WIPO Journal - World Intellectual Property Organization

194 The WIPO Journal
In later sessions of the Working Group on Reform of the PCT priority was given to those matters “which
would result in the greatest and most immediate practical benefits for users, having regard also to the
degree of complexity involved and to workload implications for Offices and Authorities”. In particular,
the Working Group focused on proposals concerning restoration of the right of priority and relief when
time-limits were missed, especially the time-limit for entering the national phase. 88
Reform of the PCT—issues not pursued
During its meeting in October 2005, the Assembly of the “PCT Union” decided to reform the PCT in view
of the PLT. 89 Consequently, a number of amendments of the Regulations under the PCT entered into force
on April 1, 2007, relating to the following issues 90 :
• missing elements and parts of the international application;
• restoration of the right of priority;
• rectification of obvious mistakes.
The proposed amendments help applicants to avoid loss of rights in certain circumstances, consistently
with the PLT, while maintaining an appropriate balance between the interests of applicants and third
parties. 91
As discussed above, there was no mitigation of the compulsory presence of claims when filing an
international application as prescribed in PCT art.11(1)(iii)(e) as compared with the exhaustive list of
requirements for according a filing date under PLT art.5(1). Despite the proposal of the International
Bureau to “bend” the PCT articles by regarding claims as a “legal fiction”, such amendment was, eventually,
not adopted by the Working Group on the Reform of the PCT and therefore not put before the Assembly
of the PCT Union. These differences between the filing date requirements under the PCT as compared to
the PLT cause friction. A PLT contracting party is obliged to accord a filing date to an application filed
in the absence of claims. In addition, no re-dating of the application will take place if the applicant later
on supplies a set of claims. However, if an applicant files an international application at the same office,
the presence of at least one claim is compulsory and an international filing date will only be accorded
when the applicant files at least one claim.
In view of the filing date requirements under the PLT, the PCT allows the filing of a missing part of
the description or a missing drawing (cf. PCT r.20.5). In addition, the filing of missing parts may be based
on a priority application. Owing to the presence of claims being obligatory when filing an international
application, it was decided to allow an applicant also to file a missing part of a claim. Moreover, it became
possible under the PCT to file a complete set of claims and/or the entire description as a so-called “missing
element” (cf. PCT r.20.3 and 20.6). All this resulted in PCT r.20 being complicatedly formulated because
it encompasses the possibilities of filing missing parts as well as missing elements.
In addition, it was also discussed in relation to filing date requirements, that PCT r.20.1(b) could easily
have been adapted to incorporate the requirement “allowing the applicant to be contacted” as prescribed
in PLT art.5(1)(ii).
88
“Changes Related to the Patent Law Treaty (PLT) — Conform PCT ‘Missing Part’ Requirements to Those of the PLT” (prepared by the International
Bureau), Working Group on Reform of the PCT, Document PCT/R/WG/4/2, 2003, Item 2.
89
PCT Union, “Report”, Document PCT/A/34/6 (October 2005), at http://www.wipo.int/meetings/en/details.jsp?meeting_id=9006 [Accessed March
29, 2011].
90
PCT Union, “Proposed Amendments of the PCT Regulations”, Document PCT/A/34/2 Rev. (September 2005), Item 1, at http://www.wipo.int
/meetings/en/details.jsp?meeting_id=9006 [Accessed March 29, 2011].
91
PCT Union, “Proposed Amendments of the PCT Regulations”, Document PCT/A/34/2 Rev., 2005, Items 2 and 10(i).
(2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited