WIPO Journal - World Intellectual Property Organization

— 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