WIPO Journal - World Intellectual Property Organization

188 The WIPO Journal
Missing part of the claims—PCT rule 20.5
As discussed, PCT art.11(1)(iii)(e) requires the presence of “a part which on the face of it appears to be
a claim or claims”. Hence the case may arise that a part of the claims is missing. It is for this reason that
the PCT allows the filing of a missing part of the claims. The definition in PCT r.20.5 (“missing parts”)
includes the situation where a part of the claims are missing (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 or the “entire” set of claims (see section “Missing Entire Description of Missing Entire Set of
Claims — PCT Rule 20.6” below).
Analogous to what is described in section “Filing Missing Parts of the Description or Missing
Drawings—PCT Rule 20.5” above, a missing part of the claims can be filed by the applicant of his own
volition or upon invitation, when the receiving office finds that a part of the claims is, or appears to be,
missing. The filing of a missing part of the claims normally results in a re-dating of the international filing
date (cf. PCT r.20.5(c)).
Analogous to what is described in the section “Filing Missing Parts Without Re-dating—Incorporation
by Reference”, a missing part of the claims can be added to an international application without affecting
the international filing date. This is possible when the missing part of the claims is “completely contained”
in an earlier application from which priority is claimed on the initial filing date.
Missing entire description of missing entire set of claims—PLT article 5(6)
PLT art.5(6) deals with the inclusion, in the application, of missing parts of the description and missing
drawings. However, PLT art.5(6) does not address the issue of allowing the inclusion of the entire
description and/or the entire set of claims.
Missing entire description of missing entire set of claims—PCT rule 20.6
For the purpose of according an international filing date, PCT art.11(1)(iii)(d) and (e), as discussed, require
the presence of “a part which on the face of it appears to be a description” and “a part which on the face
of it appears to be a claim or claims”, respectively. In addition, the PCT did not implement the provision
of “filing by reference” (see section “Filing by Reference to a Previously Filed Application—PCT” above).
The Working Group on Reform of the PCT considered a different approach with respect to the issue
of “filing by reference” by considering that under the PLT, an applicant can, for the purposes of the filing
date of the application, replace the description and any drawings by a reference to a previously filed
application (see PLT art.5(7) and r.2(5)). In particular, the Working Group explored the possibilities as
to whether the proposed incorporation by reference discussed in the context of “missing parts” could be
extended to cover the contents of such earlier application for the purposes of overcoming PCT
art.11(1)(iii)(d) and (e) defects; such defects are addressed as “missing elements” and refer, for example,
to the case where the entire description or all the claims is missing. 73
73 “‘Missing Part’ Requirements” (prepared by the International Bureau), Working Group on Reform of the PCT, Document PCT/R/WG/6/4, 2004,
Item 11, at http://www.wipo.int/meetings/en/details.jsp?meeting_id=4554 [Accessed March 29, 2011].
(2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited