WIPO Journal - World Intellectual Property Organization

Filing date requirements under the Patent Cooperation Treaty 189
The result was that the PCT Regulations were amended by adopting a new r.20.6 allowing the applicant,
by way of reference to an earlier application, not only to rectify the omission, at the time of filing, of
certain parts of the international application (the so-called “incorporation by reference” of “missing parts”,
similar to the provision under PLT art.5(6)(b) and r.2(4)) without the loss of the international filing date,
but also to allow replacement of the “part which on the face of it appears to be a description” (PCT
art.11(1)(iii)(d)) and/or the “part which on the face of it appears to be a claim or claims” (PCT
art.11(1)(iii)(e)) for the purposes of the international filing date (the so-called incorporation by reference
of “missing elements”, similar to the provision under PLT art.5(7) in respect of the description and any
drawings). 74
From the definition in PCT r.20.5 (“missing parts”) it follows that a “missing part” only includes any
part of the description, any part of the claims and/or any part or all of the drawings of the international
application. The wording “missing elements” is used when the “entire” description or the “entire” set of
claims is or appears to be missing. Such an “element” is mentioned in PCT r.20.3(a)(ii) and in 20.3(b)(ii)
where it is identified as: “an element referred to in Article 11(1)(iii)(d) or (e)”. This should not be confused
with the wording: “one or more elements referred to in Article 11(1)(iii)” which is used in PCT r.20.3(b)(ii),
20.5(d), 20.6(b) and 20.7(a)(ii), because the latter definition includes all five items of PCT art.11(1)(iii)
including the description (item d) and the claims (item e). To further confuse things, in PCT r.20.5(a) and
20.6(a)(i) reference is made to (emphasis added): “an entire element referred to in Article 11(1)(iii)(d) or
(e)”, which wording probably means the same as “element” at the other occurrences. 75 Apparently, the
word “entire” has been added to emphasise the difference between a “part” of the description or claims
and the “entire” description or claims. For legal consistency, it would, however, be better to delete “entire”
from the wording “entire element” in PCT r.20.5(a) and 20.6(a)(i).
“Missing elements” can be filed by the applicant of his own volition or upon invitation when the
receiving office finds that the entire description and/or the entire set of claims are, or appear to be, missing.
Such a finding is addressed as a “defect under PCT Article 11(1)” and dealt with in PCT r.20.3 in relation
to any of the requirements of PCT art.11(1)(iii)(a)-(e) and, in particular, with respect to “an element
referred to in Article 11(1)(iii)(d) or (e)”, i.e. when the entire description and/or the entire set of claims
are missing.
If the applicant files a “missing element” 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 element 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), a copy of the priority application as filed;
— 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.
Similar to the situation of “missing parts”, the start of the two-month time-limit for confirming the
incorporation by reference of missing elements differs depending on whether the receiving office has sent
an invitation to submit missing element or whether the applicant files missing elements of his own volition.
74
“‘Missing Part’ Requirements” (prepared by the International Bureau), Working Group on Reform of the PCT, Document PCT/R/WG/6/4, 2004,
Item 12.
75
Note that the wording “entire elements” is also used in PCT r.91.1(g)(i) in relation to PCT art.3(2).
(2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited