26bis.3(j)). For these offices, restoration of the right of priority is not possible. In addition, a number of designated/elected offices has declared that restoration of the right of priority is not compatible with the national law as applied by the designated/elected office (PCT r.49ter.1(g)). 65 If such a statement was not contained in the request at the time of filing, it can only be added to the request if it was otherwise contained in, or submitted with, the international application on the date of filing (cf. PCT r.4.18, last sentence). 66 See the PCT Applicant’s Guide — International Phase, 2011, Item 6.028, at http://www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf [Accessed March 29, 2011]. 67 PCT r.17.1(a) relates to the case where a certified copy of the earlier application has been submitted by the applicant to the International Bureau or the receiving office (unless it has already been filed with the receiving office together with the international application). (2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited
— where the priority application is not in a language in which the international application is filed (PCT r.20.6(a)(iii)), a translation or translations of the priority application; and — an indication as to where the missing part is contained in the priority application and, where applicable, in any translation of the earlier application. It seems superfluous that upon filing missing parts of the description or missing drawings, the applicant should confirm the incorporation by reference statement under PCT r.4.18. The relevance of the formal confirmation of the “incorporation by reference” was extensively discussed in the Working Group on Reform of the PCT. 68 The start of the two-month time-limit for confirming the incorporation by reference of missing parts of the description or missing drawings differs depending on the situation. Where no invitation by the receiving office has been sent to submit missing parts, the time-limit to confirm is two months from the date on which papers were first received by the receiving office (PCT r.20.7(a)(ii)). Where such an invitation has been issued, the time-limit to confirm is two months from the date of mailing of this invitation (PCT r.20.7(a)(i)). 69 Where the receiving office finds that the requirements of PCT r.4.18 and PCT r.20.6(a) have been complied with and that the missing part of the description or the missing drawing is completely contained in the priority application, that part is considered to have been contained in the purported international application on the initial filing date. The procedure of incorporation by reference does not apply if the receiving office has notified the International Bureau under PCT r.20.8(a) that any of r.20.3(a)(ii) and 20.3(b)(ii), 20.5(a)(ii) and 20.5(a)(d), and 20.6 are not compatible with its national law. 70 In most contracting states, the parts will be treated as if they were actually contained in the international application as originally filed. 71 However, those designated/elected offices which have submitted notifications of incompatibility under PCT r.20.8(b), may treat the international application as if the international filing date had been accorded on the basis of the date on which the sheets containing the missing parts were submitted (PCT r.20.8(c)). 72 Missing part of the claims—PLT article 5(6) Filing date requirements under the Patent Cooperation Treaty 187 PLT art.5(6) does not address the issue of allowing the inclusion, in the application, of a missing part of the claims filed within a prescribed time-limit. The reason for this is that claims are not a filing date requirement according to the PLT. PCT r.17.1(b) relates to the case where the priority document is issued by the receiving office and the applicant has requested the receiving office to transmit the priority document to the International Bureau. PCT r.17.1(b-bis) relates to the case where the priority document is available to either the International Bureau or to the receiving office from a digital library and the applicant has requested to obtain the priority document from such a digital library. 68 “Summary of the Session—‘Missing Part’ Requirements” (prepared by the International Bureau), Working Group on Reform of the PCT, Document PCT/R/WG/5/13 (2003), Item 88, at http://www.wipo.int/meetings/en/details.jsp?meeting_id=4554 [Accessed March 29, 2011]. The outcome of the discussion in the Working Group on Reform of the PCT was that “incorporation by reference” is not to be regarded as a standard feature applicable to all international applications but that express confirmation by the applicant would be required if the applicant wanted to rely on this instrument to correct a mistake made when filing the application. In other words, the content of prior applications is not automatically incorporated by reference into the international application; rather an express confirmation is required by the applicant in each and every case. 69 If this time-limit expires after the expiration of 12 months from the filing date of the earliest application, the priority of which is claimed, the receiving office will draw this circumstance to the attention of the applicant. PCT Applicant’s Guide — International Phase, 2011, Item 6.029, at http: //www.wipo.int/pct/en/appguide/index.jsp [Accessed March 29, 2011]. 70 Such a receiving office will neither invite nor accept a confirmation of the incorporation by reference. 71 Designated and elected offices may, to a limited extent, review decisions by receiving offices which have allowed incorporation by reference (PCT r.82ter.1(b)). 72 Missing parts may be omitted only after having given the applicant the opportunity to make observations on this outcome and/or to request that, at least, the missing parts which had been furnished be disregarded (PCT r.20.8(c)). (2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited
Page 1 and 2: THE WIPO JOURNAL: ANALYSIS OF INTEL
Page 3 and 4: The WIPO Journal Table of Contents
Page 5 and 6: The Juridification of Indigenous Kn
Page 7 and 8: Indigenous knowledge systems and ex
Page 9 and 10: One of the unresolved issues was wh
Page 11 and 12: The Juridification of Indigenous Kn
Page 13 and 14: Registration of traditional knowled
Page 15 and 16: ight to equitable remuneration and
Page 17 and 18: Asia and America where it is sold c
Page 19 and 20: The Economic Effects of Geographica
Page 23 and 24: minimum quality standards for regio
Page 25 and 26: Belletti et al. used a case-study a
Page 31 and 32: Sensitivity analysis As shown in Ta
Page 33 and 34: the domestic perspective. This addi
Page 35 and 36: Filing date requirements under the
Page 39 and 40: • while some provisions of the PL
Page 41 and 42: If an applicant files the internati
Page 43 and 44: However, it was noted in the Workin
Page 47: Before the Reform of the PCT in vie
Page 53 and 54: “Bending” of PCT articles in th
Page 57 and 58: Not introducing the PLT requirement
Page 59 and 60: on the future direction of global I
Page 61 and 62: IP in Global Governance: A Venture
Page 63 and 64: negotiated. 28 Similarly, the WIPO
Page 65 and 66: IP overreach: The dangers of a boom
Page 67 and 68: As part of the social cost or the
Page 73 and 74: “geographical, historical and reg
Page 75 and 76: facilitated the integration of the
Page 79 and 80: Competition Law and IP Abuse Preven
Page 81 and 82: Although the TRIPS Agreement has be
Page 83 and 84: vertical licensing agreements; and
Page 85 and 86: “• the refusal relates to a pro
Page 87 and 88: Nevertheless, so far as s.51(1) is
Page 89 and 90: “In bridging the different polici
Page 91 and 92: a third party’s access to their I
Page 93 and 94: Competition Law and IP Abuse Preven
Page 95 and 96: should further take into account
Page 97 and 98: Cumulative Index This index has bee
Page 99 and 100:
Parallel imports economics and law,
Page 101:
*412409* 2011 VOLUME 2 ISSUE 2 THE
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WIPO Journal - World Intellectual Property Organization

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