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192 The WIPO Journal Another consequence of the abolishment of the designation fees was the introduction of PCT r.4.9 specifying an automatic and all-inclusive designation of all PCT contracting states, for all types of protection and also in respect of regional patent treaties. The introduction of this rule has more or less inactivated PCT arts 43, 44 and 45, at least insofar as the international phase is concerned. WTO priority claims A second example of an inconsistency between the PCT articles and rules is that it was desired, in view of the TRIPS Agreement, to acknowledge apart from priority claims from Paris Convention states as well as parties to the WTO. However, PCT art.8(1) is “rigid” about this: “The international application may contain a declaration, as prescribed in the PCT Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.” In addition PCT art.8(2)(a) specifically refers to the “Stockholm Act of the Paris Convention”. Flexibility was added to the Regulations, by the following addition in PCT r.4.10(a) (emphasis added): “Any declaration referred to in Article 8(1) (‘priority claim’) may claim the priority of one or more earlier applications filed either in or for any country party to the Paris Convention for the Protection of Industrial Propertyor in or for any Member of the World Trade Organization that is not party to that Convention.” Misalignments in the Regulations There are also minor “misalignments” between various rules in the Regulations under the PCT. For example, PCT r.4.5 clearly states, without any prejudice, that the indications of the applicants in the request with respect to name, address, nationality and residence must be indicated for “each of them”. Similarly, PCT r.4.15 clearly states, without any prejudice, that all applicants must sign the request. When looking at these rules, one is made to believe that “all” applicants have to comply with the prescriptions in these rules. Nevertheless, PCT r.26.2bis(b) and (a) say that (for the purpose of the formalities check by the receiving office under art.14(1)(a)) it is sufficient if one of the applicants meets the requirement of PCT r.4.5(a)(ii) and (iii), and r.4.15, respectively. 82 Such inconsistencies render the PCT user-unfriendly. Discussions in the Working Group on Reform of the PCT At the first session of the Working Group on Reform of the PCT held in 2001, proposals were discussed to amend the Regulations under the PCT so as to align the requirements of the PCT with regard to claims as a filing date requirement to those of the PLT. 83 PCT art.11(1)(iii)(e) requires that for an international filing date to be accorded, an international application shall, inter alia, contain a part which on the face of it appears to be a claim or claims whereas, under the PLT, claims are not required for a filing date to be accorded (PLT art.5(1)). The comments and concerns expressed by the various delegations included the following 84 : 82 Note, however, that any designated office may in accordance with the applicable national law require the applicant to furnish the confirmation of the international application by the signature of any applicant for the designated state who has not signed the request and/or any missing indication required under PCT r.4.5(a)(ii) and (iii) in respect of any applicant for the designated state (cf. PCT r.51bis.1(a)(vi) and (vii), respectively). 83 “Summary of the Session — Contents of the International Application; Language of the International Application and Translations; Right of Priority and Priority Claims; Time Limits” (prepared by the International Bureau), Document PCT/R/WG/1/5 (October 2001), at http://www.wipo.int /meetings/en/details.jsp?meeting_id=4446 [Accessed March 29, 2011]. 84 “Summary of the Session — Changes Related to the PLT” (prepared by the chair), Document PCT/R/WG/1/9 2002, Item 25. (2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited
Filing date requirements under the Patent Cooperation Treaty 193 • the idea of according a filing date under the PCT to an international application without claims was widely supported, but the wording of PCT art.11(1)(iii)(e) and art.58 did not support the draft rules proposed—it would be necessary to develop a proposal to revise the PCT itself; • to adopt amended PCT Regulations that were so clearly inconsistent with the PCT articles itself would jeopardise the rights of applicants; • the PCT provided no basis for adding claims before the international search took place. As a response to these concerns, the Working Group in Reform of the PCT indicated that it would be prepared to consider other ways of dealing with international applications having no claims pending revision of the PCT itself. The International Bureau indicated that it would attempt to elaborate proposals bearing in mind, in particular, the following possibilities 85 : • the PCT distinguishes between the “international application” on the one hand and the “record copy” on the other; different treatment may be able to be accorded to papers according to those different notions; • advantage might be able to be taken in cases where there is “claim-like” wording appearing in the description; it was noted that the procedure under the EPC provided for the description to repeat, in effect, the wording of the claims; • the request form could include pre-printed wording sufficient to constitute “a part which on the face of it appears to be a claim or claims” for the purposes of PCT art.11(1)(iii)(e); • the international search might be able to be undertaken without the presence of formal claims, or on the basis of a “search statement” furnished by the applicant; • new possibilities being developed for combined search and examination under the PCT might allow for claims furnished under PCT art.34 to be taken into account for both international search and international preliminary examination. In addition, proposals in relation to “filing by reference to a previously filed application” were discussed at the first session of the Working Group on Reform of the PCT. The comments and concerns expressed by the various delegations included the following 86 : • some delegations supported and others opposed the proposal; • the cases requiring this kind of remedy were rare, and certain delegations felt that this issue should not have a high priority; • any proposals in this direction should be co-ordinated with the proposal for the expanded international search system, where the International Searching Authority, in addition to the International Search Report, establishes a written opinion; • user representatives expressed their support for a proposal which would permit such reference filings under the PCT. The Working Group agreed that the question of reference filings should be reconsidered in substance and in terms of its priority among the other proposals before the Working Group. 87 85 “Summary of the Session — Changes Related to the PLT” (prepared by the chair), Document PCT/R/WG/1/9, 2002, Item 26. 86 “Summary of the Session — Changes Related to the PLT” (prepared by the chair), Document PCT/R/WG/1/9, 2002, Item 27. 87 “Summary of the Session — Changes Related to the PLT” (prepared by the chair), Document PCT/R/WG/1/9, 2002, Item 28. (2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited
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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 and 48: Before the Reform of the PCT in vie
Page 49 and 50: — where the priority application
Page 53: “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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