PCT International Search and Preliminary Examination Guidelines
PART II THE INTERNATIONAL APPLICATION
Chapter 4 Content of the International Application (Other Than the Claims)
4.02 The international application must "disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art." The meaning of "person skilled in the art" is discussed in paragraph 13.11. This requirement of disclosure should be met by the description with the aid of drawings, if any. The provisions relating to the content of the description are set out in Rule 5. The purposes of these provisions are:
(i) to ensure that the international application contains all the technical information required to enable a skilled person to put the invention into practice; and
(ii) to enable the reader to understand the contribution to the art which the inventor has made.
4.03 The description should start with the same title that appears in the request (Form PCT/RO/101). The description should contain subheadings corresponding to those contained in Section 204 ("Technical Field", "Background Art", "Disclosure of Invention", "Brief Description of Drawings", "Best Mode(s) for Carrying Out the Invention", and "Industrial Applicability". The use of such subheadings is strongly recommended in order to provide uniformity in publication and to facilitate access to the information contained in the international application. Some of the recommended subheadings are discussed in the following paragraphs.
4.04 The application should specify the technical field to which it relates.
4.05 The description should also mention any background art of which the applicant is aware, and which can be regarded as useful for understanding the invention and its relationship to the prior art; identification of documents reflecting such art, especially patent specifications, should preferably be included. For further guidance concerning the statement of prior art, see the appendix to this chapter. This applies in particular to the background art corresponding to those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art (see Rule 6.3(b)(i) and paragraph 5.05).
4.06 The invention as claimed should be disclosed in such a way that the technical problem, or problems, with which it deals can be appreciated and the solution can be understood. To meet this requirement, only such details should be included as are necessary for elucidating the invention. Where the invention lies in realizing what the problem is (see Chapter 13), this should be apparent, and, where the means of solving the problem (once realized) are obvious, the details given of its solution may, in practice, be minimal.
4.07 When there is doubt, however, as to whether certain details are necessary, the examiner should not require their excision. It is not necessary, moreover, that the invention be presented explicitly in problem and solution form. Any advantageous effects which the applicant considers the invention to have in relation to the prior art should be stated, but this must not be done in such a way as to disparage any particular prior product or process. The prior art nor the applicant's invention cannot be referred to in a manner likely to mislead. This might be done, for example, by an ambiguous presentation which gives the impression that the prior art had solved less of the problem than was actually the case. Fair comment as referred to in paragraph 4.30 is permitted. Regarding amendment to, or addition of, a statement of problem, see paragraph 20.18.
4.08 If drawings are included they should first be briefly described, in a manner such as: "Figure 1 is a plan view of the transformer housing; Figure 2 is a side elevation of the housing; Figure 3 is an end elevation looking in the direction of the arrow 'X' of Figure 2; Figure 4 is a cross-section taken through AA of Figure 1." When it is necessary to refer in the description to elements of the drawings, the name of the element should be referred to as well as its number, that is, the reference should not be in the form "3 is connected to 5 via 4" but "resistor 3 is connected to capacitor 5 via switch 4."
4.09 The description and drawings should be consistent with one another, especially in the matter of reference numbers and other signs (see paragraph 4.28). However, where, as a result of amendments to the description, whole passages are deleted, it may be tedious to delete all superfluous references from the drawings and in such a case the examiner need not pursue too rigorously the consistent use of reference signs as between the description and the drawings. The reverse situation should not occur, that is, all reference numbers or signs used in the description or claims should also appear on the drawings.
Best Mode for Carrying Out the Invention
4.10 The international application should set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this should be done in terms of examples, where appropriate, and with reference to the drawings, if any. The applicant need not point out which of the embodiments or examples is considered to be the best mode. Determining compliance with the best mode requirement requires a two-prong inquiry. First, it must be determined whether, at the time the application was filed, the applicant contemplated a best mode for practicing the invention. This is a subjective inquiry which focuses on the applicant's state of mind at the time of filing. Second, if the inventor did, in fact, contemplate a best mode, it must be determined whether the written description disclosed the best mode such that a person skilled in the art could practice it. This is an objective inquiry, focusing on the scope of the claimed invention and the level of skill in the art. The examiner should assume that the best mode is disclosed in the application, unless evidence is presented that is inconsistent with that assumption. It is therefore extremely rare that an objection based upon a lack of best mode would be made in an international application. There currently are diverging practices among the International Authorities and designated States with respect to the requirement for the application to set forth the best mode. Where the national law of a designated State does not require the description of the best mode but is satisfied with the description of any mode (whether it is the best contemplated or not), failure to describe the best mode contemplated has no effect in that State.
4.11 In order that the requirements of Article 5 and of Rule 5.1(a)(iii) and (v) may be fully satisfied, it is necessary that the invention be described not only in terms of its structure but also in terms of its function, unless the functions of the various parts are immediately apparent. Indeed, in some technical fields (for example, computers), a clear description of function may be much more appropriate than an over-detailed description of structure.
4.12 It is the responsibility of the applicant to ensure that he supplies, when he first files his international application, a sufficient disclosure, that is, one that meets the requirements of Article 5 in respect of the invention, as claimed in all of the claims (see paragraphs 5.43 to 5.53). If the disclosure is seriously insufficient, such a deficiency cannot be cured subsequently by adding further examples or features without offending against Article 34(2)(b) which requires that the subject matter content of the application must not go beyond the disclosure in the international application (see paragraphs 20.03 and 20.10
et seq.). Where the disclosure is insufficient to enable a person skilled in the art to carry out the claimed invention, the claim may also be too broad to be supported by the description and drawings. Therefore, in that case, there may be non-compliance with both the requirement concerning sufficiency under this paragraph and the requirement of support of the claims (see paragraphs 5.54 to 5.58).4.13 Occasionally international applications are filed in which there is a fundamental insufficiency in the invention in the sense that it cannot be carried out by a person skilled in the art; there is then a failure to satisfy the requirements of Article 5 which is essentially irreparable. Two instances thereof deserve special mention:
(a) The first is where the successful performance of the invention is dependent on chance. That is to say, a person skilled in the art, in following the instructions for carrying out the invention, finds either that the alleged results of the invention are not reproducible or that success in obtaining these results is achieved in a totally unreliable way. An example where this may arise is a microbiological process involving mutations. Such a case should be distinguished from one where repeated success is assured even though accompanied by a proportion of failures as can arise, for example, in the manufacture of small magnetic cores or electronic components; in this latter case, provided the satisfactory parts can be readily sorted by a nondestructive testing procedure, no objection necessarily arises under Article 5.
(b) The second instance is where successful performance of the invention is inherently impossible because it would be contrary to well-established physical laws. This applies, for example, to a perpetual motion machine (see paragraph 4.06).