Manual of Patent Practice (MoPP)
Intellectual Property Offce is an operating name of the Patent Offce
Manual of Patent Practice
Contents
Glossary
Table of Cases
Introduction
Patents Act 1977 - Sections 1 to 132
Copyright, Designs and Patents Act 1988 - Sections 274 to 281 and 285 to 295
Index
Relevant Official Notices and Directions
Supplementary Protection Certificates
Patents Act 1977
PART I - NEW DOMESTIC LAW
Patentability
1. Patentable inventions 2. Novelty 3. Inventive step 4. Industrial application 4A. Methods of treatment or diagnosis 5. Priority date 6. Disclosure of matter, etc., between earlier and later application
Right to apply for and obtain a patent and be mentioned as inventor
7. Right to apply for and obtain a patent 8. Determination before grant of questions about entitlement to patents, etc. 9. Determination after grant of questions referred to before grant 10. Handling of application by joint applicants 11. Effect of transfer of application under section 8 or 10 12. Determination of questions about entitlement to foreign and convention patents, etc. 13. Mention of inventor
Applications
14. Making of application 15. Date of filing application 15A. Preliminary examination 16. Publication of application
Examination and search
17. Search 18. Substantive examination and grant or refusal of patent 19. General power to amend application before grant 20. Failure of application 20A. Reinstatement of applications 20B. Effect of reinstatement under section 20A 21. Observations by third party on patentability
Security and safety
22. Information prejudicial to national security or safety of public 23. Restrictions on applications abroad by United Kingdom residents
Provisions as to patents after grant
24. Publication and certificate of grant 25. Term of patent 26. Patent not to be impugned for lack of unity 27. General power to amend specification after grant 28. Restoration of lapsed patents 28A. Effect of order for restoration of patent 29. Surrender of patents
Property in patents and applications, and registration
30. Nature of, and transactions in, patents and applications for patents 31. Nature of, and transactions in, patents and applications for patents in Scotland 32. Register of patents, etc. 33. Effect of registration, etc., on rights in patents 34. Rectification of register 35. Evidence of register, documents, etc. [repealed] 36. Co-ownership of patents and applications for patents 37. Determination of right to patent after grant 38. Effect of transfer of patent under section 37
Employees’ inventions
39. Right to employees’ inventions 40. Compensation of employees for certain inventions 41. Amount of compensation 42. Enforceability of contracts relating to employees’ inventions 43. Supplementary
Contracts as to patented products, etc.
44. Avoidance of certain restrictive conditions [repealed] 45. Determination of parts of certain contracts [repealed]
Licences of right and compulsory licences
46. Patentee’s application for entry in register that licences are available as of right 47. Cancellation of entry made under s.46 48. Compulsory licences: general 48A. Compulsory licences: WTO proprietors 48B. Compulsory licences: other cases 49. Provisions about licences under section 48 50. Exercise of powers on application under section 48 50A. Powers exercisable following merger and market investigations
51. Powers exercisable in consequence of report of Competition and Markets Authority 52. Opposition, appeal and arbitration 53. Compulsory licences: supplementary provisions 54. Special provisions where patented invention is being worked abroad
Use of patented inventions for services of the Crown
55. Use of patented inventions for services of the Crown 56. Interpretation, etc., of provisions about Crown use 57. Rights of third parties in respect of Crown use 57A. Compensation for loss of profit 58. References of disputes as to Crown use 59. Special provisions as to Crown use during emergency
Infringement
60. Meaning of infringement 61. Proceedings for infringement of patent 62. Restrictions on recovery of damages for infringement 63. Relief for infringement of partially valid patent 64. Right to continue use begun before priority date 65. Certificate of contested validity 66. Proceedings for infringement by a co-owner 67. Proceedings for infringement by exclusive licensee 68. Effect on non-registration on infringement proceedings 69. Infringement of rights conferred by publication of application
Unjustified threats
70. Threats of infringement proceedings 70A. Actionable threats 70B. Permitted communications 70C. Remedies and defences 70D. Professional advisers 70E. Supplementary: pending registration 70F. Supplementary: proceedings for delivery up etc.
Declaration or declarator as to non-infringement
71. Declaration or declarator as to non-infringement
Revocation of patents
72. Power to revoke patents on application 73. Comptroller’s power to revoke patents on his own initiative
Putting validity in issue
74. Proceedings in which validity of patent may be put in issue
Opinions by Patent Office
74A. Opinions as to validity or infringement 74B. Reviews of opinions under section 74A
General provisions as to amendment of patents and applications
75. Amendment of patent in infringement or revocation proceedings 76. Amendment of applications and patents not to include added matter 76A. Biotechnological inventions
PART II - PROVISIONS ABOUT INTERNATIONAL CONVENTIONS
European patents and patent applications
77. Effect of European patent (UK) 78. Effect of filing an application for a European patent (UK) 79. Operation of section 78 in relation to certain European patent applications 80. Authentic text of European patents and patent applications 81. Conversion of European patent applications 82. Jurisdiction to determine questions as to right to a patent 83. Effect of patent decisions of competent authorities of other states 84. Patent agents and other representatives [repealed] 85. European patent attorneys [repealed]
Community patents
86. Implementation of Community Patent Convention [repealed] 87. Decisions on Community Patent Convention [repealed] 88. Jurisdiction in legal proceedings in connection with Community Patent Convention [repealed]
Unified Patent Court
88A. Implementation of Agreement on a Unified Patent Court 88B. Designation as international organisation of which UK is member
International applications for patents
89. Effects of international application for patent 89A. International and national phases of application 89B. Adaptation of provisions in relation to international application
Convention countries
90. Orders in Council as to convention countries
Miscellaneous
91. Evidence of conventions and instruments under conventions 92. Obtaining evidence for proceedings under the European Patent Convention 93. Enforcement of orders for costs 94. Communication of information to the European Patent Office, etc. 95. Financial provisions
PART III - MISCELLANEOUS AND GENERAL
Legal Proceedings
96. The Patents Court [repealed] 97. Appeals from the comptroller 98. Proceedings in Scotland 99. General powers of the court 99A. Power of Patents Court to order report 99B. Power of Court of Session to order report 100. Burden of proof in certain cases 101. Exercise of comptroller’s discretionary powers 102. Right of audience, etc., in proceedings before the comptroller 102A. Right of audience, etc., in proceedings on appeal from the comptroller [repealed] 103. Extension of privilege for communications with solicitors relating to patent proceedings
104. Privilege for communication with patent agents relating to patent proceedings [repealed] 105. Extension of privilege in Scotland for communications relating to patent proceedings 106. Costs and expenses in proceedings before the Court 107. Costs and expenses in proceedings before the comptroller 108. Licences granted by order of comptroller
Offences
109. Falsification of register etc. 110. Unauthorised claim of patent rights 111. Unauthorised claim that patent has been applied for 112. Misuse of title “Patent Office” 113. Offences by corporations
Patent agents
114. Restrictions on practice as patent agent [repealed] 115. Power of comptroller to refuse to deal with certain agents [repealed]
Immunity of department
116. Immunity of department as regards official acts
Administrative provisions
117. Correction of errors in patents and applications 117A. Effect of resuscitation of a withdrawn application under section 117 117B. Extension of time limits specified by comptroller 118. Information about patent applications and patents, and inspection of documents 118A. Copyright in documents made available electronically for inspection under section 118(1)[Repealed] 119. Service by post 120. Hours of business and excluded days 121. Comptroller’s annual report
Supplemental
122. Crown’s right to sell forfeited articles 123. Rules 124. Rules, regulations and orders; supplementary 124A. Use of electronic communications 125. Extent of invention 125A. Disclosure of invention by specification: availability of samples of biological material 126. Stamp duty [repealed] 127. Existing patents and applications 128. Priorities between patents and applications under the 1949 Act and this Act 128A. EU compulsory licences 128B. Supplementary Protection Certificates 129. Application of Act to Crown 130. Interpretation 131. Northern Ireland 131A. Scotland 132. Short title, extent, commencement, consequential amendments and repeals
Copyright, Designs and Patents Act 1988
PART V – PATENT AGENTS AND TRADE MARK AGENTS
Patent Agents
274. Persons permitted to carry on business of a patent agent 275. The register of patent attorneys 275A. Regulation of patent attorneys 276. Persons entitled to described themselves as patent agents 277. Persons entitled to described themselves as European patent attorneys, &c 278. Use of the term “patent attorney”: supplementary provisions 279. Power to prescribe conditions etc for mixed partnerships and bodies corporate [repealed] 280. Privilege for communications with patent agents 281. Power of comptroller to refuse to deal with certain agents
Supplementary
285. Offences committed by partnerships and bodies corporate 286. Interpretation
PART VI – PATENTS
Patents County Courts
287. Patents county courts: special jurisdiction [Repealed] 288. Financial limits in relation to proceedings within special jurisdiction of patents county court [Repealed] 289. Transfer of proceedings between High Court and patents county court [Repealed] 290. Limitation of costs where pecuniary claim could have been brought in patents county court 291. Proceedings in patents county court [Repealed] 292. Rights and duties of registered patent agents in relation to proceedings in patents county court [repealed]
Licences of right in respect of certain licences
293. Restriction of acts authorised by certain licences 294. When application may be made for settlement of terms of licence
Patents: Miscellaneous amendments
295. Patents: miscellaneous amendments
Glossary of terms and abbreviations used in this Manual (see also definitions in Section 130: Interpretation)
1949 Act
1977 Act
a.
All ER
BL number
CDP Act
CIPA
CMLR
COPS
CPC
CPR
EPC
EPC [1973]
EPO
EPOQUE
EPOR
European Patent Bulletin
EWCA Civ
EWHC number (Pat)
Ex parte hearing
The Patents Act 1949 (c.87). The authority under which patents were granted prior to the 1977 Act.
The Patents Act 1977 (c.37). The authority under which patents are presently granted and enforced in the UK.
Article. Part of a treaty or convention (eg EPC, PCT), which will usually be specified.
All England Reports. A series of law reports.
Decisions of the Intellectual Property Office and Patents Court are indexed according to “BL numbers” in the format “BL O/nnn/yy” and “BL C/nnn/yy” respectively. BL refers to the British Library Science Technology and Business section, which houses the UK national patent library. This was previously called the Science Reference and Information Service, and BL numbers used to be called “SRIS numbers” for this reason.
The Copyright, Designs and Patents Act 1988 (c.48)
The Chartered Institute of Patent Attorneys.
Common Market Law Reports.
An Intellectual Property Office computer system.
Community Patent Convention. A convention to establish a unitary patent covering the entire EC, which has never come into force.
Civil Procedure Rules. A procedural code for the courts, with the overriding objective of enabling the court to deal with cases justly.
European Patent Convention. A convention allowing the grant of patents covering one or more countries within the convention by the European Patent Office. A single application may lead to grant of a patent in each country designated, but once granted the patents are treated in the same way as a set of national applications.
The European Patent Convention of 1973 which was the European Patent Convention which was in force prior to 13 December 2007.
European Patent Office. An intergovernmental organisation (not part of the EU) set up to administer the EPC and grant European Patents.
A portal for online database searching provided by the EPO.
European Patent Office Reports. A series of law reports published by Sweet and Maxwell covering cases heard by the European Patent Office Boards of Appeal.
A journal published by the European Patent Office giving information relating to European patents and applications.
Neutral citation assigned to judgments of the Civil Division of the Court of Appeal.
Neutral citation assigned to judgments of the Patents Court.
A hearing on an issue solely between an applicant and the comptroller. Also sometimes referred to as a “without-notice” hearing.
January 2019
FSR
G nn/yy
Intellectual Property Office
Inter partes hearing
Ipsum
J nn/yy
OJEPO
OJ(P)
PA
PA 1977
Paris Convention
PCT
PDAX
PDJ
PLT
PROSE
r.
RPC
RSC
s.
SHB
Fleet Street Reports. A series of law reports relating to intellectual property decisions published by Sweet and Maxwell.
A decision of the EPO Enlarged Board of Appeal.
An operating name of the Patent Office.
A hearing by the comptroller of an issue between two parties. Also sometimes referred to as a “with-notice” hearing.
The Intellectual Property Office’s online patent information and document inspection service
A decision of the EPO Legal Board of Appeal.
Official Journal of the European Patent Office. A journal giving official information from the European Patent Office.
Official Journal (Patents). The original name for the Patents Journal (later called the Patents and Designs Journal (PDJ)).
Private applicant - an individual or small business applying for a patent personally rather than through the services of a patent agent.
The Patents Act 1977.
The Paris Convention for the Protection of Industrial Property. An agreement concluded in 1883 and updated several times since, providing for national treatment, right of priority and common rules between states for patents and other forms of intellectual property.
Patent Cooperation Treaty. A system to aid filing in many different states by initially filing a single "international" application, which after search, publication and optionally examination may be converted into a series of national applications.
An Intellectual Property Office computer system.
Patents and Designs Journal. Now published separately as the Designs Journal and the Patents Journal: a journal published by the Intellectual Property Office giving notices and information concerning UK patents and applications.
Patent Law Treaty. A treaty agreed in 2000 to harmonise the formal requirements for filing patent applications.
An Intellectual Property Office computer system.
Rule. Part of the Patents Rules 2007 unless otherwise specified.
Reports of Patent, Design and Trade Mark Cases - a series of law reports relating to intellectual property cases, published on behalf of the Intellectual Property Office, currently by Oxford University Press.
Rules of the Supreme Court. Now substantially replaced by the Civil Procedure Rules (CPR).
Section. Part of the Patents Act 1977 unless otherwise specified.
Secretariat Hearing Box. A system for numbering records of Office hearings. Now discontinued and replaced by BL number.
January 2019
SPC Supplementary Protection Certificate. Additional protection taking effect after the expiry of a patent for medicinal or plant protection products to compensate the patentee for loss of effective protection due to the time taken to gain regulatory approval.
SRIS number See BL number.
TRIPS Agreement The Agreement on Trade Related Aspects of Intellectual Property Rights, originating from the Uruguay Round of trade negotiations setting up the WTO and completed in 1994. The TRIPS Agreement requires WTO Members to provide minimum standards of protection for a wide range of intellectual property rights.
T nn/yy A decision of the EPO Technical Board of Appeal.
UK Intellectual Property A former operating name of the Patent Office, now known as the Intellectual Office Property Office.
V nn/yy A decision of the EPO Opposition Division.
WIPO World Intellectual Property Organisation. An intergovernmental organization with headquarters in Geneva, Switzerland, responsible for the promotion of the protection of intellectual property throughout the world through cooperation among States, and for the administration of various multilateral treaties dealing with the legal and administrative aspects of intellectual property.
WTO World Trade Organisation. An international organisation created by the Uruguay Round of trade negotiations completed in 1994, dealing with rules of trade between nations.
WLR Weekly Law Reports.
January 2019
TABLE OF CASES
Notes 1. For EPO decisions, see separate list below.
2. "SHB" indicates a Secretariat Hearing Box number (old Office numbering system).
3. The Reports of Patent, Design and Trade Mark Cases (RPCs) have been published since 1884. For those published between 1884 and 1955, the first number of the RPC citation refers to the Volume number, where Volume 1 was published in 1884, Volume 2 in 1885 etc. From 1956 onwards, the year is provided instead.
4. In 2001, Sweet & Maxwell (then publishers of the RPCs on behalf of the Office) changed the way in which cases are cited. For citations up until the end of 2000, the final number of the citation refers to the page number in that year’s volume. From the beginning of 2001, the final number refers to case number in that year’s volume. This numbering system applies to the RPCs and to Sweet & Maxwell reports cited from the beginning of 2001, including FSRs and EPORs.
Case Citation Manual Paragraph(s)
Abaco Machines (Australasia) Pty Ltd’s Application [2007] EWHC 347 (Pat)
130.34, 89.01, 5.26.4
Abbott Laboratories (Chu's) Patent [1992] RPC 487 72.24
Abbott Laboratories Ltd. v Medinol Ltd [2010] EWHC 2865 (Pat)
14.171, 76.08.2
AB Hassle's Patent 1308106 ("metoprolol") SHB 12, BL O/79/87
46.66.1, 46.75, 46.76.2
Ability International Ltd v Monkey Tower Ltd BL O/484/14 75.15.1
Abraham's Patent 1302188 SHB 26, 46.49 BL O/186/87
ABT Hardware Ltd's Application SHB 259, BL O/36/87
3.28.2
Acumen Design Associates Ltd BL O/031/17 14.120
Actavis Group PTC EHF v Pharmacia LLC [2014] EWHC 2265 71.02
Actavis Group PTC EHF v ICOS Corporation & Ors [2017] EWCA Civ 1671 3.87.2, 125.17.7
Actavis UK Ltd v Janssen Pharmaceutica NV [2008] EWHC 1422 [2008] FSR 35
4A.28
Actavis UK Ltd v Merck [2008] RPC 26 0.10, 3.37.2, 4A.28.1-4A.28.2, 130.31
Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82 3.99
Actavis UK Ltd & Ors v Eli Lilly & Company [2015] EWCA Civ 555 [2017] UKSC 48
2.03, 14.144, 60.19.2, 125.17.3- 125.18.4, 125.26
Adgistics Ltd’s Application BL O/297/04
Adhesive Dry Mounting Co Ltd v Trapp & Co 27 RPC 341 2.14
Advocat Giovanni Gozzo AB's Patent SHB 459, 28.16 BL O/150/95
Aerotel Ltd v Telco Holdings Ltd Ors Rev 1 [2006] EWCA Civ 1.07, 1.08, 1.09.1,
January 2019
(Aerotel/Macrossan)
Aerotel Ltd v Wavecrest Group Enterprises Ltd & Ors
Agfa-Gevaert AG's Application
Aujla v Sanghera
Albright & Wilson Ltd's Patent
Ali et al’s Application
Allen and Hanburys Ltd's Patent 1266058 ("labetalol")
Allen and Hanburys Ltd's Patent 1200886 ("salbutamol")
Allen and Hanburys Ltd v Generics (UK) Ltd and Gist-Brocades NV and others and Comptroller General of Patents ("Gist Brocades")
Allen and Hanburys Ltd's Patent 1429 184
Allen and Hanbury v Generics
Allmanna Svenska Elektriska AB's Application
Allmanna Svenska Elektriska AB v The Burntisland Shipbuilding Co Ltd
Alphaplan Ltd's Application
Alps Electric Co's Application
Amchem's Products Inc's Patent
Ament's Application
American Cyanamid Co's (Fenbufen) Patent
American Cyanamid v Ethicon
American Home Products Corp. v Novartis Pharmaceuticals Ltd
Ammonia's Application
Anan Kasei Co Ltd & Rhodia Operations SAS v Molycorp Chemicals & Oxides Ltd
Ancare New Zealand Ltd’s Patent
1371; [2007] RPC 7
[2008] EWHC 1180 (Pat)
[1982] RPC 441
[2004] EWCA Civ 121
SHB 378, BL O/190/92
BL O/264/10
BL O/137/85
[1987] RPC 327
[1986] RPC 203 [1988] FSR 312
SHB 86
[1988] FSR 312
[1976] RPC 464
69 RPC 63
SHB 418, BL O/127/93
SHB 311, BL O/12/90
[1978] RPC 271
[1994] RPC 647
[1990] RPC 309 [1991] RPC 409
[1979] RPC 265
[2001] RPC 8
49 RPC 409
[2018] EWHC 843 (Pat)
[2003] RPC 8
1.10, 1.14, 1.18, 1.19, 1.21, 1.21.1, 1.25, 1.33-1.33.1, 1.33.2, 1.33.4
1.20.1
5.30
20.08
73.11
20A.11.1
46.62
46.31 32, 46.35 36, 46.38.1, 46.39- 39.1, 46.47, 46.48, 46.53, 46.56, 46.58, 46.62
46.02, 46.05 07, 46.20, 46.24, 46.27 29, 46.35, 46.53, 46.59, 46.78.1, 60.15
46.38.2, 46.44, 46.71-72
46.53, 46.78.1, 60.15
72.14
3.04
123.08
15.08.1
14.153
28.15.1
46.35, 46.37, 46.38-38.1, 46.41, 46.45, 46.47.2, 46.56, 46.69.2-70
14.71, 14.87
4A.30, 14.82-14.84
2.09
14.123.1
3.98
January 2019
Anderson’s Application
Angiotech Pharmaceuticals Inc’s Patent (Application for Revocation by Conor Medsystems Inc)
Angiotech Pharmaceuticals Inc v Conor Medsystems Inc
Anderson’s Application
Anning’s Application
Anning’s Patent Application
Apimed Medical Honey Ltd v Brightwake Ltd
Apple Inc’s Application
AP Racing Ltd v Alcon Components Ltd
Armaturjonsson AB's Application
ARMCO Inc's Application
Armstrong-Kropp Development Corporation's Applications
Arrow Electric Switches Ltd's Applications
Asahi Kasei Kogyo KK
Ashland Oil Inc's Patent 1190644
Astron Clinica and other's Applications
AT&T Knowledge Ventures’ Application and CVON Innovations Ltd’s Application
atenolol
Atlas Powder Co's Patent
Auchincloss v Agricultural & Veterinary Supplies Ltd
Autonomy Corp Ltd v Comptroller General of Patents, Trade Marks & Designs
Axis Genetics PLC’s (In Administration) Patent
Badische Anilin and Soda Fabrik v La Societe etc du Rhone
Bancroft's Application
BASF AG v Praesident des Deutschen Patentamts
Bayer AG (Baatz's) European Application
Bayer AG (Meyer's) Application
Bayer AG's Patent 1170188 (DDSA's Application)
Bayer AG's Patent 1173862 ("nifedipine")
BL O/112/12
[2006] RPC 28
[2007] RPC 20 [2007] EWCA Civ 5
BL O/297/02
BL O/374/06
[2007] EWHC 2770 (Pat)
[2011] EWPCC 2, [2011] RPC 16
BL O/244/13
[2014] EWCA Civ 40
[1985] RPC 213
BL O/84/85
[1974] RPC 268
61 RPC 1
[1991] RPC 485
BL O/35/86
[2008] EWHC 85 (Pat), RPC 14
[2009] FSR 19
see ICI
[1995] RPC 666
[1999] RPC 397 [1997] RPC 649
[2008] EWCH 146 (Pat)
[2000] FSR 448
15 RPC 359
23 RPC 89
[2001] 2 CMLR 435
[1982] RPC 321
[1984] RPC 11
BL O/139/85
BL O/49/86
1.32.1
3.87
3.46, 3.87
15.21
5.26.5, 20A.13, 20A.14, 28.09, 28.09.1
20.02.2, 20A.02, 20A.11.1
3.30.2
1.38.5
76.15.0
123.45
14.171, 76.08.2
18.96
18.97
2.10.2, 5.23, 14.152, 76.08
46.49
1.13, 1.15.1,1.35
1.20.1, 1.37
28.15
14.117, 60.24
1.40
72.04.1
14.74
14.140
77.13
3.88
4A.19-4A.20
46.73
46.45, 46.48.1,
January 2019
(Generics' Application)
Bayer AG's Patent 1173862 ("nifedipine")(Harris Pharmaceuticals' Application)
Beloit Technologies Inc v Valmet Paper Machinery Inc
Bentley Engineering Co Ltd's Patent
Bergwerksverband Gmbh's Patent 1364 674
Bilgrey Samson Ltd’s Application
Biogen Inc v Medeva Plc
BioProgress Technology Limited v Stanelco Fibre Optics Limited
Blacklight Power Inc.’s Application Blacklight Power Inc. v The Comptroller-General of Patents (Patents Ct)
Blacklight Power Inc.’s Application
Blacklight Power Inc.’s Application
Bloomberg LLP and Cappellini’s Applications
Boehringer Mannheim GmbH v Genzyme Ltd
Bonzel & anr. v Intervention Ltd
Book Protectors and Co's Patent
Border’s Patent
Bradford Dyers Association Ltd's Application
Braun AG's Application
Bridgestone Tire KK's Patent
Bristol-Myers Co's Application
Bristol Myers Squibb Co. v Baker Norton Pharmaceuticals Inc (Patents Court) Bristol Myers Squibb Co. v Baker Norton Pharmaceuticals Inc (Court of Appeal)
British Broadcasting Corporation's Patent
British Celanese Ltd's Application
British Numberplate Manufacturers Association v Hills Numberplates Limited
British Ore Concentration Syndicate Ltd v Mineral Separation Ltd
British Railways Board's Patent 1179 723
SHB 31, BL O/008/88
[1995] RPC 705 [1997] RPC 489
[1981] RPC 361
SHB 75, BL O/58/89
BL O/577/01
[1997] RPC 1, [1995] RPC 25
BL O/351/03
BL O/170/09 [2009] RPC 6
BL O/076/08
BL O/114/08
[2007] EWHC 476 (Pat), [2007] FSR 26
[1993] FSR 716
[1991] RPC 553
SHB 368, BL O/23/96
BL O/157/79
[1966] FSR 79
[1981] RPC 355
SHB 218, BL O/166/92
[1969] RPC 146
[1999] RPC 253
[2001] RPC 1
SHB 306, BL O/49/89
51 RPC 192
BL O/66/05
26 RPC 124, 27 RPC 47
SHB 103, BL O/41/85
46.76.1
46.47.1
6.02-03 3.33
27.08
46.58, 46.64
14.136.1
1.04, 3.03, 5.23, 14.63, 14.79, 14.83-14.84 14.149, 72.03
8.29
4.05.2, 14.90 3.69, 4.05.1-4.05.2, 14.90, 18.09.2
1.28
1.28
1.15.1
3.77
76.06, 76.07
46.66.3
28.05
72.16
27.24
27.28
2.24
3.84, 4A.03.1, 4A.28, 4A.28.1-4A.28.2, 4A.31
28.12
14.122
72.04
2.09, 3.31
71.04
January 2019
British Steel's Patent 2174 029 SHB 97, 40.03.1, 40.04.2 [1992] RPC 117
British United Shoe Machinery Co Ltd v Simon Collier Ltd
26 RPC 48 14.154
British United Shoe Machinery Co Ltd v A Fussell and Sons Ltd
25 RPC 651 14.109
Brooks and Cope's Application SHB 245, BL O/71/93
8.05.1, 10.07.1
Brownie Wireless Co Ltd's Applications 46 RPC 457 48A.05, 48B.11
Brugger and Others v Medic-Aid Ltd [1996] RPC 635 3.39, 3.84
Brupat Ltd v Smith [1985] FSR 156 65.05
BSH Industries Ltd's Patents [1995] RPC 183 2.12.1
BTH Co Ltd's Patent 53 RPC 255 27.30
Buehler AG v Chronos Richardson Ltd [1998] RPC 609 72.04
Buralls of Wisbech Ltd’s Applications [2004] RPC 14 118.20
BWS Management's Patent SHB 342, BL O/113/90
28.16
Cabot Safety Corp's Patent [1992] RPC 39 46.50.3, 46.60
Cairnstores Ltd v Aktiebolaget Hassle [2002] FSR 35 72.04
Calmic Engineering Co Ltd's Application [1973] RPC 684 4A.03.1
Cannings' United States Application [1992] RPC 459 12.05
Cantel Medical et al v Arc Medical [2018] EWHC 345 (Pat)
75.12
Cappellini See Bloomberg
Carboplatin see Research Corp
Cartonneries de Thulin SA v CTP White Knight Ltd [2001] RPC 6 14.113, 76.14
Cartwright's Patent SHB 243, BL O/74/93
37.19
Cassidy v Eisenmann & Co Ltd [1980] FSR 381 110.05
Cassou's Patent [1971] RPC 91 46.11 12, 46.49, 46.76.2, 47.06
Cathro's Application 51 RPC 475 48B.05
Cathro's Applications 51 RPC 75 48A.02, 48B.07
Catnic Components Ltd and another v Hill and Smith Ltd
[1982] RPC 183, [1983] FSR 512
14.115-14.117, 125.13, 125.17.5- 125.17.6
Cayless & Sci Sport Limited v Barton & Cullis BL O/073/98 74.07
Cellartis AB’s Application BL O/050/11 125A.05.1
Cement and Concrete Association's Patent [1984] RPC 131 28.11
Cephalexin see Eli Lilly
CFPH LLC’s Application [2005] EWHC 1589 1.20.2, 1.27
January 2019
Chemische Fabrik auf Aktien's Application
Chiron Corp v Organon Teknika Ltd
Chiron Corp and ors v Murex Diagnostics Ltd and ors
Chitolie’s Application
Ciba-Geigy AG's Application
Ciba-Geigy AG (Durr's) Application
Ciba-Geigy AG's Patent 1146173
Ciba-Geigy AG's Patent 1255258 (Agan/Alpha's Application)
Ciba-Geigy AG's Patents 1255258 and 1407587 (Portman Agrochemicals Application)
Cimetidine
Cipla Ltd v Glaxo Group Ltd
Citizen Watch Ltd's Patent
Clear Focus Imaging Inc. v Contra Vision Ltd
Clevite Corporation's Patent
Coal Industry (Patents) Ltd's Patent
Coal Industry (Patents) Ltd's Application
Coal Industry's Patent
Coco v A N Clark (Engineers) Ltd [1969]
Coflexip Stena Offshore Ltd's Patent
Colbourne Engineering Co Ltd's Application
Colley's Application
Commonwealth Scientific and Industrial Research Organization’s Application
Commonwealth Scientific and Industrial Research Organisation’s Application
Communication & Control Engineering Company Ltd's Patent
Conor Medsystems Inc v Angiotech Pharmaceuticals Inc
(Pat) [2006] RPC 5
45 RPC 403
[1993] FSR 324, 567 [1994] FSR 202, [1994] FSR 258, [1995] FSR 589
[1996] RPC 535
BL O/078/04, [2004] EWHC 1549 (Ch)
SHB 192, BL O/30/85
[1977] RPC 83
[1986] RPC 403
BL O/85/86
BL O/159/86
see Smith, Kline and French
[2004] RPC 43
[1993] RPC 1
Patents Court, 16th November 2001, unreported
[1966] RPC 199
[1994] RPC 661
[1986] RPC 57
SHB 108, BL O/11/90
RPC 41
[1997] RPC 179, SHB 382, BL O/67/96
72 RPC 169
[1999] RPC 97
BL O/248/04
BL O/367/11
SHB 246, BL O/82/93
[2008] RPC 28
14.154
44.10, 3.79, 14.67.1, 14.80, 14.87, 14.152, 75.01, 75.01
4.02, 14.80
123.38
4A.03.2
1.40.3
46.52 53
46.57
46.57, 46.60, 46.69
3.81.2
73.08, 73.11
27.29
27.07
27.08
123.06
118.13
2.38
32.08, 46.76.1
48A.04, 48B.10
2.29.1
4A.02
1.38
40.05
3.87
January 2019
Consultant Suppliers Ltd's Application [1996] RPC 348 14.152
Continental Manufacturing & Sales Inc's Patent [1994] RPC 535 28.10
Contra Vision Limited’s Patent BL O/079/00 14.140
Convex Ltd's Patent [1980] RPC 423 28.13
CoreValve Inc v Edwards Lifesciences AG & Anor [2009] EWHC 6 (Pat), 60.24 [2009] FSR 8
Courtauld's Application [1956] RPC 208 67.04
Critchley v Engelmann [1971] RPC 346 27.21
Cummins-Allison Corp’s Application BL O/361/12 1.33.2
[2017] EWHC 1251Curt G Joan Inc v Fameccanica Data SpA 75.12(IPEC)
Cyprane's Patent 1224478 SHB 44, 46.50.2 BL O/108/88
Cypress Semiconductor Corporation’s Application BL O/326/16 123.10.3
Daido Kogyo KK's Patent [1984] RPC 97 28.04, 28.17
Daihatsu Motor Co Ltd and others’ Patent BL O/234/14 123.47.1
Datacard Corp. v Eagle Technologies Ltd. [2011] EWHC 244 3.34.2, 76.15.4 (Pat), [2011] RPC 17
Decker's Application SHB 463, 18.56 BL O/10/96
Degussa-Huls AG v The Comptroller-General of [2005] RPC 29 3.48, 3.64 Patents
Dell Products LP’s Application BL 0/321/10 1.09.3
Diamond Shamrock Technologies SA's Patent [1987] RPC 91 118.13
Diltiazem see Tanabe Seiyaku
Direct TV Pty’s Application BL O/150/11 1.38.5
Dow Chemical Company's Application SHB 136, BL O/175/83 14.159.1
Dow Chemical Company (Mildner's) Patent [1973] RPC 804 3.42, 3.44
Dow Corning Corporation (Bennett's) Application [1974] RPC 235 1.40.3
Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly & Co [2008] EWHC 2345 2.03.1, 3.81.2 Ltd (Patents Court) (Pat), [2009] FSR 5
Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly & Co [2010] RPC 9 2.06.2, 2.19, 3.89- Ltd (Court of Appeal) 3.90
DSM NV’s Patent (EP0420358) [2001] RPC 35 3.14, 14.82, 76.10
DST SA’s Patent 1195871 BL O/152/85 46.62, 46.66-66.1
Dukhovskoi and Others' Applications [1985] RPC 8 117.09
Du Pont de Nemours & Co (Witsiepe's) Application [1982] FSR 303 2.19, 2.20, 3.92
Du Pont de Nemours' (Blades) Patent [1988] RPC 479, 497 46.69.1
Dust Suppression Ltd's Application [1976] FSR 438 72.13
Dynamics Research and Manufacturing Inc's [1980] RPC 179 28.03 Patent
January 2019
Dyson Appliances Ltd v Hoover Ltd [2001] RPC 26, [2002] RPC 22
3.07, 3.22, 3.25, 3.72, 3.97
Dyson Ltd’s Patent [2003] RPC 24, [2003] RPC 48
29.03
Dyson Ltd’s Trade Mark Application [2003] RPC 47 97.03
Dytap Revetments' Patent SHB 17, BL O/76/87
28.16
E's Applications [1983] RPC 231 123.08, 130.32
Eastman Kodak Co. v American Photo Booths Inc. BL O/457/02 4.05, 14.90
Ebrahim Shahin's Application BL O/149/95 1.40.2
Edison and Swan Electric Light Co v Holland 6 RPC 282 14.68
A C Edwards v Acme Signs & Displays Ltd [1990] RPC 621, [1992] RPC 131
14.151, 76.07, 76.08, 76.13.1, 76.15
Edwards Lifesciences AG v Cook Biotech Inc [2009] EWHC 1304 (Pat); [2009] FSR 27
5.19-19.1
Eickhoff Maschinenfabrik's Patent SHB 10, 75.15 BL O/31/87
Electricité de France (EDF)'s Patents [1992] RPC 205 28.03
Eli Lilly's Patent 1277137 ("cephalexin") SHB 10, BL O/69/87
46.43, 46.45, 46.75
Eli Lilly & Co. v Human Genome Sciences, Inc. [Patents Court] Eli Lilly & Co. v Human Genome Sciences, Inc. [Court of Appeal]
[2008] EWHC 1903 (Pat), [2008] RPC 29 [2010] EWCA Civ 33 [2010] RPC 14
3.51.1, 4.07.2, 14.60, 14.85
4.07.2
El-Tawil’s Application [2012] EWHC 185 4A.28, 4A.29
Emulsol Corporation's Patent 57 RPC 256 27.15
Enviro-Spray Systems Inc's Patents [1986] RPC 147 48B.03, 50.07
EPS Research's Patent SHB 387, 28.15.1 BL O/53/92
Esau's Application 49 RPC 85 14.152 3
European Commission v United Kingdom [1992] 2 CMLR 709 50.05
Evans Medical Ltd's Patent [1998] RPC 517 2.29, 5.23.2
Eveready Battery Company Inc.’s Patent [2000] RPC 852 123.06
Extrude Hone Corp's Patent [1982] RPC 361 48.15
Fabio Perini SPA v LPC Group plc and others [2010] EWCA Civ 525 14.112-113
Farmitalia Carlo Erba SpA's Patent 1249443 SHB 53 46.48
Fater's Application [1979] FSR 647 123.08
Fellerman's Application SHB 362, BL O/11/96
40.03.2
Fergusson’s Application BL O/272/09 15.21
fenbufen see American none Cyanamid
January 2019
FH Brundle v Perry [2014] EWHC 475 (IPEC)
2.12.3, 70.04
Fichera v Flogates Ltd [1984] RPC 257 44.02, 44.06 07, 44.10, 44.12
Filpin Filpost Ltd v Fairfax (Dental Equipment) Ltd SHB 230, BL O/007/93
46.37.3
Firma Carl Kurt Walther's Patent 1368 039 SHB 108 46.49, 46.66, 46.66.3
Fisher Rosemount Systems’ Application BL O/238/12 18.63.3
Fisher Westmoreland's Patent SHB 349, 28.16 BL O/151/90
Fletcher's Application BL O/235/98 89.06, 89.09
Flexible Direction Indicators Ltd's Application [1994] RPC 207 76.12
Florey and others' Patent [1962] RPC 186 36.04
Flour Oxidizing Co Ltd v Carr & Co Ltd 25 RPC 428 2.17
Flude (H) & Co (Hinckley) Ltd's Patent [1993] RPC 197 72.34.1
Folding Attic Stairs Ltd v Loft Stairs Co. Ltd. [2009] FSR 24 2.27.1, 14.129
Ford Motor Co Ltd (Cuskie's) Application [1973] RPC 573 46.16
Foseco International Ltd's Patent [1976] FSR 244 27.21
Francis' Patent 1371 994 SHB 316, 28.13 BL O/154/82
Frazer's Patent [1981] RPC 53 28.11, 28.12
Frosst's Patent 1253709 ("timolol") SHB 15, BL O/84/87
46.74-75
Fujitsu Limited’s Application [1996] RPC 507, [1997] RPC 608
1.18.1
Fujitsu Limited’s Application BL O/121/04
Furuno Electric Co. Ltd’s Application BL O/208/10 123.10.2
Future New Developments Ltd v B & S Patente Und Marken GmbH
[2014] EWHC 1874 (IPEC)
130.05.2
Gale’s Application [1991] RPC 305 1.18.1, 1.29.1, 1.37.1
Gebhardt's Patent SHB 128, 48B.05, 48B.17 [1992] RPC 1
GEC's Application 60 RPC 3 2.14
GEC Avery Service Ltd v Derwent Measurement and Control Ltd
SHB 286, BL O/62/94
72.14
GEC Avionics Ltd's Patent [1992] RPC 107 40.03.1, 40.04.2
Gedeon Richter v Bayer Schering [2011] EWHC 583 (Pat)
3.87.2
Geigy SA's Patent [1964] RPC 391 46.39, 46.45
Geigy SA's Patent [1966] RPC 250 48.19
January 2019
Gemstar–TV Guide International Inc v Virgin Media Limited
Genentech Inc's Patent
Genentech Inc's Patent
General Electric Co Ltd's Application
General Motors Corporation (Longhouse's) Application
General Motors (Tunney & Barr's) Application
General Tire and Rubber Company v Firestone Tyre and Rubber Company Limited
Generics (UK) v Smith Kline & French
Generics (UK) Limited and others v H Lundbeck A/S
Generics (UK) Limited and others v H Lundbeck A/S
Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC (Patents Court) (Court of Appeal)
Generics [UK] LTD (t/a Mylan) v Yeda Research and Development co. LTD & Anor
Generics (U.K.) Limited and others v Yeda Research and Development Company Limited and others
Georgia Pacific Corp's Application
Gerber Garment Technology Inc's Patent
J Gibbons Ltd's Application
Gist-Brocades
Glatt's Application
Glaverbel SA v British Coal Corporation and anr
Glaxo Group Ltd v Genentech Inc
Glaxo Group’s Patent
Goddin and Rennie's Application
Grace's Patent 1307054
Gram's Patent
Green’s Application
Grimme v Scott
Guardall Ltd's Patent
[2009] EWHC 3068 (Ch), [2010] RPC 10
[1989] RPC 147
BL O/360/14
[1961] RPC 24
[1981] RPC 41
[1976] RPC 659
[1972] RPC 457
[1993] 1 CMLR 89
[2007] EWHC 1040, [2007] RPC 32
[2009] UKHL 12, [2009] RPC 13
[2015] EWHC 2548 [2016] EWCA Civ 1006
[2013] EWCA Civ 925
[2017] EWHC 2629 (Pat)
[1984] RPC 467
SHB 398, BL O/99/96
[1957] RPC 158
see Allen and Hanburys
[1983] RPC 122
[1995] RPC 255
[2008] EWCA Civ 23, [2008] FSR 18
[2004] RPC 43
[1996] RPC 141
SHB 109
BL O/412/99
BL O/087/09
[2010] EWCA Civ 1110
SHB 394,
1.37, 1.40.4
1.21, 1.27, 3.09, 3.27, 14.152, 27.11, 91.02
29.03
14.152
14.200
72.24
2.03, 2.07.1, 3.20, 3.32
46.54
3.81.2
2.08.3, 3.34.1, 14.67.1
3.30.3, 4A.27.1, 4A.31, 60.16.1, 60.19.2
3.89, 3.91.1
2.03, 125.17.7
8.21.2
46.47
27.28
14.149, 14.151, 76.19, 125.04
2.03.1, 14.113
71.02
3.91, 3.96, 3.98
8.08.2
46.66.4
28.12
20A.14.1
60.19
27.08
January 2019
Haberman v Jackal
Halcon SD Group Inc's Patent
Halcon SD Group Inc's Patents
Hallen Co v Brabantia (UK)
Halliburton Energy Services Inc v Smith International (North Sea) Ltd
Halliburton Energy Services Inc v Smith International (North Sea) Ltd
Halliburton Energy Services Inc’s Applications
Halpern & Ward's Patent
Harding's Patent
Harris' Patent
Hartington Conway Ltd’s Patent Applications
Hawker Siddeley Dynamics Engineering Ltd v Real Time Developments Ltd
Heatex Group Ltd's Application
Henry Brothers (Magherafelt) Ltd. v The Ministry of Defence and the Northern Ireland Office
Hewlett-Packard’s Application
Hewlett-Packard Development Company’s Application
Hickman v Andrews
Hickton's Patent Syndicate v Patents & Machine Improvements Co Ltd
Hilti's Patent 1217908 (Bauco (UK)'s Application)
Hilti's Patent 1217908 (Structural Fastenings Group Ltd's Application)
H.Lundbeck A/S v Norpharma SpA
Hoechst Celanese Corp v BP Chemicals
Hoerrmann's Application
Ho and Wang's Patent
Hoffmann-La Roche's Patent
BL O/91/96
[1999] FSR 685
BL O/94/85
[1989] RPC 1
[1990] FSR 134, [1991] RPC 195
[2006] RPC 2, [2005] EWHC 1623
[2006] EWCA Civ 1715
[2011] EWHC 2508 (Pat), [2012] RPC 129
BL C/14/93
SHB 134, BL O/94/90
[1985] RPC 19
[2004] RPC 6, [2004] RPC 7
[1983] RPC 395
[1995] RPC 546
[1999] RPC 442, [1997] RPC 693
BL O/319/11
BL O/441/12
[1983] RPC 147
26 RPC 339
BL O/170/86
[1988] RPC 51
[2011] EWHC 907 (Pat), [2011] RPC 23
[1999] FSR 319
[1996] RPC 341
SHB 30, BL O/152/87
[1969] RPC 504
3.75, 3.81
28.11
48.20
62.09, 3.07, 3.24, 3.72, 3.95
1.21, 2.29, 3.27, 14.65, 14.67.1, 14.70, 14.87, 14.93.1, 14.117.1, 60.16
14.70
1.16, 1.31-1.31.3, 1.34, 1.35
28.15.1
75.15
39.09 10
30.08, 130.22.1, 61.01, 97.03
61.07, 71.10
5.26.4, 5.26.5, 20A.13, 20A.14 28.09, 28.09.1, 123.37
7.12, 7.12.2, 8.06, 36.06, 72.03.1
1.38.1
1.33.2
2.13, 3.80
1.27
46.63
46.50, 46.58, 46.60 61, 46.67
2.07, 68.06, 68.07
125.05
14.152
28.12
46.55.2
January 2019
Hollister Inc's Application [1983] RPC 10 17.106
Holywell Mining Group Ltd's Patent 1297787 SHB 34, BL O/47/88
46.49, 46.58, 46.60, 46.64
Hospira UK Generics (UK) Ltd (t/a Mylan) v Novartis AG
[2013] EWCA Civ 1663
5.23.1
Hospira UK Ltd v Genentech Inc [2014] EWHC 1094 4A.29.1, 4A.31, 5.23.2
HSBC France’s Application BL O/180/09 18.09.4
Hsuing's Patent [1992] RPC 497 27.07, 27.08
HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 1.09.2, 1.09.3, 1.18.1, 1.36.2, 1.37, 1.37.2, 1.39.2
Hughes v Paxman [2006] EWCA Civ 818; [2007] RPC 2, BL O/217/08
36.07
Human Genome Sciences v Eli Lilly [2011] UKSC 51, [2012] RPC 6
0.09, 1.09, 4.07.2
IBM Corporation's Application [1970] RPC 542 14.72
IBM Corporation (Barclay and Bigar's) Application [1983] RPC 283 18.94, 18.96
Icescape Ltd v Ice-World International BV & Ors [2018] EWCA Civ 2219 125.17.6
ICI Ltd's Application SHB 5, BL O/73/82
4A.05
ICI Ltd (Richardson's) Application [1981] FSR 609 4A.14, 14.126.1
ICI Plc v Ram Bathrooms Plc and Rohm GmbH [1994] FSR 181 75.05
ICI's Patent 1285038 ("atenolol") (Harris Pharmaceuticals 'Application)
BL O/59/86, BL C/82/86
46.25, 46.47.1
ICI's Patent 1285038 ("atenolol") (Thomas Kerfoot's Application)
SHB 16, BL O/91/87
46.19
IG Farbenindustrie AG's Patents 47 RPC 289 2.14, 3.90
IGT’s applications [2007] EWHC 1341 (Ch)
1.22
IGT/Acres Gaming Inc.’s Application [2008] EWHC 568 1.20,14.129.1
Improver Corp v Remington Consumer Products Ltd
[1990] FSR 181 125.18
Inge Brugger and others v Medic-Aid Ltd [1996] RPC 655 3.39, 3.84
Innovation Sciences Pty Ltd’s Application BL O/315/12 1.29.3
Intel Corporation’s Patent [2002] RPC 48 27.27.1
Intera Corporation's Application [1986] RPC 459 16.02
Interfilta (UK) Ltd’s Patent [2003] RPC 22 101.06
International Barrier Corporation's Application 8211557
SHB 61 15.21
International Playtex Corporation's Application [1969] RPC 362 76.18
Intuit Inc’s Application BL O/347/10 1.38.2
January 2019
Inventa AG's Application
IPcom GmbH & Co Kg v HTC Europe Co Ltd & Ors
Irwin Industrial Tool Company’s Application
ITS Rubber Ltd's Application
ITT Industries Inc's Application
Jade (The)
Jamesigns (Leeds) Ltd's Application
James Gibbons Ltd's Application
Jansen Betonwaren B.V. v Ian Robbie Christie
Jarden Consumer Solutions (Europe) Ltd v SEB SA & Anor
Jaskowski's Application
JDA Software Group Inc’s Application
John Lahiri Khan’s Application
Johns-Manville Corporation's Patent
Johnson Matthey PLC v Sumitomo Special Metals Co Ltd
Joos v Commissioner of Patents
Jushi Group Co. Ltd v OCV Intellectual Capital LLC
Kalman and another v PCL Packaging (UK) Ltd and another
Kamborian's Patent
Kapur v Comptroller-General of Patents
Kavanagh Balloons Pty Ltd v Cameron Balloons Ltd
KCI Licensing Inc & Ors v Smith & Nephew Plc & Ors [Patents Court] [Court of Appeal]
Kelly & Anor v GE Healthcare Ltd
ketoprofen
Kimberly-Clark Worldwide Inc’s Patent
Kimberly-Clark Worldwide Inc v Procter & Gamble Ltd
Kirin-Amgen Inc v Roche Diagnostics GmbH (Patents Court),
Kirin-Amgen Inc v Transkaryotic Therapies Inc (Ct of Appeal),
Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (House of Lords)
[1956] RPC 45
[2013] EWCA Civ 1496
BL O/247/09
[1979] RPC 318
[1984] RPC 23
[1976] 1 All ER 920
[1983] RPC 68
[1957] RPC 158
BL O/496/15
[2014] EWCA Civ 1629
[1981] RPC 197
BL O/386/12
BL O/356/06
[1967] RPC 479
BL O/168/92, BL O/145/94
[1973] RPC 59
[2018] EWCA Civ 1416
[1982] FSR 406
[1961] RPC 403
[2008] EWHC 649 (Pat)
[2004] RPC 5
[2010] EWHC 1487
[2010] EWCA Civ 1260
[2009] EWHC 181 (Pat), [2009] RPC 12
see Rhone-Poulenc
BL O/279/04
[2000] RPC 422
[2002] RPC 1,
[2003] RPC 3,
[2005] RPC 9
3.94
61.07, 71.02
15.46
1.30.1
18.86.3, 25.03, 123.39
130.31 32
3.38
27.28
14.125.1
14.135
18.55, 18.57
1.38.4
1.33.2, 4.03
3.83
71.02, 71.04.1
4A.04
2.06.2
60.19.1
48A.07, 48B.04, 48B.15
1.15
2.29.1, 18.09.4
3.33.2, 5.19.2
3.33.2, 60.19
40.04, 40.04.3, 41.05
18.97
75.04, 27.07
2.03.1, 14.66
14.84, 62.13, 72.03
1.27.1, 2.15, 3.34.1, 14.67.1, 14.76,
January 2019
Kiwi Coders Corporation's Application
Klein Schanzlin & Becker AG's Application
Klinische Versuche (Clinical Trials) I
Klinische Versuche (Clinical Trials) II
Knauf Insulation’s Application
Kokusai Denshin Denwa's Application
Koninklijke Philips Electronics NV v Nintendo of Europe GmbH
labetalol
L'Air Liquide Societe's Application
L’Oréal Ltd v RN Ventures Ltd
Lalvani et al’s Patent
Lancer Boss v Henley Forklift
Lantana v Comptroller-General of Patents
Lantana v Comptroller-General of Patents
La Soudure Electrique Autogene SA's Application
Latchworth Ltd's Patent
Lee Pharmaceutical's Applications
Leonard's Application
Lermer Gmbh's Patent
Les Laboratoires Servier & Anor v Apotex Inc & Ors (Rev 1)
Letraset Ltd v Rexel Ltd
Lever Bros' Patent
Lichtenstein's Patent 1434 786
LIFFE Administration and Management v Pavel Pinkava
LIFFE Administration and Management v Pavel Pinkava and De Novo Markets Limited
Ling's Patent and Wilson's and Pearce's Patent
Linkrose Ltd's Patent
[1986] RPC 106
[1985] RPC 241
[1997] RPC 623
[1998] RPC 423
BL O/098/13
SHB 66, BL O/009/83
[2014] EWHC 1959 (Pat)
see Allen and Hanburys
49 RPC 428
[2018] EWHC 173 (Pat)
BLO/220/13
[1975] RPC 307
[2013] EWHC 2673 (Pat)
[2014] EWCA Civ 1463
56 RPC 218
SHB 471, BL O/112/96
[1978] RPC 51
[1966] RPC 269
SHB 462, BL O/14/96
[2014] UKSC 55
[1974] RPC 175
[1955] RPC 198
SHB 320, BL O/152/83, BL C/34/84
[2007] RPC 30
[2006] EWHC 595 (Pat)
[1981] RPC 85
SHB 344, BL O/117/90
14.84, 14.86, 14.103, 14.121-122
15.21
5.08, 117.01
60.24
60.24
15.21
15.21
18.97, 75.05.1, 76.15.0
2.12
75.12, 125.26
3.13.1
62.03
1.11, 1.12, 1.21.2 1.38.1, 1.38.5
1.17.2, 1.21, 1.21.2, 1.38.5
5.05
28.16
4A.05
14.138
28.15
61.04.3
5.24
27.21
28.12
39.09-11
39.10
28.11, 28.13
28.14
January 2019
Liversidge v British Telecommunications plc
Loadhog Ltd. v Polymer Logistics BV
Loewe Radio Co Ltd's Applications
Lowndes' Application
Lowndes' Patent
Lucas (Batteries) Ltd v Gaedor Ltd
Lubrizol Corpn v Esso Petroleum
Lubrizol Corporation v Esso Petroleum Co. Ltd.
Luk Lamellan und Kupplungsbau GmbH's Application
Luthy's Patent 1550 385
Lux Traffic Controls Ltd v Pike Signals Ltd and Faronwise Ltd
M's Application
Maag Gear Wheel and Machine Co Ltd's Patent
Mabuchi Motor KK's Patents
MacMullen’s Application
Macrossan’s Patent Application
Magill’s International Application
Magnesium Elektron Ltd v Molycorp Chemicals & Oxides (Europe) Ltd & Anor
Mallory Metallurgical Products Ltd v Black Sivalls & Bryson Inc
Marbourn's Patent
Marconi v British Radio Telegraph and Telephone Co Ltd
Markem Corp v Zipher Ltd
Marley (UK) Ltd's Patent
Marshall's Application
Masterman's Design
Matsushita Electric Industrial Co. v Comptroller General of Patents
Mayne Pharma v Debiopharm and Sanofi- Synthélabo
Maxluck Biotechnology’s Application
McDonald's Application
Mead's Patent
[1991] RPC 229
BL O/195/10
46 RPC 479
SHB 400, BL O/19/93
45 RPC 48
[1978] RPC 297
[1993] FSR 64
[1997] RPC 195, [1998] RPC 727
[1997] RPC 104
SHB 325
[1993] RPC 107
[1985] RPC 249
[1985] RPC 572
[1996] RPC 387
BL O/307/03
[2006] EWHC 705 (Ch)
BL O/256/00
[2015] EWHC 3596
[1977] RPC 321
BL O/376/99
(1911) 28 RPC 181
[2005] RPC 31
[1994] RPC 231
[1969] RPC 83
[1991] RPC 89
[2008] EWHC 2071 (Pat)
[2006] EWHC 1123 (Pat)
BL O/130/10
SHB 465, BL O/71/96
[1980] RPC 146
72.03
2.27.1
48A.04, 48B.10
76.04.1
2.09
2.27.1
280.04
14.112.1, 64.04
15.21, 15.46
28.12
1.17, 2.27
123.09, 123.10
18.96, 18.97
75.05
123.37
1.15.1, 1.33, 18.09.1, 18.09.2
12.04
100.04.1
71.04
28.11
60.09
7.12.1, 8.09, 74.03.2
18.96
72.08
1.33
5.26.6, 20A.15, 28.09.2
14.75
3.33.1
18.56
28.14
January 2019
Medimmune Ltd v Novartis Pharmaceuticals UK Ltd, Medical Research Council
Melia's Application
Melkris Ltd v Denman
Memco-Med Ltd's Patent
Memcor Australia Pty Ltd v Norit Membraan Technologie BV
Menashe Business Mercantile Ltd v William Hill Organization Ltd
Mentor Corporation v Hollister Inc
Merck & Co Inc’s Patent
Merck Sharp & Dohme Corp v Teva UK Ltd
Merrell Dow Pharmaceuticals v N H Norton
Merrell Dow Pharmaceuticals v N H Norton
Merrill Lynch’s Application
metoprolol
Meunier’s International Application
Microsonics Corporation's Applications
Milliken Denmark AS v WalkOff Mats Ltd and anr
Mills' Application
Ministry of Agriculture, Fisheries and Food's Patent
Minnesota Mining and Manufacturing Co v Birtles, Lovatt and Evode Ltd
Minnesota Mining and Manufacturing Co and anr v Plastus Kreative AB and anr
Minnesota Mining and Manufacturing Co v Rennicks (UK) Ltd
Minnesota Mining & Manufacturing Co.'s (Suspension Aerosol Formulation) Patent
Mitsui Engineering & Shipbuilding Co’s Application
MMD Design & Consultancy Ltd's Patent
Molnlycke AB v Procter & Gamble Ltd
Monkey Tower Ltd v Ability International Ltd
Monsanto Co v Stauffer Chemical Co and another
Monsanto (Brignac's) Application
Monsanto's CCP Patent
[2011] EWHC 1669 (Pat)
BL O/153/92
BL O/369/01
[1992] RPC 403
[2003] FSR 43
[2003] RPC 31
[1993] RPC 7
[2004] FSR 16
[2011] EWCA Civ 382
[1996] RPC 76
BL C/89/96
[1989] RPC 561
see AB Hassle
BL O/013/01
[1984] RPC 29
[1996] FSR 292
[1985] RPC 339
SHB 68, BL O/11/92
BL O/237/00
BL C/64/95, [1997] RPC 737
[1992] RPC 331
[1999] RPC 135
[1984] RPC 471
[1989] RPC 131
[1994] RPC 49
[2013] EWHC 18 (Pat)
[1985] RPC 515
[1971] RPC 153
[1990] FSR 93
14.61
1.33.2, 4.03
71.04.1
40.04.1, 40.04.2, 40.05
2.29.1
60.19.1
14.64, 14.69, 14.71, 14.87
76.15.6, 97.03
3.39.1
0.09, 1.09, 1.10.1, 2.04.2, 2.29, 130.31
76.04.1, 76.14, 76.25
1.15.1, 1.18.1, 1.22, 1.23, 1.34
89A.05, 123.37
2.25
2.27
123.10
27.08, 27.31
7.12.2
14.115
3.79
14.80, 14.115, 71.04
15.08
71.04.1, 71.07
3.06, 3.34, 14.67.1, 33.06, 62.10
72.43
60.24, 60.31
2.24
48.09, 48.15,
January 2019
Monsanto's Patent 1366379
Monsanto Technology LLC v Cefetra BV et al
Montgomerie Reid's Application
Morton-Norwich Products Inc and others v Intercen Ltd
M-Systems Flash Disk Pioneers Ltd v Trek Technology (Singapore) Pte Ltd
Mutoh Industry Ltd's Application
MWUK Ltd v Fashion at Work Ltd
Nakumura's Patent 1513 967
Napp Pharmaceutical Holdings Ltd v Dr Reddy’s Laboratories (UK) Ltd
naproxen
National Starch and Chemical Investment Corp's Application
NEC Corporation’s Application
Neo-Inhalation Products Limited’s Application
Nestec SA & Ors v Dualit Ltd & Ors
nifedipine
Nikken Kosakusho Works v Pioneer Trading Co.
Nippon Piston Ring Co Ltd's Application
No-Fume Ltd v Frank Pitchford Co Ltd
Nokia Mobile Phones (UK) Ltd
Nokia v Ipcom (Patents Court) (Court of Appeal)
Nokia Corporation v IPCOM GMBH & Co KG (No. 3)
Norton Healthcare Ltd v Beecham Group Plc
Norsk Hydro AS's Patent
Novartis AG v Generics (UK) Ltd (trading as Mylan)
Novartis AG v Johnson & Johnson
Novartis AG v Johnson & Johnson
Noxell Ltd's Application
NRDC's Application
Nutrinova Nutrition v Scanchem UK (No.2)
SHB 21, BL O/116/87
ECJ Case C-428/08
SHB 100, BL O/145/83
[1981] FSR 337
BL O/318/06
[1984] RPC 35
BL O/531/16
SHB 324, BL O/121/84
[2016] EWCA Civ 1053
see Syntex
SHB 463A, BL O/34/96
BL O/038/00
BLO/154/13
[2013] EWHC 923 (Pat)
see Bayer
[2005] FSR 15, [2006] FSR 4
[1987] RPC 120
52 RPC 231
[1996] RPC 733
[2009] EWHC 3482 [2011] EWCA Civ 6
[2013] RPC 5
BL C/62/95
[1997] RPC 89
[2012] EWCA Civ 1623
[2009] EWHC (Pat) 1671
[2010] EWCA Civ 1039
SHB 391, BL O/137/92
[1961] RPC 134
[2001] FSR 43
48A.05, 48B.11
46.18
60.06, 76A.08-08.1
48.18, 52.03
67.05
130.26, 14.127
3.28.2
27.09.1
28.13
14.117.4
18.07.2
3.45
118.13
5.25.2, 15.22, 60.12.3
14.115, 14.129, 72.43
13.09
14.73
18.88
3.30.1, 14.79 3.30.1
76.15.5, 76.18.1
2.06
27.26
3.87.2
5.25.1, 14.81
14.81
76.13
4.02
62.12
January 2019
NV de Bataafsche Petroleum Maatschappij's Application
57 RPC 65 14.154
Occidental Petroleum Corporation's Application SHB 145, BL O/35/84
4A.09
Occlutech GMBH and anr v AGA Medical Corp. and anr
[2010] EWCA Civ 702 14.112
Official Ruling 1914 (A) 31 RPC Appendix i 14.100
Ogawa Chemical Industries Ltd's Applications [1986] RPC 63 18.86
Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd
[1970] RPC 157 3.88
Oliver Brüstle v Greenpeace eV C-34/10 76A.02
Omron Tateisi Electronics Co's Application [1981] RPC 125 97.04, 123.44
Omnipharm Limited v Merial [2011 EWHC 3393 (Pat)
3.87.1
Oneida Indian Nation’s application [2007] EWHC 0954 (Pat)
1.23.1
Optical Coating Laboratory Inc and anr v Pilkington P. E. and anr
[1995] RPC 145 3.80
Oral Health Products Inc (Halstead's) Application [1977] RPC 612 4A.05
Organon Teknika Ltd v F. Hoffmann-La Roche AG [1996] FSR 383 74.03, 74.03.1
Osterman's Patent [1985] RPC 579 75.05
Owens-Corning Fibreglas Corporation's Patent [1972] RPC 684 72.14
Oxford Instruments' Ltd's Application SHB 248, BL O/68/93
82.04.1
Oystertec Plc’s Patent [2003] RPC 29 72.04
P's Application [1983] RPC 269 15.18
Paez's Application BL O/176/83 4.05
Page v Brent Toy Products Ltd (1950) 67 RPC 4 62.11
Palmaz's European Patents (UK) [1999] RPC 47, [2000] RPC 631
76.14, 76.15.3, 125.04
Parr's Patent SHB 282, 37.19.1 BL O/46/94
Patchett's Patent [1963] RPC 90, [1967] RPC 237
36.05, 46.35.1, 46.49
Paulus's Patent SHB 448, 28.14 BL O/73/95
Payne's Application [1985] RPC 193 13.14, 15.56, 19.02, 117.19, 117.22
PCME Ltd v Goyen Controls Co UK Ltd [1999] FSR 801 2.28
Peabody International's Application [1986] RPC 521 16.02
Peckitt's Application [1999] RPC 337 123.18
Pelling and Campbell's Application SHB 27, 32, 64, BL O/134/87
10.07
January 2019
Penn Engineering & Manufacturing Corp's Patent
Penn's Patent 1357 961
Penwalt Corporation's Application
Pepper v Hart
Peter Crowley v United Kingdom Intellectual Property Office
Petra Fischer's Application
Pfizer Corp v Ministry of Health
Pfizer Inc's Patent 1257180 ("piroxicam")
Pfizer Ltd’s Patent
Pharmacia Corp. v Merck & Co. Inc.
Philips (Bosgra's) Application
Philips Electronic and Associated Industries' Patent
Pilat’s International Application
Pioneer Electronics Capital Inc and anr v Warner Music Manufacturing Europe GmbH and anr
piroxicam
Plastus Kreativ AB v Minnesota Mining and Manufacturing Co
PLG Research v Ardon International Ltd
PLG Research Ltd and anr v Ardon International Ltd and others
Pottier's Application
Pozzoli SPA v BDMO SA
Prendergast’s Applications
Price v Elf Print Media Ltd
Pritchard's Patent
Proctor & Gamble Co's Patent 1254465
Protecting Kids the World Over (PKTWO) LTD’s Patent application
Protoned BV's Application
PyMah Corporation's Patent
[1973] RPC 233
SHB 112
SHB 42, BL O/72/82
[1992] 3 WLR 1032
[2014] unreported
[1997] RPC 899
[1965] RPC 261
SHB 11, BL O/78/87
[2001] FSR 16
[2002] RPC 41
[1974] RPC 241
[1987] RPC 244
[2003] RPC 13
[1995] RPC 487
see Pfizer
[1995] RPC 438
[1993] FSR 197
[1995] RPC 287
[1967] RPC 170
[2007] EWCA Civ 588 [2007] All ER (D) 275 (JUN)
[2000] RPC 446
Patents Court,1 February 2001, unreported [2001] EWCA Civ 622
SHB 469, BL O/104/96
SHB 39, BL O/88/88
[2012] RPC 13
[1983] FSR 110
SHB 336, BL O/68/95
48B.12
46.58.1, 46.63, 46.71-72
15.21
130.33
4.05
3.08
55.04
46.47.2, 46.63
3.21, 3.37.1, 3.40, 4A.31
5.23
3.77
27.11
123.37
60.16
71.07
2.29, 3.80
3.23
14.153
3.12, 3.13, 3.97
3.87, 4A.29, 14.152
40.03.2
28.15
46.48
1.39.1
76.13.1
46.60
January 2019
Q Software Global Ltd’s Application
Qualcomm Inc v Nokia Corp
Quantel's Patents
Quantel v Spaceward Microsystems
R. v Comptroller-General of Patents, ex parte Archibald Kenrick & Sons Ltd
R. v Comptroller-General of Patents, ex parte Ash & Lacey Building Products Ltd
R. v Comptroller-General of Patents, ex parte Bayer AG
R. v Comptroller-General of Patents, ex parte Celltech Ltd
R. v Comptroller-General of Patents, ex parte Drazil
R. v Comptroller-General of Patents, ex parte Penife International Ltd
R. (on the application of Rjm) (Fc) v Secretary of State for Work and Pensions Appellate
Raleigh Cycle Co Ltd and Anr v Miller and Co Ltd
Ranger Services Application
Ratiopharm GmbH v Napp Pharmaceutical Holdings
Raychem Corp.'s Patents
Raychem Ltd's Application
Raytheon Company v Comptroller General of Patents, Designs and Trade Marks
Really Virtual Co Ltd v UK Intellectual Property Office
Rediffusion Simulation v Link-Miles
Reed v Sir James Laing & Sons Ltd
REEF Trade Mark
Regeneron Pharmaceuticals Inc v Genentech Inc
Regeneron pharmaceuticals Inc, Bayer Pharma AG v Genentec Inc
Regeneron Pharmaceuticals v Kymab Ltd
Re K (Infants)
Reiss Engineering Co Ltd v G J Harris
Reiss Engineering's Patents
Research Corp's (Carboplatin) Patent
BL O/120/11
[2008] EWHC 329 (Pat)
SHB 149, BL O/128/90
[1990] RPC 83
[1994] RPC 635
[2002] RPC 46
BL C/56/85
[1991] RPC 475
[1992] RPC 479
[2004] RPC 37
[2008] UKHL 63
65 RPC 141
BL O/362/09
[2009] RPC 11
[1999] RPC 497, [1998] RPC 31
[1986] RPC 547
[2007] EWHC 1230 (Pat)
[2012] EWHC 1086 (Ch)
[1993] FSR 369
BL C/74/96
[2003] RPC 5
[2012], EWHC 657 (Pat)
[2013] EWCA Civ 93
[2018] EWCA Civ 671
[1963] Ch 381
[1987] RPC 171
SHB 2, BL O/180/86
[1990] RPC 663
1.38.4
2.12.2
48B.04, 48B.12
2.28
97.04.1
72.26, 72.27
46.22
97.04.1, 117.07
97.04.1, 117.07
14.48, 97.04.1
0.10
14.125.1, 14.146
18.09.5
3.33.1
3.30, 3.35, 3.93
14.151, 76.17
1.16
1.37.2
27.08
27.05.2, 73.10
97.03
14.77, 14.84, 4A.29
14.84, 4A.29
14.66.1, 14.70.1
118.13
275.02
28.16
46.41-42, 46.45,
January 2019
Research In Motion UK Ltd. v Inpro Licensing SARL
Rhône-Poulenc's Patent 1164585 ("ketoprofen")
Rhône-Poulenc Santé's European Patent (UK)
Richardson-Vicks Inc.’s Patent
Richco Plastic Co's Patent
Rigcool Ltd v Optima Solutions UK Ltd
Rigcool Ltd v Optima Solutions UK Ltd
Robinson’s Application
Rock Shing Industrial Ltd v Brau AG
Rodi and Wienenberger AG v Henry Showell Ltd
Rohde and Schwarz's Application
Ronson Products Ltd v A Lewis & Co (Westminster) Ltd
Rotocrop International v Genbourne
Roussel-Uclaf (Clemence & le Martret's) Patent
Roussel-Uclaf (Joly and Warmant's) Patent
Rovi Solutions Corporation & Anor v Virgin Media Ltd & Ors
SABAF SpA v Meneghetti SpA (Court of Appeal), SABAF SpA v MFI Furniture Centres Ltd (House of Lords)
salbutamol
Samuel's Patent 1594 996
Sandvik Intellectual Property AB v Kennametal UK Ltd
Saint-Gobain PAM SA v Fusion Provida Ltd and Electrosteel Castings Ltd
Sanders Associates' Patent
Sandoz Ltd (Frei's Application)
Schenck Rotec GmbH v Universal Balancing Limited
Schering Agrochemicals Ltd's Patent 1271659
Schering AG's Application
Schering AG's Application
[2006] EWHC 70 (Pat)
BL O/46/85, [1989] RPC 561
[1996] RPC 125
[1995] RPC 568
[1989] RPC 722
BL O/149/11
BL O/182/11
BL O/336/08
SHB 309, BL O/138/94
[1966] RPC 441, [1969] RPC 367
[1980] RPC 155
[1963] RPC 103
[1982] FSR 241
[1987] RPC 109 [1989] RPC 405
[1971] RPC 304
[2014] EWHC 1559 (Pat)
[2003] RPC 14, [2005] RPC 10
see Allen and Hanburys
SHB 322
[2011] EWHC 3311 (Pat)
[2005] EWCA Civ 177, [2005] IP & T 880
SHB 104, BL O/89/81
[1976] RPC 449
[2012] EWHC 1920
SHB 47, BL O/115/88
[1971] RPC 337
[1985] RPC 545
46.48, 46.53, 46.55
1.12
46.73, 46.76.1
80.03
3.91, 76.06
48.15
37.20.1, 123.10.1
123.10.1
4.05.2, 14.90
19.04
14.135, 60.09
17.94.4, 17.94.10, 17.96.1
62.10
27.11
46.15 16, 46.21 23
72.16
2.12.1
60.15, 3.17
28.13
14.76
3.86
27.24
3.23
2.13.3.1
46.51
4A.02
4A.20, 130.34
January 2019
Schering AG's Patent
Schering AG's Patent 1193998 (ABM Chemicals Ltd's Application)
Schering Biotech Corp's Application
Schlumberger Holdings Ltd v Electromagnetic Geoservices AS
Schütz (UK) Ltd v Werit UK Ltd (Patents Court) (Court of Appeal) (Supreme Court) Schütz (UK) Ltd v Werit UK Ltd & Anr
Schwarzkopf and Ors' Application
Schwarzkopf's Application
Scragg (Ernest) Ltd's Application
Secretary of State for Education and Skills v Frontline Technology Limited
SeeReal Technologies SA
Shahin's Application
Shanks v Unilever (Patents Court) (Court of Appeal)
Shanks v Unilever Plc & Ors (Hearing) (Patents Court)
(Court of Appeal)
Shape and Potemkin's Applications
Shell Development Co's Application
Shiley Inc's Patent 1303864
Shopalotto.com Ltd’s Application
Siegfried Demel v C & H Jefferson
Siemens Medical Systems Inc.’s Application
Singleton's Patent 1395 858
Sirna Therapeutics Inc’s Application
Smart Card Solutions Ltd’s Applications
Smith International Inc’s Patent
Smith & Nephew's Patent 1280631
Smith & Nephew Plc v Convatec Technologies Inc
Smith, Kline and French Laboratories Ltd v Evans Medical Ltd
[1986] RPC 30
BL O/133/87
[1993] RPC 249
[2010] EWCA Civ 819 [2010] RPC 33
[2010] EWHC 660 [2011] EWCA Civ 303 [2013] UKSC 16 [2011] EWCA Civ 927
31 RPC 437
[1965] RPC 387
[1972] RPC 679
[2005] EWHC 37 (Ch)
BL O/261/12
SHB 456, BL O/149/95
[2010] RPC 11 [2011] RPC 12
BL O/259/13 [2014] EWHC 1647 (Pat) [2017] EWCA Civ 2
SHB 211, BL O/140/92
64 RPC 154
[1988] RPC 97
[2006] RPC 7
[1999] FSR 204
BL O/063/00
SHB 323
[2006] RPC 12
[2004] RPC 12
[2006] FSR 25
SHB 22, BL O/126/87
[2015] EWCA Civ 607
[1989] FSR 513, [1989] FSR 561
118.13
46.26, 46.51, 46.60, 46.69.1
14.142-142.1, 14.149, 14.152
3.28-28.1, 3.81, 14.64
60.12.2 60.12.2 60.12.2-60.12.3 68.08
14.78
7.05
72.19
14.127.1, 130.26
18.97
1.30
41.04.1 41.04.1
40.04.2
8.23
14.152
46.50, 46.58, 46.63, 46.65, 46.76
1.20.2, 1.32, 17.98
76.26
14.200
28.13
5.26.4, 5.26.5, 20A.13, 20A.14, 28.09, 28.09.1
18.56
97.08
46.50.1, 46.55, 46.64, 46.73, 46.76.3
14.117.2-3
60.25, 27.08, 75.04
January 2019
Smith, Kline and French Laboratories Ltd v R D Harbottle (Mercantile) Ltd and Others
Smith, Kline and French Laboratories Ltd's Cimetidine Patents 1338169 and 1397436 (Generics' Application)
Smith, Kline and French Laboratories Ltd's Patents 1338169, 1395929, 1397436 and 1398426 (Harris Pharmaceuticals' Application)
Smith, Kline and French Laboratories Ltd's Patents 1338169 and 1397436 (Ivax Corp's Application)
SmithKline Beecham plc’s Patent
SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent
SmithKline Beecham Plc v Apotex Europe Ltd (No.2)
Societe Minerve SA's Patent 1445 469
Sonic Tape plc's Patent
Sony Corporation's Patent
Sopharma SA's Application
Southco Inc v Dzus Fastener Europe Ltd
Spring Form Inc. v Toy Brokers Ltd
Stanelco Fibre Optics Ltd’s Applications
Starsight Telecast Inc & Anor v Virgin Media Ltd & Ors
Statoil ASA v University of Southampton
Stena Rederi Aktiebolag v Irish Ferries Ltd
Stevens' Application
Sudarshan Chemical Industries Ltd v Clariant Produkte (Deutschland) GmbH
Symbian Ltd’s Application
Syntex Corporation's Patent ("naproxen")
Szucs' Application
Tanabe Seiyaku Co's Patent 1236467 ("diltiazem")
Tate & Lyle Technology v Roquette Frères (Patents Court) Tate & Lyle Technology v Roquette Frères (Court of Appeal)
TDK Electronics Co Ltd's Application
[1980] RPC 363
[1990] RPC 203, [1988] RPC 148
[1990] RPC 203
SHB 114
[2003] RPC 6
[2006] RPC 10
[2005] FSR 24
SHB 315, BL O/55/82
[1987] RPC 251
[1990] RPC 152
[1983] RPC 195
[1990] RPC 587
[2002] FSR 17
[2005] RPC 15
[2014] EWHC 828 (Pat)
BL O/204/05
[2002] RPC 50, [2003] RPC 36
SHB 241, BL O/63/93
[2014] RPC 6
[2008] EWCA Civ 1066, [2009] RPC 1
[1986] RPC 585
SHB 106, BL O/004/86
BL O/140/86
[2010] FSR 1
[2010] EWCA Civ 1049
SHB 103,
60.13 14,
46.35-37.2, 46.38, 46.39.1,46.42 47.1, 46.48, 46.54, 46.55.1-56, 46.70, 46.16, 46.21
46.16
46.47.1, 46.70, 46.73
2.35
2.02, 2.06.2 2.07.2- 3, 2.08, 2.10-10.1
63.04, 65.06
28.11
130.22, 280.04
28.12
4A.18, 4A.20
76.13.1, 76.20
69.06
7.12.1, 7.12.3
76.15.5
7.12.2, 7.12.4, 8.09
60.26
8.23
14.127
1.09.1, 1.09.3, 1.16, 1.24, 1.37, 1.37.1
46.38.1, 46.61, 46.68
8.21.1
46.47, 46.62
1.27, 2.14.1
2.14.1
1.40.2
January 2019
BL O/97/83
Technip France SA’s Patent [2004] RPC 46 3.21
Tekdata Ltd's Patent 1553 575 [1985] RPC 201 28.12
Telsonic AG’s Patent [2004] RPC 38 14.135
Tetra Moletric Ltd v Japan Imports Ltd [1976] RPC 547 3.26, 3.81.1
Teva UK Limited & another v AstraZeneca AB EWHC 2873 2.08, 3.30.0, 76.15.5
Teva UK Ltd and others v AstraZeneca AB [2012] EWHC 655 3.99
Texas Iron Works v Nodeco [2000] RPC 207 62.03, 76.05
Textron Inc's Patent [1989] RPC 441 28.12
Therma-Tru Corporation's Patent BL O/92/96 50.05, 50.07.1
Three Delayed Convention Applications [1975] RPC 611 119.03
Threeway Pressings Ltd’s Application [2012] RPC 129 BL O/124/12
2.38
timolol see Frosst
Tokan Kogyo KK's Application [1985] RPC 244 117.01, 123.03
Torre's Patent SHB 356, BL O/146/95 46.37.4, 46.62, 46.72.1
Townsend’s Application BL O/266/03, [2004] EWHC 482 (Pat)
1.40, 1.40.2
triazolam see Upjohn
Triten Corp's Patent SHB 45, BL O/65/88
28.16
Ultimatte Corp's Patent SHB 101, BL O/1/84
48.13
Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd [2005] RPC 7 14.111
Ultraframe (UK) Ltd v Fielding [2004] RPC 24 39.12.1
Unilever Ltd (Davis') Application [1983] RPC 219 0.05, 4A.02, 4A.09
Unilever plc v Chefaro Proprietaries Ltd [1994] RPC 567 3.34
Unilin Beheer BV v Berry Floor NV [2004] EWCA (Civ) 1021
5.23.3
Unilin Beheer BV v Berry Floor NV and Others [2007] EWCA Civ 364 61.04.2
Unilin Beheer BV v Berry Floor NV (No.2) [2006] FSR 26 62.13
Union Carbide Corporation (Hostettler's) Application
[1972] RPC 601 3.94
Union Carbide Corp. v BP Chemicals Ltd [1999] RPC 409, [1998] RPC 1
125.05, 2.06.1, 2.18
Unique Products and Design Co Ltd's Application SHB 453, BL O/147/95
89.10
Unitec Systems' Application SHB 247, BL O/143/94
39.12
United Shoe Machinery's Application 57 RPC 71 14.148
January 2019
United Wire Ltd v Screen Repair Services (Scotland) Ltd
Universite Rene Descartes
University of Chicago's Patent
University of Southampton’s Applications
University of Southampton’s Applications
Uniworld Trade and Finance Establishment's Patent 1521 254
Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors (Patents Court) (Court of Appeal)
Upjohn Co (Beal's) Patent
Upjohn Co (Kirton's) Application
Upjohn's Patents 1291631 and 1291632 ("triazolam") (Generics Ltd’s application)
Upjohn's Patent 1291632
Upjohn's Patent 1291631 ("triazolam") and Takeda Chemical Industries' Patent 1298364 (Generics Ltd’s application)
Valensi and another v British Radio Corporation Ltd
Van der Lely NV v Bamfords Ltd
Van der Lely's Application
Vause’s European Patent
VEB Kombinat Walzlager und Normteile's Application
Vector Corp V Glatt Air Technologies Ltd
Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd
Virgin Atlantic Airways Limited v Zodiac Seats UK Limited
Virulite Ltd’s Application
VNU Business Publications BV v Ziff Davis (UK) Limited
Waddingtons Ltd's Patent
Wake Forest University Health Sciences & Ors v Smith & Nephew Plc & Anor
Walters' Patent
Ward’s Applications
[2001] RPC 24
SHB 293, BL O/147/88
SHB 353, BL O/44/91
[2002] RPC 44
[2005] RPC 11, [2006] RPC 21
SHB 318
[2015] EWHC 3366
[2017] EWCA Civ 266
[1973] RPC 77
[1976] RPC 324
BL C/70/88
SHB 8, 19, BL O/40/87, BL O/102/87
SHB 4, BL C/49/87
[1973] RPC 337
[1963] RPC 61
[1987] RPC 61
BL O/278/00
[1987] RPC 405
[2007] RPC 12
[2009] EWCA Civ 1062, [2010] RPC 8
[2013] UKSC 46
BL O/058/10
[1992] RPC 269
[1986] RPC 158
[2009] EWCA Civ 848
SHB 362, BL O/105/91
BL O/143/02, BL O/055/06
60.12.1-3
14.151
28.12
12.05.1
7.12.3, 7.13, 8.06
28.16
2.22.1
27.15
4A.10
46.37.2, 46.48
46.17
46.34
14.68-14.69
60.07
76.15.1
28.05
15.08, 76.08.1
27.07, 76.15.4
1.19, 14.112, 14.135
61.04.2
4A.09
118.13
27.07
3.37.1
28.15
17.96.4
January 2019
Warner-Lambert Company, LLC v Actavis Group [2015] EWCA Civ 556 4A.31, 60.16.1, Ptc EHF & Ors 60.19.2
Warwick's Patent 1444 979 SHB 317, 28.14 BL O/150/82
Waters Investments Ltd’s Application BL O/146/07 1.29.2
Webb's Application BL O/84/88 4.05
Wellcome Foundation Ltd v VR Laboratories [1982] RPC 343 3.04 (Australia) Pty Ltd
WesternGeco Ltd’s Application BL O/135/07 1.29.2
Wheatley v Drillsafe Ltd [2001] RPC 7 3.16
Wheatley's Application [1985] RPC 91 2.28
Whiteside's Patent 1467 044 SHB 321, 28.13, 28.16 BL O/44/84
Wilkinson Sword Ltd v Gillette Industries Ltd & Anr [1975] RPC 101 27.08
Wills' Application BL O/89/99 1.33.2
Windsurfing International Inc v Tabur Marine (Great [1985] RPC 59 3.05, 3.11, 3.23, Britain) Ltd 3.34, 3.76
WMS Gaming Ltd’s Application BL O/260/13 1.20.2
[2007] EWHC 2636Wobben v Vestas-Celtic Wind Technology Ltd 14.60(Pat)
Woolard’s Application [2002] RPC 39 2.32, 73.02.2
J Wyeth and Brother Ltd's Application [1985] RPC 545 4A.20
Yeda Research and Development Co Ltd v [2007] RPC 9 37.20 Rhone-Poulenc Rorer International Holdings Inc.
Yeda Research and Development Co Ltd v Rhone- [2007] UKHL 43 8.06, 37.20 Poulenc Rorer International Holdings Inc. and others
Zannetos's Application SHB 474, 18.24 BL O/119/96
Zarach's Patent 1578 074 SHB 319 28.12
Zeigler's Patent BL O/64/87 71.02
Zipher Ltd v Markem Systems Ltd & Anr [2008] EWHC 1379 14.60-14.61, 14.64, (Pat) 14.67, 14.76, 27.08,
27.32, 27.32.1, 75.04, 75.21, 75.21.1
EPO Decisions referred to in the Manual Manual Paragraph
G 05/83 [1985] 3 OJEPO 64 Eisai/ Second medical 4A.20, 4A.27, indication 4A.28
G 02/88 [1990] 4 OJEPO 93 [1990] Mobil Oil Corp 2.14 correction 12 OJEPO 469
January 2019
G 06/88 [1990] 4 OJEPO 114 Bayer A G 2.14
G 11/91 [1993] 3 OJEPO 125 Celtrix 117.07
G 01/92 [1993] 5 OJEPO 277 2.27
G 01/93 [1994] 8 OJEPO 541 Adv Semiconductor 18.69, 76.14, 76.27
G 03/93 [1995] 1-2 OJEPO 18 6.03
G 01/98 [2000] EPOR 303 Novartis 76A.05
G 02/98 [2001] 10 OJEPO 413 [2002] EPOR 17
Requirement for claiming priority of the “same invention”
5.25
G 01/03 and 02/03
[2004] 8-9 OJEPO 413 [2004] EPOR 33
Disclaimer/PPG Disclaimer/Genetic Systems
14.127-14.127.1
G 01/04 [2006] 5 OJEPO 334 [2006] EPOR 15
Diagnostic Methods 4A.06
G 2/06 [2009] 5 OJEPO 306 WARF/ Use of embryos 76A.02.1
G 01/07 [2011] 3 OJEPO 134 Medi-Physics/ Treatment by surgery
4A.08-4A.10, 4A.11.1, 4A.14
G 02/07 State of Israel/ Broccoli 76A.03
G 01/08 State of Israel/ Tomatoes
76A.03
G 02/08 [2010] 10 OJEPO 456 Abbott Respiratory/ Dosage regime
4A.27-4A27.1, 4A.28.2
G 03/08 Patentability of programs for computers
1.09.2
G 02/10 Disclaimer/SCRIPPS 14.127,4A.14
G 01/15 Infineum USA L.P. 5.25.3
G 01/16 Disclaimer 14.127
J 22/88 [1990] 5 OJEPO 244 Radakovic 28.15.1
J 02/01 [2005] 2 OJEPO 88 [2004] EPOR 54
Trustees of Dartmouth College
15.24
T 02/80 [1981] 10 OJEPO 431 Bayer AG 14.128
T 36/82 [1983] 7 OJEPO 269 Cselt 3.04
T 110/82 [1983] 7 OJEPO 274 Bayer AG 14.159.1
T 119/82 [1984] 5 OJEPO 217 Exxon Research & Eng Co
3.82
T 150/82 [1984] 7 OJEPO 309 International Flavors and Fragrances Inc
2.15, 14.121
T 06/83 [1990] 1-2 OJEPO 5 IBM 1.09.4, 1.37.1
T 84/83 [1979-85] EPOR 796 Luchtenberg GmbH 2.27
T 201/83 [1984] 10 OJEPO 481 Shell 76.07
T 204/83 [1985] 10 OJEPO 310 Charbonnages 2.08.1
T 176/84 [1986] 2 OJEPO 50 Mobius 3.44
January 2019
Metallwarenfabrik
T 208/84 [1987] 1 OJEPO 14 Vicom Systems Inc 1.09.4, 1.29-1.29.2, 1.37.1
T 26/85 [1990] EPOR 267 Toshiba/Thickness of Magnetic Layers
2.06.2
T 115/85 IBM/Computer-related invention
1.09.4, 1.37.1
T 163/85 [1990] EPOR 599 BBC/Colour television signal
1.40.1
T 5/86 unreported Newman 4.05
T 303/86 [1993] EPOR 241 CPC Int 2.04.1
T 427/86 [1999] EPOR 443 Rhône-Poulenc 2.19
T 35/87 [1988] 4 OJEPO 134 BASF 14.163
T 301/87 [1990] 8 OJEPO 335 Biogen 14.149
T 331/87 [1991] EPOR 194 Houdaille/Removal of feature
76.18.1
T 344/89 [1993] EPOR 209 GTE Laboratories 76.14
T 482/89 [1992] 11 OJEPO 646 Telemechanique 2.27
T 666/89 [1992] EPOR 501 Unilever/Washing Composition
2.06.2
T 19/90 315/03 [1990] 12 OJEPO 476 [2006] 1 OJEPO 15
Harvard College T 1.35, 76A.02.1, 76A.05
T 122/90 unreported Raychem Ltd 76.17
T 303/90 unreported Victoria University Manchester
4A.17
T 401/90 unreported Victoria University Manchester
4A.17
T 409/91 [1994] 9 OJEPO 653 Exxon 14.81
T 435/91 [1995] 4 OJEPO 188 Unilever 14.81
T 694/92 [1997] OJEPO 408 Mycogen 14.81
T 820/92 [1995] 3 OJEPO 113 The General Hospital Corp's Application
4A.02
T 939/92 [1996] 6 OJEPO 309 AgrEvo UK Ltd 3.89, 3.90, 14.142.1
T 952/92 [1995] 11 OJEPO 755 Packard Instrument BV 2.27
T 74/93 [1995] 10 OJEPO 712 British Technology 4A.02
T 356/93 [1995] 8 OJEPO 545 Plant Genetic Systems 1.35
T 207/94 [1999] EPOR 451 Biogen 5.25
T 892/94 [2000] 1 OJEPO 1 Robertet SA 2.14
T 258/03 [2004] 12 OJEPO 575 [2005] EPOR 55
Hitachi/Auction Method 1.37.1
T 315/03 [2006] 1 OJEPO 15 [2005] Harvard College 1.35, 76A.02.3,
January 2019
EPOR 31 76A.05
T 383/03 3 OJEPO [2005] 159 General Hospital/ Hair removal method
4A.09
T 1329/04 [2006] EPOR 8 Johns Hopkins University School of Medicine/Growth Differentiation Factor
3.91
T 250/05 Brigham and Women’s Hospital
4A.27.1
T 1054/05 NEC Corp. 3.17
T 1134/06 Konami Corp. 18.09.4
T 1743/06 INEOS Silicas 14.81, 14.88
T 1553/06 Public availability of documents on the World Wide Web/PHILIPS
2.24.1
T 1758/07 Biotech Pharmacon 4A.22, 4A.31
T 0002/09 Public availability of an e-mail transmitted via the Internet/PHILIPS
2.24.2
T 1099/09 Coloplast 4A.22, 4A.28.3
T 879/12 Genentech 4A.27.1, 18.97.1
T 1780/12 Board of Regents, the University of Texas System
4A.27.1, 18.97.1
V 08/94 [1995] 6 OJEPO 388 Howard Florey Institute of Experimental Physiology/ Relaxin
76A.06
January 2019
INTRODUCTION
The long title of the Patents Act 1977 is:
An Act to establish a new law of patents applicable to future patents and applications for patents; to amend the law of patents applicable to existing patents and applications for patents; to give effect to certain international conventions on patents; and for connected purposes.
0.01 This Act effected major changes in UK patent law and substantial harmonisation of that law with corresponding provisions of the European Patent Convention (EPC), the Community Patent Convention (CPC) and the Patent Co-operation Treaty (PCT), to provide a patent system intended to be better suited to the needs of modern industry, sufficiently flexible to accommodate future changes in technology and adapted to operate in an international context.
0.02 The Act is in three parts concerned respectively with (1) domestic law, (2) provisions to put into effect UK treaty obligations in relation to the EPC, PCT and CPC and (3) miscellaneous and general matters including the setting up of the Patents Court and other legal provisions, administrative procedures, and interpretation. There follow six schedules dealing respectively with the application of the 1949 Act to existing patents and applications; the application of the 1977 Act to existing patents and applications; repeals of provisions of the 1949 Act; certain transitional provisions relating to matters in being before the 1977 Act came into effect; amendments to other statutes consequential upon the introduction of this Act; and a list of enactments repealed. Various amendments have been made to the 1977 Act by subsequent legislation, most notably the Copyright, Designs and Patents Act 1988 (hereinafter the CDP Act) and the Patents Act 2004. The effects of these Acts and other legislation on particular sections of the 1977 Act are referred to in the chapters relating to those sections. Certain provisions of the CDP Act itself affecting patents are discussed in this Manual after the commentary on the 1977 Act.
s.123 0.03 The Secretary of State is authorised by the 1977 Act to "make such rules as he thinks expedient for regulating the business of the Patent Office" in the administration of the Act. The Patents Rules 1978, made under this provision, came into operation concurrently with the major provisions of the Act on 1 June 1978. They have subsequently been superseded by the Patents Rules 1982, the Patents Rules 1990, the Patents Rules 1995, and most recently the Patents Rules 2007, which have effect from 17 December 2007. In this Manual any reference to the Rules should be construed as referring to the Patents Rules 2007, unless there is specific indication to the contrary.
s.123(2A) 0.04 There are six schedules to the 2007 Rules. Schedule 1 made under r.13(1) makes provision regarding patents and patent applications for inventions which involve the use of or concern biological material. Schedule 2 made under r.14 sets out formal and other requirements for all documents (including drawings) contained in a patent application. Schedule 3 is made under r.73 and sets out the different classes of proceedings before the comptroller to which part 7 of the Patents Rules 2007 applies and the rules which apply to any proceedings heard before the comptroller. Schedule 4 makes provisions for the extension of time limits under r.108. Schedule 5 sets out transitional provisions which are brought into effect by r.120(1), and Schedule 6 lists the instruments which are revoked under r.120(2). The texts of the various forms required in connection with activities under the Patents Act 1977 is specified in directions made under s.123(2A). Replicas of these forms (or a form acceptable to the comptroller and containing the information required by the form specified in any such direction) must be used whenever required. The fees required to accompany the forms under the 1977 Act are prescribed by a separate statutory instrument, the Patents (Fees) Rules, see 123.15.
PRECEDENT EFFECT OF PREVIOUS LAW
Page 1 of 3 April 2015
0.05 As stated in the long title, the Act established a new law. For example, the Patents Court, in Unilever Ltd's Application, [1983] RPC 219, rejected a submission that wording used in the Act should be interpreted in a manner which would involve least change in the concept of patentability as between the old and new statutes. Falconer J observed that "One of the striking changes in the 1977 Act was to include for the first time in our patent law .... a statutory definition of what constituted a patentable invention" and, referring to the principle that where the wording of a statute is susceptible of more than one interpretation there is a presumption against any change in the existing law, stated: "It seems to me that there is no basis for the operation of that principle .... because Parliament made it abundantly clear in the long title to the Act .... that the old law of patents is being swept away". However, the influence of a limited number of earlier precedents, which have not been rendered nugatory by the 1977 Act and subsequent case law, does continue to apply.
0.06 [deleted]
INTERNATIONAL AGREEMENTS
0.07 The phrase in the long title: "to give effect to certain international conventions on patents" is a reference to Part II of the Act which provides for the effect in the UK of the EPC, CPC and PCT (the CPC not being in operation).
s.130(7) 0.08 In addition to the specific provisions in Part II, there is a general intention that the patent laws of member states of the European Union (EU) should be harmonised.s.91(1) To this end the Act specifies certain sections which are stated to be "so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty have in the territories to which those conventions apply". Moreover judicial notice must be taken of these conventions and of decisions and expressions of opinion given under them by the appropriate bodies, see 91.02.
0.09 In Merrell Dow Pharmaceuticals Inc. v H.N. Norton & Co Ltd [1996] RPC 76, the House of Lords held that, in construing a section of the Patents Act 1977 said by section 130(7) to have, as nearly as practicable, the same effects as the corresponding provisions of the European Patent Convention, the United Kingdom courts must have regard to the decisions of the EPO. Lord Hoffmann said (at page 82): “These decisions are not strictly binding upon the courts in the United Kingdom but they are of great persuasive authority; first, because they are decisions of expert courts (the Boards of Appeal and Enlarged Board of Appeal of the EPO) involved daily in the administration of the EPC and secondly, because it would be highly undesirable for the provisions of the EPC to be construed differently in the EPO from the way they are interpreted in the national courts of a Contracting State”. Furthermore, the Supreme Court in Human Genome Sciences v Eli Lilly [2011] UKSC 51, [2012] RPC 6 held that, although decisions of the EPO Boards of Appeal are not binding upon UK courts, where the Board has adopted a consistent approach to an issue in a number of decisions, it would require very unusual facts to justify a national court not following that approach.
0.10 In the judgment given by Jacob LJ in Actavis UK Ltd v Merck [2008] EWCA Civ 444, it was held that the Court of Appeal can (but is not bound to) depart from its own precedent if it is satisfied that the EPO Boards of Appeal have formed a settled view of European Patent law which is inconsistent with the Court of Appeal earlier decision. Generally the Court of Appeal will follow the settled view of the EPO (see para 107 of the decision). This approach was approved of in principle in R. v Secretary of State for Work and Pensions [2008] UKHL 63, although it was made clear that conflicting EPO authority would not provide justification for the Court of Appeal to disregard a precedent of the House of Lords.
0.11 Given the reference in section 130(7) to the effects that the convention provisions have in “the territories to which those conventions apply”, it is necessary, in
Page 2 of 3 April 2015
0.12
construing and applying the sections stipulated, to have regard not only to decisions of the Boards of Appeal of the EPO but also to decisions given in other countries relating to the relevant provisions of the three treaties.
Regard may be had not only to decisions given under these international agreements, but also to the wording of the conventions themselves. This applies particularly in relation to the sections of the Act mentioned in s.130(7), see 130.30-33.
Page 3 of 3 April 2015
PART I: NEW DOMESTIC LAW
PATENTABILITY
Section 1: Patentable inventions
CONTENTS
SECTION 1(1)
SECTION 1(2)
EXCLUDED SUBJECT MATTER
Relationship with the EPC and decisions of the EPO
General Principles
THE AEROTEL/MACROSSAN TEST
Step 1 – construing the claim
Step 2 – identifying the contribution
Step 3 – assessing against the exclusions
Step 4 – is the contribution technical?
APPLYING THE AEROTEL/MACROSSAN TEST TO SPECIFIC EXCLUSIONS
Section (a) - Discoveries, scientific theories and mathematical methods
Section (b) – aesthetic creations
Section (c) – mental act, playing a game, business methods, and computer
programs
Mental act
Games
Business methods
Computer programs (including the AT&T signposts)
The AT&T signposts
Interpretation of the signposts
Assessing “technical effect” using the AT&T signposts
Section (d) – Presentation of information
SECTION 1(3)
SECTION 1(4)
Exploitation contrary to public policy or morality
Plant and animal varieties, and “essentially biological processes”
SECTION 1(5)
The Patents Act 1977 sets out for the first time to codify what is meant by a patentable invention. Previous legislation up to and including the 1949 Act had merely repeated the stipulation, originally set out in the Statute of Monopolies of 1623, that a patent
Page 1 of 21 October 2017
1.01
may be granted only for a manner of new manufacture.
1.02 [Deleted]
Section 1(1)
A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say -
(a) the invention is new;
(b) it involves an inventive step;
(c) it is capable of industrial application;
(d) the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A below;
and references in this Act to a patentable invention shall be construed accordingly.
1.03 A patent may only be granted if the invention meets the above conditions. The fact that an invention meets the requirements of s.1(1) does not however mean that a patent must be granted, since there are other requirements, as set out in later sections, which must also be complied with.
s.125(1) 1.04 "Invention" in this context means that which is specified in a claim. Although the term has a meaning in ordinary speech, in Biogen Inc v Medeva plc [1997] RPC 1 Lord Hoffmann declined to attempt to define the term more closely, saying that judges "would be well advised to put on one side their intuitive sense of what constitutes an invention until they have considered the questions of novelty, inventiveness and so forth". It is possible for a specification to contain claims which relate to patentable inventions as well as claims which define inventions which are not patentable or matters which are not inventions. In such a case amendment is necessary, since a patent should be granted only when each claim defines a patentable invention. A claim will generally be held to be bad if anything falling within its scope is not patentable.
1.05 The term "a patentable invention" is defined by setting out four conditions, all of which must be satisfied in order for an invention to qualify for the grant of a patent. Since they are expressed as positive requirements the onus is upon an applicant to demonstrate compliance when faced with a reasonable challenge. The manner in which each of the conditions (a), (b) and (c) is to be assessed is set forth in ss.2, 3 & 4 respectively. The fourth condition involves certain things which, for purposes of the Act, are not to be regarded as inventions (see 1.07 to 1.40.4) and certain inventions for which a patent will not be granted (see 1.41-1.46).
s.130(7)- 1.06 The tests set out in s.1(1) and further elaborated in s.1(2)-(4) and ss.2-4 s.91 are so framed as to have, as nearly as practicable, the same effects in the UK as the
corresponding provisions of the EPC; these are Articles 52-57. (More particularly, EPC aa.52(1) to (3) and 53 correspond to s.1(1) to (4)). Hence, although not binding on the Office, decisions on patentability given by EPO Boards of Appeal are of persuasive value in interpreting ss.1-4 (see 0.07-09, 1.09 and 130.30-33).
Section 1(2)
It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of -
(a) a discovery, scientific theory or mathematical method;
Page 2 of 21 October 2017
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information;
but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.
EXCLUDED SUBJECT MATTER
1.07 Section 1(2) of the Act defines certain categories of “things which are not to be regarded as inventions”, as Jacob LJ puts it in paragraph 12 of Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2006] EWCA Civ 1371, [2007] RPC 7 (Aerotel/Macrossan). The normal meaning of “invention” is therefore qualified by the removal of these categories. Jacob LJ also considered that there is no overarching principle behind the inclusion of these particular categories, and no guidance on whether they are to be construed broadly or restrictively. In particular, he noted that, as the exclusions are not expressed as exceptions, the general principle that exceptions should be interpreted restrictively does not apply to them.
1.08 The current practice in dealing with excluded matter under s. 1(2) is derived from the judgment of the Court of Appeal in Aerotel/Macrossan (see 1.09.1, 1.18, 1.20, 1.33-1.33.1, 1.34.1). This judgment considered all previous authorities on the matter, and – having been endorsed in numerous subsequent decisions – is to be treated as a definitive statement of how the law on patentable subject matter is to be applied in the UK.
Relationship with the EPC and decisions of the EPO
1.09 As discussed above (see 1.06) decisions of the EPO Boards of Appeal are of persuasive value; furthermore where the EPO Boards of Appeal have formed a settled view of European patent law, this will generally be followed by the UK courts (see 0.08 and 130.30-31).
1.09.1 However in Aerotel/Macrossan, the Court of Appeal analysed EPO Boards of Appeal decisions on the question of excluded matter and concluded that practice was not yet sufficiently settled to enable the Court to depart from precedent UK case-law (see 1.11). This was reiterated in Symbian Ltd’s Application [2009] RPC 1 (Symbian) (see paragraph 46) and HTC v Apple (see 1.09.2), and it remains the case until the UK courts conclude otherwise.
1.09.2 In an attempt to address whether case-law concerning excluded matter is settled, and derive uniformity of application of European patent law, the President of the EPO referred four questions on the patentability of computer programs to the Enlarged Board of Appeal in October 2008 (G3/08). However, the Board concluded that the referral was inadmissible because the decisions referred to were not considered to be “divergent”, and declined to answer the questions beyond determining their admissibility. This led to the Court of Appeal reaffirming its view that practice was not yet settled in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 at paragraph 44. The assessment of whether an invention relates to an excluded category as such should therefore continue to follow the test set out in the decision in Aerotel/Macrossan.
1.09.3 As the Office is bound by the judgments in Aerotel/Macrossan and HTC v Apple, it cannot choose to depart from the Aerotel/Macrossan test in order to adopt EPO practice even if that practice becomes settled – such a departure can only be made by the
Page 3 of 21 October 2017
courts. This is emphasised in Dell Products LP’s Application (BL O/321/10), amongst others.
1.09.4 A number of older decisions of the EPO Boards of Appeal – such as Vicom Systems Inc T0208/84 [1987], IBM/Data processing network T0006/83 [1990] and IBM/Computer-related invention T0115/85 [1990] – were used to inform the Aerotel test, as well as other later guidance such as the AT&T signposts (see 1.37). It has been stated, in paragraph 11 of Symbian, that “as a matter of broad principle, it seems to us that the approaches in [...] the great majority of cases in this jurisdiction and in the EPO, are, on a fair analysis, capable of reconciliation”. And in HTC v Apple, Kitchen LJ, at paragraph 41, stated that “...in terms of result [...] it seems to me that whichever route is followed, one ought to end up at the same destination”. The result of EPO Boards of Appeal decisions on cases with similar facts may therefore be persuasive, even though the approach taken by the EPO should not itself be followed (see 130.31).
General Principles
Balance of probabilities
1.10 The Court of Appeal, in paragraph 5 of Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7 (Aerotel/Macrossan), made it clear that assessing excluded matter involves a question of law which should be decided during prosecution of the patent application. The position is therefore assessed fully by patent examiners before grant, and objections are not to be dropped simply because the applicant asserts that the invention relates to non-excluded subject matter. The question of excluded matter is decided on the balance of probabilities, taking into account all of the evidence available. However, as it is a question of law, it is not something on which applicants are entitled to the benefit of the doubt, in the way they would be in relation to questions of pure fact (such as the date of a particular disclosure, or the scope of the common general knowledge).
Using past decisions
1.11 The Office is bound to follow the decisions of the UK courts, per the English common law doctrine of binding precedent, which states that courts and tribunals must abide by the decisions of higher courts. Therefore, the Office must follow the interpretation of the Act and the practice set out in such judgments, and apply the legal principles arrived at by the judges in those cases.
1.12 However, examiners must exercise caution in relying on the specific facts of any court judgment as support for an objection, as each case must be judged on its merits, and the facts of the individual case are certain to be different. As Pumfrey J stated in paragraph 186 of Research In Motion UK Ltd. v Inpro Licensing SARL [2006] EWHC 70 (Pat), “The test is a case-by-case test, and little or no benefit is to be gained by drawing analogies with other cases decided on different facts in relation to different inventions.” Although the test being referenced was not the Aerotel test, the principle remains the same. Birss J, in paragraph 17 of Lantana v Comptroller-General of Patents [2013] EWHC 2673 (Pat), noted that “[s]imply because it is possible to construct a generalised category which includes both the claimed invention [...] and a previous decision in which a claim was held to be patentable, does not help. It shows that such things can be patentable in some cases but does not show that the invention in this case is patentable.”
1.12.1 The Office is not bound to follow the practice of the EPO Boards of Appeal for the reasons detailed above (see 1.09.1).
1.12.2.2 Hearing decisions issued by the Office are non-binding, but can be persuasive in establishing an argument.
Substance over form
Page 4 of 21 October 2017
1.13 When determining if an invention falls foul of the exclusions, it is critical that the examiner consider the substance of the invention rather than the form of claim provided, by looking beyond the strict literal wording of the claims. For example, when a claim is directed to a computer program, the examiner must look at what the computer program will do when run, as established in paragraph 49 of Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks [2008] EWHC 85, RPC 14.
1.14 If the substance of an invention falls within one of the excluded categories, however, then no form of claim will circumvent an objection. If a claim is directed to a computer, but the substance of the invention is a business method running on that computer, it will still be excluded. In paragraph 44 of Aerotel/Macrossan, Jacob LJ noted that “If an inventor claims a computer when programmed with his new program, it will not assist him if he alleges wrongly that he has invented the computer itself, even if he specifies all the detailed elements of a computer in his claim.”
1.15 It is not the nature of a single embodiment of an invention which is important when determining whether it is excluded, but the nature of the central idea or invention which is embodied in the claims. To determine this, the invention claimed should be assessed and construed as a whole to see whether it comprises an advance that lies in a non-excluded field. However, as Floyd J observed in paragraph 23 of Kapur v Comptroller- General of Patents [2008] EWHC 649 (Pat), if there are embodiments of a claim that fall within excluded subject matter, the fact that the claim is wide enough to encompass embodiments that are not excluded under s. 1(2) will not be sufficient to save it. The exclusion “will still bite to the extent that excluded subject matter is claimed”.
1.15.1 In his judgment in Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks [2008], RPC 14, Kitchin J. held (at paragraph 51) that in a case where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable, then, in principle, a claim to the program itself should also be allowable. However, he added that the program claim must be drawn to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run. Thus, following the conclusions of Astron Clinica, claims to a computer program or a program on a carrier are allowable where corresponding method and apparatus claims (or notional such claims if none exist) are/would be allowable on application of the Aerotel/Macrossan test. (A claim to a computer program stored on a carrier such as a compact disc is sometimes referred to in the US as a Beauregard claim.) However, merely including claims to a program or a program on a carrier will not make an otherwise excluded invention patentable. As Fox LJ said in Merrill Lynch's Application [1989] RPC 561 (page 569):
“it cannot be permissible to patent an item excluded by section 1(2) under the guise of an article which contains that item - that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary.”
In Macrossan’s Patent Application [2006] EWHC 705 (Ch), Mann J (at paragraph 42) rejected submissions by the applicant that adding a product step onto an otherwise excluded claim was enough to render it patentable. This was upheld by the Court of Appeal in Aerotel/Macrossan. Similarly, in Bloomberg LLP and Cappellini’s Applications [2007] EWHC 476 (Pat), Pumfrey J stated (at paragraph 9) that “[a] claim to a programmed computer as a matter of substance is just a claim to the program on a kind of carrier. A program on a kind of carrier, which, if run, performs a business method adds nothing to the art that does not lie in excluded subject matter”.
Claims to a computer program for generating a system or for producing a product (for example claims of the form: ‘a computer program comprising computer-readable code for generating a system as claimed in X' or 'storage medium having encoded thereon code for making a system as claimed in Y’ or 'machine readable medium having software thereon to produce the item of claim Z on a 3D printer') will not normally be allowable unless, following the guidance of Astron Clinica, the computer program would cause an otherwise patentable
Page 5 of 21 October 2017
process to be performed when run.
Interaction between the exclusions
1.16 The contribution made by an invention does not need to fall solely within a single excluded category for the invention to be excluded. As stated in paragraph 34 of Raytheon Company v Comptroller General of Patents, Designs and Trade Marks [2007] EWHC 1230 (Pat), where a contribution falls wholly within two or more exclusions, the invention would still be excluded. In paragraph 27 of Symbian Ltd’s Application [2009] RPC 1, the Court of Appeal remarked obiter that one effect of the computer program exclusion is to prevent other excluded material becoming patentable merely by use of a computer in its implementation (although see 1.31 for the interaction with the mental act exclusion). Thus, for example, a business method implemented on a conventional computer system or network would be excluded as both a method for doing business and a computer program as such. Birss J expressed a similar view in paragraphs 32-36 of Halliburton Energy Services Inc's Applications [2012] RPC 129.
Not an exhaustive list
1.17 The phrase “among other things” suggests that the list of excluded fields is not a complete list of exclusions; however, to date, the courts have only given one example of matter which would also be excluded. In Lux Traffic Controls Ltd v Pike Signals Ltd and Faronwise Ltd [1993] RPC 107, Aldous J observed that a method of controlling traffic as such was not patentable, regardless of whether it also fell within the business method exclusion; claims to apparatus for controlling traffic flows were allowed on the basis that the particular apparatus involved a contribution in a technical (i.e. non-excluded) field. The hearing officer in Kostuj’s Application (BL O/028/12) concluded that a method of developing a golf swing without a club was caught within the scope of the “among other things” phrasing, even if it did not fall squarely within the other exclusions.
1.17.1 Therefore, the exclusion may also apply to other matters which are essentially abstract or intellectual, but which do not fall clearly into one of the categories specifically listed. It is possible, although untested in the Courts, that such other matters would fall foul of the fourth step of the Aerotel test (see 1.23) as not being technical in nature.
Relationship of excluded matter to novelty and inventive step
1.17.2 In Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463, the Court of Appeal reiterated that the requirements of s.1(1) and s.1(2) are separate, and that claims to novel and inventive subject matter may still be excluded. In paragraph 19 of the judgment Arden LJ held: “I see no mandate in section 1 of the PA 77 for holding that it is sufficient that there is an inventive step. It is deliberate legislative policy to exclude certain matters from patentability even if they would otherwise be patentable”. This was reaffirmed in paragraph 70 by Kitchin LJ, who stated that “[t]here is no inconsistency between an acceptance that an invention [...] is new and inventive and a finding that the contribution it makes falls solely within excluded subject matter”. The judge continued by remarking that “the former requires [...] an assessment of whether it forms part of the state of the art or is merely an obvious step away from it”, while exclusion relates to assessing whether the contribution falls solely within excluded categories.
THE AEROTEL/MACROSSAN TEST
1.18 The Aerotel/Macrossan test (often referred to as the ‘Aerotel test’) is set out in paragraph 40 of the judgment in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7 (Aerotel/Macrossan). It provides a framework for the examiner to assess, and decide upon, the issue of excluded matter. As stated in 1.08, Aerotel/Macrossan is considered to be the definitive statement of how the law relating to excluded matter is to be applied. The Aerotel test is therefore the principal tool to be used when dealing with excluded matter
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cases, and encompasses all previous tests within it.
The test comprises four steps, which are as follows:
(1) Properly construe the claim;
(2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature.
1.18.1 It was stated by Jacob LJ in paragraph 47 of Aerotel/Macrossan that the test is a re-formulation of, and is consistent with, the previous “technical effect approach with rider” test established in Merrill Lynch's Application [1989] RPC 561 and followed by Gale’s Application [1991] RPC 305 and Fujitsu’s Application [1997] RPC 608. The Court considered it, in paragraph 48, to be “a structured and more helpful way of re-formulating the statutory test.” Therefore, as Kitchin LJ notes in paragraph 44 of HTC v Apple [2013] EWCA Civ 451, the structured approach of the Aerotel test is followed in order to address whether the invention makes a technical contribution to the art, with the rider that novel or inventive purely excluded matter does not count as a “technical contribution”.
Step 1 – construing the claim
1.19 As the court stated in Aerotel/Macrossan, the examiner must first “decide what the monopoly is before going on to the question of whether it is excluded”. There are no special considerations with regard to claim construction; the normal principles apply (see 14.111-14.120, 125).
Step 2 – identifying the contribution
1.20 Jacob LJ outlined the considerations to be applied when identifying the contribution made by the claims in paragraph 43 of Aerotel/Macrossan – the critical factors for the examiner to consider are emphasised:
“The second step – identify the contribution - is said to be more problematical. How do you assess the contribution? Mr Birss submits the test is workable – it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended.”
Paragraph 44 states that, at application stage, the contribution may be taken to be that alleged by the inventor, although this cannot be conclusive; as Jacob LJ states, “[i]n the end the test must be what contribution has actually been made, not what the inventor says he has made”. Additional guidance regarding the interpretation of this paragraph was provided in IGT/Acres Gaming Inc, Re [2008] EWHC 568 (Pat) paragraphs 23-24, which states that the examiner is not bound to accept what the applicant says, and is entitled to determine whether the alleged contribution is known or obvious, typically by performing a search.
1.20.1 Therefore, knowledge of the prior art will play a role in assessing the contribution; as Lewison J noted in paragraph 8 of AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat), the examiner should have “some notion of the state of the art”. This does not necessarily mean however that the contribution is defined by what is new and inventive in the claim (see 1.21). That proper consideration of the prior art can make a difference to the outcome is best illustrated by Aerotel Ltd v Wavecrest Group Enterprises Ltd & Ors [2008] EWHC 1180 (Pat). This case involved the same patent as Aerotel/Macrossan; however, Wavecrest was able to show that the contribution argued in the earlier case was known, by providing evidence that the ‘special exchange’ which formed the essential part of the new arrangement of hardware (see
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1.34.1) was actually within the common general knowledge. The Patents Court therefore reassessed the contribution and found that it related to how the special exchange was used and programmed, so that it fell solely within the business method and computer program exclusions.
1.20.2 When assessing the contribution, examiners should not consider prior art falling in the section 2(3) field.
1.20.3 However, a formal search is not required for the examiner to be able to assess the nature of the contribution. Peter Prescott QC (sitting as a Deputy Judge) in CFPH LLC [2005] EWHC 1589 (Pat) paragraph 96 stated that examiners are “entitled to make use of their specialist knowledge” to identify the contribution and are not bound to rely on prior art searches. Pumfrey J stated in Shopalotto.com Ltd’s Application [2006] RPC 7 paragraph 12 that certain features may be “so notorious that a formal search is neither necessary nor desirable”, and that examiners are “entitled to use common sense and experience” to make that determination. These views were consolidated in WMS Gaming Ltd’s Application (BL O/260/13)¸ which concluded in paragraph 60 that examiners are able to use their own judgement to determine whether to perform a search, and may accordingly use the provisions of section 17(5)(b) if appropriate (see 17.94-17.101).
What has been added to human knowledge
1.21 As Jacob LJ stated in Aerotel/Macrossan, this is the summation of what the contribution is, and all of the other factors (see 1.21.2-1.21.4) weigh in to making this determination. The starting point for that assessment is the claims. It may be helpful to consider what makes the invention novel (see 1.20.1); however, it is then necessary to place that in its proper context and ensure that the effects of the invention are taken into account. It is not correct to eliminate everything in the claim that is known to arrive at that which is unknown, and then to conclude that the unknown part must be the contribution; i.e., as the Court of Appeal in Genentech [1989] RPC 205 put it, it is not the case that “an invention is unpatentable if the inventiveness was contributed only by matters excluded under section 1(2)”. This approach – which is sometimes referred to as “Falconer reasoning”, from its originator; or, less formally, “salami-slicing” – was expressly rejected by the Court of Appeal in that decision. In Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463 paragraph 64, Kitchin LJ set out the importance of considering the proper context of an invention when assessing the contribution, accepting “[a] submission that it is the claim as a whole which must be considered when assessing the contribution which the invention has made, and that it is not permissible simply to cut the claim into pieces and then consider those pieces separately and without regard to the way they interact with each other”. However, at paragraph 65, Kitchin LJ qualified this by observing: “[n]evertheless, I also have no doubt that, approached in this way, it is the actual contribution to the art which the invention has made which must be considered.”
1.21.1 The courts have consistently found that, where claims recite standard hardware, such conventional apparatus does not form part of the contribution. This is often the case in computer program inventions – an application relating to a computer program cannot be saved simply by claiming conventional computer hardware programmed in a particular way. Jacob LJ remarked on this in paragraph 44 of Aerotel/Macrossan, and specifically rejected the use of standard hardware when determining the contribution of the Macrossan application in paragraph 73.
1.21.2 What constitutes a technical contribution can change over time. Therefore the view that, once a technical contribution is made, that same contribution will always be technical may not apply. In paragraph 16 of Lantana v Comptroller-General of Patents [2013] EWHC 2673 (Pat), Birss J addressed this point, noting that “[t]he fact that in the IBM case [T6/83] the method of communication between programs and files [...] was held patentable in 1988 does not mean that any method of communicating between programs and files [...] necessarily involves a technical contribution today”. This was endorsed by Arden LJ in paragraph 43 of the Court of Appeal judgment Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463.
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“Substance not form”
1.21.3 This is the application of the general principle (see 1.13-1.15.1) – the examiner must look beyond the literal wording of the claims to identify the contribution, and consider the central idea embodied in the claims. Recasting the claim in a different way, e.g. by claiming apparatus instead of method steps, will not usually alter the contribution.
Additional factors
1.21.4 Considering the additional factors that Jacob LJ in Aerotel/Macrossan thought relevant to identifying the contribution:
The problem said to be solved: an invention usually solves a problem; the problem and its solution are almost always relevant to the assessment of the contribution; an explicit statement may be included in the description, but not always – it may simply be derived from the nature of the invention.
How the invention works may be simply the definition of the features of the invention in the claims, but it is often more useful to consider in terms of what the invention does as a matter of practical reality.
Finally, the advantages of the invention are normally closely linked to the problem being addressed, in the sense that the advantage is often that the problem is resolved.
All of these factors may assist in identifying the contribution, rather than defining it themselves.
Step 3 – assessing against the exclusions
1.22 The assessment carried out at step 3 is a critical part of the Aerotel test. How that assessment is made, and whether a particular contribution falls within one of the exclusions, will depend on the individual exclusion, and so is covered in greater detail under the specific categories in 1.25-1.40.4. In general, examiners should bear in mind that the third step does not require determining whether the contribution falls solely within the excluded subject matter categories as they are listed in section 1(2), but rather whether it falls solely within excluded subject matter as such. The “as such” qualification therefore narrows what is excluded – inventions may appear to fall solely with the excluded categories, but are not excluded as such. This is particularly true in the case of computer programs and discoveries, and this was recognised in Merrill Lynch's Application [1989] RPC 561.
Step 4 – is the contribution technical?
1.23 The fourth step was included in the test on the basis that it was required, in light of the earlier decision of the Court of Appeal in Merrill Lynch. In Merrill Lynch (page 569, lines 2-10), the necessity of making this assessment was characterised as follows:
“…it cannot be permissible to patent an item excluded by section 1(2) under the guise of an article which contains that item – that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary. The nature of that addition is, I think, to be found in the Vicom case where it is stated: “Decisive is what technical contribution the invention makes to the known art”. There must, I think, be some technical advance on the prior art in the form of a new result (e.g. a substantial increase in processing speed as in Vicom).”
1.23.1 The Patents Court, in paragraph 10 of Oneida Indian Nation’s Application
[2007] EWHC 954 (Pat), stated that if the invention has been found to be excluded at step 3, then there is no need to apply step 4, as any contribution would have been one of purely excluded matter, and, having regard to the rider as described in 1.18.1, would not count as a
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technical contribution.
Interaction between steps 3 and 4
1.24 Whilst the steps will often be considered separately, the examiner may already have addressed the question posed in step 4 in answering step 3, as determining whether the contribution falls solely within excluded matter may require assessing whether there is a relevant technical contribution, particularly with regard to the computer program exclusion. The Court of Appeal in Symbian Ltd v Comptroller General of Patents [2009] RPC 1 ruled that the question of whether the invention makes a technical contribution has to be addressed when considering the computer program exclusion, although whether that takes place at step 3 or 4 is not critical.
[When applying the Aerotel/Macrossan test in an examination report, examiners may find it useful to use PROSE clause RC4.]
APPLYING THE AEROTEL/MACROSSAN TEST TO SPECIFIC EXCLUSIONS
1.25 In all cases of excluded matter, the test in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7 (Aerotel/Macrossan) is the starting point, no matter which exclusion is being relied upon. However, when applying the test, the individual exclusions have specific principles which derive from case law both before and after Aerotel/Macrossan. These can inform how the examiner assesses one or more of the steps of the test; however, they should always bear in mind that the case should be judged on its own merits (see 1.12).
1.25.1 That a contribution may fall within the scope of more than one exclusion and remain excluded (see 1.16) should also be kept in mind. Objections may be raised covering multiple exclusions, and examiners are encouraged to raise all relevant exclusions, so that the applicant is not surprised by an additional objection at a later stage.
Section (a) - Discoveries, scientific theories and mathematical methods
1.26 When considering the patentability of biotechnological inventions with regard to these particular exclusions, section 76A(1) should also be consulted (for discoveries in particular, see 76A.06).
Discoveries & scientific theories
1.27 The established view on when this exception applies was summarised by Peter Prescott QC (sitting as a Deputy Judge) in paragraph 34 of CFPH LLC [2005] EWHC 1589 (Pat):
“It is well settled law that, although you cannot patent a discovery, you can patent a useful artefact or process that you were able to devise once you had made your discovery. This is so even where it was perfectly obvious how to devise that artefact or process, once you had made the discovery [... The law] objects only when you try to monopolise your discovery for all purposes i.e. divorced from your new artefact or process. For that would enable you to stifle the creation of further artefacts or processes which you yourself were not able to think of.”
This line of reasoning, stemming from, amongst others, the decision in Hickton's Patent Syndicate v Patents & Machine Improvements Co Ltd (1909) 26 RPC 339, was used by Lewison J in Tate & Lyle Technology v Roquette Frères [2009] EWHC 1312 (Pat), where a claim, whose contribution was found to be the explanation of the underlying workings of a previously known method of manufacturing a sugar substitute, was refused as a discovery as such (see also 2.14.1).
1.27.1 In Genentech Inc's Patent [1989] RPC 147, the Court of Appeal held that the discovery of an amino acid sequence for the substance tPA led to a valid claim when
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incorporated into a conventional manufacturing process for the manufacture of tPA. Similarly, in Kirin-Amgen v Hoechst Marion Roussel [2005] RPC 9, the House of Lords held that a DNA sequence of a gene was not an invention on its own, but if it were necessary to isolate and extract it, then a process developed for this purpose and the material when obtained by this process could both be patentable (see also 76A.05).
1.28 This principle also applies to scientific theories – practical applications which rely on the theory may be patentable; the theory itself would not be. For example, in the two related cases of Blacklight Power, BL O/076/08 saw an application for modelling atoms based on a new theory of electron states refused (in part) as relating to a scientific theory, whereas in BL O/114/08, an application for a practical application of that theory (a plasma reactor and a laser utilising the effects derived from the theory) was not considered to be excluded (although it was refused for lack of industrial applicability).
Mathematical methods
1.29 In Vicom Systems Inc T0208/84 [1987], the EPO Board of Appeal defined a mathematical method as one which “is carried out on numbers and provides a result in numerical form”. A mathematical method was therefore merely an abstract concept prescribing how to operate on the numbers, and a claim directed solely to the mathematical method was excluded from patentability as a result of its abstract nature.
1.29.1 However, if the invention provides a technical contribution, it may be considered patentable even though the underlying idea may reside in a mathematical method; a claim to a method of enhancing digital images by software processing that implemented a mathematical method was considered to provide such a contribution in Vicom and allowed. Furthermore, where the contribution relates to the practical application of the mathematical function, it would not be considered a mathematical method as such. That said, it may still be excluded under another category, as was the case in Gale’s Application [1991] RPC 305, which related to a program implementing the calculation of square roots on a computer. The Court of Appeal refused the application as a computer program as such, but not as a mathematical method.
1.29.2 The presence of real data taken from a physical entity in a claim relating to a mathematical method, for example a method of modelling, simulation or prediction of a real world system, does not necessarily imply that a corresponding invention will avoid exclusion. WesternGeco Ltd’s Application (BL O/135/07), a method for processing real-world geophysical data by mere abstract manipulation of the data was held by the hearing officer to be a mathematical method as such; however, it was felt that the application of this processed data to determine parameters relating to physical properties of the Earth’s interior, so that an improved seismic image could be produced, did not fall wholly within the exclusion as a result of the decision in Vicom.
1.29.3 Such inventions might therefore avoid exclusion if they contribute to non- excluded fields. For example, whilst a claim directed to monitoring and identifying the position of people and packages in a transportation network was refused as a mathematical method (as well as a computer program and method for doing business) in Innovation Sciences Pty Limited (BL O/315/12); in Waters Investments Limited’s Application (BL O/146/07), a contribution comprising a method of analyzing samples by an analytical technique which uses chromatography and spectrometry followed by a sequence of data analysis techniques (i.e. a mathematical method) to give particular results, although including some steps that could be said to fall within excluded matter, was found to lie in the technical field of sample analysis using chromatography and spectrometric techniques, and so was not excluded.
Section (b) – aesthetic creations
1.30 If an article is distinguished from the prior art solely by its design, ornamentation or colour, then it will be excluded if this has a purely aesthetic function, but if the distinction has a practical effect then this could save it from the exclusion. For example,
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1.30.2
1.31
if a serving tray were characterised solely by having a particular embossed pattern on its surface, then it would fall within the exclusion, but if it were found that this particular pattern had non-slip attributes unexpectedly superior to those normally associated with embossment, this could provide a patentable feature.
1.30.1 Evidence may be necessary where the advantage conferred by the apparently aesthetic distinction is not clear from the disclosure. In I.T.S. Rubber Ltd's Application [1979] RPC 318, decided under the 1949 Act, a claim to a squash ball characterised by its blue colour was allowed because evidence showed that it had surprisingly enhanced visibility during play.
The means of obtaining a purely aesthetic effect may be patentable if it is characterised by non-excluded features, such as the structure of an article or the steps in a process. For example, a fabric may be provided with an attractive appearance by means of a layered structure not previously used for this purpose, in which case a fabric incorporating such a structure might be patentable.
Section (c) – mental act, playing a game, business methods, and computer programs
Mental act
The decision in Halliburton Energy Services Inc's Applications [2012] RPC 129 confirmed (in paragraphs 57 and 63) that the mental act exclusion is to be interpreted narrowly – it only covers acts that are carried out by “purely mental means”, and does not extend to those which are merely capable of being performed mentally. HHJ Birss QC (sitting as a Judge of the High Court) considered that the aim of the exclusion was to prevent patents being granted which could be infringed “by thought alone”.
1.31.1 In the same judgment (in paragraph 43), HHJ Birss specifically outlined that, with this interpretation, a claim carried out on a computer could not be excluded as a mental act – this was adopted in the Practice Notice Patents Act 1977: Patentability of Mental Acts. Therefore, if a computer, or any other hardware, is involved in the invention, it will not be excluded as a mental act. However, the claim could still fall within the computer program exclusion.
1.31.2 Following the Halliburton decision, examples such as a method of learning a language, of playing chess, or teaching reading may still be excluded as methods for performing a mental act, provided they fall within the narrow interpretation. Pure design methods may also still fall within this exclusion; for example, in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] RPC 2, the Patents Court held that a method for creating a design of rock drilling bit amounted to a mental act. This decision was expressly endorsed in the later Halliburton case (in paragraph 49), where the Court held that the claims in the earlier case were not limited solely to a computer implementation, and were therefore directed to “the purely intellectual content of the design process”. As a result, the claims encompassed both excluded and non-excluded embodiments (see 1.15). In contrast, the claims in the later case were restricted to a computer implementation of the design method, and therefore fell outside the narrow interpretation of the mental act exclusion.
In Halliburton v Smith, Pumfrey J indicated (at paragraphs 215-218) that a claim could avoid the mental act exclusion if it was “tethered” to a step of manufacturing the designed product, even if it was not solely limited to a computer implementation. The method in the specification had a “potential technical effect”, but as the claims were so broad as to encompass activities outside that method, they needed to be restricted to the technical field in which the method operated to eliminate those activities from the scope of the claim. Approaching this from the perspective of the later Halliburton case, this is another example of a non-mental limitation which, if present in a claim, would mean that the exclusion will not apply.
Games
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1.31.3
1.32 The patentability of schemes, rules or methods for playing a game was considered by the Patents Court in Shopalotto.com Ltd’s Application [2006] RPC 7, where the application related to a computer lottery game played over the internet. The Court held that the patentability of games should be assessed using the general approach for excluded matter, putting it in line with the other exclusions. Following Aerotel/Macrossan, this means that the patentability of games should be assessed using the Aerotel test. Patentability of games was also considered in IGT v The Comptroller-General of Patents [2007] EWHC 1341 (Ch) which concerned four applications relating to gaming apparatus, specifically casino-based systems using slot-machines. In each case, Warren J held that the claims as construed related to known apparatus upon which a game was played. The contribution in each case therefore lay in the rules or methods used to play the game, and fell solely within the excluded category. See also 1.16 and 1.25.1 for discussion of the interaction between the different exclusions.
1.32.1 In relation to non-computer based games, apparatus which involves a combination of standard game items, such as a board, playing pieces, a random outcome generator (e.g. dice), chance cards and the like, which are united by the nature of the game played will usually be excluded, since the actual contribution lies in the game that the apparatus is used to play. One example is Anderson’s Application (BL O/112/12), in which the Hearing Officer held that the contribution lay in a scheme, rule or method for playing a game, and that amending to include the use of known apparatus through which the game could be played did not change the contribution in substance. The application was therefore refused.
Business methods
1.33 The Court of Appeal in Aerotel/Macrossan expressly rejected the interpretation placed upon this exclusion by Mann J in Macrossan’s Patent Application [2006] EWHC 705 – that a method of doing business should be a way of conducting an entire business, rather than a tool to facilitate business transactions or procedural steps having administrative or financial character – and instead took a wider view of what constitutes a business method. It found that there was no reason to limit the exclusion in the way Mann J had, and confirmed this by looking at the French and German versions of EPC Article 52(2), which are not limited to methods of conducting entire businesses. (The French refers to “economic activities” while the German refers to “business activities”.)
1.33.1 Therefore, the exclusion is to be interpreted as encompassing such tools or steps, and not merely abstract matters or completed transactions. As the Court in Aerotel/Macrossan noted: “whether as an abstract or generalised activity or as a very specific activity, if it is a method of doing business as such it is excluded” (paragraph 68). Double entry bookkeeping was cited in the judgment as an example of a concept that did not involve conducting an entire business or a completed transaction, but nevertheless was clearly a method of doing business.
1.33.2 The expression "doing business" is also not restricted to financial or commercial activities, but embraces administrative, organisational and managerial activities. In Aerotel/Macrossan, it was noted that the idea of having three document trays - “in”, “out” and “too difficult” - was a way of conducting business and no more. In Melia's Application (BL O/153/92), the Hearing Officer refused a scheme under which prisoners could exchange all or part of a prison sentence for corporal punishment as a business method - the business in question being that of administering punishment. In Cummins-Allison Corp’s Application (BL O/361/12), the Hearing Officer refused a method of conducting blind balancing on documents associated with a deposit transaction, in which the deposit was displayed only if the received and calculated amounts match, as an administrative process falling solely within the exclusion. Wills' Application (BL O/089/99), relating to the provision of cards to be held by a school and the parents or grandparents of a child so as to provide an immediate source of accurate, up-to-date information in the event that the child goes missing, and John Lahiri Khan’s Appn (BL O/356/06), a method of effecting introductions between people wearing a designated device, such as a ring, were both refused under this exclusion. In Hewlett-Packard Development Company’s Application (BL O/441/12), a method for
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calculating and modifying the characteristics of an item, such as a magazine, before it is printed – to produce a printed item with an optimised postage weight – was considered to be no more than a method of managing postal changes, and therefore a business method.
1.34 The business method exclusion is generic, as discussed at page 569 of Merrill Lynch's Application [1989] RPC 561. Therefore, the fact that an application may provide a better way of conducting business is not relevant. In Halliburton Energy Services Inc's Applications [2012] RPC 129, HHJ Birss QC at paragraph 35 noted that the use of a computer to implement a better business method did not confer patentability:
“The business method cases can be tricky to analyse by just asking whether the invention has a technical effect or makes a technical contribution. The reason is that computers are self evidently technical in nature. Thus when a business method is implemented on a computer, the patentee has a rich vein of arguments to deploy in seeking to contend that his invention gives rise to a technical effect or makes a technical contribution. For example the computer is said to be a faster, more efficient computerized book keeper than before and surely, says the patentee, that is a technical effect or technical advance. And so it is, in a way, but the law has resolutely sought to hold the line at excluding such things from patents.”
1.34.1 The Aerotel patent was found to be valid by the Court of Appeal in Aerotel/Macrossan, as it related to a “new arrangement of hardware” due to an extra piece of equipment in the form of a ‘special exchange’ (although, see 1.20.1). It was therefore not considered to be a business method, because the system as a whole was new (as it contained a new piece of hardware). The contribution therefore was not limited to using an exisiting system to carry out the business of selling phone calls. However, this should be contrasted with the system of Merrill Lynch, which was only new due to the method of doing business that it produced. Therefore, when assessing whether a particular invention relates to a new system or arrangement of hardware, it should be asked whether the system is new in itself or whether the system is only new due to the business method it performs.
Computer programs
1.35 Where a claim involves the use of a computer program, it does not naturally follow that the claim must be excluded. Instead, the contribution of a claim to a computer program must be assessed by reference to the process the program will cause a computer to perform, because the assessment is based on the substance of the invention, as stated in Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks [2008] RPC 14 (see 1.13). In Halliburton Energy Services Inc's Applications [2012] RPC 129, HHJ Birss QC emphasised that “[a] computer programmed to perform a task which makes a contribution to the art which is technical in nature is a patentable invention and may be claimed as such.” Therefore, a computer program that provides a technical contribution will not fall under the exclusion, as it is more than a computer program as such. Although an invention involving a computer is undoubtedly "technical", the mere presence of conventional computing hardware does not of itself mean the invention makes a technical contribution (and so avoids the computer program exclusion) as such hardware will typically not form part of the contribution (see 1.21.1).
1.36 Following the development of the Aerotel test, Symbian Ltd’s Application [2009] RPC 1 more closely examined the question of “technical contribution” as it related to computer programs (see 1.24). In examining the case law, the Court of Appeal concluded that creating a precise test for determining whether a computer program was excluded was difficult, and to suggest that such a clear rule existed was perhaps dangerous when considering the pace of technological development. It emphasised the need to determine each case by reference to its particular facts (see 1.12).
1.36.1 The court held that the contribution made by the invention in Symbian was not a computer program as such because “it has the knock-on effect of the computer working better as a matter of practical reality”. Paragraphs 54-56 emphasised the need to look at the practical reality of what the program achieved, and to ask whether there was
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1.36.2
1.37
something more than just a “better program”. An invention which either solves a technical problem external to the computer or solves one within the computer was not considered to fall under the computer program exclusion. The particular invention involved improving the operation of a computer by solving a problem arising from the way the computer was programmed (in that case, a tendency to crash due to conflicting library program calls). The court considered that this could be regarded as solving a technical problem within the computer, if it leads to a more reliable computer. Thus, a program that results in a computer running faster or more reliably may be considered to provide a technical contribution, even if the invention addresses a problem in the programming of the computer. The court concluded that such a technical contribution rendered the claim in this case patentable.
The matter of assessing the technical merit of the claimed invention was also considered in HTC v Apple [2013] EWCA Civ 451. In paragraph 49, Kitchin LJ reiterated the point from Symbian that a solution to a technical problem would be a relevant technical effect and would not be excluded, as technical character is provided from the problem itself (see also 1.38.5). In paragraph 152, Lewison LJ considered the scope of the exclusion, and remarked that:
“Since each case must be determined by reference to its particular facts and features (Symbian at [52]) we need to begin by asking: what does the computer program in this case actually contribute?”
In this instance, he concluded that the program made it easier to write programs for applications to be run on the device that contains it, and that writing software in this instance did not fall within the scope of the exclusion, although the ultimate product (i.e. the software itself) may still do so.
The AT&T signposts
Although the Aerotel test may involve the examiner checking “whether the actual or alleged contribution is actually technical in nature” - and Symbian actively requires the question “does the invention make a technical contribution” to be asked when considering the computer program exclusion - the judgment in Aerotel/Macrossan does not provide much guidance on how this is to be carried out in practice. However, in paragraph 40 of AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat) (AT&T/CVON), Lewison J (as he then was) set out five signposts that he considered to be helpful when considering whether a computer program makes a relevant technical contribution. In HTC v Apple [2013] EWCA Civ 451, Lewison LJ reconsidered the signposts he had suggested in AT&T/CVON and, in light of the decision in Gemstar-TV Guide International Inc v Virgin Media Ltd [2010] RPC 10 (see 1.37.1 and 1.40.4), felt that the fourth signpost had been expressed too restrictively.
1.37.1 Drawing on the cases identified in Symbian as key to understanding the computer program exclusion, the signposts are a distillation of the reasoning and rationale of this previous case law. (The decisions that each signpost derives from can be found in brackets following each signpost).
The signposts are:-
i. whether the claimed technical effect has a technical effect on a process which is carried on outside the computer (from Vicom)
ii. whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run (from IBM T 0006/83, IBM T 0115/85, Merrill Lynch, Symbian)
iii. whether the claimed technical effect results in the computer being made to operate in a new way (from Gale)
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1.37.2
iv. whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer (from Vicom, Symbian; as reworded in HTC v Apple)
v. whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented (from Hitachi T 0258/03 – note that the problem in question must be a technical problem)
It should be clear that the signposts are merely guidelines; although they provide a useful aid for the examiner in assessing the technical character of a claimed invention, they were not intended to provide a definitive test (as Lewison LJ’s obiter remarks in paragraph 149 of HTC v Apple make clear). Several judgments have emphasised this point - John Baldwin QC (sitting as a Deputy Judge) in Really Virtual Co Ltd v UK Intellectual Property Office [2012] EWHC 1086 (Ch) noted that the signposts, although useful, are no more than signposts and that there will be some cases in which they are more helpful than in others. Kitchin LJ made similar remarks in paragraph 51 of HTC v Apple – their usefulness does not mean they will be determinative in every case. However, if the claimed invention fails all of the signposts, it will likely be a good indicator that it may be nothing more than a computer program as such.
[If referring to the AT&T signposts in an examination report, examiners may find it useful to use PROSE clause RC4A.]
Interpretation of the signposts
1.38 How these signposts are to be interpreted is often the subject of discussion in excluded matter cases, and hearing decisions and judgments have considered the underlying meaning of all of the signposts at one point or another. The hearing officer in Commonwealth Scientific and Industrial Research Organisation’s Application (BL O/367/11) took the opportunity to consider each signpost in turn (although the fifth signpost was not addressed in the hearing, and so was only considered briefly) and explained her view on how each was to be interpreted in paragraphs 31-42.
1.38.1 To meet the first signpost, the process carried out by the program must be, or must operate on, something external to the computer on which the program is being run. As Lewison J put it in his summarisation of Vicom in paragraph 20 of AT&T/CVON, if the process would be patentable if it were not operated by means of a computer program, the fact that it is operated by means of a computer program does not render it excluded. An often-used, if limited, example is that of a computer-controlled car braking system – the braking system is external to the computer, and the programming has an effect on that system. This does not mean that any effect taking place outside a single computing device meets the signpost – systems operating as a network can be considered as ‘the computer’ for the purposes of this signpost, as emphasised by Birss J in paragraph 30 of Lantana v Comptroller-General of Patents [2013] EWHC 2673 (Pat). The hearing officer in paragraph 41 of Hewlett-Packard’s Application (BL O/319/11) considered that reducing the amount of data exchanged in a network between a memory tag and its reader had no technical effect on the communication process between them, even if the process was considered to be outside the two, as no actual change was made to the process itself.
The second signpost asks whether running the program changes how the computer runs internally. In practice, this means in the sense of the operation of the processor, the cache memory, or other internal components of the computer. The “architecture” can be thought of as the combination of these components, which operate in the same way regardless of the application being run. If the effect being produced would provide a benefit to any software program which runs on the system, it is likely to meet this signpost. If the effect being produced is specific to a particular data set, type of data, or benefits only particular applications, it is likely it will fail to meet this signpost. The hearing officer in Intuit Inc’s Application (BL O/347/10) considered that an application programming interface operating between layers of an application model did not meet the signpost, as it did not provide internal control of the architectural components or operate at a sufficiently
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1.38.2
high level of generality within the computer.
1.38.3 The third signpost emphasises that the effect must be more than just the running of a program or application on a general purpose computer – the computer itself must operate differently than it did before as a result of the program being run.
1.38.4 The fourth signpost was reframed in HTC v Apple, and is approached in a similar way to the third – the computer must operate more efficiently and effectively as a result of running the program. Again, this must be the computer as a whole, rather than the individual program. In several cases, such as Q Software Global Ltd’s Application (BL O/120/11) and JDA Software Group Inc’s Application (BL O/386/12), it was argued that the program required less processing power to run, or operated faster, and the system was therefore more efficient. This was not considered to meet the signpost, as the system itself remained unchanged – the computer processed the data in the same way as it did before, the program merely made more efficient use of the hardware.
1.38.5 The fifth signpost looks at the technical character of an alleged invention by means of the problem addressed. When the problem is a technical one, the alleged invention can be considered to have a technical nature leading to it falling outside the exclusion if (but not only if) it solves the problem. In Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks [2013] EWHC 2673 (Pat), Birss J stated that “[i]t makes sense to think of something which is a solution to a technical problem as itself having technical character because it takes that character from the technical nature of the problem to be solved. But if a thing is not solving the technical problem but only circumventing it, then that thing cannot be said to have taken any technical character from the problem.” Circumventing a technical problem does not automatically imply that an alleged invention is excluded, but indicates that one cannot rely on the addressed problem to deduce its technical character. At paragraph 51 of the subsequent Court of Appeal decision, Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463, Arden LJ noted that “[c]ircumvention may be the result of truly original linear thinking and may lead to patentability in an appropriate case". This does not happen when circumvention consists of conventional means, as reaffirmed by Kitchin LJ at paragraphs 68 and 70 of the same judgment: "[o]verall, the invention avoids the problem...but it does so by using a conventional technique [... i]n other words it does not solve those problems but circumvents them”. Similarly, if the problem to be solved is not a technical problem, the solution cannot take technical character from the problem, although it may have some other technical effect. Other examples where circumvention also lacks technical character are given in Direct TV Pty’s Application (BL O/150/11, paragraphs 32-33) and Apple Inc’s Application (BL O/244/13, paragraphs 38-39), amongst others, where it was argued that the problem of bandwidth limitations in transmitting data across a network was solved by the invention. In each case, this was achieved by reducing the amount of data transmitted. The Hearing Officers considered that to circumvent the problem, as there was no change to the way in which the data was transmitted, merely the volume.
Assessing “technical effect” using the AT&T signposts
1.39 Determining whether a computer program provides a technical effect such that it does not fall within the exclusion usually (but not always; see 1.37.2) involves assessing the contribution against the AT&T signposts (in the form stated in HTC v Apple). Decisions since AT&T have often used the signposts when answering step 3 of the Aerotel test.
1.39.1 In Protecting Kids the World Over (PKTWO) Ltd’s Patent Application [2012] RPC 13, the invention was found to solve a technical problem lying outside the computer, namely how to improve the generation of an alarm in response to inappropriate communication, and therefore was not excluded from patentability.
1.39.2 In HTC v Apple [2013] EWCA Civ 451, a method of handling the recognition of single- and multi-touch events in devices programmed to do so had the advantage that application programmers could more easily write software to accommodate
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such recognition. Although considering that the contribution fell outside the scope of the exclusion in any event (see 1.36.2), Lewison LJ went on (in paragraph 154) to assess the contribution against the AT&T signposts, and found that it met all but the third signpost, which pointed to the program providing a technical effect in itself. Kitchin LJ similarly found, in paragraph 57, that the recognition handling operated at the architectural level, and caused the devices to operate in a new way. The application was found to fall outside excluded matter.
Section (d) – Presentation of information
1.40 Any manner, means or method of expressing information which is characterised solely by the content of the information is excluded, regardless of how it is represented. The fact that physical apparatus may be involved in the presentation will not usually be enough to avoid the exclusion. In Townsend’s Application [2004] EWHC 482 (Pat), Laddie J held that the exclusion encompassed both the provision of information and its expression. In Autonomy Corp Ltd v Comptroller General of Patents, Trade Marks & Designs [2008] EWHC 146 (Pat), the court held that choosing where and how to display information was still the presentation of information, as it is part of the decision as to how to present the information.
1.40.1 If the invention relates to the technical means by which the information is presented, rather than the presentation itself, then it may not fall within the exclusion, as per BBC/Colour television signal [1990] EPOR 599 (T 0163/85), where the EPO Technical Board of Appeal held that a colour television signal, characterised by the technical features of the television system in which the signal occurs, was not excluded under presentation of information. However, the Board distinguished this from a television system which was defined solely by the information (e.g. moving pictures) being transmitted using a standard television signal, which they felt may fall within the exclusion.
1.40.2 In other words, if there is a technical effect or a contribution in a non- excluded field, the invention will not lie solely within excluded matter. In Townsend, an application for an invention relating to an advent calendar with an additional indicator (such as a word, picture, colour etc.) on each door was refused by the Hearing Officer in BL O/266/03 (and, on appeal, the Patents Court) as relating to the presentation of information which served no technical purpose and included no technical advance. TDK Electronics Co Ltd's Application (BL O/097/83) held that a claim to a tape cassette of conventional construction, but with differentially coloured poles, was excluded because it encompassed a cassette where the poles were coloured subsequent to assembly, and thus did not serve any function in its assembly or use. A gaming machine in which logos or brand or product names were substituted for the conventional symbols normally depicted on the reels of a fruit machine was also found to fall within the exclusion in Ebrahim Shahin's Application (BL O/149/95).
1.40.3 A claim to a conventional package containing a known product, characterised solely by the instructions on the package, will not generally be allowed, since the contribution relates solely to the presentation of information. Several cases along these lines were rejected under the 1949 Act, including Dow Corning Corporation (Bennett's) Application [1974] RPC 235, and Ciba-Geigy AG (Durr's) Application [1977] RPC 83.
Gemstar–TV Guide International Inc v Virgin Media Limited [2010] RPC 10 considered the question of computerised methods for presenting information. The case related to three EP(UK) patents covering various aspects of Electronic Program Guides (EPGs). In his judgment, Mann J emphasised that the exclusion was not solely confined to the content of information, and that, in order for the exclusion not to apply, there must be some technical effect beyond the information being presented. The court also stated that if the contribution is defined only in terms of the information to be presented, then that is a presentation of information - the presence of a display does not change this. In particular, a better (or new) user interface was not considered to be a relevant technical effect – the rearrangement of information was nothing more than the presentation of information; simply having something different displayed was not sufficient to overcome the exclusion. Two of
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1.40.4
the three patents were found to be excluded as they lacked the required technical effect; the third presented a physical effect, namely the movement of data between hard disks, such that there was more than merely the presentation of information
Section 1(3)
A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality.
Section 1(4)
For the purposes of subsection (3) above exploitation shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it.
Exploitation contrary to public policy or morality
1.41 Sections 1(3) and 1(4) were amended by the Patents Regulations 2000 (SI 2000 No.2037) so that the wording would more closely reflect the wording of article 27(2) of the TRIPS agreement. Section 1(3)(a) had previously stated that a patent would not be granted for an invention whose “publication or exploitation” would “be generally expected to encourage offensive, immoral or antisocial behaviour”. In practical terms, the effect of s.1(3) remains the same, which is to prevent the grant of patent rights for inventions which the general public would regard as abhorrent or from which the public need protection. It provides a reasonably objective test which has to be applied to each invention and its particular set of facts and circumstances. Clearly what is to be regarded as contrary to public policy or morality will vary according to changes in social attitudes and on no account ought examiners to allow their own personal and individual beliefs to colour their judgment on this matter. The decision of Aldous J in the case of Masterman's Design [1991] RPC 89 under a similar provision of the Registered Designs Act 1949 deals with issues broadly corresponding with those which may arise under s.1(3). The Patents Act 1977 (Isle of Man) Order 2003 (SI 2003 No. 1249) amended sections 1(3) and 1(4) for the Isle of Man.
[Only in the clearest cases should examiners invoke this subsection and then only following consultation with their Deputy Director. Any genuine doubt should be exercised in favour of the applicant with an appropriate minute being created. ]
1.42 Unlike under the previous s.1(3)(a), the exclusion from patentability is not activated if mere publication of the invention, as distinct from its exploitation, would be contrary to morality. If, however, the specification includes matter the publication or exploitation of which would generally be expected to encourage offensive, immoral or antisocial behaviour, then (irrespective of whether the invention itself is open to objection under s.1(3)) the situation can be dealt with by excision of the offending matter under s.16(2) - see 16.34-16.37.
a.53(a) 1.43 The corresponding provision of the EPC (see 1.06) refers to “inventions EPC the publication or exploitation of which would be contrary to ‘ordre public’ or morality”. In the
Harvard “oncomouse” case T 315/03 ([2006] 1 OJEPO 15, [2005] EPOR 31) (see also 76A.02.1 and 76A.05), the Board of Appeal endorsed the definitions of “ordre public” and morality provided in Plant Genetic Systems T 356/93 [1995] 8 OJEPO 393 and held that the assessment of these concepts should be made as of the filing or priority date of the application. The concept of “ordre public” was accepted as covering the protection of public security and the physical integrity of individuals as part of society, and encompassed the protection of the environment. In relation to morality, the Board in T 356/93 held that the culture inherent in European society and civilisation should be the basis for determining what behaviour is right and acceptable, and what behaviour is wrong. However, the Board in oncomouse added that in making an assessment of morality, no single definition of morality
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based on e.g. economic or religious principles represents an accepted standard in European culture, and opinion poll evidence was of little value. For animal manipulation cases, the Board of Appeal in T 315/03 endorsed the guidance provided in its earlier consideration of the Harvard “oncomouse” application (case T 19/90 [1990] 12 OJEPO 476). This case held that the possible detrimental effects and risks had to be weighed and balanced against the merits and advantages aimed at. In particular, the basic interest of mankind to remedy disease had to be set against the protection of the environment of uncontrolled dissemination of unwanted genes and the avoidance of suffering to animals, including the possibility of using non-animal alternatives. In balancing these factors, the Board in T 315/03 allowed claims covering transgenic “mice”, refusing broader claims encompassing rodents (see 76A.02.1).
1.44 For biotechnology inventions, in addition to the general exclusion of s.1(3), Schedule A2 of the Patents Act specifies that certain categories of invention are not patentable inventions; these are discussed in 76A.02-76A.06 and the Examination Guidelines for Patent Applications relating to Biotechnological Inventions in the Intellectual
Property Office.
1.45 Section 1(4) is a rider to section 1(3) to make it clear that an act or action prohibited by a law is not to be considered as necessarily the same thing as contrary to public policy or morality. (One reason for this is that a product which could not lawfully be used in the UK may be manufactured lawfully in the UK for export to countries where its use is not illegal). However the existence of a law or regulation may be a material fact to be taken into consideration in determining whether to refuse an application under s.1(3). The nature and probable uses of the invention will need to be considered as well as the exact terms of the prohibition. Thus if the prohibition is directed unconditionally to the very act which the inventor proposes very careful deliberation must be given as to whether to invoke s.1(3). In such cases a useful test is to consider why the prohibition exists. For example it is considered that the Landmines Act 1998 (implementing the Ottawa Convention) and the Cluster Munitions (Prohibitions) Act 2010 (implementing the Convention on Cluster Munitions) were passed because the public in the UK generally now consider the development, manufacture and use of anti-personnel mines and cluster munitions to be immoral. In addition, UK is a signatory to other weapons conventions which prohibit categories of weapon, including the Chemical Weapons Convention and the Biological and Toxin Weapons Conventions; these have been implemented in UK law by the Chemical Weapons Act 1996 and the Biological Weapons Act 1974 respectively. Again, the signing of the conventions and the passage of the legislation indicate that the general feeling of the public in the UK is that the production and use of these weapons is immoral. However, it should be noted that both these Acts recognise that agents capable of use as a chemical or biological weapon may have legitimate purposes. In cases in which an invention can be exploited legally albeit in accordance with stringent regulations, it would be very difficult to argue that s.1(3) applies and the application for a patent refused.
[Any concerns about patent applications which may relate to weapons which are considered contrary to public policy or morality should be raised with Security Section]
Plant and animal varieties, and “essentially biological processes”
1.46 Prior to the Patents Regulations 2000, s.1(3)(b) set out that a patent would not be granted for “any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product of such a process”. These exclusions remain in place, and are now found, along with others which relate to biotechnological inventions, in Schedule A2 to the Act, introduced by the Patents Regulations 2000 and made under section 76A of the Act, which was also introduced by those Regulations (see 76A.01-06 and the Examination Guidelines for Patent Applications relating to Biotechnological Inventions in the Intellectual Property Office).
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1.47
Section 1(5)
The Secretary of State may by order vary the provisions of subsection (2) above for the purpose of maintaining them in conformity with developments in science and technology; and no such order shall be made unless a draft of the order has been laid before, and approved by resolution of, each House of Parliament.
The white paper "Patent Law Reform" (Cmnd 6000) noted that the patent system "must evolve in response to changing conditions". This was done under previous legislation by continually re-interpreting the centuries-old definition of invention as "any manner of new manufacture". The present Act controls what is to be regarded as an invention for which a patent monopoly may be granted by means of the definitions set out in the foregoing subsections. The present subsection gives the necessary measure of flexibility to this control, whilst reserving to Parliament the authority to approve it. This would be at the instigation of the Secretary of State, who would normally take such action following the established consultative processes.
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Section 2: Novelty
CONTENTS
Introductory notes
SECTION 2(1)
Prior Disclosure Enablement Construction of claims Selection inventions
SECTION 2(2)
Prior use
SECTION 2(3)
SECTION 2(4)
SECTION 2(5)
Unlawful obtaining: Breach of confidence International exhibitions
SECTION 2(6) (Repealed)
s.130(7) 2.01 Section 2 is so framed as to have, as nearly as practicable the same effect in the UK as the corresponding provisions of the EPC, ie Articles 54 and 55, PCT and CPC. Rule 5 is relevant to this section.
Section 2(1)
An invention shall be taken to be new if it does not form part of the state of the art.
2.02 An invention defined in a claim lacks novelty if the specified combination of features has already been anticipated in a previous disclosure. In SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2006] RPC 10, the House of Lords held there were two requirements for anticipation: prior disclosure (see 2.03 to 2.09) and enablement (see 2.10). These are distinct concepts, each of which has to be satisfied and each of which has its own rules.
Prior Disclosure
2.03 Prior disclosure is the first requirement to be satisfied for matter to anticipate an invention. To constitute a prior disclosure of an invention, the matter relied upon as prior art must disclose subject matter which, if performed, would necessarily result in infringement of the patent. This infringement test is detailed by the Court of Appeal in General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited, [1972] RPC 457, at pages 485-6:-
"If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after
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the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated".
Actavis UK Ltd & Ors v Eli Lilly & Company [2017] UKSC 48 held that a product with a feature which is different from, but equivalent to, a claimed feature may nevertheless infringe, even though it falls outside the meaning of the claim's wording (see 125.17.3- 125.18.5). The statement in General Tire that a document infringing after grant would be an anticipation before grant is not thought to apply in such cases - but clarification from the courts on this point is awaited. Note that in Generics (U.K.) Limited and others v Yeda Research and Development Company Ltd and others [2017] EWHC 2629 (Pat), Arnold J said that the doctrine of equivalents set out in Actavis v Eli Lilly does not apply to novelty.
2.03.1 The Court of Appeal applied this test in Glaverbel SA v British Coal Corporation [1995] RPC 255 where it was also held that it is not necessary for the prior art to be equal in practical utility or to disclose the same invention in all respects as the patent in suit. The Patents Court considered the requirement for the prior art “inevitably” to result in a novelty-destroying disclosure in Kirin-Amgen Inc. v Roche Diagnostics GmbH [2002] RPC 1. It was held that “the law of patents is ultimately concerned with practicality”, and so a prior art experiment which, when performed, reliably produced a particular result “more than 99 percent of the occasions on which it is conducted” would be regarded for the purposes of disclosure as “inevitably” leading to the result in question. In Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly and Co Ltd [2008] EWHC 2345 (Pat), [2009] FSR 5, the Patents Court held that where the skilled person would have recognised that there were errors in a prior disclosure, the question to be considered was whether there was a clear and unambiguous disclosure of the invention, not whether the skilled person would have concluded that the document probably disclosed the invention. See also 2.07-2.07.3.
2.04 It follows that a claim which defines an invention by reference to parameters, for example of a process or a product, is anticipated by a disclosure which when put into practice would necessarily fall within the scope of the claim, even if the disclosure does not refer to these particular parameters. (See also 14.121, 17.41).
2.04.1 In T 303/86 (CPC Int) [1993] EPOR 241 the Technical Board of Appeal of the EPO considered anticipation arising from two cook-book recipes of a process for making flavour concentrates from vegetable or animal substances by extraction with fat solvents under pressure in the presence of water. The claim specified certain parameters for the ratio between the vapour pressure of the water in the meat or vegetables and the vapour pressure of the free water. The Board said:
"It is sufficient to destroy the novelty of the claimed process that this process and the known process are identical with respect to the starting material and reaction conditions since processes identical in these features must inevitably yield identical products."
Furthermore, it did not matter that the cook did not realise that he was not only frying a chicken, but also making a "flavour concentrate" in the surplus oil. It was enough, as the Board said, that "some flavour of the fried chicken is extracted into the oil during the frying process even if this is not the desired result of that process."
2.04.2 In Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76 Lord Hoffmann held that section 2(2) does not confine the state of the art about products
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to knowledge of their chemical composition. It is the invention which must be new and which must therefore not be part of the state of the art. It is therefore part of the state of the art if the information which has been disclosed enables the public to know the product under a description sufficient to work the invention. Thus, in Merrell Dow, which centred on a claim to an acid metabolite formed in the liver after administration of terfenadine (itself the subject of an earlier patent), the acid metabolite was held to be anticipated not by prior use (see 2.29) but because it was the inevitable result of carrying out the directions in the earlier terfenadine patent.
2.05 A claim is bad for want of novelty if information about anything falling within its scope has already been disclosed. Thus for example if a claim specifies alternatives, or defines the invention by reference to a range of values (eg of composition, temperature etc), then the invention is not new if one of these alternatives, or if a single example falling within this range, is already known. Thus a specific example is sufficient to destroy the novelty of a claim to the same thing defined generically; for example a disclosure of a metal coil spring anticipates a claim to resilient means. In some (particularly chemical) cases it may be possible to overcome an objection of lack of novelty by means of a disclaimer (see 14.126).
2.06 On the other hand, a generic disclosure does not impugn the novelty of a more specific claim, so that an earlier reference to a metal coil spring cannot be used to attack the novelty of a claim specifying such a spring made of copper. In some cases however the disclosure of a comparatively small and restricted field of possible alternatives might properly be held to be a disclosure of each and every member; for example, "fluid" may be taken to disclose both liquid and gas, if the context warrants it, and a reference to an electric motor may be regarded as disclosing the use of both series- and shunt-wound types. In Norton Healthcare Ltd v Beecham Group Plc (BL C/62/95) Jacob J held that a prior suggestion of a combination of sodium or potassium clavulanate with amoxycillin or ampicillin trihydrate (four possible combinations only) was a disclosure of each of the combinations. (But see 2.18-2.20).
2.06.1 In Union Carbide Corp. v BP Chemicals Ltd [1998] RPC 1 Jacob J held that "the information given by a direction not to do X because it will have adverse consequences is not equivalent to a direction to do X because it has beneficial consequences or does not have the supposed adverse consequences" and so novelty will not be impugned by an earlier disclosure which in effect gives clear directions not to do that which is claimed in a later application. He commented that "invention can lie in finding out that that which those in the art thought ought not be done, ought to be done."
2.06.2 In the situation where a prior art document discloses a range which overlaps with a range claimed in the application in suit, the EPO’s Technical Board of Appeal held that the prior art would be novelty destroying if the skilled person reading the prior art would “seriously contemplate” applying the teaching of the prior art in the area of the overlap (see T 26/85 and T 666/89). However, in Jushi Group Co. Ltd v OCV Intellectual Capital LLC [2018] EWCA Civ 1416, Floyd LJ held that the conventional approach as set out in SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2006] RPC 10 and Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly & Co Ltd [2010] RPC 9 (see 2.19 below) should still be followed. The judge goes on to say that “…there may be circumstances where a prior disclosure of a numerical range…may carry with it an implicit disclosure that the skilled person may choose any value within the range. Whether that is so will depend of the disclosure of the document understood with the benefit of the common general knowledge. It is wrong, however, to elevate that possible conclusion into a rule of law, so that every numerical range must be so understood, whatever the context”.
2.07 While it is generally necessary, for a finding of lack of novelty, for all the features of the claim under consideration to have been explicitly disclosed, the teaching implicit in a document may also be taken into account. If a person skilled in the art would conclude that an earlier invention would, as a matter of normal practice, necessarily be performed in a way which would fall within the scope of the claim under consideration, then the matter defined by the claim is not new. For example the disclosure of a control
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arrangement for the cooling system of an internal combustion engine might not refer to the presence of a radiator or other heat exchanger in the system, but it is common knowledge that there would necessarily be one and so its presence is implied. Floyd J confirmed in H.Lundbeck A/S v Norpharma SpA [2011] EWHC 907 (Pat), [2011] RPC 23 that prior disclosure includes implicit disclosures. On the other hand, he held that matter may be contained in a prior art document but so submerged in it as to not form a disclosure (i.e. if special knowledge is required for the matter to be understood, such that it would not be understood by a skilled person utilising their common general knowledge).
2.07.1 On the other hand, while it may be a common practice for there to be a radiator mounted in front of the engine, this is not necessarily the case and cannot be inferred; if the claim under consideration specifies a radiator so located and the cited document is silent on this point, the question is one of obviousness rather than lack of novelty. The General Tire judgment cited in paragraph 2.03 continues:
"If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee".
2.07.2 In discussing this judgment in SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2006] RPC 10, Lord Hoffmann added:
“But the infringement must not merely be a possible or even likely consequence of performing the invention disclosed by the prior disclosure; it must be necessarily entailed. If there is more than one possible consequence, one cannot say that performing the disclosed invention will infringe. The flag has not been planted on the patented invention, although a person performing the invention disclosed by the prior art may carry it there by accident or (if he is aware of the patented invention) by design. Indeed it may be obvious to do so.”
Therefore, a disclosure which is capable of being carried out in a manner which falls within the claim, but is also capable of being carried out in a different manner, does not anticipate - although it may form the basis of an obviousness attack.
2.07.3 In this case, Lord Hoffmann summarised the disclosure requirement as follows: “anticipation requires prior disclosure of subject-matter which, when performed, must necessarily infringe the patented invention”.
2.08 A prior disclosure must be construed as it would have been understood by the skilled person at the date of the disclosure and not in light of the subsequent patent (held by the House of Lords in SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2006] RPC 10). A prior disclosure should be read in light of the common general knowledge of the skilled person at the date of the disclosure. (This compares with the situation when determining obviousness, where the common general knowledge should be determined at the priority date of the invention (see paragraph 3.11)). See Teva UK Limited & Anor v AstraZeneca AB [2014] EWHC 2873 (Pat).
2.08.1 Care should be taken when relying on dimensions derived from drawings. It was held by the EPO Board of Appeal in Decision T204/83 (OJEPO 10/85) that although features shown solely in a drawing form part of the state of the art when a skilled person could derive a technical teaching from them without further description, it is not generally possible to derive a technical teaching by measuring dimensions in a diagrammatic representation; and that dimensions under these circumstances do not therefore form part of the state of the art. In the particular case in suit, claims to a venturi of
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particular dimensional ratio were found to be novel in the face of a prior document which diagrammatically illustrated a corresponding ratio but without specific identification of the ratio in the description.
2.08.2 The Office practice in relation to anticipation by a document disclosing a chemical compound is to assume that the disclosure of the chemical compound is an enabling disclosure of that compound, ie a disclosure which is clear enough and complete enough for it to be performed by a person skilled in the art and thereby citable. The applicants against whose application it is cited can challenge that assumption by argument and/or evidence. If they do, the Office will decide, on the balance of probabilities, whether the disclosure is enabling or not.
2.08.3 The House of Lords in Generics (UK) Limited and others v H Lundbeck A/S [2009] RPC 13 confirmed that the disclosure of a racemate does not amount to disclosure of each of its enantiomers. For further details please see Examination Guidelines for Patent Applications Relating to Chemical Inventions. 2.09 In order to demonstrate lack of novelty the anticipatory disclosure must be entirely comprised within a single document. If more than one document is cited, each must stand on its own. The cumulative effect of the disclosures cannot be taken into consideration (Ammonia's Application, 49 RPC 409), nor may lack of novelty be established by forming a mosaic of elements taken from several documents (British Ore Concentration Syndicate Ltd v Mineral Separation Ltd, 26 RPC 124 at page 147; Lowndes' Patent, 45 RPC 48 at page 57); this may be done only when arguing obviousness. However if a cited document refers to a disclosure in another document in such a way as to indicate that this disclosure is intended to be included in that of the cited document, then the two may be read together as though they were a single document.
Enablement
(see also 14.62 to 14.105 and 72.03)
2.10 Enablement is the second requirement for anticipation as held in SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2006] RPC 10. The ordinary skilled person must be able to perform the invention which satisfies the requirement of disclosure. In this case, the House of Lords held that the test for enablement of a prior disclosure for the purpose of anticipation is the same as the test of enablement of the patent itself for the purpose of sufficiency (see 14.62 to 14.87). There may however be differences in the application of this test to the facts; for example, because in the case of sufficiency the skilled person is attempting to perform a claimed invention and has that goal in mind, whereas in the case of prior art the subject-matter may have disclosed the invention but not identified it as such.
2.10.1 In SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2006] RPC 10, Lord Hoffmann emphasised that the two requirements of disclosure and enablement should be kept distinct. In particular, the role of the person skilled in the art is different. In the case of disclosure, the skilled person is taken to be trying to understand what the author meant. Their common general knowledge forms the background in construing the disclosure, with the patent being construed on similar principles. Once this performed, to determine whether or not the disclosure would infringe, the person skilled in the art has no further part to play. On the other hand, for enablement, the person skilled in the art is assumed to be willing to make trial and error experiments to get it to work, and the question is not what the skilled person would think the disclosure meant, but rather whether they would be able to work the disclosed invention.
2.10.2 The House of Lords also discussed the need for "enabling disclosure" in Asahi Kasei Kogyo KK [1991] RPC 485, where it was held the requirement for an enabling disclosure applied equally with regard to a disclosure forming part of the state of the art
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under s.2(3) as to s.2(2). Otherwise, it would be illogical for a disclosure which was inadequate for the purposes of s.2(2) to be adequate for those of s.2(3) merely because of a difference in dates bringing it into one field rather than the other. Lord Oliver of Aylmerton said that since s.14(3) requires that the specification discloses the invention in a way which will enable it to be performed by a person skilled in the art (ie it must contain an "enabling disclosure") it follows that a description in an earlier application which contains no enabling disclosure will not "support" the invention so as to enable it, as an invention, to claim priority from the date of that application under s.5(2)(a) (although the description will be entitled to a priority as "matter contained" in the application in suit under s.5(2)(b)). He could not construe s.2(3) as deeming to be part of the state of the art anything more than that matter which is entitled to priority under s.5. However, in considering whether to cite a document in the s.2(3) field, the examiner does not normally have ready access to the priority document and should assume that the disclosure of the potentially citable document is supported by the priority document and thus entitled to the priority claimed. The applicants against whom it is cited can challenge whether such support is present and whether it is enabling.
CONSTRUCTION OF CLAIMS
(See also 14.111-14.120 and 125)
2.11 In general a document will destroy the novelty of a later claim only if it discloses each and every feature specified in that claim. If the claim contains equivalent or additional features, then the question normally becomes one of obviousness. However since the protection conferred may go beyond the literal wording of the claim (see 14.114- 14.115), it will on occasion be possible to argue that an earlier disclosure, while not falling within the precise literal words of the claim, nonetheless shows that the invention is not new, since any differences are confined to unessential features.
2.12 A claim to an apparatus for a particular purpose (eg for carrying out the process of another claim) is normally construed as a claim to apparatus suitable for that purpose. The words do not restrict the claim to the apparatus when used in that way (L'Air Liquide Societe's Application, 49 RPC 428). Apparatus which otherwise possessed all of the features specified in the claims, but which would be unsuitable for the stated purpose, or which would require modification to enable it to be so used, should not normally be considered anticipating the claim. For example, if a claim refers to "A hook for a crane" this implies particular dimensions and strength in the hook. Therefore a fish-hook could never anticipate the claim, but a hook having the necessary dimensions and strength and possessing all the other features specified in the claim would deprive the claim of novelty whether it was stated to be for use in a crane or not.
2.12.1 In Rovi Solutions Corporation & Anor v Virgin Media Ltd & Ors [2014] EWHC 1559 (Pat) the computing hardware without relevant software was not considered "suitable for" the functions in question since a bare computer would not be able to achieve them (the functions in this instance related to displaying future or current TV programming information).
2.12.2 In Qualcomm Inc v Nokia Corp [2008] EWHC 329 (Pat) Floyd J considered the expression “suitable for” in the context of apparatus which might or might not require physical modification to make it "suitable for" the purposes of the patent. He gave the following example: whether connected to the mains or not an apparatus for toasting bread infringes a claim to such an apparatus. Supplying power to a toaster does not change the apparatus: it simply puts into use the apparatus which is there already. Modifications to the apparatus are not however contemplated by the phrase "suitable for". The question in each case is whether the apparatus, as it stands, is suitable for use in a particular way. If the apparatus has to undergo physical modification before it can be used, then it is not suitable for that particular use.
2.12.3 In FH Brundle v Perry [2014] EWHC 475 (IPEC) the judge considered the
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meaning of the phrase “adapted to” in the claims, and held that:
“I accept that as a matter of ordinary English usage, 'adapted' carries a connotation of adaption or modification in design to achieve the purpose stated in the feature. However in my view... these [features] are to be construed such that they contain no subjective element. To my mind it is irrelevant where the designer started and what adaptations were made in the design process. Because these features must be assessed objectively, it seems to me that 'adapted to' and 'adapted in use to' mean the same thing as 'suitable for'”
In light of this it is unlikely that amendment of a claim to include the term “adapted to” would be sufficient to overcome a novelty objection to an earlier version of the claim which used the term “suitable for”. However, the judge cautioned:
“I do not say that in the context of other claims it will never be possible to discern a difference between 'suitable for' on the one hand and 'adapted to' or 'adapted in use to', or 'constructed to' for that matter, on the other. But I think in this claim the first three mean the same thing."
2.12.3.1 In Schenck Rotec GmbH v Universal Balancing Limited [2012] EWHC 1920 the judge considered the meaning of a claim to a device which was “constructed to receive” a plurality of balancing weights. The judge rejected the suggestion that the phrase “constructed to receive” referred to the intention of the device designer (or anyone else), because he found there was nothing in the specification that would lead the skilled person to that conclusion. Instead he found, in the circumstances, that a skilled person would understand that the device was “constructed in such a way that it is capable of receiving” a plurality of balancing weights. That is, he found there had to be some physical construction of the device which achieves the claimed objective.
2.12.4 A claim is not limited to an apparatus per se if the design of the apparatus is essentially tied to its functionality with some other bit of apparatus. In BSH Industries Ltd's Patents [1995] RPC 183 Aldous J did not accept that a claim for "An isolating matching device to enable a heating element of a motor vehicle electrically heatable window ..... to be used as a receiving aerial, ....." was limited to the device and did not include the heating element in the vehicle window. Noting that each type of heating element is likely to have a different impedance, he reasoned that it is not possible to ascertain whether any device takes the invention without considering it in association with a particular heating element in a particular window.
2.13 It is often necessary to look beyond the words of a claim and to consider what it seeks to monopolise and decide whether the wording used imparts a technical, as opposed to merely verbal, distinction. For example, the claim referred to in 2.12 would not be saved by directing it to "a crane-hook", since this is in practice no different in scope from "a hook for a crane". However in Hickman v Andrews, [1983] RPC 147 at pages 183-7, it was alleged that a claim to a workbench was anticipated by a bookbinder's press. The Court of Appeal found that the press had all the features which had been used to characterise the claimed workbench, which would therefore be anticipated if, as had been argued, the press could serve as a workbench. The Court however, having described a workbench as "a surface of sufficient area to enable one to carry out manual work upon it, said surface being supported at a convenient height, and sufficiently rigidly, having regard to the nature of the relevant work", concluded that the alleged anticipating press "is not a workbench. It is in our view far too small to be regarded as such, but on the contrary it is a vice to be used on a workbench".
s.4A(3) 2.14 Likewise a claim to a material or composition for a particular purpose is regarded as a claim to the material or composition per se (Adhesive Dry Mounting Co Ltd v Trapp and Co, 27 RPC 341; G.E.C's Application, 60 RPC at page 3). A known product which is per se the same as the material or composition defined in the claim, but which is in
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a form which would render it unsuitable for the stated use, would not deprive the claim of novelty, but if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it would deprive the claim of novelty. In I. G. Farbenindustrie A.G.'s Patents, 47 RPC at page 322, it was stated that "no man can have a patent merely for ascertaining the properties of a known substance". There is however an exception to this general principle where the claim is to a known substance or composition for use in a surgical, therapeutic or diagnostic method (see 4A.17). In contrast to the above general principle, the Enlarged Board of Appeal of the EPO has held in Decisions G 2/88 and G 6/88 (both in OJEPO 4/90) that a claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to an objection of lack of novelty provided that such technical feature has not previously been made available to the public. In G 2/88 (Mobil), the new technical effect was the discovery that the claimed compound previously used in lubricant compositions to inhibit rust had friction reducing properties. A claim to the use of that compound in a composition for reducing friction was held to be novel even though such friction reduction had inherently occurred in its previous use. Similarly, in G 6/88 (Bayer), use of certain compounds as a fungicide was held to be novel even though the method of use was identical to a known use of the compound as a plant growth regulator. On the other hand, in Robertet SA/Deodorant compositions [2000] OJEPO 1 (T 892/94) it was held that a claim to the use of a known substance for a known purpose could not derive novelty from the discovery of a previously unrecognised technical effect underlying that use. However, these EPO decisions should not be followed and the existing practice of the Office should continue pending clarification or guidance from the courts.
2.14.1 The Office’s existing practice is supported by the decision of the Patents Court in Tate & Lyle Technology v Roquette Frères [2010] FSR 1 (upheld at appeal; Tate & Lyle Technology v Roquette Frères [2010] EWCA Civ 1049). Although the case does not refer to G 2/88 Mobil, it appears to take a different approach from the Enlarged Board to use claims based on an unrecognised technical effect. The only claim in question here was to “the use of maltotriitol to modify or control the form of maltitol crystals”. This was based on a previously unsuspected effect of an impurity (maltotriitol) on the crystallisation of the sweetener maltitol. This was held to lack novelty over a number of prior art documents which disclosed crystallisation of maltitol in the presence of maltotriitol at levels at which it would control crystal formation:
“The industry has been using maltotriitol to control or determine crystal habit without knowing it. What is left of the patent as granted is no more than a discovery as such.”
2.15 Nevertheless, a claim to an apparatus or material “when used in” a particular process is construed as a claim confined to the use of the apparatus or material in such a process, and its novelty is therefore destroyed only by a disclosure referring to such use. (If the apparatus or material per se is known to be old, this fact should be acknowledged in the specification, in order to ensure that the nature of the invention is presented in its proper perspective). In considering so-called ‘product-by-process’ claims, Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 held that it was important that the United Kingdom should apply the same law as the EPO when deciding what counted as new for the purposes of the European Patent Convention. A claim to a product obtained by a process e.g. “Product X obtained by process Y” should therefore be construed as a claim to the product as such, irrespective of whether the term “obtained”, “obtainable”, “directly obtained” or an equivalent wording is used (see EPO Decision T 150/82 International Flavors and Fragrances Inc. [1984] 7 OJEPO 309). A “product-by- process” claim is therefore not rendered novel merely by the fact it is produced by means of a new process. Furthermore, the House of Lords held that the protection conferred by a process claim should extend to products directly obtained by the process in accordance with EPC Article 64(2). “Product- by- process” claims can be difficult to identify, and may also give rise to a clarity objection (see 14.120.1).
2.16 Similarly a claim such as "the use of substance X as an insecticide" is regarded as equivalent to a "process" claim of the form "a process of killing insects using
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substance X" and is not interpreted as directed to the substance X recognisable (eg by further additives) as intended for use of an insecticide.
2.17 A claim for a method of using a known apparatus may be regarded as novel provided that the method of use is new. Parker J stated in Flour Oxidizing Co Ltd v Carr and Co Ltd, 25 RPC 428 at page 457, "But when the question is solely a question of prior publication, it is not, in my opinion, enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contains clear and unmistakable directions so to use it".
SELECTION INVENTIONS
(See also 3.88 to 3.93)
2.18 A prior disclosure in general terms embracing a number of alternatives may amount to no more than a mere suggestion that any of the members, including any specifically exemplified, might be used, and may therefore be regarded as not anticipating a claim to a specific one of the members. An invention so claimed is generally referred to as a "selection" invention and should be evaluated as set out in 3.89. In Union Carbide Corp v BP Chemicals Ltd [1998] RPC 1, it was held that a prior disclosure of a range should normally be regarded as disclosing each and every part of that range. However, there might be room for an invention along the lines of a selection invention if there was something special about a later-claimed part of the range. For situations in which the application in suit specifies a range which overlaps with a range disclosed in prior art, see 2.06.2.
2.19 An invention is not anticipated by a document which merely points the way which might lead to it (Du Pont de Nemours &c (Witsiepe's) Application, [1982] FSR 303 – NB this case was decided under the 1949 Patents Act – cf also the words of the judgment quoted in 2.07.1).
The Court of Appeal in Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly & Co Ltd [2010] RPC 9 decisively rejected the argument that the mere disclosure of a generic formula or class of compounds discloses every possible compound falling within that class. A particular member of a class of substances is therefore not necessarily taken to be disclosed if the prior document disclosing the broad class merely indicates the inclusion of that particular member, whether by name, formula or starting materials, without any clear indication that the substance has actually been prepared, eg by describing its manufacture or particular properties.
In Rhône-Poulenc/Ester Production [1999] EPOR 443 (T427/86) a process wherein a specific pair of compounds were reacted in the presence of a catalyst to form a product was held to be novel over prior art which disclosed the use of reagents and catalyst selected from a list including those specified in the patent in suit. The particular examples in the prior art did not suggest the specified combination, which resulted in a reaction speed significantly greater than could be obtained by following the examples.
In the Du Pont case, a document describing a copolymer with a glycol of general formula HO(CH2)nOH, where n is between 2 and 10, was held not to anticipate a claim to the copolymer where the glycol formula was HO(CH2)4OH, since all the specific examples disclosed in the earlier document used ethylene glycol (n=2). In addition the claimed copolymer was found to have a rapid hardening rate, making it especially effective in injection moulding and high speed extrusion, a fact not previously known or contemplated in the earlier document, which was concerned with textile fibres having a good affinity for dyes. The earlier document thus merely indicated that the use of one preferred glycol would produce a compound with particular properties, suggesting at the same time that use of any one of the other eight glycols would produce the same result. Although the document stated that the C3, C4, C6 and C10 glycols were examples which would be used, there was no statement that any of these others had in fact been used, or that the product resulting therefrom had been found to have any particular advantages. It was therefore open to the applicant to select one of them and discover that the product had valuable properties in a
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different field. However had the combination been specifically disclosed in the earlier document, a discovery that it had some advantage or useful quality not previously recognised would not make it patentable (see also 2.14).
2.20 The size of the class from which a member or members have been chosen is not relevant to the question of novelty of a selection invention, although it may be relevant to the question of obviousness (Du Pont de Nemours & Co (Witsiepe's) Application, [1982] FSR 303 at page 310), (see also 2.06).
Section 2(2)
The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way.
2.21 The state of the art comprises everything made available to the public before the priority date, wherever in the world this may be, and in whatever manner or language the disclosure takes place (see also 3.37.1 for discussion of s.2(2) in relation to inventive step). There is no limit on the age of the disclosure. Matter may be disregarded only in the circumstances specified in s.2(4) (see 2.37-2.41).
s.125(2) 2.22 It should be borne in mind, when deciding whether or not matter forms part of the state of the art in respect of an invention, that it is the priority date of the invention which is relevant, and not the declared priority date of the application, which may be earlier. Moreover different claims, or different alternatives specified in a single claim, may have different priority dates. (For the practice to be followed during search and substantive examination, see 17.74 and 18.14-18.16).
2.22.1 The date of a disclosure should be determined when viewed from the time zone of the office at which the priority document was filed (Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors [2015] EWHC 3366, upheld by the Court of Appeal in Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors [2017] EWCA Civ 266). This is of significance for disclosures which occurred on (or very close to) the priority date. For example, a disclosure which (in accordance with local time) has occurred before the priority date may actually have occurred on the priority date, once considered in the time zone of the office where the priority document was filed.
2.23 In practice the bulk of the matter which needs to be considered consists of documents, such as patent specifications, textbooks or technical journals which have been published in the conventional sense of that term, for example by being on sale or available in libraries.
s.130(1) 2.24 Publication does not however depend on the degree of dissemination; s.118(1) communication to a single member of the public without inhibiting fetter is enough to amount
to making available to the public (Bristol-Myers Co's Application, [1969] RPC 146). There is no need even to show that a member of the public has actually seen the document. Any document is regarded as having been published, and thus forms part of the state of the art, if it can be inspected as of right by the public, whether on payment of a fee or not; this includes for example the contents of the "open" part of the file of a UK patent application once the application has been published under s.16. And in Monsanto (Brignac's) Application, [1971] RPC 153, it was held that a company had published a document by supplying it to its salesmen, since it had been given to them with no restriction on disclosure; indeed it had been put into their hands with the intention that they should make the information available to the public.
2.24.1 In T 1553/06 (Public availability of documents on the World Wide Web/PHILIPS) the EPO Board of Appeal considered whether a document stored on the
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World Wide Web but only accessible via a specific URL could be considered a disclosure which had been made available to public. The Board of Appeal set out the following test: if, before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and accessible via a specific URL,
i) could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document and
ii) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document, then the document was made available to the public in the sense of Article 54(2) EPC.
However the Board held that failure to meet this test does not automatically mean that the document was not made available to the public, as the URL itself may have been made available. In exceptional circumstances the URL may be so straightforward or predictable that it could readily be guessed and would therefore be considered to publically disclose documents at that location. EPO Board of Appeal decisions are not binding upon the UK courts but are of great persuasive value. It therefore remains to be seen what approach the UK courts will take in light of this decision of the Board, given the longstanding approach to the interpretation of the phrase “made available to the public” as described in 2.24.
2.24.2 The EPO Board of Appeal in T 0002/09 (Public availability of an e-mail transmitted via the Internet/PHILIPS) considered whether sending an email over the internet could act as a public disclosure even if the recipient treated the contents of the email as confidential. Having considered whether and in what circumstances an email may be intercepted the Board concluded that the act of transmitting the email via the internet did not in itself make the email available to the public in the sense of Article 54(2) EPC.
2.25 A date of publication which appears on or in connection with a document is presumed to be the date on which publication actually took place, and any allegation to the contrary must be established by evidence. In Microsonics Corporation's Applications, [1984] RPC 29, a cited US patent was granted before, but published after, the date of filing the application in suit. A notice in the US Official Gazette stated that the delay in printing did not affect the availability to the public of the files, which could be inspected from the date of grant. The applicant however alleged that there was a possibility that the files had not in fact been available to the public. It was held that, in view of the notice in the Gazette, the onus was on the applicant to rebut, on the balance of probabilities, the presumption that the file had been available, and that the evidence adduced (affidavits consisting largely of reports of conversations with staff of the US Patent Office) was mostly hearsay, but even if admissible was not enough to rebut this presumption.
2.26 A document published too late to form part of the state of the art may reproduce or summarise disclosure which is alleged to have taken place before the priority date of the invention. For example the document may be a report of a lecture or a public exhibition. In such a case it should be assumed that the account given is correct both as to subject-matter and as to the date on which disclosure is reported to have taken place, unless reasonable ground for doubting either of these is put forward by the applicant, or there is other good reason for doubting them. Likewise any description of prior disclosure given in the specification in suit should be assumed, at least in the first instance, to be accurate (see 18.67).
PRIOR USE
(For the practice at substantive examination, see 18.24).
2.27 The only matter which becomes part of the state of the art as the result of the use of an invention is that which is thereby made available to the public. Prior secret use does not therefore invalidate a patent, although the user may have some protection against action for infringement [see s.64]. In Lux Traffic Controls Ltd v Pike Signals Ltd and
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Faronwise Ltd, [1993] RPC 107 Aldous J recognised that what was made available to the public often differed according to whether the public had an article in their possession to handle, measure and test or whether they could merely look at it. Depending on the circumstances a skilled person might be able to determine how an article was constructed and operated or nothing material might be disclosed. If an article or a material is unconditionally supplied to a member of the public, possibly as the result of just a single sale (T482/89 OJEPO 11/92), this is regarded as also making available any information which could be obtained by dismantling or analysing the article or material, even to destruction (G1/92 OJEPO 5/93). Novelty is destroyed by prior use of a product if analysis of the product using available techniques shows the skilled person that it falls within the scope of the claims; beyond that, it is not necessary for complete analysis to be possible (T952/92 OJEPO 11/1995). In Milliken Denmark AS v Walk Off Mats Ltd and Anr [1996] FSR 292 Jacob J held that the hiring of mats to customers who were free to inspect them amounted to anticipatory prior use even though the mats relied on perforations not visible to the naked eye for their function. While there was no reason to suppose that any customer should have conducted tests which would have revealed the perforations, a skilled person called on to investigate the mats would nonetheless have discovered them. The knowledge of the perforations would enable the skilled person to perform the invention. It was irrelevant that they would not know of its virtues. Moreover, if the process by which the article or material has been made can be deduced with certainty from such examination, that would also form part of the state of the art. Similarly, if for example a machine is displayed or operated where it can be seen by a member of the public, such as at an exhibition, on the highway, or in a part of a factory to which persons not bound to secrecy are admitted, then all information which a person skilled in the art might be able to glean is regarded as having been disclosed (see T84/83 1979-85 EPOR 796).
2.27.1 On the other hand, use of a battery in cars on the highway by employees who were well aware that the design was confidential did not amount to disclosure of the battery (J Lucas (Batteries) Ltd v Gaedor Ltd, [1978] RPC 297). The Patents Court in Folding Attic Stairs Ltd v Loft Stairs Co. Ltd. [2009] FSR 24 and the Hearing Officer in Loadhog Ltd. v Polymer Logistics BV BL O/195/10 both considered whether a single instance of a viewing of a prototype (in a non-public location) by a small and defined group of visitors without any duty of confidentiality was novelty-destroying (for discussion of breaches in confidentiality see 2.38). In both cases it was decided on the balance of evidence that it was highly improbable that the visitors would or could have ascertained the features of the claimed invention. This was distinguished (in Folding Attic Stairs Ltd v Loft Stairs Co. Ltd.) from the display of an item in a public place, where anyone could have inspected it, which would lead to a presumption of disclosure regardless of whether there was any evidence of anyone actually inspecting the item.
2.28 In considering prior use in Quantel Ltd v Spaceward Microsystems Ltd [1990] RPC 83, Falconer J pointed out that the requirements under the 1977 Act are different from those of the 1949 Act as represented by the decision in Wheatley's Application [1985] RPC 91 in that "it now requires the prior use, to constitute anticipation, to have made available to the public an enabling disclosure of the invention". Even if the tests which could have been carried out on a product would have had an ambiguous result, in PCME Ltd v Goyen Controls Co UK Ltd [1999] FSR 801 Laddie J held that the conclusion that "it is probably A but may be B" was a disclosure and even if it were not sufficiently precise to support anticipation it may well render a patent claim obvious.
2.29 In Merrell Dow Pharmaceuticals Inc v N H Norton & Co Ltd [1996] RPC 76 (see also 2.04.2), where lack of novelty arose because a claim for an acid metabolite sought to monopolise the product as metabolised in the liver, Lord Hoffmann held that making matter available to the public requires the communication of information since an invention is a piece of information. He went on to hold that the use of a product makes an invention part of the state of the art only so far as that use makes available the necessary information. Thus acts, which are done without knowledge of the relevant facts but nevertheless would amount to infringement after the grant of the patent, will not count as anticipations before. In Merrell Dow the fact that volunteers in clinical trials had taken terfenadine and therefore had made the acid metabolite in their livers, was held not to
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constitute anticipation by use. The volunteers had been given terfenadine capsules for the sole purpose of swallowing them; they took them without knowing their composition and produced within themselves a substance, which was not then readily capable of being identified and was only later known to be the acid metabolite. This construction of s.2(2) is supported by PLG Research Ltd v Ardon International Ltd [1993] FSR 197, 225 in which Aldous J said:
"Under the 1977 Act, patents may be granted for an invention covering a product that has been put on the market provided the product does not provide an enabling disclosure of the invention claimed. In most cases, prior sale of the product will make available information as to its contents and its method of manufacture, but it is possible to imagine circumstances where that will not happen. In such cases a subsequent patent may be obtained and the only safeguard given to the public is section 64 of the Act."
Merrell Dow was distinguished in Evans Medical Ltd's Patent [1998] RPC 517 where a prior art vaccine had been made available to the public such that it would have been possible to analyse it to determine its contents. Actual prior identification of the process or product claimed was not in itself necessary to find a lack of novelty - merely instructions which, if followed, would inevitably result in the use of the claimed process or product (see also 2.07). This was confirmed in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] RPC 2 where the Patents Court held that a dumb anticipation (i.e. one not explicitly stating the invention) would be effective if it conveyed sufficient information to enable it to be dumbly reproduced.
2.29.1 In cases of alleged prior use, the required standard of proof is the balance of probabilities. Within this standard, the Patents County Court in Kavanagh Balloons Pty Ltd v Cameron Balloons Ltd [2004] RPC 5 held that a flexible degree of probability should be applied to evidence relating to prior use. The cogency of the evidence had to match the occasion and be proportionate to the subject matter. Because of the nature of the monopoly itself and question of public interest, no stricter standard should be applied. It was held that it was not necessary for an opponent to prove their case “up to the hilt” as had been required by the EPO Technical Board of Appeal in Sekisui/shrinkable sheet [1998] OJEPO 161 (T 472/92). The hearing officer in Colley's Application [1999] RPC 97 also distinguished from Sekisui by not requiring proof “up to the hilt”, but followed this decision and Demmeler Maschinenbau GmbH & Co KG (T 908/95) in holding that mere assertion of prior use was insufficient: place, time and detail were essential. In Memcor Australia Pty Ltd v Norit Membraan Technologie BV [2003] FSR 43, it was held that when the patentee is aware of the prior disclosure (e.g. if the alleged prior disclosure was by themselves) the patentee is expected to provide proportionally logical answers, positive and negative, to contradict the evidence that the opponent was able to establish with the disadvantage of having been privy to none of it.
Section 2(3)
The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say -
(a) that matter was contained in the application for that other patent both as filed and as published; and
(b) the priority date of that matter is earlier than that of the invention.
The only kind of document whose contents can form part of the state of the art by virtue of this subsection is an application for a patent, that is, either an application which is made under the Act or one which is treated as such. The field for s.2(3) therefore
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2.30
consists only of the following:-
(a) s.16;
applications made under the Act and which have been published under
s.128(2) (b) patent specifications published under the 1949 Act;
s.78(2), (3) (c) applications for European patents (UK) which have been published by the European Patent Office under a.93 EPC (see also (e) below).
ss.89(1) (d) international applications for patents (UK) which have been published by and 89B(2) WIPO under a.21 PCT and which have entered the national phase (that is, the s.89(A)(3)( national fee (if any) has been paid and, if the application is in a foreign language, an a) English translation has been filed at the Office; see 89A.06.1 and 89B.04);
s.79(1) (e) international applications for European patents (UK) which have been s.79(2) published by WIPO under a.21 PCT and which have entered the regional phase
(that is, the national fee has been paid and, if the application is in a language other than English, German or French, a translation into one of those languages has been filed at the European Patent Office).
[ COPS can be used to determine whether an international application has entered the national phase. The European Patent Register can similarly be used to determine whether an international application has entered the regional phase (see 18.20). ]
s.14(7) 2.31 Only the matter contained in the specification (that is, the description, drawings and claims) of an application of the kind referred to in 2.30 can form part of the state of the art by virtue of s.2(3). The abstract contained in such an application does not form part of the state of the art under this subsection, nor does a priority document filed in respect of such an application (although both of these, when published in any way including being made available to public inspection under s.118(1), can form part of the state of the art under s.2(2)).
s.78(5), 2.32 Subject-matter enters the s.2(3) field when the application containing it (5A) has been published (and, in the case of an international application, it has also entered the
national or regional phase - see 2.30). Once this has occurred, the status of the matter is not affected by the subsequent fate of the application; the matter remains part of the state of the art even if the application is subsequently withdrawn or otherwise terminated. However, if the application is withdrawn prior to publication, but too late to prevent publication (see 14.205, 16.02) then it is not regarded as forming part of the state of the art under s.2(3) (following the Patents Court decision in Woolard’s Application [2002] RPC 39). A European application which is terminated without being published will not be treated as an application for a patent under the Act, and will thus not enter the s.2(3) field. However, once an application for a European patent (UK) has been published, it remains part of the state of the art by virtue of s.2(3) even if the application is later refused or withdrawn, as provided for by s.78(5A). Under the EPC all European patent applications filed on or after 13 December 2007 designate all Contracting States (including the UK) automatically at the date of filing. Every European patent application will therefore become a European patent (UK) application. Section 78(5A) further provides that removal of the UK designation before publication of the European patent (UK) application does not prevent the matter contained in the European patent (UK) application becoming part of the state of the art by virtue of section 2(3). Every European patent application which was filed after 13 December 2007 will therefore enter the state of the art by virtue of section 2(3) once it is published. For European patent applications filed prior to 13 December 2007, removal of the UK designation before publication will continue to prevent the matter contained in those applications from forming part of the state of the art by virtue of section 2(3).
2.33 Only matter which was present both in the application as filed and as published forms part of the state of the art under s.2(3). If for example the published
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application contains claims added subsequent to filing, then their subject-matter does not form part of the state of the art under s.2(3). (It is of course in the state of the art under s.2(2), even if the matter is subsequently deleted from the application during substantive examination).
2.34 It should be remembered that it is the priority dates of the matter in the earlier application and of the invention in suit which need to be compared, and not the declared priority dates of the respective applications. Moreover a claim to priority is not established until the requirements of r.6 have been complied with (see 5.04 to 5.13); in particular, even if the application has already been published, a claimed priority date which has subsequently been lost (for example through failure to file a translation in time) must be disregarded when deciding whether the application forms part of the state of the art under s.2(3). (For the practice to be followed at search and examination, see 17.74 and 18.14- 18.16). With regard to the need for enabling disclosure, see 2.10.2.
s.3 2.35 In order to decide whether or not an invention is new, matter which is in the state of the art under s.2(3) is considered in exactly the same way as matter in the s.2(2) field (see 2.02-2.20). This was confirmed by the Court of Appeal in SmithKline Beecham plc’s Patent [2003] RPC 6. Matter which is in the state of the art under s.2(3) cannot however be used to argue obviousness (but see the remarks in 2.07-2.08 on implicit disclosure, and in 2.11 on purposive construction of claims).
s.73(1) 2.36 The comptroller may on their own initiative revoke a patent which has been granted for an invention which, having regard to matter in the s.2(3) field, is not new (see 73.02-73.04).
Section 2(4)
For the purposes of this section the disclosure of matter constituting an invention shall be disregarded in the case of a patent or an application for a patent if occurring later than the beginning of the period of six months immediately preceding the date of filing the application for the patent and either -
(a) the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person -
(i) from the inventor or from any other person to whom the matter was made available in confidence by the inventor or who obtained it from the inventor because he or the inventor believed that he was entitled to obtain it; or
(ii) from any other person to whom the matter was made available in confidence by any person mentioned in sub-paragraph (i) above or in this sub-paragraph or who obtained it from any person so mentioned because he or the person from whom he obtained it believed that he was entitled to obtain it;
(b) the disclosure was made in breach of confidence by any person who obtained the matter in confidence from the inventor or from any other person to whom it was made available, or who obtained it, from the inventor; or
(c) the disclosure was due to, or made in consequence of the inventor displaying the invention at an international exhibition and the applicant states, on filing the application, that the invention has been so displayed and also, within the prescribed period, files written evidence in support of the statement complying with any prescribed conditions.
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Section 2(5)
In this section references to the inventor include references to any proprietor of the invention for the time being.
2.37 If an applicant wishes an earlier disclosure to be regarded as not forming part of the state of the art, the onus is on them to make out a sufficient prima facie case (on the basis of an affidavit or other evidence if necessary) that one of the conditions specified in s.2(4) is satisfied. Moreover the disclosure can be disregarded only if it occurred after a date six months before the filing date (not the priority date) of the application; thus for example, while the protection of this subsection would apply to an application made within six months of display at an international exhibition, it would not apply to a subsequent application claiming priority from that application and filed more than six months after the display. For the purpose of s.2(3), s.2(4) provides for the disregarding of disclosure in patent applications published not only during the six months before the filing date but also on or after the filing date (but of earlier priority than the application in suit).
UNLAWFUL OBTAINING: BREACH OF CONFIDENCE
2.38 An allegation that an earlier disclosure was made as a result of unlawful obtaining or breach of confidence must be fully particularised, and the examiner should disregard the disclosure only if they are convinced by the applicant's submissions that, on the balance of probabilities, s.2(4) applies. It may be necessary to ask the applicant to clarify or substantiate their allegation, for example by filing evidence or a statutory declaration. If the applicant is either unable or unwilling to substantiate their allegation, they should be informed that the objection based on the earlier disclosure is still outstanding and a hearing should be offered. Any person desiring an actual determination of their entitlement may make a reference under section 8 or 37. An obligation of confidence may exist where there is no formal contract between the parties. Guidance as to what constitutes a breach of confidence was set out by Megarry J in Coco v A N Clark (Engineers) Ltd [1969] RPC 41 and was followed by the Hearing officer in Threeway Pressings Ltd’s Application [2012] RPC 129 BL O/124/12. For a breach of confidence to have taken place the information must be of a confidential nature, the information must have been imparted in circumstances importing an obligation of confidence and there must be an unauthorised use or disclosure of information relating to the invention to the detriment of the inventor.
s.118(1) 2.39 Any communication on this subject will be open to public inspection. If the applicant requests under r.53 that the communication be treated as confidential, they should be informed that such treatment would not be justified, having regard to the interests of third parties and that, unless the allegation is withdrawn within one month the communication will be placed on the open file; a hearing may be offered on this point.
INTERNATIONAL EXHIBITIONS
(For procedure, see 17.84, 18.23)
r.5 2.40 If an applicant wishes disclosure by, or in consequence of, display of the r.67 invention at an international exhibition to be regarded as not forming part of the state of the
art they must, at the time of filing the application, inform the comptroller in writing of the display. They must also, within four months of the date of filing the application, file a certificate issued by the authority responsible for the international exhibition and a statement, duly authenticated by that authority, identifying the invention as being the invention displayed at the exhibition. The certificate must also state the opening date of the exhibition or if later, the date on which the invention was first displayed. For the requirements in the case of an international application for a patent (UK), see 89A.12.
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s.130(1) 2.41 Only an exhibition which falls within the terms of the 1928 Convention on s.130(2) International Exhibitions (as modified by the 1951 Protocol) is regarded as an international r.5(6) exhibition. Such an exhibition has to satisfy stringent conditions; for example, it must run for
at least three weeks, and invitations to participate must be issued at government level through diplomatic channels. A statement published in the Patents Journal that an exhibition constitutes an international exhibition within the meaning of the Convention is conclusive evidence of that fact. Regularly held events and trade fairs organised by particular industries are unlikely to qualify.
[ A list of exhibitions which have been designated as international exhibitions is available from the Bureau International des Exhibitions (www.bie-paris.org or telephone 0033 1 45 00 38 63). Upcoming qualifying international exhibitions are also published in the Official Journal of the EPO. See also 17.84. ]
[Section 2(6) Repealed]
[Subsection 2(6) was concerned with the patentability of substances or compositions for use in methods of treatment or diagnosis. This is now provided for in section 4A(3)]
[2.42 – 2.52 moved to 4A.16 – 4A.26]
[2.53 – 2.56 moved to 4A.30 – 4A.33]
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Section 3: Inventive step
Note: This section of the Manual is presented as three sub-sections: General approach & legal background, Examining for inventive step, and Assessing obviousness. The third sub- section provides some of the more prominent methods for answering the final question in the Windsurfing/Pozzoli approach – ie “is it obvious?”
CONTENTS
Introductory notes
SECTION 3
GENERAL APPROACH AND LEGAL BACKGROUND Need for an objective test Structured approach needed when assessing obviousness The four-step Windsurfing approach The Windsurfing/Pozzoli approach; a reformulation of the Windsurfing approach What does this “4-step” approach do? Consequences of not using the Windsurfing/Pozzoli approach Collocations The individual steps of the Windsurfing/Pozzoli approach The skilled person The skilled person seeks expert advice, and can be considered a team Common general knowledge Identifying the inventive concept The state of the art Consideration of the prior art: age of documents and other criteria Combining documents, “mosaicing” Factors to consider before combining documents Combining documents with common general knowledge
EXAMINING FOR INVENTIVE STEP A warning against overelaborating the question of obviousness A reminder to consider obviousness whenever a novelty objection is overcome Determining obviousness The Windsurfing/Pozzoli approach Consider different starting points No rules of thumb; precedents to be treated with caution Raise any sound objection Mosaics Content of the report Reporting both novelty and inventive step objections Responding to the applicant’s case Standard of certainty, benefit of the doubt Other matters
ASSESSING OBVIOUSNESS Deciding the fourth Windsurfing/Pozzoli step The Haberman questions Right to work Lying in the road Why was it not done before? Fulfilling a need Advantages of the invention Obvious to try
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Selection Additional advantage not inventive Overcoming a technical prejudice
s.130(7) 3.01 This section is concerned with the second of the tests for patentability set out in s.1(1). It is intended to have, as nearly as practicable, the same effect as the corresponding provisions of the EPC, PCT and CPC, ie Article 56 of the EPC.
3.02 The question of whether or not an invention is obvious is a matter which is normally decided on the technical facts of the particular case rather than on any general legal principles, but insofar as any such principles can be derived from decisions given under previous legislation they will generally continue to be relevant.
Section 3
An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above).
GENERAL APPROACH AND LEGAL BACKGROUND
3.03 What constitutes an inventive step may depend on the nature of the invention. The matter was considered by Lord Hoffmann in Biogen Inc v Medeva plc [1997] RPC 1 (at page 34) as follows:
"Whenever anything inventive is done for the first time it is the result of the addition of a new idea to the existing stock of knowledge. Sometimes, it is the idea of using established techniques to do something which no one had previously thought of doing. In that case the inventive idea will be doing the new thing. Sometimes it is finding a way of doing something which people had wanted to do but could not think how. The inventive idea would be the way of achieving the goal. In yet other cases, many people may have a general idea of how they might achieve a goal but not know how to solve a particular problem which stands in their way. If someone devises a way of solving the problem, his inventive step will be that solution, but not the goal itself or the general method of achieving it."
Obviousness must be decided on an objective test
EPC 3.04 The test for obviousness should, as far as is possible, be an objective one. The aa.52& 56 question is whether the invention would have been obvious to a skilled person in the art, and
not whether it was or would have been obvious to the inventor or to some other particular worker. It is immaterial whether the invention was the result of independent work and research done without knowledge of the prior art (Allmanna Svenska Elektriska AB v The Burntisland Shipbuilding Co Ltd, 69 RPC 63 at page 70). Although evidence of what was in the inventor's mind may be admissible as evidence of the state of the art, it would seldom be otherwise admissible (The Wellcome Foundation v VR Laboratories (Australia) Pty. Ltd, [1982] RPC 343). The EPO Board of Appeal has held that the subjective achievement of the inventor is not relevant; the fact that an invention relating to steel refining came, not from the steel industry, but from an applicant who normally deals with other fields of technology is not evidence for the existence of an inventive step (Decisions T36/82, OJEPO 7/83).
3.05 In the judgment of the Court of Appeal in Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd, [1985] RPC 59 (in considering whether claims relating to a sailboard were obvious) it was stated that:
“the question of whether the alleged invention was obvious has to be answered
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objectively by reference to whether, at the material time (that is, immediately prior to the priority date), the allegedly inventive step or concept would have been obvious to a skilled addressee” and that “what has to be determined is whether what is now claimed as inventive would have been obvious, not whether it would have appeared commercially worthwhile to exploit it”.
3.06 In Molnlycke AB v Procter & Gamble Ltd [1994] RPC 49 the Court of Appeal recognised the usefulness of the analysis formulated in Windsurfing but did not consider that it assisted to ask whether the patent discloses something sufficiently inventive to deserve the grant of a monopoly. The criterion for deciding the issue of inventive step as laid down by statute was held to be a wholly objective qualitative and not quantitative test.
3.07 The Court of Appeal followed Windsurfing in Hallen Co v Brabantia (UK) Ltd [1991] RPC 195, observing that “obvious” in s.3 is not directed to whether an advance is “commercially obvious” and stating:
“We do not think that the hypothetical technician must also be taken as applying his mind to the commercial consequences which might follow if the step or process in question were found in practice to achieve or assist the objective which he had in view”.
However the Court of Appeal has more recently appeared to retreat from this position, stating in Dyson Appliances Ltd v Hoover Ltd [2002] RPC 22 that:
“commercial realities cannot necessarily be divorced from the kinds of practical outcome which might occur to the skilled addressee as worthwhile”
and so it followed that a “commercial mindset will have played a part in setting the notional skilled addressee’s mental horizon”.
3.08 In Petra Fischer's Application [1997] RPC 899 it was held that a diesel cabriolet was obvious even though there may be commercial prejudice against the idea; Jacob J stated that:
"The patentee in her patent has told the skilled man nothing which he did not know before, to whit, that in the engine space of a basic production model he could put a diesel engine, if he wanted to. Whether it was worth doing that or not is another matter. Whether he thinks it will sell or not, that is another matter."
3.09 It is also unsound to fasten on the word "step" and to look at the steps which were actually taken by the inventor; this interpretation places too much weight on the choice of the particular word "step" whereas the word used in the French and German texts of the corresponding provisions of the European Patent Convention means "activity" (judgment of Court of Appeal in Genentech Inc's Patent [1989] RPC 147 at page 275). It is necessary to ask by what routes it would have been possible for the skilled person to proceed to the goal (ie the invention) from the starting point, considering how obstacles might be overcome or avoided on any such route, not only that followed by the inventor.
Structured approach needed when assessing obviousness
3.10 Anyone who is considering the question of whether or not an invention is obvious must beware of hindsight or ex post facto analysis. It can be very easy to be misled by a line of reasoning that involves working forward from the stated problem in a succession of easy steps when one knows the desired solution. In particular one must avoid looking at a prior publication under the influence of the patent or patent application in question, and one should attempt to place oneself in the shoes of the skilled person faced with the problem at hand. This is necessarily an artificial position, since the patent or patent application presents both the solution (the invention) as well as the problem (or instead of the problem, a pointer to the problem since, in some cases, one may be only able to infer this from the
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description of the invention).
The four-step Windsurfing approach
3.11 In Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd, [1985] RPC 59, the Court of Appeal held that the question of obviousness
“has to be answered, not by looking with the benefit of hindsight at what is known now and what was known at the priority date and asking whether the former flows naturally and obviously from the latter, but by hypothesizing what would have been obvious at the priority date to a person skilled in the art to which the patent in suit relates”.
Thus the court formulated a four-step approach to assessing obviousness:
(1) Identify the claimed inventive concept.
(2) Assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge of the art in question.
(3) Identify what, if any, differences exist between the matter cited as being “known or used” and the alleged invention.
(4) Decide, without any knowledge of the alleged invention, whether these differences constitute steps which would have been obvious to the skilled person or whether they require any degree of invention.
The Windsurfing/Pozzoli approach; a reformulation of the Windsurfing approach
3.12 In Pozzoli SPA v BDMO SA [2007] EWCA Civ 588, Jacob LJ restated and elaborated upon the Windsurfing approach. This decision of the Court of Appeal does not formally replace, supersede or supplant the Windsurfing approach. It is included here because it gives an insight to the Court’s latest thinking on obviousness, and for its very useful discussion of the processes that should be adopted when one uses the Windsurfing approach. There is no suggestion that outcomes will be any different under the Pozzoli reformulation, it is a matter of style and clarity of approach and not substance. It follows that Windsurfing and Pozzoli taken together should now be seen as the precedent for deciding questions of obviousness.
3.13 At paragraph 23 of Pozzoli, Jacob LJ reformulated the Windsurfing approach as follows:
(1)(a) Identify the notional “person skilled in the art”
(1)(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the
claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
The reasoning behind this reformulation is set out at paragraphs 15 & 16 of Pozzoli :
“First one must actually conduct the first two operations in the opposite order –
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mantle first, then concept. For it is only through the eyes of the skilled man that one properly understand what such a man would understand the patentee to have meant and thereby set about identifying the concept.
Next, that first step actually involves two steps, identification of the attributes of the notional “person skilled in the art” (the statutory term) and second identification of the common general knowledge (“cgk”) of such a person.”
Later, at paragraphs 21 & 22, Jacob LJ discusses the prior art and the third step in the Windsurfing approach:
“Identification of the concept is not the place where one takes into account the prior art. You are not at this point asking what was new. Of course the claim may identify that which was old (often by a pre-characterising clause) and what the patentee thinks is new (if there is characterising clause) but that does not matter at this point.
The third step also requires a little reformulation – Windsurfing was a case under the 1949 Act where the statutory words for the prior art were “known or used”. The European Patent Convention uses the words “state of the art”.”
3.13.1 In Lalvani et al’s Patent BLO/220/13 the hearing officer addressed the question of whether, following the decision in Human Genome Sciences v Eli Lilly [2011] UKSC 51, [2012] RPC 6, the Office should follow the problem-solution approach of the EPO when deciding questions of obviousness. The hearing officer decided that although decisions of the EPO Boards of Appeal are persuasive, the Office is bound to follow the reformulated Windsurfing approach set out by the Court of Appeal in Pozzoli.
What does this “4-step” approach do?
3.14 In DSM NV’s Patent [2001] RPC 35, Neuberger J pointed out that the four-step Windsurfing approach ends up with the original issue to be resolved being embodied in the final question. Nevertheless it was held appropriate to apply this structured approach in order to ensure a reasoned, methodical and consistent analysis of obviousness,
“...not merely because it has been approved and applied in a number of previous cases, including in the Court of Appeal. It is also because it ensures that one does not go straight to the question of obviousness by reference to a general impression as to the evidence as a whole. By adopting the structured approach one ensures that there is a measure of discipline, reasoning and method in one’s approach. Indeed, it helps to ensure that there is consistency of approach in different cases involving the issue of obviousness.”
3.15 Thus the first three steps of the Windsurfing/Pozzoli approach are preliminary or preparatory steps to put one in the proper frame of mind to answer the question posed in the fourth step; and the final step of the Windsurfing/Pozzoli approach can be seen as a restatement of the statutory test for inventive step – ie “is it obvious?”
Consequences of not using the Windsurfing/Pozzoli approach
3.16 The Court of Appeal in Wheatley v Drillsafe Ltd [2001] RPC 7, in overturning the decision of the Patents Court on obviousness, highlighted how a failure to use the structured Windsurfing approach to assessing obviousness had led the Patents Court to fall into the trap of using hindsight and to fail to distinguish what was known from what was common general knowledge.
Collocations
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3.17 Special consideration is needed when an invention may be to a combination or a collocation. In SABAF SpA v MFI Furniture Centres Ltd [2005] RPC 10, Lord Hoffmann held that before you can ask whether the invention involves an inventive step, you first have to decide what the invention is. In particular, the first step is to decide whether you are dealing with one invention or, for the purposes of s.3, two or more inventions If two integers interact upon each other, if there is synergy between them, they constitute a single invention having a combined effect and one applies s.3 to the idea of combining them. But if each integer performs its own proper function independently of any of the others, and the claim is a mere aggregation or juxtaposition of features, then each is, for the purposes of s.3, a separate invention. The combination of a series of known or obvious features, each playing its usual part in the final entity, will be a matter of design or mere collocation, not of invention, and objection should be raised under s.3 (for discussion of anticipatory disclosures in multiple documents see also 2.09).
In this decision, Lord Hoffmann quoted with approval passages from the EPO Guidelines for Substantive Examination, providing guidance on how to determine whether two features display synergy. This guidance was re-stated and further explained in the EPO Technical Board of Appeal decision in T 1054/05:
“Two features interact synergistically if their functions are interrelated and lead to an additional effect that goes beyond the sum of the effects of each feature taken in isolation. It is not enough that the features solve the same technical problem or that their effects are of the same kind and add up to an increased but otherwise unchanged effect."
The individual steps of the Windsurfing/Pozzoli approach
3.18 What follows are some discussions of some of the steps within the Windsurfing/Pozzoli approach, and some of the factors that will influence one’s thinking when using the Windsurfing/Pozzoli approach.
3.19 One may also wish to consider the discussions of these steps available in guides such as “Terrell on the Law of Patents” 16th (2016) Edition and the “CIPA Guide to the Patents Acts” (8th Edition). The locations of the relevant discussions in these guides are summarized in the table below.
Topic Terrell CIPA Guide
person skilled in the art
common general knowledge
identifying the inventive concept
identification of differences
difference involves an inventive step?
8.01, 12.73
8.56, 12.54
12.74
12.80
12.81
3.07
3.11
3.18
3.25
3.26
The skilled person
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3.20 The “person skilled in the art” is not a highly skilled expert or a Nobel prize winner, nor is he some form of lowest common denominator. Instead he is best seen as someone who is good at their job, a fully-competent worker. To a large degree the capacities of the skilled person will be determined by the nature of the common general knowledge identified as being “relevant”. An important consequence of imparting to this person the relevant common general knowledge is that he will generally not be aware of individual patent specifications, scientific papers, or the like – see the extract from General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd at 3.32 below.
3.21 He should be taken to be a person who has the skill to make routine workshop developments but not to exercise inventive ingenuity or think laterally - as set out, for example, by Laddie J in Pfizer Ltd’s Patent [2001] FSR 16 at paragraphs 62 and 63, and by the Court of Appeal in Technip France SA’s Patent [2004] RPC 46, per Jacob LJ at paragraphs 6 to 10, who held that the person skilled in the art, if real, would be very boring - a nerd.
3.22 His level of skill will, however, depend on the scope of the subject matter of the patent in question (see, for example, Dyson Appliances Ltd v Hoover Ltd [2001] RPC 26, upheld by the Court of Appeal [2002] RPC 22; see also 14.75).
3.23 He is assumed to be at least sufficiently interested to address his mind to the subject and to consider the practical application of the information which he is deemed to have (see Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd [1985] RPC 59). While recognising this, the Court of Appeal in PLG Research Ltd and anr. v Ardon International Ltd and others [1995] RPC 287 held that knowing a piece of prior art is one thing but appreciating its significance to the solution to the problem in hand was another. Whitford J had similarly warned in Sandoz Ltd (Frei's Application) [1976] RPC 449 against too ready an assumption that the significance of existing published material in relation to the problem dealt with would necessarily be apparent to the hypothetical skilled person.
3.24 The skilled person should not be expected to try all combinations unless he has a problem in mind and particular combinations might assist him in solving it; he is not to be expected to take steps or try processes which he would not regard as worthwhile as a possible means of achieving or assisting in practice the objective which he has in view (see the judgment of the Court of Appeal in Hallen Co v Brabantia (UK) Ltd [1991] RPC 195, see also 3.07).
3.25 Although obviousness generally is assessed on the basis of technical rather than commercial considerations the Court of Appeal in Dyson v Hoover (see 3.07) appeared to indicate a softening of that approach, holding that commercial realities cannot always be divorced from the kinds of practical outcome which might appear worthwhile to the skilled addressee and that commercial considerations will play a part in the mindset of the skilled person.
The skilled person seeks expert advice, and can be considered a team
3.26 With a prospective solution in mind, the skilled person might need to seek advice from an expert in another field. In Tetra Molectric Ltd v Japan Imports Ltd ([1976] RPC 547) the Court of Appeal held that a claim to a smoker's lighter using piezoelectric ignition was obvious. Since the possibility of using piezoelectricity in a lighter would have occurred to the industry, a skilled lighter manufacturer, himself not an expert in piezoelectricity, could reasonably be expected to seek advice from those who were. If such experts had been consulted, they would have advised that the suggestion was definitely worth trying, and they could have solved such problems as arose. The person skilled in the art may, in such circumstances, be regarded as combining his own common general knowledge with expert advice from the other field.
3.27 Alternatively the hypothetical skilled person acting under expert advice can be
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seen as a team composed of skilled persons from each of the relevant fields, see Genentech Inc’s Patent [1989] RPC 147 at pages 278 & 280 or Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] RPC 2 at paras 39 & 40. Where the skilled person is represented by a team of individuals each practicing their particular art, it makes no difference whether they work together as a single unit or as sub-contractors. The standard for skills is the same. In the example of the piezoelectric lighter above the team might be composed of a skilled person from the field of piezoelectricity and a skilled person from the field of lighter manufacture. (See also 3.44 & 3.83).
3.28 However, it cannot be assumed – for the purpose of assessing inventive step – that the “person skilled in the art” necessarily comprises a team made up of experts with all the different skills needed to perform the invention. In Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] RPC 33, the Court of Appeal considered the inventiveness of a method for oil exploration which utilised an electromagnetic surveying technique known as CSEM to determine whether a potential undersea reservoir actually contained oil or gas. CSEM was a known technique, but this application of it had not been contemplated. Jacob LJ held that the correct approach was to ask whether the exploration geophysicist would realise that there was a solvable problem and that CSEM might realistically be the solution. The problem also needed to be approached from the other side; would the CSEM expert be aware of the exploration geophysicist’s problem and appreciate that CSEM was a potential solution?
“...if it would not be obvious to either of the notional persons or teams alone and not obvious to either sort of team to bring in the other, then the invention cannot fairly be said to be obvious.”
3.28.1 Jacob LJ held that in such a case, the “person skilled in the art” for the assessment of inventiveness under s.3 (Art. 56 EPC) was not necessarily the same person or team as that used to assess sufficiency (see 14.75) or the scope of the claims. For the latter two purposes, this “person” would be a person or team with all the skills necessary to perform the invention – in this case, an exploration geophysicist and a CSEM expert. This was not necessarily the case for inventiveness, if there was no reason for this team to be assembled without the benefit of hindsight.
3.28.2 The question of whether a team with disparate skills would be assembled was also at issue in Mutoh Industry Ltd's Application ([1984] RPC 35). In this case, the hearing officer held that a drawing board employing magnetic bearings was obvious, since it was reasonable for the drawing-board man concerned with the problem of reducing friction to consult a bearings expert. The Patents Court however allowed an appeal, finding that users of the known device were not struggling to overcome a problem which inhibited their activities, nor were manufacturers failing to put the known device on the market because it was not sufficiently friction-free; there was therefore no reason for the manufacturer or user to look for outside assistance. In ABT Hardware Ltd's Application (BL O/36/87), the hearing officer distinguished the circumstances from those in Mutoh and held the invention to be obvious. It was concerned with the use in a letterplate of a known type of magnet comprising an elastomer loaded with ferrite powder to hold a flap in sealing engagement with a frame over an opening in the frame. There were specific problems associated with prior magnetic letterplates which could arguably have led the applicants to seek specialist advice, and the general availability and widespread use of the magnets in question might also reasonably be expected to have led the applicants naturally to consider their adoption in letterplates, with or without consultation of specialists.
Common general knowledge
3.29 One cannot overstate the importance of the notion of common general knowledge. It is central to everything that is required of the hypothetical skilled person, for example in reading and understanding the patent for the purposes of purposive construction, or in understanding and reacting to the cited prior art. Common general knowledge can, perhaps, be summarized as a part of the mental equipment or mental toolkit needed so as to be
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competent in the art concerned. It is what makes the skilled person skilled.
3.30 The courts have attempted to define the common general knowledge many times over the years. In Raychem Corp’s Patents [1998] RPC 31 Laddie J explained common general knowledge as follows:
“The common general knowledge is the technical background of the notional man in the art against which the prior art must be considered. This is not limited to material he has memorized and has at the front of his mind. It includes all that material in the field he is working in which he knows exists, which he would refer to as a matter of course if he cannot remember it and which he understands is generally regarded as sufficiently reliable to use as a foundation for further work or to help understand the pleaded prior art. This does not mean that everything on the shelf which is capable of being referred to without difficulty is common general knowledge nor does it mean that every word in a common text book is either. In the case of standard textbooks, it is likely that all or most of the main text will be common general knowledge. In many cases common general knowledge will include or be reflected in readily available trade literature which a man in the art would be expected to have at his elbow and regard as basic reliable information.”
3.30.0 In Teva UK Limited & Anor v AstraZeneca AB [2014] EWHC 2873 (Pat) Sales J said that guidance on what constitutes common general knowledge (CGK) needs to be kept up to date in the age of the internet and digital databases of journal articles. He stated that searches of databases are part and parcel of the routine sharing of information in the scientific community and are an ordinary research technique, and further added that:
“...if there is sufficient basis ... in the background CGK relating to a particular issue to make it obvious to the ... skilled person that there is likely to be – not merely a speculative possibility that there may be – relevant published material bearing directly on that issue which would be identified by such a search, the relevant CGK will include material that would readily be identified by such a search.”
3.30.1 A set of industry standards may be considered to be part of the common general knowledge, even if they are of such length and complexity that no skilled worker could possibly be expected to know even a fraction of the information contained therein, providing the skilled person would know where to find the information relevant to the task in hand (Nokia v Ipcom [2010] EWHC 3482; upheld at appeal [2011] EWCA Civ 6).
3.30.2 Unconventional knowledge can still be part of the common general knowledge. In Apimed Medical Honey Ltd v Brightwake Ltd [2011] EWPCC 2, [2011] RPC 16, the patent concerned surgical dressings for wounds comprising honey and a gelling agent. The court held that, at the priority date, there may have only been a few people working within the wound care field who would have seen a clinical future in treating wounds with honey, but that fact did not eliminate the idea from being a part of the common general knowledge.
3.30.3 In Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 2548 Arnold J held that matter being relied on as common general knowledge must be common general knowledge in the UK. He explained:
“The reason for this is that, whether one is concerned with the validity of a European Patent (UK), or a UK patent, one is concerned with a right in respect of the UK. It is true that the prior art may have been published anywhere in the world, but I do not think that alters the need for the skilled team to consider that art as if they were located in the UK. I do not think it matters that a fact was common general knowledge in (say) China, if it was not common general knowledge here. The position may be different if all the persons skilled in a particular art in the UK are acquainted with the position in China”.
3.31 A much older definition comes from Fletcher-Moulton LJ in British Ore Concentrate Syndicate Ltd v Minerals Separation Ltd (1909) 26 RPC 124 (the reference to “public
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general knowledge” should be read as common general knowledge):
"[The court] has to arrive as closely as it can at the mental attitude of a well- instructed representative of the class to whom the Specification is addressed, and no more. In other words, in the performance of this part of its task it has to ask itself what ought fairly to be considered to be the state of knowledge in the trade or profession at the date of the patent with respect to the matters in question, and if any facts or documents are such that in ordinary probability they would not be known to competent members of such trade or profession they ought not to be taken, either for or against the public on the one hand, or the inventor on the other, as forming part of public general knowledge."
3.32 A much longer passage from the speech by Sachs LJ in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 is of particular interest because it sets out the relationship of patent specifications to the common general knowledge (“it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge”). It also sets out the relationship of scientific journals and papers to the common general knowledge (“it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal”). This passage is taken from pages 482-483 of the General Tire judgment:
"The common general knowledge imputed to such an addressee must, of course, be carefully distinguished from what in patent law is regarded as public knowledge. This distinction is well explained in Halsbury's Laws of England, Vol. 29, para. 63. As regards patent specifications it is the somewhat artificial (see per Lord Reid in the Technograph case [1971] FSR 188 at 193) concept of patent law that each and every specification, of the last 50 years, however unlikely to be looked at and in whatever language written, is part of the relevant public knowledge if it is resting anywhere in the shelves of the Patent Office. On the other hand, common general knowledge is a different concept derived from a commonsense approach to the practical question of what would in fact be known to an appropriately skilled addressee—the sort of man, good at his job, that could be found in real life.
The two classes of documents which call for consideration in relation to common general knowledge in the instant case were individual patent specifications and 'widely read publications'.
As to the former, it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge, though there may be specifications which are so well known amongst those versed in the art that upon evidence of that state of affairs they form part of such knowledge, and also there may occasionally be particular industries (such as that of colour photography) in which the evidence may show that all specifications form part of the relevant knowledge.
As regards scientific papers generally, it was said by Luxmoore J. in British Acoustic Films (53 RPC 221 at 250):
'In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.'
And a little later, distinguishing between what has been written and what has been
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used, he said:
'It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art.'
Those passages have often been quoted, and there has not been cited to us any case in which they have been criticised. We accept them as correctly stating in general the law on this point, though reserving for further consideration whether the words 'accepted without question' may not be putting the position rather high: for the purposes of this case we are disposed, without wishing to put forward any full definition, to substitute the words 'generally regarded as a good basis for further action'."
3.33 Over time the growth of proprietary and specialist knowledge, that is knowledge known only within certain organisations or companies or known only to a few experts, makes it increasingly difficult to distinguish the common general knowledge from the state of the art. Although a feature, item or concept may be well-known to a few, it is not part of the common general knowledge unless it can be shown to be known to and accepted by the large majority of those skilled in the art. In Beloit v Valmet (No.2) [1997] RPC 489 Aldous L.J. put it as follows:
"It has never been easy to differentiate between common general knowledge and that which is known by some. It has become particularly difficult with the modern ability to circulate and retrieve information. Employees of some companies, with the use of libraries and patent departments, will become aware of information soon after it is published in a whole variety of documents; whereas others, without such advantages, may never do so until that information is accepted generally and put into practice. The notional skilled addressee is the ordinary man who may not have the advantages that some employees of large companies may have. The information in a patent specification is addressed to such a man and must contain sufficient details for him to understand and apply the invention. It will only lack an inventive step if it is obvious to such a man.
It follows that evidence that a fact is known or even well-known to a witness does not establish that that fact forms part of the common general knowledge. Neither does it follow that it will form part of the common general knowledge if it is recorded in a document."
3.33.1 The Hearing Officer in Maxluck Biotechnology’s Application BL O/130/10 highlighted (citing Ratiopharm GmbH v Napp Pharmaceutical Holdings [2009] RPC 11) the dangers of selectivity in deciding what is common general knowledge in the field:
"However, when deciding what is common general knowledge, one cannot just take those parts of it that support (or rebut) the objection that is being made. To do so opens oneself up to an accusation of ex post facto selection. The notional skilled person comes armed with all the common general knowledge and cannot pick and choose selectively with the benefit of hindsight. Some aspects of the common general knowledge may lead the skilled person from the prior art towards the inventive concept; but equally other aspects of common general knowledge may lead him away from the inventive concept."
3.33.2 The Patents Court in KCI Licensing Inc & Ors v Smith & Nephew Plc & Ors [2010] EWHC 1487 identified a further class of information, which, although not part of the common general knowledge, may nevertheless be taken into account in determining obviousness. In a passage endorsed by the Court of Appeal ([2010] EWCA Civ 1260), Arnold J observed that:
“...even if information is neither disclosed by a specific item of prior art nor common general knowledge, it may nevertheless be taken into account as part of a case of obviousness if it is proved that the skilled person faced with the problem to which the patent is addressed would acquire that information as a matter of
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routine. For example, if the problem is how to formulate a particular pharmaceutical substance for administration to patients, then it may be shown that the skilled formulator would as a matter of routine start by ascertaining certain physical and chemical properties of that substance (e.g. its aqueous solubility) from the literature or by routine testing. If so, it is legitimate to take that information into account when assessing the obviousness of a particular formulation. But that is because it is obvious for the skilled person to obtain the information, not because it is common general knowledge.”
Identifying the inventive concept
3.34 Applying Windsurfing International v Tabur Marine and Molnlycke v Procter & Gamble Jacob J observed in Unilever PLC v Chefaro Proprietaries Ltd [1994] RPC 567 at page 580 that it is the inventive concept of the claim in question which must be considered, not some generalised concept to be derived from the specification as a whole. Different claims can, and generally will, have different inventive concepts. The first stage in identifying the inventive concept of a claim is likely to involve a purposive construction of the claim (see 125.14) – what does it mean to the skilled person? However merely doing that can be too wooden because one does not distinguish between portions which matter and portions which, although limiting the ambit of the claim, do not. It is the essence of the claim that should be identified when considering the inventive concept. Finding that essence will involve constructing something akin to a précis, stripping out unnecessary verbiage from the purposively construed claim.
3.34.1 In Generics (UK) Limited and others v H Lundbeck A/S [2009] UKHL 12, [2009] RPC 13, Lord Walker explained that there is a difference between the “inventive concept” of a claimed invention and its “technical contribution to the art”. He stated at paragraph 30:
"Inventive concept" is concerned with the identification of the core (or kernel, or essence) of the invention—the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 169 paras 112-113) which entitles the inventor's achievement to be called inventive. The invention's technical contribution to the art is concerned with the evaluation of its inventive concept—how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.
This case related to a straightforward product claim. The House of Lords held that the novel and non-obvious product claimed formed the technical contribution to the art, whilst the process of how it had been made formed the inventive concept (see also Examination Guidelines for Patent Applications Relating to Chemical Inventions).
3.34.2 Although the inventive concept can in certain respects be broader than the claim (because immaterial features of the claim may be ignored), it cannot be narrower than the claim. In Datacard Corp. v Eagle Technologies Ltd. [2011] EWHC 244 (Pat), [2011] RPC 17, Arnold J held that the inventive concept cannot be defined in terms which apply only to a narrow sub-group of embodiments with certain technical advantages, and which do not apply to the rest of the claim. If the patentee has chosen to claim the invention broadly, the inventive concept must be of at least equivalent breadth.
3.35 In Raychem Corp.'s Patents [1998] RPC 31 (upheld on appeal - [1999] RPC 497) the practice of drafting claims in an unnecessarily complicated way was criticised. It was pointed out that a properly drafted claim will state the inventive concept concisely, but it was held that where the claims were prolix and opaque the court should break free of the language and concern itself with what they really meant.
The state of the art
3.36 The state of the art for the purposes of deciding whether an invention is obvious is defined by s.2(2); that is, it includes everything which has been made available to the public,
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anywhere in the world, before the priority date of the invention (see further 2.21-2.29). Matter which forms part of the state of the art by virtue of s.2(3) is specifically excluded from consideration.
3.37 [moved to 3.75.1]
Consideration of the prior art: age of documents and other criteria
3.37.1 Any disclosure falling within the s.2(2) field may be used as the starting-point for an inventive step objection. The objection cannot be overcome by an argument that the skilled person would simply not have discovered a document in the course of his work, if that document has been made public anywhere in the world, in any language, at any time before the priority date. (However, as discussed at 3.40-3.42, this does not necessarily apply when considering whether the skilled person would have considered a further document together with the first document, as then the likelihood of the skilled person considering the two documents together must be assessed.) For example, in Wake Forest University Health Sciences & Ors v Smith & Nephew Plc & Anor [2009] EWCA Civ 848, the prior art in question was a Russian language research paper (“Bagautdinov”) which had been shown to have been made available in four libraries in the former Soviet Union. Jacob LJ noted that it was highly unlikely that the inventor or anyone involved in the litigation knew of its existence at the priority date of the claimed invention. However, he observed (emphasis added) that “Mr Alexander [the patentee’s representative] accepts, as he must, that the skilled person will have read Bagautdinov and have done so carefully but with no imagination”. This general principle was set out by Laddie J in Pfizer Ltd’s Patent [2001] FSR 16:
“A real worker in the field may never look at a piece of prior art for example he may never look at the contents of a particular public library or he may be put off because it is in a language he does not know. But the notional addressee is taken to have done so. This is a reflection of part of the policy underlying the law of obviousness. Anything which is obvious over what is available to the public cannot subsequently be the subject of valid patent protection even if, in practice, few would have bothered looking through the prior art or would have found the particular items relied on.”
3.37.2 However, this does not mean that all prior art will be accorded equal weight or significance; any piece of prior art must be viewed through the eyes of the skilled person at the priority date, and the common general knowledge in the field may cause him to disregard it. For example, in Actavis v Merck [2008] RPC 26, the Court of Appeal considered whether the use of a drug to treat alopecia was obvious over a prior art document which disclosed the use of the same drug, to treat the same condition, at a different dosage. It was held that, at the time the document was published, the claimed invention would have been obvious from this disclosure. However, by the priority date, the accepted wisdom in the field would suggest that this drug would be ineffective at any dosage. Jacob LJ therefore highlighted the importance of assessing inventiveness at the priority date, and not before or after:
“…one might assume that when an invention becomes obvious it must remain so thereafter. But such an assumption would be wrong: obviousness must be determined as of a particular date. There is at least one other well-known example showing how an invention which might be held obvious on one date, would not be so held at a later date. That is where there has been commercial success following a long-felt want. Time can indeed change one’s perspective. The perspective the court must bring to bear is that of the skilled man at the priority date and not any earlier time.”
3.38 An old specification which teaches specifically the solution of the problem which an invention seeks to overcome so that the skilled person should readily appreciate its significance can form a good basis for an obviousness objection (Jamesigns (Leeds) Limited's Application [1983] RPC 68). A further example of a circumstance in which a lack of inventive step objection based on an old document could be sustained is a case where the
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modification of the older invention could not have been effected before recent technological advances had been made, such as the development of a new material. Documents which have resulted in practical application or which are acknowledged as well known are also likely to have greater force.
3.39 Be wary of uncritical ageism in relation to the prior art. In Brugger and others v Medic-Aid Ltd ([1996] RPC 635) Laddie J held (at 653 and 655) that:
“The fact that a document is old does not, per se, mean that it cannot be a basis for an obviousness attack. On the contrary, if a development of established and ageing art is or would be obvious to the skilled worker employed by a hungry new employer, it cannot be the subject of valid patent protection even if those who have been in the trade for some time, through complacency or for other reasons, have not taken that step. Each pleaded piece of prior art must therefore be assessed as if it was being considered afresh at the priority date. It is not to be excluded from this exercise merely because it is old. There is no rule of commerce that every new product or process must be developed and put on the market or published in literature as soon as it becomes obvious.”
and
“It is only when the answer to the question “why was this not developed earlier” is “a likely and reasonable explanation is that people looking for a way round an existing problem did not see this as the answer” that the age of the prior art should play a part in meeting an obviousness attack. If it is likely that in the real world no one was looking for an answer the fact that none was found says nothing about whether the answer proposed in the patent under attack was obvious.”
3.39.1 In Merck Sharp & Dohme Corp v Teva UK Ltd [2011] EWCA Civ 382 the argument was made that a document published only six days before the priority date was not relevant for inventiveness, as it would not have been possible to perform the steps leading from the prior art to the claimed invention in the period between the publication of the prior art and the priority date. This argument was decisively rejected by the Court of Appeal; all that needs to be decided is whether the claimed invention is obvious over the prior art, not whether there would in fact be time to arrive at the invention by the priority date.
See also 3.78-3.79, 3.80-3.81.2 and 3.97-3.101.
Combining documents, “mosaicing”
3.40 While it is not possible to combine the disclosure of a given document with other matter to demonstrate lack of novelty (see 2.09), it is permitted to combine any of the prior art (whether published documents, instances of prior use or common knowledge) in order to argue that an inventive step is lacking. However, although a single disclosure, however remote, of the whole invention will destroy novelty, in order to establish that a combination of teachings from the prior art shows an invention to be obvious, it must be likely that the skilled person would have considered those teachings together. Laddie J in Pfizer Ltd’s Patent [2001] FSR 16 at paragraph 66 stated:
“When any piece of prior art is considered for the purposes of an obviousness attack, the question asked is “what would the skilled addressee think and do on the basis of the disclosure?” He will consider the disclosure in the light of the common general knowledge and it may be that in some cases he will also think it obvious to supplement the disclosure by consulting other readily accessible publicly available information. This will be particularly likely where the pleaded prior art encourages him to do so because it expressly cross-refers to other material. However, I do not think it is limited to cases where there is an express cross-reference. For example if a piece of prior art directs the skilled worker to use a member of a class of ingredients for a particular purpose and it would be obvious to him where and how to find details of members of that class, then he will do so and that act of pulling in
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other information is itself an obvious consequence of the disclosure in the prior art.”.
3.41 There is no simple rule as to whether information from different documents, or from different parts of a single document, can properly be combined as a "mosaic" to provide a case that an invention is obvious. The greater the number of documents which must be so combined to reach the invention, the more likely on the whole that there is an inventive step, but regard must be paid to the nature of the features which are combined. The combination of a series of known features, each playing its usual part in the final entity, is often simply a matter of design or mere collocation, and not of invention (see 3.17).
3.42 In Dow Chemical Company (Mildner's Patent), [1973] RPC 804, Whitford J indicated that in order to establish obviousness from a combination of documents it is necessary to consider the extent to which you can conclude that the documents are ones which the seeker after information would come across and would consider together. Two extremes that are sometimes put forward are (a) that no two documents may be combined to make a mosaic unless at least one is well known, and (b) that all the information in any set of documents can be combined provided they are all in the same art. Neither of these extremes is acceptable as a general principle. Although the second extreme may be the more likely to reflect the true situation it should not be used as a pretext for not investigating beyond the immediate field of the invention (see 3.26-3.27).
Factors to consider before combining documents
3.43 In deciding whether or not it is obvious to combine the disclosure in two or more documents, the following considerations are likely to be relevant:-
(a) How the nature and the contents of the documents influence whether the person skilled in the art would combine them. For example where the disclosed features seem at first sight to have an inherent incompatibility or
where one document has a tendency to lead from the mosaic, this would be a pointer towards the combinations being inventive (see 3.91).
(b) Whether the documents came from the same technical field or from neighbouring or remote technical fields (see 3.26-3.28.2 and 3.44).
(c) The presence of references in one document to another.
(d) The amount of selection required to isolate the separate disclosures from the surrounding documentary material.
(e) Whether the contents of one document are so well known that the skilled person would always have them in mind in reading other documents (see 3.45).
(f) The age of the documents (see 3.37.2-3.39.1).
3.44 Where the documents are from different technical fields the question is whether the problem would have prompted search in those fields. In Dow Chemical Company (Mildner's) Patent [1973] RPC 804, an invention residing in an electrical cable in which a plastics jacket was securely bonded to a metal shield using a specified copolymer was held to be obvious in the light of one document disclosing all the features of the cable but not mentioning the adhesive copolymer, and other documents disclosing the copolymer. Although these latter documents did not refer to cable manufacture, they did refer to the copolymer as having high moisture resistance and being suitable for bonding plastics to metal, both essential properties in adhesives for use in cables. It was therefore reasonable to expect the skilled person concerned with the problem of adhering plastics to metal in cables to have found and considered these documents. The Technical Board of Appeal of the EPO has considered it reasonable to expect a person skilled in the art, unable to fulfil a need in the relevant field, to look for suitable parallels in a neighbouring field so closely
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related that he would take developments therein into account, or in the broader general field in which the same or similar problems extensively arise and of which he must be expected to be aware (Decision T 176/84, OJEPO 2/86).
Combining documents with common general knowledge
3.45 If the invention can be produced by combining the teaching of one document with common general knowledge or with standard practice in the art, then even if the inventor has not conceived it nor the applicant presented it in such terms, there is a strong presumption that such a combination would be obvious to the skilled person. If, in his application, the applicant refers to prior art as “conventional”, this may be taken to indicate that the prior art is common general knowledge (NEC Corporation’s Application (BL O/038/00)).
EXAMINING FOR INVENTIVE STEP
A warning against overelaborating the question of obviousness
3.46 When considering an inventive step objection the examiner should always bear in mind this warning from Jacob LJ in Angiotech Pharmaceuticals v Conor Medsystems Inc [2007] EWCA Civ 5:
“…one can overelaborate a discussion of the concept of “obviousness” so that it becomes metaphysical or endowed with unwritten and unwarranted doctrines, sub- doctrines or even sub-sub-doctrines. …. In the end the question is simply “was the invention obvious?” ….”
A reminder to consider obviousness whenever a novelty objection is overcome
3.47 The examiner should always consider the obviousness of a claim when a novelty objection in respect of that claim has been overcome.
Determining obviousness
3.48 The determination as to whether an invention is obvious or not is of considerable importance both to applicants and the public, and the substantive examiner must be prepared to put considerable effort into this task. It is particularly important that the examiner correctly identifies the relevant common general knowledge that is to be imparted to the skilled person. In conferring on the substantive examiner power to consider inventive step, s.18(2) implies that the examiner is required to exercise an expertise, and that he must be recognised as qualified to do so. This view has been reinforced by Pumfrey J in Degussa-Huls AG v The Comptroller-General of Patents [2005] RPC 29:
“Examiners are appointed because of their general technical skills. They will, in the classes which they examine, acquire extensive knowledge and they will be able to form a clear view of the qualities which are to be expected of the person skilled in the art in that particular field.”
3.49 The nature of the expertise implied depends on the matter to be determined and on the circumstances of the application. For example the substantive examiner is not in most cases in a position to deny simply from his own knowledge facts (such as whether a given technique is well-known, or whether a given reaction has specified by-products) to which evidence has been brought forward from a witness -possibly the applicant himself - who can claim relevant expert knowledge. In such circumstances the examiner is likely to have to accept the evidence from the applicant unless he can produce documentary
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evidence of contrary effect. Nevertheless, the substantive examiner must be taken to be qualified to decide, given the prior art and other relevant technical facts, whether the resulting position implies the presence or absence of an inventive step.
The Windsurfing/Pozzoli approach
3.50 From the discussions at the beginning of this Section it is clear that the examiner must use the Windsurfing/Pozzoli approach when deciding whether or not to object and, if objecting, setting out that objection. Before raising a lack of inventive step objection a substantive examiner should be clear in his own mind as to what point in the prior art he is starting from and the nature and number of steps it would take for a person skilled in the art to get from the starting point to the invention.
3.51 The examiner need not spend an undue amount of time in debating the precise nature of the skilled person, whether that person is a designer, a technician, a manufacturer, etc. As indicated in 3.20 the character of this person is largely set by the relevant common general knowledge imparted to them, rather than their position in any organizational chart.
3.51.1 In Eli Lilly & Co. v Human Genome Sciences, Inc. [2008] EWHC 1903 (Pat), [2008] RPC 29, which related to a patent for a polynucleotide sequence encoding a Neutrokine-α polypeptide, Kitchin J. applied the Windsurfing/Pozzoli test and reached the conclusion that the claimed invention was not obvious from the prior art. However, he nevertheless held that the claims lacked an inventive step on the grounds that the patent made no technical contribution to the art and did not solve a technical problem. Kitchin J. held that this should be determined by considering whether the invention lies in making the products of the claim or rather whether the invention must lie in a disclosure that the DNA products of the claim code for useful proteins and, if so, whether the specification does no more than speculate as to what those uses might be. Any deficiency in this regard cannot be remedied by evidence coming into existence after the application has been filed. However, this objection appears to be specific to certain types of biotechnology patents, wherein the inventiveness of a nucleic acid or protein lies in the identification of its function rather than in its production per se.
Consider different starting points
3.52 A matter which requires invention when tackled from one starting point may be commonplace when started from a different disclosure or with a different known problem in mind. The applicant may for example have presented his invention as a combination of features A, B, C, D which he admits are known in combination, with a further feature E which it would undoubtedly be inventive to add to the acknowledged combination. It may be however that a prior document discloses the combination of features A and E, and that the addition of the remaining features B, C, D is then obvious.
3.53 The starting point of the invention from the point of view of the applicant may be apparent from the specification. For example, the description may contain an account of the prior art and/or the problem to be solved, or the main claim may be in the two-part form, in which a preamble specifying a set of features known in combination in the prior art is followed by a characterising portion setting out the new features. The applicant is however not obliged to do this, nor does a reader of the specification have to accept the applicant’s assessment of the invention.
No rules of thumb; precedents to be treated with caution
3.54 The decision to raise an objection of lack of inventive step must be made on a proper consideration of the facts of the particular case and any kind of rule of thumb approach should be avoided. Caution should be exercised in relying on precedent cases, since, more than with any other topic to be decided by the substantive examiner, attempts to
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line up a particular case with some decided case can mislead.
Raise any sound objection
3.55 The substantive examiner should not raise an objection when he has no good reason to suppose that there is no invention just to fish for a weakness in the applicant's position. As in any other area of examination it is thoroughly bad practice for an examiner to raise an objection which, with thought, he would see was not justified, merely to pass the burden of thinking about the matter to the applicant.
3.56 However, even if he thinks he can foresee how the applicant will amend or argue to overcome the objection, the examiner should raise any sound obviousness objection. The applicant may amend in any way he thinks fit; there is no guarantee that the applicant will act as the examiner has predicted.
3.57 A substantive examiner faced with a prima facie case of obviousness which might be capable of rebuttal by special information of a sort which is not available to the examiner, but which must be available to the applicant, should always put the objection to the applicant. An example of such information is whether the applicant's process avoids a drawback which experts in the art would expect it to have, or whether the applicant is merely prepared to tolerate the drawbacks, so that he has not made any inventive contribution. If the applicant fails to make a satisfactory answer to such an objection the examiner can safely assume that this is because the facts are against the applicant (see 3.64).
Mosaics
3.58 In practice the guidance above on combining or “mosaicing” documents can be difficult to satisfy (see 3.40–3.44). In particular the examiner must explain why he believes that the skilled person would make that combination of documents.
3.59 The examiner must always keep sight of what use he is making of the cited documents. Oftentimes the examiner is not making a true combination in the sense of using a combination of two or more documents to arrive at a solution to a particular problem. Instead the examiner will find that he is using some of those documents to illustrate the common general knowledge, acknowledged prior art or some other point as in 3.62. In these circumstances the examiner may find the combination easier to justify.
Content of the report
3.60 In addition to citing documents the first examination report should state a prima facie case, not going into overmuch detail. This prima facie case does not have to explicitly mention Windsurfing or Pozzoli, but it should leave the applicant in no doubt that the Windsurfing/Pozzoli approach has been adopted. The aim should be to oblige the applicant to state what he considers the inventive step to be and to justify his assertion. This first report should, so far as is practicable, set out explicitly any assumptions of a technical character which have been made. Where it seems unlikely that the applicant will challenge these assumptions, support for the assumptions need not be sought unless and until the applicant challenges them (but see 3.62).
3.61 Subsequent reports responding to the applicant’s amendments and/or arguments should be more detailed, explicitly setting out the examiner’s reasoning for each of the Windsurfing steps.
3.62 When matter considered to be well-known in the art is used in formulating an obviousness objection, it need not be supported by document references unless and until it is challenged. However it is probably best that all document references that the examiner will be using are put before the applicant at the earliest opportunity. When documents are cited
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as examples illustrating common general knowledge or background art, for example, where the contention is that the invention claimed comprises an obvious modification to known apparatus and documents are cited, one showing the modification per se and one or more others exemplifying the apparatus, this should be made clear at the outset. Documents should be included in the initial citations where necessary to substantiate background art considered to fall short of well-known. It should be made clear whether documents cited are being relied on individually or in combination and/or in conjunction with common knowledge.
Reporting both novelty and inventive step objections
3.63 In putting to the applicant objections of lack of novelty and inventive step the substantive examiner should make clear which claims are attacked on each of these grounds. Where the examiner attacks the main claims but defers consideration of the inventiveness of subordinate claims he should make this clear to the applicant (see 18.43). In attacking subordinate claims, where it is not clear what response the applicant is likely to make to the objections to the main claims, it is sufficient to indicate the general nature of an objection to lack of inventive step leaving any elaboration until this is made necessary by the applicant's response.
Responding to the applicant’s case
3.64 An objection should not be withdrawn merely because an argued response has been submitted - the argument must be adequate to overcome the objection. In Degussa- Huls AG v The Comptroller-General of Patents [2005] RPC 29, in dismissing an appeal against the Hearing Officer’s finding of obviousness, Pumfrey J held that:
“when a case of prima facie obviousness or anticipation is made out ... the evidential burden shifts on to the applicant to produce evidence upon which the Examiner can properly act in saying either that there is insufficient material before him to say that the objection of obviousness is in fact made out or possibly even to say that the objection of obviousness must, on the material available to him, fail …
… Where an Examiner forms a view upon what, at first sight, are sound grounds for supposing there is a strong case of obviousness, then it is up to the applicant to put convincing material in front of the Examiner upon which, as I have said, he can act contrary to what was to him the apparent position”.
3.65 In that case, evidence that the invention had unforeseeable advantages which were unrelated to the reasons for the initial finding of obviousness did not overcome this finding. Evidence from the applicant, or from a witness provided by the applicant, to the effect that the situation does imply an inventive step (as distinct from evidence on a point of fact), must therefore be regarded solely as argument which the examiner accepts or rejects of his own judgment, supplemented of course by whatever advice he decides to seek from his colleagues.
3.66 A technical assertion on behalf of the applicant which is unsupported by published material should be in the form of sworn evidence unless the substantive examiner can confirm independently that it is correct. It should be clear who is making the assertion and what their status is. A statement attributed to a third party, whether identified or not, is hearsay evidence - see 123.18. If the assertion runs counter to what is published, this fact should be commented on and justified. Any evidence should preferably be filed before the matter is brought to a hearing since if it is not then it is unlikely to be allowed to be filed in support of an appeal (see 101.20).
Standard of certainty, benefit of the doubt
3.67 When a prima facie objection of lack of inventive step is contested the examiner
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will determine the matter on the balance of the evidence available, the standard of certainty being the same pre-grant as post-grant, ie it is determined on the balance of probabilities.
3.68 An objection of obviousness should not be pursued if there is a genuine possibility that there is an inventive step. The possibility must however be real and it is far from sufficient in rebuttal of an objection that there is merely a case to be answered, or that the applicant asserts that there is doubt. The matter should be decided on the balance of the evidence available.
3.69 If the substantive examiner is unable to reach a conclusion on inventive step because of lack of technical knowledge which he cannot readily rectify and there seems a strong prima facie case that the invention is obvious, it is reasonable for the examiner to put a specific query to the applicant or to object that there is no inventive step and see what reply the applicant makes. If expert evidence would be required for him to judge whether the applicant's reply to an objection establishes that there is invention, only then must the applicant be given the benefit of the doubt. This is consistent with the test applied in Blacklight Power Inc. v The Comptroller-General of Patents [2009] RPC 6 (see 4.02 for a case where there was substantial doubt on a question of the scientific validity of the basis of an invention. In this case, the judge held that the examiner should consider whether the evidence provided by the applicant gives rise to a reasonable prospect that, if the issue were to be fully investigated at trial with the benefit of expert evidence, it would be resolved in the applicant’s favour.
Other matters
3.70 The question of whether a claim involves an inventive step does not normally arise if the claim lacks novelty. It would be illogical to say that there is no step but that the step is non-inventive. In particular the same prior art should not be formally cited against the same claims under s.1(1)(a) and (b) simultaneously. However, in appropriate cases an objection that an invention is not new may be followed by a "fall-back" objection that if the claim were shown to be novel then it involves no inventive step. Thus the substantive examiner should investigate whether there is invention in a claim which he has objected to as lacking novelty where the novelty objection depends, for example, on a verbal coincidence or a matter of interpretation or construction and does not strike at the basic inventive concept. When a document is relevant to a lack of novelty objection against certain claims and also to an obviousness objection against other claims at the same action, it should be cited in respect of both objections. As a general rule, and subject to the above considerations, the first report under s.18(3) should refer (by formal citation or otherwise) to all the prior art documents considered to be relevant to novelty and/or inventive step (although if the documents referred to are only examples of many, that fact should be stated without listing all of the many).
3.71 The substantive examiner may also object that the claim is not clear but that so far as the claim can be understood it appears that the invention is not new, and/or does not involve an inventive step. If there is no substantial novelty objection some indication of the prima facie case for the lack of inventive step against the assumed invention should normally be given.
[ RC5 should be used. ]
ASSESSING OBVIOUSNESS
3.72 The question is, does the invention make available to the person skilled in the art something that he would not reach by normal exercise of his skill? If so, the inventor has made a contribution to the art which provides the consideration justifying the grant of a patent. The contribution must be of a technical nature. This is not to say that it must be technically complex; simplicity does not count against an invention and may indeed point to
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its being non-obvious. There may be invention in appreciating commercial features, for example in realising that there is a market for a new product. The Court of Appeal has provided competing views on this, see Hallen Co v Brabantia (UK) Ltd [1991] RPC 195 and Dyson Appliances Ltd v Hoover Ltd [2002] RPC 22 at 3.07.
Deciding the fourth Windsurfing/Pozzoli step
3.73 Many different approaches to deciding the fourth Windsurfing/Pozzoli step, the substantive assessment of inventive step, have been put forward over the years. What follows are discussions of some of the more prominent suggestions. The approach taken at this stage will depend upon the particular circumstances of the case under consideration.
3.74 One may also wish to consider the discussions of these and other approaches available within guides such as “Terrell on the Law of Patents” 18th (2016) Edition and the “CIPA Guide to the Patents Acts” (8th Edition). The locations of the relevant discussions in these guides are summarized in the table below.
Topic Terrell CIPA Guide
simplicity no objection 12.150 3.26
Avoidance of hindsight 12.145 3.40
technical not commercial 12.18 3.33 obviousness
obvious to try 12.126, 12.142 3.30
long-felt want; commercial success 7.77, 81 3.32, 3.33
right to work 3.26
lying in the road 3.26
“would” not “could” 12.91 3.12
if obvious, why was it not done before? 3.34
selection 12.41, 12.188 3.31
overcoming a technical prejudice
12.55-62, 12.174-179 3.17
The Haberman questions
3.75 A number of issues should be considered in determining whether a development is obvious or not. In Haberman v Jackal [1999] FSR 685 (at 699 to 701), Laddie J considered the following non-exhaustive list of relevant questions some of which may not be answerable before grant or without evidence:
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(a) What was the problem which the patented development addressed?
(b) How long had that problem existed?
(c) How significant was the problem seen to be?
(d) How widely known was the problem and how many were likely to be seeking a solution?
(e) What prior art would have been likely to be known to all or most of those who would have been expected to be involved in finding a solution?
(f) What other solutions were put forward in the period leading up to the publication of the patentee's development?
(g) To what extent were there factors which would have held back the exploitation of the solution even if it was technically obvious?
(h) How well had the patentee's development been received?
(i) To what extent could it be shown that the whole or much of the commercial success was due to the technical merits of the development?
3.75.1 In determining whether an invention is obvious in the light of a given document combined with common general knowledge, other documents, or instances of prior use, there are two major considerations: (i) whether the skilled person could reasonably be expected to find the document in conducting a diligent search for material relevant to the problem in hand (see 3.26 & 3.44) and (ii) whether, if he had found the document, he would have given it serious consideration. So far as (ii) is concerned, relevant factors may be the age of the document (see 3.37.2-3.39.1) and whether, if it is one of a large number, there was any reason why the skilled person should have selected it (see 3.88). Passages which lead away from the applicant's invention must be taken into account as well as those that lead towards it. It is relevant in looking at a prior document to consider whether the matter of interest to the obviousness question constitutes a principal feature of the prior document or whether it is mentioned merely as a detail in the performance of an entirely different concept, without any recommendation to the reader which would encourage him to use it in different circumstances.
Right to work
3.76 Just as an invention will lack novelty if the claim to it would re-monopolise something already disclosed (the so-called "post-infringement test" - see 2.03), likewise it will be regarded as obvious if a claim to it would inhibit the rights of a skilled workman to carry out routine modifications of what is already in the public domain. Just as the notion behind anticipation is that it would be wrong to enable the patentee to prevent a man from doing what he has lawfully done before the patent was granted, that behind obviousness is that it would be wrong to prevent a man from doing something which is merely an obvious extension of what he has been doing or of what was known in the art before the priority date of the patent granted (judgment of Court of Appeal in Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd, [1985] RPC 59 at page 77).
Lying in the road
3.77 In Philips (Bosgra's) Application, [1974] RPC 241 the applicants proposed to amend a claim (which had been held obvious) to a method of producing a vaccine in order to specify the use of certain emulsifying agents. The hearing officer held that the amended claim was not obvious since, although these emulsifying agents were well known, it was not certain that a notional research group would be directly led as a matter of course to try these particular agents. On appeal however, Whitford J ruled that this was not the correct
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question; although the skilled person would not necessarily be led directly to try these materials, they were obvious in the sense that they were lying in the road (ob via) for the worker to use, and it was wrong that he should be stopped by a monopoly from doing so. Moreover, just as it has been established that to impugn novelty, prior enabling disclosure is required, so a claim to a product will only be obvious if not only the idea of the product is obvious but also a way of producing the product is obvious (Boehringer Mannheim GmbH v Genzyme Ltd [1993] FSR 716).
Why was it not done before? (see also 3.37.2-3.39.1, 3.80-3.81.2 and 3.97-3.101)
3.78 The fact that no-one has followed a particular path before does not of course dispose of an obviousness objection, otherwise any invention which was new would automatically be inventive. However the reasons why this has not been done before may well be important. If the inventor has solved a long-standing problem by using in a conventional way materials or techniques which have only recently become available, then this is not inventive.
3.79 Nor is it inventive to respond to a change in economic circumstances; for example if a product has not been made from a particular material or by a particular process for reason of cost, and the material or process becomes cheaper or the market value of the product increases, it is not inventive to take advantage of this. And if a newly-arisen problem is solved by the use of available resources in an obvious way, then there is no inventive step (unless the inventor has been the first to identify the problem). But if the inventor has solved a long-recognised problem by means which others could have used but did not, then there may be an inventive step (Minnesota Mining and Manufacturing Co v Rennicks (UK) Ltd [1992] RPC 331). In Chiron Corpn v Organon Teknika Ltd [1994] FSR 202 a claim to a polypeptide comprising an antigenic determinant of the hepatitis C virus was found to be non-obvious because despite the attempts of numerous research groups over a 10 year period to identify the agent responsible for Non-A, Non-B Hepatitis (latterly named Hepatitis C), the patentees succeeded in a unique fashion by adopting a known technique which would not have been obvious to try in the circumstances.
Fulfilling a need (see also 3.37.2-3.39, 3.78-3.79 and 3.97-3.101)
3.80 Evidence that an invention fulfils a long-felt want and has been commercially successful may be taken into account in assessing obviousness (see for example Hickman v Andrews, [1983] RPC 147 and PLG Research Ltd v Ardon International Ltd, [1993] FSR 197). Aldous J held in Optical Coating Laboratory Inc. v Pilkington P.E. Ltd. [1995] RPC 145 at page 166 that while it is always important to consider why a possibly inventive step had not been suggested before, without evidence of a long-felt want or unsuccessful attempts to solve a particular problem, any evidence as to novelty, years of delay in developing the prior art and an advantage stemming from the invention carries no weight.
3.81 Moreover the commercial success of the invention may be attributable to factors achieved independently of the invention, such as the quality or price of the product, or to superior marketing. In Haberman v Jackal (see 3.75) the development was a small and simple change to a "trainer cup" to make it leakproof. The new product achieved large success despite small advertising budgets and "unconsidered aesthetics" in its original version. The materials for the design had long been readily available and the advantages were immediately apparent once it was thought of. In this context, the commercial success was held to demonstrate that the invention itself fulfilled a significant long-felt want and that if the development had been obvious it would have been found by others earlier. Similarly, in Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] RPC 33, the Court of Appeal considered the evidence from published material at the time of the invention and held that:
“The plain fact is that there was no real explanation of why the idea was not taken up well before the date of the Patent. The simplest explanation – indeed the only one that fits the known facts – is that the inventors hit upon something which
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others had missed.”
3.81.1 In Tetra Molectric Ltd v Japan Imports Ltd, [1976] RPC 547 on the other hand, it was held that the commercial success of a cigarette lighter was due in large part to hammer mechanisms developed since the date of the invention; although claim 1 covered lighters which had enjoyed commercial success, it also covered lighters which could never do so, and no features which might ensure success were recited.
3.81.2 In Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly and Co Ltd [2008] EWHC 2345 (Pat), [2009] FSR 5, the Patents Court pointed out at paragraph 187 that arguments based on commercial success of products the subject of anterior patent protection are more or less doomed to failure because the existence of that patent (application) provides a clear explanation of why no third party ever launched the product. The earlier cases of Cipla Ltd v Glaxo Group Ltd [2004] EWHC 477, RPC 43 (at [115]) and Generics (UK) Ltd v H Lundbeck A/S [2007] EWHC 1040, [2007] RPC 32 (at [251]) were referred to.
Advantages of the invention
3.82 Where a variation from published matter proposed by the applicant has no advantages, or is even disadvantageous, although it can be argued that the resulting inferior procedure is not obvious in the sense that no skilled person would regard it as obvious to do something inferior, the application should nevertheless, if the variation is one whose possibility a skilled person would appreciate, be refused on the ground that there is no inventive step. Such a view was taken by the Technical Board of Appeal of the EPO in Decision T119/82, OJEPO 5/84, see particularly paragraph 16. The position is of course different if the applicant has discovered that a variation thought to be disadvantageous is in fact not so, or if from a large number of variants which would have been regarded as no more than feasible alternatives with no advantages, the applicant has selected a variant with an unexpected advantage (see also 3.88-3.93).
Obvious to try
3.83 In Johns-Manville Corporations Patent, [1967] RPC 479 it was held that where a skilled worker in a particular field could be expected to know of a use of material to achieve a certain result in that field, an invention which is concerned with the use of that material to achieve the same result in a part of that field which had not been previously disclosed is obvious if a person versed in the art would assess the likelihood of success sufficient to warrant a trial. In more recent cases the courts have however departed somewhat from this view (see 3.87.2). The invention was concerned with the use of particular flocculating agents in asbestos cement manufacturing. It was held that, filtration processes being common to many industries, two cited documents, although addressed primarily to the mining and paper industries respectively, were likely to be read by those concerned with the asbestos cement industry, and that such readers would have realised that here was a newly-introduced flocculating agent which it was well worth trying out in their filtration process.
3.84 In Brugger and others v Medic-Aid Ltd [1996] RPC 635 Laddie J held that if a particular route is an obvious one to try, it is not rendered any less obvious from a technical point of view merely because there are a number, and perhaps a large number, of other obvious routes as well. Similarly in Bristol-Myers Squibb Co v Baker Norton Pharmaceuticals Inc [1999] RPC 253, Jacob J held that an effect which was revealed by following the obvious course of action did not make the action non-obvious.
3.85 [Deleted]
3.86 The Court of Appeal in Saint-Gobain PAM SA v Fusion Provida Ltd and Electrosteel Castings Ltd [2005] EWCA Civ 177, [2005] IP & T 880 held that the mere possible inclusion of something within a research programme on the basis you will find out more and something might turn up is not enough to show obviousness. If it were otherwise there would be few inventions that were patentable. The cited prior art pointed to the possibility that using a Zn/Al alloy as a coating for a cast iron pipe to be buried in soil might
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be beneficial by showing results for this alloy coating for buried steel plates. It was not however possible for the skilled person to predict success, so the invention was not obvious. Jacob LJ held that “the ‘obvious to try’ test really only works where it is more-or-less self- evident that what is being tested ought to work”.
3.87 An invention can therefore only be said to be “obvious to try” if there is a reasonable expectation of success (see also 3.99). In Angiotech Pharmaceuticals Inc’s Patent (Application for Revocation by Conor Medsystems Inc) [2006] RPC 28, the Patents Court held that the contribution to the art made by the specification had to be assessed in order to decide whether it was sufficient to show that something was an obvious candidate for testing without any expectation of success, or whether it was necessary to show that the skilled person must have had an expectation of success sufficient to induce him to use it in practice. This decision was upheld by the Court of Appeal ([2007] RPC 20) but was later overturned in the House of Lords (Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] RPC 28) where this distinction was rejected. Lord Hoffmann stated
‘…there is in my opinion no reason as a matter of principle why, if a specification passes the threshold test of disclosing enough to make the invention plausible, the question of obviousness should be subject to a different test according to the amount of evidence which the patentee presents to justify a conclusion that his patent will work.’
In this case, the patent specification disclosed that taxol could be incorporated on a stent (a tubular device which acts as scaffolding to hold a diseased artery open). The prior art disclosed a very similar stent with a large range of drugs which could be incorporated on the stent to prevent restenosis. While taxol was not specifically mentioned, a range of classes, which could include taxol, were listed as possible candidates. The lower courts considered that the specification gave no suggestion that taxol would be safe or prevent restenosis (closure of the lumen of the artery caused by proliferation of smooth muscle cells) i.e. there was no disclosure that taxol would be a better candidate than any other possible candidate. Consequently a claim to a taxol-coated stent was held by the lower courts to be invalid as it was concluded to be obvious to a skilled person that taxol should be incorporated onto a stent with a view to seeing if it prevents restenosis and is safe. The House of Lords, however, held that there was evidence provided in the specification as filed that taxol was a particularly effective anti-angiogenic agent, and the invention was based on the principle that inhibition of angiogenesis could be used to prevent restenosis. The issue to be decided was therefore whether it was obvious to use a taxol-coated stent to prevent restenosis, not whether taxol was an obvious candidate for further investigation. Lord Hoffman held that the claim was not obvious and confirmed that the notion of something being obvious to try was useful only in a case where there was a fair expectation of success. How much of an expectation would be needed would depend upon the particular facts of the case. While the House of Lords accepted that the absence of any evidence to support a speculative claim could lead to an objection of lack of support or insufficiency (quoting the decision in Prendergast’s Applications), they held that this requirement should not be confused with the requirement for inventiveness.
3.87.1 The main issue to be decided in Omnipharm Limited v Merial [2011] EWHC 3393 (Pat) related to a claim to a “spot on” formulation for the treatment of fleas in pets, the closest prior art being a “spray on” formulation of the same active ingredient. Floyd J held that since “spot on” formulations have advantages in terms of ease of application it would be obvious to try to develop a spot on formulation; however in this particular situation the skilled team was considered to have no common general knowledge basis on which to make a prediction as to whether a “spot on” formulation would work. Therefore the skilled person would not have had sufficient expectation of success to render the invention obvious.
3.87.2 In Novartis AG v Generics (UK) Ltd (trading as Mylan) [2012] EWCA Civ 1623, it was held that it is important to have regard to “all the circumstances of the case including, where appropriate, whether it was obvious to try a particular route with a reasonable or fair expectation of success. What is a reasonable or fair expectation of success will again depend upon all the circumstances and will vary from case to case”. Kitchin LJ went on to
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hold that “it may be appropriate to consider whether it is more or less self-evident that what is being tested ought to work” and “simply including something in a research project in the hope that something might turn up is unlikely to be enough. But I reject the submission that the court can only make a finding of obviousness where it is manifest that a test ought to work. That would be to impose a straightjacket upon the assessment of obviousness which is not warranted by the statutory test and would, for example, preclude a finding of obviousness in a case where the results of an entirely routine test are unpredictable”. In Actavis Group PTC EHF v ICOS Corporation & Ors [2017] EWCA Civ 1671, it was held that a dosage of 5mg of tadalafil was obvious over prior art which stated 50mg of tadalafil was possible. The court held that a skilled team would try different doses of the drug, in a routine clinical trial, and would reach a dosage of 5mg. The judge noted that “there are some steps which can be characterised as so routine that the skilled person would carry them out simply because they are routine, and irrespective of any prospect of success. An example is routine dose ranging studies in the clinical testing of a known drug”. The court went on to say that they have “been at pains to warn against the over-elaboration of the "obvious to try" line of cases. While there are a number of factors which, depending on the circumstances, may bear on the question it is not always necessary for all of them to be ticked off as if on a checklist”. Also see Gedeon Richter v Bayer Schering [2011] EWHC 583 (Pat).
Selection
(See also 2.18-2.20)
3.88 Although there is no inventive step if it is clear from the prior art that taking that step is likely to lead to success, there may be invention if that is only one of many courses possible, and there is no reason to infer from the prior art that this one is more likely than the others to be profitable. In Bayer AG (Baatz's) European Application [1982] RPC 321, carbonless copying paper was characterised by microcapsules made of a particular polymer, which was already known for forming coatings on textiles, leather, wool and metal. Even if these were thought to be neighbouring fields, there was no reason to expect that improved results would be obtained by the use of this material (as the results of comparative experiments showed they were), and thus it was not obvious to select it from the enormous number possible. And in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, [1970] RPC 157 at page 192, it was held not to be obvious that a useful drug would be obtained by substituting -CF3 for -Cl in a known drug, given the large amount of prior material, leading in a number of different directions, which was before the skilled person at the date of the invention.
3.89 When faced with claims that may relate to a selection invention the prima facie inventive step objection should be raised using the Windsurfing/Pozzoli approach, unless the selection is so clear-cut as to make this unnecessary. If the applicant/agent maintains (or it is clear from the specification) that the inventiveness may lie in a selection invention, then the approach used by the Court of Appeal in Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly & Co Ltd [2010] RPC 9 should be followed. In such cases, the question to be asked is whether the invention makes a hitherto unknown technical contribution or is merely an arbitrary selection. If it is merely an arbitrary selection then the invention is obvious. In Generics [UK] LTD (t/a Mylan) v Yeda Research and Development co. LTD & Anor [2013] EWCA Civ 925 the Court of Appeal considered the law regarding selection inventions, with reference to Dr Reddy’s and the EPO Board of Appeal decision in T 939/92 AGREVO/Triazoles 6 OJEPO 309. The position following the judgment in Generics is as follows:
i) Article 56 of the EPC is in part based on the underlying principle that the scope of the patent monopoly must be justified by the patentee's contribution to the art;
ii) If the alleged contribution is a technical effect which is not common to substantially everything covered by a claim, it cannot be used for the purposes of judging obviousness;
iii) In such circumstances the claim must either be restricted to the subject matter
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which makes the technical contribution, or a different contribution common to the whole claim must be found;
iv) A selection from the prior art which is purely arbitrary and cannot be justified by some useful technical property is likely to be held to be obvious because it does not make a real technical advance;
v) A technical effect which is not rendered plausible by the patent specification may not be taken into account in assessing inventive step;
vi) Later evidence may be cited to support a technical effect made plausible by the specification;
vii) Provided the technical effect is made plausible, no further proof of the existence of the effect is to be demanded of the specification before judging obviousness by reference to the technical effect put forward.
3.89.1 [Deleted]
3.90 The Court of Appeal in Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly & Co Ltd disregarded the criteria set out in IG Farbenindustrie AG's Patents 47 RPC 289. In Dr Reddy’s Jacob LJ stated that as these rules related to pre-1977 law they could be regarded “as part of legal history, not as part of the living law”.
s.118 3.91 The hitherto unknown technical effect (i.e. advantage gained or disadvantage avoided) relied upon to justify a selection invention should be clearly identified or otherwise made plausible (e.g. discernible from tests provided in the application), in the specification at the time of filing (see also T 1329/04 Johns Hopkins University School of Medicine/Growth Differentiation Factor [2006] EPOR 8). Later-filed evidence may be used to provide support for the presence of such an effect or the fact that it is common to everything claimed, but unexpected bonus effects not described in the specification cannot form the basis of a valid claim to a selection invention (see Glaxo Group Ltd’s Patent [2004] RPC 43). If there is no statement of advantage in the specification at the time of filing it may not be added later, since, as stated by Jacob J. in Richardson-Vicks Inc.’s Patent [1995] RPC 568 at 581, in the context of synergy, whether or not the advantage was demonstrated “by experiments conducted after the date of the patent cannot help show obviousness or non-obviousness … and it would be quite wrong for later-acquired knowledge to be used to justify the amended claim.”
3.91.1 The judgment in Generics [UK] LTD (t/a Mylan) v Yeda Research and Development co. LTD & Anor [2013] EWCA Civ 925 also addressed the question of what happens if the technical property or effect made plausible by the specification does not exist in fact. The lower court had held that since later evidence cannot be used to support a technical effect not indicated in the specification, neither can it be used to refute such an effect. The Court of Appeal held however that in considering later evidence on this issue one is not judging the obviousness of the invention by reference to later evidence; one is simply defining by evidence what the invention is. The Judge allowed the admission of later evidence which, according to Mylan, showed that the composition as claimed did not demonstrate the relied upon technical effect. The Judge however found that the evidence provided did not prove the absence of the technical effect and rejected the appeal.
3.92 Although the size of the class from which a member or members have been chosen is not relevant to the question of novelty of a selection invention, it may be relevant to the question of obviousness (Du Pont de Nemours &c (Witsiepe's) Application, [1982] FSR 303 at page 310), see 2.19 – 2.20.
3.93 The technical significance of the parameters by which the product or process is selected should be considered. Where unusual parameters are used in a claim it may be difficult to prove whether or not the prior art would have inevitably exhibited those
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parameters, but in Raychem Corp.'s Patents [1998] RPC 31 it was held (at pp.46-47) that:
"although it may not be obvious, in the common use of that word, to limit a claim by reference to some particular meaningless and arbitrary parameter, that had nothing to do with patentability. Patents are not given for skill in inventing technically meaningless parameters."
If a product or process with obviously desirable characteristics happens to fall within the limits of such claims then they cover what is obvious and will thus be invalid.
Additional advantage not inventive
3.94 Although the discovery of an unexpected advantage may point to a step not being obvious if it was only one of many steps which could have been tried (see 3.88) or if it was one taken counter to accepted views (see 3.97), if the prior art leads directly to the step then it is not made inventive by any additional advantage obtained. In Inventa AG's Application, [1956] RPC 45, the use for spinning nylon of a process which had been disclosed (before the introduction of nylon) for spinning artificial filaments in general was held to be obvious, and not to be saved by an additional advantage, since no further modification of the process was required to secure this advantage. And in Union Carbide Corporation (Hostettler's) Application, [1972] RPC 601 at page 609, Whitford J observed (obiter) that "if in fact the step taken was an obvious step, it remains an obvious step however astonishing the result of taking it may be".
3.95 An added benefit, however great, will not found a valid patent if the claimed innovation is obvious for another purpose (judgment of the Court of Appeal in Hallen Co v Brabantia (UK) Ltd [1991] RPC 195). In Hallen, it was held to be obvious to coat a corkscrew of self-pulling type with PTFE to facilitate its penetration into a cork; the claimed invention was not saved by the non-obvious additional advantage of facilitating extraction of the cork from the bottle (although it might have been saved as a selection patent if the specification had contained clear assertions that the corkscrew in question turned the use of PTFE to special advantage over other corkscrews in the extraction stage, thus overcoming a problem of all previous self-pullers).
3.96 In general, an otherwise obvious combination is not saved from a finding of obviousness by some unexpected advantage caused by an unpredictable co-operation between the elements of the combination (see Glaxo Group Ltd’s Patent [2004] RPC 43).
Overcoming a technical prejudice
3.97 An invention may be regarded as non-obvious if it goes against the generally accepted views and practices in the art. As the Patents Court in Dyson Appliances Ltd v Hoover Ltd [2001] RPC 26 made clear (upheld by the Court of Appeal [2002] RPC 22), the common general knowledge held by the skilled person may have both positive and negative aspects, and it is necessary to take account of both; in other words to take account of what the skilled person would consider doing and what the skilled person would be prejudiced against doing, as a result of that knowledge. If the common general knowledge was such that the skilled person did not perceive a problem with the prior art, it becomes “considerably more difficult” to establish the obviousness of taking a particular step which would bring that prior art within the scope of the claims in question. In the case in question it was held that the common general knowledge of the skilled person at the relevant time, along with a lack of a perceived problem, would mean that the skilled person would never have considered using anything other than bag technology in a vacuum cleaner. Further examples are if persons skilled in the art would regard certain materials or techniques as unsuitable for a particular purpose, then if the inventor has found that this prejudice is not well-founded, then he has made an inventive contribution to the art. A patentee who advances the art by showing that, contrary to the prevailing view, the idea will work or is practical has shown something new and inventive (see Pozzoli SPA v BDMO SA [2007] EWCA Civ 588). Likewise the omission of a step hitherto thought to be necessary may constitute an inventive
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step.
3.98 It must however be clear that the technical prejudice which the applicant claims to have overcome did in fact exist, and that it was not justified. A prejudice which is insufficiently widespread for it properly to be regarded as commonly shared should not be attributed to the notionally skilled person. In Glaxo Group’s Patent [2004] RPC 43, it was held that a prejudice does not exist if some people engaged in the art laboured under a particular prejudice if a substantial number of others did not. Thus a rooted objection to the regular use of b2-antagonists in the treatment of asthma, which was the subject of an ongoing dispute amongst specialist physicians, was not ascribed to the skilled person. Another situation is where scientific opinion is out of accord with what is done in the market, as occurred in Ancare New Zealand Ltd’s Patent [2003] RPC 8 for a sheep drench comprising two known agents, one active against roundworms and one active against tapeworms. Here, the patentee argued that an inventive step lay in including the tapeworm agent because there was scientific hostility against treating tapeworms in sheep. However, it was common practice for New Zealand farmers to treat their lambs for tapeworm at the priority date. The Privy Council, upholding judgments of the New Zealand High Court and Court of Appeal to revoke the patent for obviousness and not involving any inventive step over what was known or used before the priority date of the claim in New Zealand, held that:
“the fact that scientific opinion might have thought that something was perfectly useless did not mean that practising it, or having the idea of making a preparation to do it, was an inventive step. Otherwise, anyone who adopted an obvious method for doing something which was widely practised but which the best scientific opinion thought was pointless could obtain a patent”.
3.99 For an invention to overcome a technical prejudice, and therefore be non-obvious, a genuine prejudice must exist which would have prevented the skilled person from taking the step that would lead to the claimed invention. In Teva UK Ltd and others v AstraZeneca AB [2012] EWHC 655, the patent claimed a sustained release formulation of a drug, quetiapine, for the treatment of schizophrenia. AstraZeneca, the patent holder, argued that there were technical considerations preventing the skilled person from considering developing a sustained release formulation of quetiapine, so called “lions in the path”, and therefore the patent was inventive. They argued that the skilled team in light of the prior art would be deterred from considering a sustained release formulation because quetiapine is rapidly metabolized by the liver (see also 3.83-3.87.1). The claimants however, argued that it would be obvious to formulate quetiapine for sustained release and that the alleged prejudices against doing so were illusory, mere “paper tigers”. The judge held that an immediate release once-daily formulation would not be efficacious without increasing the dose and therefore there was rationale for the skilled person to seek a sustained release formulation. The judge also held that on the evidence quetiapine is not metabolised in a way which would deter the skilled person from attempting a sustained release formulation. Accordingly AstraZeneca’s patent was held to be obvious and was revoked. In Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82 a claim to a sustained release formulation for the drug fluvastatin was also held to lack an inventive step since the obstacle put forward in the patent against being able to make such a formulation was illusory.
3.100 There is also no invention in merely tolerating the disadvantages which have deterred others. For example if an inexpensive plastics material is thought unsuitable for making tools because it is not durable, there is no invention in using it to make a cheap screwdriver intended only for light work and accepting that it will have only a short life.
3.101 Some of these points may be illustrated by a hypothetical example. Suppose that it has been stated for years in textbooks that a particular class of chemical reaction carried out under elevated pressure, gives poor yields, and an inventor now claims the synthesis of a particular compound by such a process. If all he has done is take advantage of the high price commanded by the product, or the cheapness of the starting materials, and has decided to accept the disadvantage of low yield, then that is not inventive; it is an obvious response to prevailing economic circumstances. On the other hand, if the inventor has discovered that good yields can be obtained by the use of still higher pressures, a fact not
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suggested in the prior art, then that would be inventive. But if higher yields would be expected at difficult-to-obtain pressures, and the inventor has merely taken advantage of new techniques making such pressures more available, then that is not inventive. Finally, if the inventor has discovered that the standard accepted views on the low yields, while being normally true for this reaction, are not in fact true for this particular compound, then there is inventive step in the choice of this process.
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Section 4: Industrial application
s.130(7) 4.01 This section relates to the third of the tests for patentability set out in s.1(1). It is so framed to have, as nearly as practicable, the same effect in the UK as the corresponding provisions of the EPC, PCT and CPC, ie Article 57 of the EPC.
Section 4(1)
An invention shall be taken to be capable of industrial application if it can be made or used in any kind of industry, including agriculture.
4.02 "Industry" should be understood in its broad sense as including any useful and practical, as distinct from intellectual or aesthetic, activity. It does not necessarily imply the use of a machine or the manufacture of a product, and covers such things as a process for dispersing fog or a process for converting energy from one form to another. In Chiron Corp v Murex Diagnostics Ltd and other [1996] RPC 535 (page 607) the Court of Appeal held that the requirement that the invention can be made or used "in any kind of industry" so as to be "capable of industrial application" carries the connotation of trade or manufacture in its widest sense and whether or not for profit. The Court went on to hold that industry does not exist in that sense to make or use that which is useless for any known purpose. Many of the matters which are excluded as lacking industrial application would have been rejected under previous laws as not being manners of manufacture, and in fact the views of the High Court of Australia in NRDC's Application, [1961] RPC 134, give a good guide to the meaning to be attributed to industrial application; there must be a product, but this need not be an article or substance, but must be something in which a new and useful effect, be it creation or alteration, may be observed. It may for example be a building, a tract or stratum of land, an explosion or an electrical oscillation, but it must be useful in practical affairs. A method of eradicating weeds was held to give rise to a product (an improved crop) because this was an artificially created state of affairs; moreover it was one whose significance was economic.
4.03 In many cases, an invention which passes (or fails) the test for industrial application under s.4(1) will equally pass (or fail) the test for patentability under s.1(2) (see 1.07-1.40.4). This was the case in Melia's Application (BL O/153/92), where an application relating to a scheme for exchanging all or part of a prison sentence for corporal punishment was held to lack industrial applicability and also to be a method for doing business. In John Lahiri Khan’s Application (BL O/356/06) a method for effecting introductions with a view to making friends was held not to be industrially applicable, even though it could be carried out by a commercial enterprise. It was also found to be excluded as a method of doing business. It should be remembered however that, even though they will frequently give the same answer, the tests for industrial application and patentability are separate and independent.
4.04 [ Deleted ]
4.05 Processes or articles alleged to operate in a manner which is clearly contrary to well-established physical laws, such as perpetual motion machines, are regarded as not having industrial application, as was held in Paez's Application (BL O/176/83), Webb's Application (BL O/84/88), and in Peter Crowley v United Kingdom Intellectual Property Office [2014]. An alternative or additional objection may be that the specification is not complete enough to allow the invention to be performed under s.14(3) (see 14.67). For example, in Eastman Kodak Co. v American Photo Booths Inc. (BL O/457/02), which concerned a patent for a photo-booth camera, it was held that the folded optical path as described and claimed could not give rise to the claimed narrowing of the depth of field. As a result, the hearing officer held that the invention could not work as described and claimed, and so lacked both industrial applicability and sufficiency of disclosure. See also NEWMAN/Perpetual motion (EPO decision T 5/86). Objecting to insufficiency may be particularly appropriate if the claims do not refer to the intended function or purpose of the invention, for example if a “flying gyroscope” is claimed merely as an article having a particular specified construction.
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Regardless of whether objection arises under s.4(1) or s.14(3), one of the procedures set out in 17.94-17.96.4 should be followed at the search stage.
4.05.1 In considering whether an invention operates in a manner which is clearly contrary to well-established physical laws, the examiner should consider the material before them on the balance of probabilities. If there is substantial doubt about an issue of fact which could lead to patentability, following the Patents Court judgment in Blacklight Power Inc. v The Comptroller-General of Patents [2009] RPC 6, the examiner should consider whether the evidence provided by the applicant gives rise to a reasonable prospect that the applicant’s theory might turn out to be valid if it were to be fully investigated at a trial with the benefit of expert evidence. In such a case the application should be allowed to proceed. The reasonable prospect must be based on credible material before the Office. Moreover, the greater has been the opportunity for the applicant to produce such material at the application stage, the smaller scope there is for supposing that giving them the benefit of the doubt will lead to a different conclusion before the courts. It should also be noted that the test set out in Blacklight Power should be applied only where there is “substantial doubt” on an issue of fact. In the case of a claim to a perpetual motion machine, there is no substantial doubt, and as pointed out by the judge in this case, there would be no reasonable prospect that matters would turn out differently on a fuller investigation at trial.
4.05.2 The “reasonable prospect ... at trial” test set out in Blacklight Power Inc. v The Comptroller-General of Patents was applied by the hearing officer on remittal of this case from the Patents Court back to the Office (Blacklight Power Inc.’s Application BL O/170/09), and also by the hearing officer in Robinson’s Application BL O/336/08. In both cases the claimed invention relied on a scientific theory of doubtful validity. The criteria used by the hearing officers in these cases to determine whether there was a reasonable prospect that the applicant’s theory might turn out to be valid if it were to be fully investigated at a trial with the benefit of expert evidence included; consistency with existing generally accepted theories, testable predictions made by the theory together with evidence to match its predictions, and the level of acceptance of the theory by the community of scientists working in the relevant discipline.
4.06 Methods of testing are generally regarded as capable of industrial application if the test is applicable to the improvement or control of a product, apparatus or process which itself is capable of industrial application. It is therefore advisable to indicate the purpose of the test if this is not otherwise apparent (see 14.82). In particular, the use of animals for test purposes in industry, e.g. for testing industrial products or for monitoring water or air pollution, may be patentable.
s.1(3)(b) 4.07 Although "industry" includes agriculture, a process used in agriculture will not be patentable if it is a method of surgery, therapy or diagnosis practised on animals (see section 4A) nor if it is an essentially biological process for the production of animals or plants (see 1.43-1.46).
4.07.1 Special considerations apply to inventions in the field of biotechnology, as the industrial application (i.e. useful purpose) of a biotechnological invention, such as a gene or protein sequence, is very often not apparent from the invention itself. It is frequently also necessary to take account of the specific requirements of European Directive 98/44/EC on the legal protection of biotechnological inventions (as set out in Schedule A2 to the Patents Act 1977), which provides (amongst other things) that the industrial application of a sequence or partial sequence of a gene must be disclosed in the patent application as filed – see 76A.06. The Examination Guidelines for Patent Applications relating to Biotechnological Inventions in the Intellectual Property Office provide extensive guidance for dealing with applications in this specific area of technology.
4.07.2 The question of the industrial applicability of a gene was considered by the Supreme Court in Human Genome Sciences v Eli Lilly [2011] UKSC 51, [2012] RPC 6. Previously, in Eli Lilly & Co. v Human Genome Sciences, Inc. [2008] EWHC 1903 (Pat), [2008] RPC 29 (upheld by the Court of Appeal [2010] EWCA Civ 33 [2010] RPC 14), Kitchin J applied nine principles which summarized UK and EPO case law in this area, and rejected
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the application on the grounds that it lacked industrial applicability. However the Supreme Court, having considered UK case law and European jurisprudence, concluded that the basis upon which the judge in the lower court had decided the issue was not consistent with the approach adopted by the EPO Technical Board of Appeal. Lord Neuberger summarized the Board’s approach regarding the requirements of Article 57 EPC in relation to biological material in a set of fifteen points, and concluded that in light of these points the patent in suit satisfied the requirement of Article 57 i.e. was industrially applicable. The majority of the fifteen points relate specifically to the biomedical fields; however the principles set out in points 1-4 can be applied broadly when considering the industrial application of a patent. The first four points for consideration are as follows:
i) The patent must disclose “a practical application” and “some profitable use” for the claimed substance, so that the ensuing monopoly “can be expected [to lead to] some … commercial benefit”;
ii) A “concrete benefit”, namely the invention’s “use … in industrial practice” must be “derivable directly from the description”, coupled with common general knowledge;
iii) A merely “speculative” use will not suffice, so “a vague and speculative indication of possible objectives that might or might not be achievable” will not do;
iv) The patent and common general knowledge must enable the skilled person “to reproduce” or “exploit” the claimed invention without “undue burden”, or having to carry out “a research programme”;
Points 5-10 relate to situations where a patent discloses a new protein and its encoding gene, while points 11-15 relate to situations where the protein is said to be a member of a family or superfamily. For further discussion of these points see the Examination Guidelines for Patent Applications relating to Biotechnological Inventions in the Intellectual Property Office.
[Section 4(2) Repealed]
[Subsection 4(2) was concerned with the patentability of methods of treatment or diagnosis. This is now provided for in section 4A(1)]
4.08 [deleted]
[4.09 – 4.20 moved to 4A.02 – 4A.13]
4.21 [deleted]
4.22 [deleted]
[4.23 moved to 4A.14]
[Section 4(3) Repealed]
[Subsection 4(3) was concerned with the patentability of substances for use in methods of treatment or diagnosis. This is now provided for in section 4A(2)]
[4.24 moved to 4A.15]
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Section 4A: Methods of treatment or diagnosis
s.130(7) 4A.01 This section relates to exceptions to patentability and novelty. It is so framed to have, as nearly as practicable, the same effect in the UK as the corresponding provisions of the EPC, PCT and CPC, ie Articles 53(c), 54(4) and 54(5) of the EPC.
[The Examination Guidelines for Patent Applications relating to Medical Inventions in the UK Intellectual Property Office provide further details on practice in this field.]
Section 4A(1)
A patent shall not be granted for the invention of-
(a) a method of treatment of the human or animal body by surgery or therapy, or
(b) a method of diagnosis practised on the human or animal body.
4A.02 The term "therapy" includes the prevention as well as the treatment or cure of disease, as held by the Patents Court in Unilever Limited (Davis') Application, [1983] RPC 219. Although some medical dictionaries cited pointed towards a narrow interpretation of the term, other works of reference, including non-specialist dictionaries, indicated a more general meaning; this was preferred in this case, following the principle that words in statutes dealing with matters relating to the general public are presumed to be used in their popular, rather than their narrowly legal or technical, sense. However, for a treatment to constitute therapy there must be a direct link between the treatment and disease state being cured, prevented or alleviated, as held by the hearing officer in Commonwealth Scientific and Industrial Research Organization’s Application (BL O/248/04). A photodynamic method of controlling wool growth to reduce the incidence of blowfly strike and balanitis in sheep was therefore determined not to be a method of therapy. Furthermore, in Schering AG's Application [1971] RPC 337, it was held that a method of chemical contraception was not considered to be therapeutic. The prohibition does apply if a method of chemical contraception is associated with a therapeutic method by means of combined delivery system. This was decided by the EPO Technical Board of Appeal in The General Hospital Corporation's Application T820/92 (OJEPO 3/95) in which certain steroids were used in conjunction with a main contraceptive ingredient to alleviate health problems caused by that ingredient. The EPO Board of Appeal in another case, T74/93 (OJEPO headnote 4/95), confirmed that methods of contraception in general are not considered to be therapeutic, as pregnancy is not a disease. The Board held that the claimed method in this case lacked industrial applicability as it was a purely personal method carried out in private. In the UK methods of contraception are not considered to lack industrial application merely because they are for “private and personal use”. Under s.60(5)(a) of the Patents Act 1977 the private use of such a method would not constitute an infringing act, and so a patent to such a method is allowable.
4A.03 It appears that any medical treatment of a disease, ailment, injury or disability, ie anything that is wrong with a patient and for which they would consult a doctor, as well as prophylactic treatments such as vaccination and inoculation, is to be regarded as therapy. The same considerations apply for animals as for human patients, so that for example prophylaxis and immunotherapy in animals are regarded as therapy.
4A.03.1 In Bristol-Myers Squibb v Baker Norton Pharmaceuticals Inc [1999] RPC 253, Jacob J held that the exception should be construed narrowly. Its purpose is merely to keep patent law from interfering directly with what a doctor actually does to a patient, not to stop patent monopolies from controlling what the doctor administers to the patient or the implements that they use on the patient. However methods of therapy carried out on materials
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temporarily removed from the body, for example when blood is circulated through an apparatus while remaining in living communication with the body, are not patentable (cf Calmic Engineering Co Ltd's Application, [1973] RPC 684).
4A.03.2 In Ciba-Geigy AG's Application (BL O/30/85), objection was raised under now repealed section 4(2) (equivalent to s.4A(1)) to certain claims for a method of controlling parasitic helminths (worms which may develop in the animal body, for example, in the intestinal tract of animals such as sheep) by the use of a particular (novel and inventive) anthelmintic composition. The hearing officer considered that such an infestation was a disease requiring medical treatment of the animal and that such treatment, whether curative or preventative, constituted therapy practised on the animal body and consequently held that the claims in question were not allowable.
4A.03.3 Section 4A(1) excludes only treatment by surgery or therapy, and it follows that other methods of treatment of live human beings or animals, eg treatment of a sheep in order to promote growth, to improve the quality of mutton or to increase the yield of wool, are patentable provided that (as would probably be the case) such methods are of a technical, and not essentially biological, character. However, where an increase in meat yield or other industrial benefit is merely an inevitable consequence of improved health through therapeutic treatment, then such a method is unpatentable. On the other hand, a claim to the non- therapeutic use of antibiotics or other drugs may be acceptable if the claimed effect is not a mere consequence of improved health. Where the method set out in the claim may be patentable but could also cover non-patentable embodiments, a claim must be clearly limited (e.g. by a disclaimer) to methods which are patentable, and there must be support in the description for a non-therapeutic method. If necessary, the description should be amended to clarify that therapeutic methods do not form the invention.
4A.04 Application of substances to the body for purely cosmetic purposes is not therapy. In allowing claims to a process for improving the strength and elasticity of human hair and finger nails, the High Court of Australia observed that, while a process for the treatment of the human body as a means of curing or preventing a disease or other disorder was not patentable, "Those who apply chemical preparations to the skin to prevent sunburn in climates which enjoy sunshine and moderate air temperatures can scarcely be regarded either as, in a relevant sense, treating their bodies or as undergoing treatment. On the other hand, the application to the skin of an ointment designed and effective to remove keratoges from the skin would be an instance of medical treatment. To be treatment in the relevant sense, it seems to me that the purpose of the application to the body whether of a substance or a process must be the arrest or cure of a disease or diseased condition or the correction of some malfunction or the amelioration of some incapacity or disability" (Joos v Commissioner of Patents, [1973] RPC 59).
4A.05 In Oral Health Products Inc (Halstead's) Application, [1977] RPC 612, claims to a method of removing dental plaque and/or caries were refused, as was a claim to a method of cleaning teeth which embraced both curative and cosmetic effects. This decision has been followed under the 1977 Act in ICI Ltd's Application No 7827383 (BL O/73/82), where a claim was refused to a method of cleaning teeth which removed both plaque and stains; it was argued that when applied to perfectly healthy teeth the method was purely cosmetic, but the hearing officer observed that practically all medical treatments which are preventative in nature (such as vaccination) must at times be applied to people who would have remained healthy anyway, but they remained medical treatments. It was held in Lee Pharmaceuticals' Applications, [1978] RPC 51, that since one of the results of sealing pits and fissures in teeth was to prevent the onset of dental decay, the purpose of the treatment was therapeutic rather than cosmetic.
4A.06 Diagnosis is the identification of the nature of a medical illness, usually by investigating its history and symptoms and by applying tests. Determination of the general
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physical state of an individual (e.g. a fitness test) is not considered to be diagnostic if it is not intended to identify or uncover a pathology. Section 4A(1) relates to methods of diagnosis practised on the human or animal body; diagnosis in itself is a method of performing a mental act and is excluded from patentability under section 1(2)(c). The scope of the term “diagnostic methods practised on the human or animal body” within the meaning of Article 53(c) EPC (equivalent to section 4A(1)) is discussed by the EPO Enlarged Board of Appeal decision in G 01/04 Diagnostic Methods [2006] 5 OJEPO 334, [2006] EPOR 15. Typically, the process of diagnosis involves a number of steps leading towards identification of a condition. The Enlarged Board characterised these steps as being; (i) the examination and collection of data, (ii) comparison of the data with normal values, (iii) recording any deviation from the norm, and finally (iv) attributing the deviation to a particular clinical picture. The Enlarged Board held that for a claim to fall under this prohibition, it must include both the deductive step of making the diagnosis (step iv) and the preceding steps constructive for making that diagnosis involving specific interactions of a technical nature with the human or animal body. The exclusion is therefore a narrow one, and also requires all the method steps of a technical nature to be practised on the body. However, the Board pointed out that the exclusion could not be circumvented by omitting one of the essential features of the diagnostic method as the claim would then not satisfy Article 84 EPC (equivalent to section 14(5)(a) to (c)), since this requires that all the essential features necessary for clearly and completely defining a particular invention are present in the claim. In determining whether or not a method is diagnostic, the Board held that it is irrelevant whether it is necessary for a medical or veterinary practitioner to be involved. Furthermore, a method is “practised on the human or animal body” if it involves any interaction which necessitates the presence of the patient, so will include both invasive and non-invasive methods.
4A.06.1 In practice, there are two key questions to be asked with any claim to a diagnostic method. Firstly, does the claimed method include both the first, measurement step and the final deductive step; i.e. does it allow the disease or condition to be identified? (The intermediate steps (ii) and (iii) may be inferred if the first and last steps are clearly included.) Second, is the examination or measurement (step (i)) practised on the body? The remaining steps (ii) to (iv) are never practised on the body, but are generally not technical in nature. If the answer to both of these questions is “yes”, objection should be made under Section 4A.
4A.07 Methods of diagnosis performed on tissues or fluids which have been permanently removed from the body are not excluded, and so, for example, genetic or immunological tests on blood or urine samples are patentable. "Body" should be taken to mean living body, and a method practised on a dead body, for example in order to determine the cause of death, would not be excluded.
4A.08 Surgery is defined as the treatment of disease or injury by operation or manipulation. It is not limited to cutting the body but includes manipulation such as the setting of broken bones or relocating dislocated joints (sometimes called "closed surgery"), and also dental surgery. In general, any operation on the body which required the skill and knowledge of a surgeon would be regarded as surgery (see also 4A.10). The Enlarged Board of Appeal in G 01/07 MEDI-PHYSICS/Treatment by surgery [2011] 3 OJEPO 134 held that a method should be excluded if it comprises or encompasses an invasive step which constitutes a substantial physical intervention on the body, and which entails a significant health risk even when carried out by a medical professional.
4A.09 In Unilever Limited (Davis') Application, [1983] RPC 219 (see also 4A.02), Falconer J observed that any method of surgical treatment, whether curative, prophylactic or cosmetic, is not patentable. This view, which was obiter, was cited by the hearing officer in Occidental Petroleum Corporation's Application (BL O/35/84) in refusing to allow claims to a method of implanting an embryo transplant from a donor mammal into the uterus of a recipient mammal, since the method would necessarily have to be carried out by a surgeon or veterinary surgeon. In contrast, the EPO Technical Board of Appeal in T 383/03 GENERAL
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HOSPITAL/Hair removal method [2005] 3 OJEPO 159 held that the exclusion only applies to surgical methods which are potentially suitable for “maintaining and restoring the health, the physical integrity, and the physical well-being of a human being or animal, and to prevent diseases”. This was overturned by the Enlarged Board of Appeal in G 01/07 MEDI- PHYSICS/Treatment by surgery [2011] 3 OJEPO 134, in which it was held that the purpose of the method is irrelevant – the exclusion is not limited to therapeutic or reconstructive surgery. Instead, surgery is defined by the nature of the method, and in particular the level of skill required and risk incurred. This is consistent with previous UK practice, and with the Office decision in Virulite Ltd’s Application BL O/058/10. In this decision a claimed method of treating the skin with electromagnetic radiation was held not to be surgical on the grounds that it was not a significant physical intervention – the treatment did not damage cells or burn the skin – and the patent, if granted, would not interfere with the work of a medical or veterinary practitioner in their treatment of patients.
4A.10 It may often be helpful, in deciding whether or not a method is excluded under s.4A(1), to consider who would in practice carry out the method. The apparent purpose of s.4A(1) is to prevent a medical practitioner being inhibited by legal monopolies. Thus for example bone setting is regarded as surgery, while applying a plaster cast is not, since the former is carried out by a doctor, the latter by a technician. And in Upjohn Co (Kirton's) Application, [1976] RPC 324, the hearing officer observed that abortion in humans, in contradistinction to contraception, necessarily involved a registered medical practitioner. (See also 4A.11). However, this consideration is not decisive, and a method may still be considered to be therapeutic, diagnostic or even surgical even if it can be carried out by non-medical personnel. In G 01/07 MEDI-PHYSICS/Treatment by surgery [2011] 3 OJEPO 134 it was held that whether a method is excluded or not cannot depend on who carries it out, not least because of the changing medical roles in healthcare systems.
4A.11 Once it has been decided, in the way indicated in the preceding paragraphs, that a method constitutes surgery, therapy or diagnosis practised on the human or animal body, it is necessarily non-patentable. For example, methods of abortion or induction of labour are always considered to be unpatentable, irrespective of the reason for the treatment. The fact that abortion or induction of labour may be carried out for social reasons, or that these or other methods may be practised on animals for reasons of agricultural economies, does not save them from exclusion.
4A.11.1 Unlike section 1(2) of the Act, there is no proviso in s.4A(1) that methods are only excluded “to the extent that a patent or application for a patent relates to that thing as such”. The EPO Enlarged Board of Appeal in G 01/07 MEDI-PHYSICS/Treatment by surgery [2011] 3 OJEPO 134 confirmed a body of earlier EPO case law by holding that any multi-step method which includes a step comprising a method of surgery or therapy is excluded from patentability.
4A.12 Claims objected to under section 4A(1) are often in the form "A method (or process) for treating medical or veterinary condition Y by .....", but other forms of claim are also objected to such as "The use of substance (or composition) X in treating medical condition Y by .....", "A compound (or composition) X when used in the treatment of medical condition Y by ....." and “The use of substance (or composition) X as a pharmaceutical”. The last of these claims is interpreted as a method claim to the use of the substance in therapeutic treatment, rather than simply a claim to its use in a pharmaceutical formulation.
4A.13 Patents may, however, be obtained for surgical, therapeutic or diagnostic instruments or apparatus intended for use in such methods. Also the manufacture of prostheses or artificial limbs and taking measurements therefore on the human body are patentable. In addition, tests on human or animal bodies should be regarded as patentable inventions if they do not meet the criteria for “methods of diagnosis” set out in 4.06.
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4A.14 If a claim is capable of embracing both excluded and non-excluded methods, amendment is necessary to limit the claim to methods which are patentable, for example by disclaiming the excluded methods, and if necessary, by amending the description to exclude the non-patentable methods. Any disclaimers must meet the requirements set out in 14.126- 14.127. The Enlarged Board of Appeal in G 01/07 MEDI-PHYSICS/Treatment by surgery [2011] 3 OJEPO 134 confirmed that an “undisclosed disclaimer” (i.e. one where neither the disclaimer nor the subject matter excluded by it is disclosed in the application as filed) to exclude methods of treatment by therapy or surgery, or methods of diagnosis practised on the human or animal body, is in principle allowable and does not necessarily constitute added matter. Any form of disclaimer is allowed which removes the objection and leaves the scope of the monopoly remaining clear. While in ICI (Richardson's) Application [1981] FSR 609 a claim which included a disclaimer employing the wording of the Act was disallowed since it left the scope of what was being claimed unclear, there is no objection in principle to any other form of disclaimer, provided always that the scope of the monopoly remaining is clear, and there is support in the description for the invention claimed. Regardless of whether the disclaimer itself is disclosed, the subject matter remaining in the claim after the introduction of the disclaimer must be disclosed in the application as filed (G 02/10 SCRIPPS/Disclaimer OJEPO 2012, 376).
Section 4A(2)
Subsection (1) above does not apply to an invention consisting of a substance or composition for use in any such method.
4A.15 This subsection is for the avoidance of doubt; the exclusions of s.4A(1) apply only to methods and not to materials to be used in such methods.
Section 4A(3)
In the case of an invention consisting of a substance or composition for use in any such method, the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the state of the art.
4A.16 Section 4A(3) has the effect that a known substance or composition may be patented for use in a method of treatment by surgery or therapy or a method of diagnosis practised on the human or animal body, provided that its use in any such method is new ("first medical use"). That is to say, if a known substance or composition not previously used in surgery, therapy or diagnosis is found to be useful in treating, say a human disease, or to obtain a specific "therapeutic" effect (eg analgesic or antibiotic), a patent for the substance or composition for use in therapy (unspecified) may be obtained, i.e. the claim need not be limited to the specific therapeutic effect; additional claims directed towards more than one specific therapeutic effect may be allowed in the same patent application, provided of course that they are supported by the description. The terms surgery, therapy and diagnosis are discussed in more detail in paragraphs 4A.02-4A.14.
s.4A(1) 4A.17 This is an exception to the general rule (see 2.14) that a claim to a substance or composition for a particular purpose is construed as a claim to the material per se, and that if the invention lies in a new method of using a known material only the new method can be claimed. (Where the new use is a method of surgery, therapy or diagnosis practised on the human or animal body a claim to the method would not be allowable). In a case where the
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main claims related to a contraceptive composition comprising compounds that were already known as pharmaceuticals, the EPO Technical Board of Appeal, in decisions T303/90 and T401/90 (not reported), was of the opinion that the composition as claimed could not be considered as novel and the added word "contraceptive" did not change the product claim into a use claim.
4A.18 The first medical use of a known substance can be claimed for use in a method of medical treatment the first time such a use is disclosed. Once the use of the compound in any method of medical treatment has formed part of the state of the art the same substance or composition may subsequently be patented for use in treating a different disease, whether human or animal, or in surgery or diagnosis as a second use (see 4A.26- 4A.31).
s.1(2)(d) 4A.19 In Bayer A G (Meyer's) Application, [1984] RPC 11, the hearing officer refused claims of the form "Commercial package containing as an active pharmaceutical agent compound X together with (or bearing) instructions ..." for treating condition Y; it was only the content of the instructions which distinguished these claims from the prior art, and this was mere presentation of information and not an invention (see 1.40.3). See also 4A.20 below.
4A.20 A similar conclusion was reached in John Wyeth and Brother Ltd's Application, [1985] RPC 545. In that case it was argued on behalf of the applicant that a claim to the use of X in treating Y included procedures which are not practised on the human or animal body but which are of an industrial nature, such as the preparation of the compounds and of compositions containing them and their packaging, including the enclosure of instructions, for the new use; a decision of the German Federal Court of Justice (Bundesgerichtshof), reported at OJEPO 1/84 pages 26-41, was cited in support of this view. The hearing officer rejected a suggestion that he was obliged, because of s.130(7), to follow this decision, and observed that there appeared to be a fundamental difference of approach to the validity of claims, since the German Court seemed to take the view that because a claim includes some patentable matter it should be allowed, whereas under UK law a claim as a whole is regarded as bad if it includes something that is non-patentable. In a judgment ([1985] RPC 545 at page 556) on the Wyeth case and Schering AG's Application, the Patents Court agreed with the findings of the hearing officer in the Bayer case (see 4A.19) but followed the EPO Enlarged Board of Appeal (G 05/83 EISAI/Second medical indication, [1985] 3 OJEPO 64) in allowing Swiss-type claims of the form "the use of substance X for the manufacture of a medicament for a specified new and inventive therapeutic application"; this type of claim has now been superseded by the direct form of second medical use claim as discussed in 4A.26- 4A.28.
4A.21 A claim to a known substance or composition for the first use in surgical, therapeutic and/or diagnostic methods should be in a form such as "Substance or composition X ...." followed by the indication of the use, for instance ".... for use as a medicament", ".... for use as an antibiotic", or ".... for use in treating disease Y". There is no objection to a claim being directed to substance X for use in a medical method in the case where X is novel, whether or not the substance is also claimed per se.
4A.22 EPO case law in relation to both first (T 1758/07) and second (T 1099/09) medical use claims indicates that protection for medical uses of known substances or compositions is only available for the use of a substance or composition as an active agent in medicine. The use of a known substance or composition as an inactive carrier or excipient for a therapeutic agent cannot therefore be protected by a first medical use claim. Following the same logic, the previous use of the compound purely as an inactive carrier or excipient for a therapeutic agent does not anticipate a first medical use claim, as held in T 1758/07.
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4A.23 Section 4A(3) is restricted to substances and compositions; apparatus cannot be so protected. Claims may be allowed however under Section 4A(3) to compositions having a surface and in the form of an article ie having a shaped form.
4A.24 Since cosmetic methods of treatment of the human body are not considered to be therapeutic (see 4A.04), a substance or composition for use in a non-surgical cosmetic method cannot be protected by Section 4A(3).
4A.25 To provide evidence of prior use of a substance or composition in therapy, actual disclosure of therapeutic use must be found. It is not sufficient for a research paper to disclose experiments which show an activity which would make the substance or composition suitable for use in therapy, or discloses in vitro testing for such a use. The section requires the use of the substance or composition in a method of therapy to form part of the state of the art. Such disclosures of experiments and tests might of course be used as a basis for an obviousness attack under section 3.
Section 4A(4)
In the case of an invention consisting of a substance or composition for a specific use in any such method, the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if that specific use does not form part of the state of the art.
4A.26 Before implementation in 2007 of the medical provisions of the 2000 revision of the EPC (EPC 2000 – introduced into UK law by the Patents Act 2004), a second or subsequent medical use could only be protected by a claim in the “Swiss type” format of “the use of substance X for the manufacture of a medicament to treat disease Y”. Section 4A(4) now enables patent protection to be obtained for a second, or subsequent, different use of a substance or composition in a method of treatment or diagnosis by a direct claim in the form “substance X for use in the treatment of disease Y”. A claim of this type for a known substance or composition for use in a specific method of treatment or diagnosis is treated as new if that specific use was previously unknown. This does not extend the availability of patent protection in respect of inventions consisting of a substance or a composition for use in a method of treatment or diagnosis; it simplifies and clarifies the manner in which patent protection may be obtained for such inventions.
4A.27 Following implementation of the EPC 2000, the practice in both this Office and the EPO was to allow inventions relating to second medical uses to be claimed using either the direct second medical use claim format under Section 4A(4), or the Swiss-type format, or both, pending guidance from the UK courts and/or the EPO Boards of Appeal. In February 2010, the EPO Enlarged Board of Appeal issued its decision in G 02/08 ABBOTT RESPIRATORY/Dosage regime [2010] 10 OJEPO 456. This decided that applicants may no longer claim second medical use inventions in the Swiss format. The Enlarged Board held that Swiss-type claims were previously accepted (in G 05/83 EISAI/Second medical indication [1985] 3 OJEPO 64) as the only possible means of protecting inventions relating to second medical uses in order to fill a loophole in the provisions of the EPC 1973. The new Article 54(5) (equivalent to Section 4A(4)) fills this loophole by explicitly allowing claims to the further specific use of a known drug, and so the reason for this special, “judge-made” law no longer exists.
4A.27.1 Claims in the “Swiss-type” format in new or pending applications should be objected to on grounds of clarity, and must either be deleted or replaced by claims in the direct second medical use format “substance X for use in the treatment of disease Y”. This change
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in practice was announced in a Practice Notice issued on 26 May 2010. The basis of the objection is that a Swiss-type claim lacks clarity because, although it is worded as defining a method of manufacturing a medicament, the invention in fact relates to the intended use of the product rather than the method of manufacture. As stated in G 02/08, there is no functional relationship between the feature conferring novelty (the intended use) and the claimed manufacturing process. Amendment of a patent application to replace a Swiss-type claim with the new form of second medical use claim is not considered to add matter, since regardless of the wording or scope of the claim, the technical disclosure (i.e., a new medical use for a substance or composition) is the same. Similarly, replacement of an unpatentable method of treatment claim with a second medical use claim protecting the same use does not add matter. This practice does not have any bearing on the validity of patents already granted and including Swiss-type claims.
A request to make a post-grant amendment to replace Swiss-type claims with the new form of second medical use claim is unlikely to succeed, particularly as the Enlarged Board in G 02/08 suggested that the new form of claim may have a broader scope than Swiss-type claims. Moreover, in an earlier Technical Board of Appeal decision (T 250/05) it was held that a post- grant amendment from a Swiss-type claim to the new form of second medical use claim would extend the scope of protection and thus would not be allowable under Art. 123(3) EPC (equivalent to s.76(3)(b)). The Boards of Appeal in T 1780/12 and T 879/12 highlighted this difference in scope and also claim category between Swiss-type claims (which, strictly, are process claims) and the new form of second medical use claims (which are “purpose-limited” product claims). For this reason, it was concluded in both these decisions that where a divisional application included the new claim form, and the granted parent claimed the same medical use in the Swiss form, this did not constitute “double-patenting”. No objection should therefore be raised under s.18(5) or s.73(2) to conflict between applications including the new form of second medical use claim and granted GB or EP patents which protect the same medical use solely through Swiss-type claims. The Patents Court in Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 2548 confirmed that Swiss-type claims are process claims – this has consequences for infringement as discussed in 60.16.2 and 60.19.2.
4A.28 The protection of second medical uses by Swiss-type claims was originally allowed by the Enlarged Board of Appeal in G 05/83 EISAI/Second medical indication [1985] 3 OJEPO 64, and this was followed by the Patents Court in John Wyeth’s and Schering’s Applications [1985] RPC 545. The Enlarged Board in G 05/83 also decided that a claim to the use of a substance for treatment was regarded as confined to the step of treatment and was thus contrary to a.52(4) EPC [1973]. (See also 4A.20). Despite the fact that Swiss-type claims are no longer allowable, the case law that has developed from the UK courts and EPO Boards of Appeal concerning second medical use claims in the Swiss form continues to govern our practice in relation to inventions in this field. Second medical use claims which relate to the use of a substance for the same therapeutic application as the prior art, but claiming a different technical effect or mechanism of action, should be objected to for lack of novelty. In Bristol- Myers Squibb v Baker Norton Pharmaceuticals [1999] RPC 253, the Patents Court held that a new piece of information about how a treatment worked did not constitute an invention if it did not lead to a new use, which was upheld by the Court of Appeal [2001] RPC 1. In this case, the drug, method of administration and therapeutic purpose were exactly the same as given in a prior lecture; the only difference was the discovery that if the drug was infused over a shorter time period, an undesirable side-effect was less and the therapeutic effect remained. This decision was followed by the Patents Court in El-Tawil’s Application [2012] EWHC 185. In this case a claim was considered to relate to a combination of newly discovered technical effects, and newly discovered advantages of a known treatment, neither of which conferred novelty. Similarly, in Actavis UK Ltd v Janssen Pharmaceutica NV [2008] EWHC 1422, [2008] FSR 35, it was held that “merely explaining the mechanism which underlies a use already described in the prior art cannot, without more, give rise to novelty”.
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4A.28.1 The Court of Appeal in Bristol-Myers Squibb v Baker Norton Pharmaceuticals [2001] RPC 1 also held that second medical use claims must define a new and inventive purpose; ie the treatment of a new disease. It was held that claims which defined the new use in terms of, for example, a new dosage regime, were disguised method of treatment claims, and also lacked novelty over the use of the substance to treat the same disease at a different dosage. However, the Court of Appeal in Actavis v Merck [2008] RPC 26 reversed this aspect of the Bristol-Myers Squibb v Baker Norton Pharmaceuticals decision and decided that a second medical use claim which defined the use in terms of a new and inventive dosage regime was valid, despite the fact that the substance in question had been used in the prior art to treat the same condition (alopecia) at a different dosage. It was emphasised that in most cases a new dosage regime would not be inventive, as investigating appropriate dosage regimes is standard practice.
4A.28.2 The reasons the Court of Appeal gave in Actavis v Merck [2008] RPC 26 for departing from its own precedent (in Bristol-Myers Squibb v Baker Norton Pharmaceuticals [2001] RPC 1) were threefold. Firstly it was decided that Bristol-Myers Squibb v Baker Norton Pharmaceuticals provided no clear ratio in relation to novelty, and so was not binding in this respect. Secondly, that the ratio of Bristol-Myers Squibb v Baker Norton Pharmaceuticals in respect of the method of treatment objection was on the narrow grounds that the claim at issue in that case was directed at the actions of the doctor rather than the manufacturer, and this was not the case with dosage regime claims in general. Finally, the Court of Appeal in any case felt it was able (but not bound) to depart from its own precedent on the grounds that the earlier decision was inconsistent with the “settled view” of European patent law as interpreted by EPO Board of Appeal decisions; which had allowed second medical use claims which define a new dosage regime or method of administration. The Enlarged Board of Appeal in G 02/08 ABBOTT RESPIRATORY/Dosage regime [2010] 10 OJEPO 456 confirmed earlier EPO case law in allowing second medical use claims to new and inventive dosage regimes, even where the substance or composition, and the disease to be treated, are the same as in the prior art. Second medical use claims which are distinguished from the prior art solely by the dosage regime used are therefore allowable if the claimed use is both new and inventive.
4A.28.3 As with first medical use claims, second medical use claims can only derive novelty from their intended use if the use is in a medical method excluded under s.4A(1), and so cannot be used to protect the new use of a known substance in, for example, a cosmetic method. Section 4A(4) is restricted to substances and compositions; apparatus cannot be so protected. In T 1099/09 it was held that second medical use claims can only be used to protect the use of a known substance or composition as an active agent. The use of a known substance or composition as an inactive carrier or excipient for a therapeutic agent cannot therefore be protected by a second medical use claim.
4A.29 Second medical use claims to the further medical use of a substance or composition must be supported by evidence, in the application as filed, that the substance or composition is (or at least is likely to be) effective for the specified use. In Prendergast’s Applications [2000] RPC 446, it was held that tests showing that the known substance or composition works in the proposed new circumstances are an essential part of the description if second medical use claims are to be adequately supported under s.14(5)(c). (Also see 14.152). This ensures that purely speculative second medical use claims are not allowed. However, Neuberger J emphasised that rudimentary tests would suffice and that full, detailed and rigorous testing of the drug for the proposed condition is not necessary. The requirement for some experimental support for second medical use claims was confirmed by the Patents Court decision in El-Tawil’s Application [2012] EWHC 185, and so an objection of lack of support should be made if such evidence is lacking, or is only present for some of the claimed diseases. Nevertheless, a claim to a broader class of diseases may be justified if the applicant can show that it could reasonably be predicted from the demonstrated activity that the substance or composition will treat the diseases in question. In Regeneron Pharmaceuticals
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Inc v Genentech Inc [2012], EWHC 657 (Pat) (upheld at appeal [2013] EWCA Civ 93), it was held, on the facts of the case, that it was reasonable to predict that an anti-angiogenic effect demonstrated in tumours would also extend to non-cancerous diseases characterised by excessive angiogenesis (growth of new blood vessels into a tissue).
4A.29.1 The Patent’s Court in Hospira UK Ltd v Genentech Inc [2014] EWHC 1094 held that in order to establish a priority claim in the case of a second medical use invention, the earlier application must show that the claimed therapeutic effect is plausible. If this is not the case, then the earlier disclosure would not be considered enabling. Therefore, if a claimed priority application does not include any evidence beyond mere assertion of a therapeutic effect then the examiner should disregard this claimed priority date for the purpose of assessing novelty and inventive step (see 5.23.2).
4A.30 The court in American Home Products Corp. v Novartis Pharmaceuticals UK Ltd [2001] RPC 8 considered second medical use claims for the use of a known antibiotic (rapamycin) for the preparation of a medicament for inhibiting organ or tissue transplant rejection. The Court of Appeal reversed the lower court’s decision and held that the claim did not cover derivatives of rapamycin - thus finding the claim not infringed by the use of a rapamycin derivative as an immunosuppressant. The court also noted that, had the claim been construed as covering derivatives, the patent would have been insufficient because there was no disclosure in the description enabling the skilled person to decide which of the many possible derivatives would have worked (see also 14.82- 14.84). Furthermore, the claim was held not to be infringed by the use of rapamycin to produce a derivative-based medicament, since this would require a wide construction of the term “medicament” in the claim (that is, to mean a medicament not restricted to one comprising rapamycin), and this would leave the claim hopelessly broad. The court also held that the claim was not infringed if rapamycin was present as an impurity in the derivative-based medicament, since there was no suggestion that at the quoted impurity levels the rapamycin had any effect.
4A.31 In Bristol-Myers Squibb Co. v Baker Norton Pharmaceuticals Inc. [2001] RPC 1, it was held that a second medical use claim directed to the manufacture of a medicament “for treating cancer” should be construed as “suitable for trying to treat cancer”, since the skilled person would realise that drugs which are suitable for treatment will not always have a 100% success rate. However, drugs which are perceived as being suitable for treatment, but actually have no effect, do not fall within the scope of the claim because they are not, in fact, suitable. Where two or more substances are used together to treat a disease, then each falls within the scope of a second medical use claim for the use of that substance (Pfizer Ltd’s Patent [2001] FSR 16 at paragraphs 40-43). However, the previous use of the compound purely as an inactive carrier or excipient for a therapeutic agent does not anticipate a second medical use claim, as held in T 1758/07. In Hospira UK Ltd v Genentech Inc [2014] EWHC 1094 it was further explained (at paragraph 56) that “for treatment of [disease Y]” means “suitable and intended for treatment” – this definition was considered to apply to claims both in the Swiss form and in the “product for use” form. As second medical use claims are construed as being limited to the intentional treatment of the disease, the fact that the prior art use of the substance to treat a different condition may have inherently treated or prevented the claimed disease in some patients does not constitute an anticipation if the prior art does not disclose the new therapeutic use.
In an interim decision, the Court of Appeal in Warner-Lambert Company, LLC v Actavis Group Ptc EHF & Ors [2015] EWCA Civ 556 held that “intended for” means that the manufacturer would know or could reasonably foresee that the product would be used for the claimed therapeutic method. In applying this test at the full trial (Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 2548) Arnold J held that this meant the manufacturer would know or could reasonably foresee that a doctor or pharmacist would intentionally prescribe or administer the manufacturer’s drug for the claimed purpose. However, on appeal from this decision, the Court of Appeal (Warner-Lambert Company v
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Generics (UK) Ltd (t/a Mylan) & Ors [2016] EWCA Civ 1006) held that Arnold J's interpretation was too restrictive – instead, all that is required (to fall within the scope of the claim) is that the manufacturer could reasonably foresee that there would be intentional use of the drug for the claimed medical use.
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Section 5: Priority date
s.130(7) 5.01 This section is intended to have, as nearly as practicable, the same effect as the corresponding provisions of the EPC, PCT and CPC. Articles 87 and 88 and rule 53 of the EPC and Article 8 of the PCT appear to generally correspond to s.5. Relevant requirements are prescribed in rr.6 to 9. The principles of the section derive from Article 4 of the Paris Convention for the Protection of Industrial Property.
5.02 Section 5 was amended by the Regulatory Reform (Patents) Order 2004 (S.I. 2004 No. 3204) to incorporate the principles of Article 13 of the Patent Law Treaty. The amended section applies to applications made on or after 1 January 2005; for earlier applications, the provisions of section 5 prior to the Order coming into force apply. These earlier provisions are indicated in the text where they may be relevant to pending applications made before 1 January 2005.
Section 5(1)
For the purposes of this Act the priority date of an invention to which an application for a patent relates and also of any matter (whether or not the same as the invention) contained in any such application is, except as provided by the following provisions of this Act, the date of filing the application.
5.03 The priority date of all matter (whether claimed or not) in an application is, prima facie, the date of filing of the application. The onus is therefore on an applicant who wishes to claim an earlier priority date to comply with the specified conditions (see 5.04).
Section 5(2)
If in or in connection with an application for a patent (the application in suit) a declaration is made, whether by the applicant or any predecessor in title of his, complying with the relevant requirements of rules and specifying one or more earlier relevant applications for the purposes of this section made by the applicant or a predecessor in title of his and the application in suit has a date of filing during the period allowed under subsection (2A)(a) or (b) below, then-
(a) if an invention to which the application in suit relates is supported by matter disclosed in the earlier relevant application or applications, the priority date of that invention shall instead of being the date of filing the application in suit be the date of filing the relevant application in which that matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them;
(b) the priority date of any matter contained in the application in suit which was also disclosed in the earlier relevant application or applications shall be the date of filing the relevant application in which that matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them.
Section 5(2A)
The periods are-
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(a) the period of twelve months immediately following the date of filing of the earlier specified relevant application, or if there is more than one, of the earliest of them; and
(b) where the comptroller has given permission under subsection (2B) below for a late declaration to be made under subsection (2) above, the period commencing immediately after the end of the period allowed under paragraph (a) above and ending at the end of the prescribed period.
Section 5(2B)
The applicant may make a request to the comptroller for permission to make a late declaration under subsection (2) above.
Section 5(2C)
The comptroller shall grant a request made under subsection (2B) above if, and only if-
(a) the request complies with the relevant requirements of rules; and
(b) the comptroller is satisfied that the applicant's failure to file the application in suit within the period allowed under subsection (2A)(a) above was unintentional.
5.04 If the date of filing of an earlier application is to be treated as the priority date of some or all of the matter in an application in suit, the following conditions must be met:-
(a) a declaration must be made, and this must comply with the "relevant requirements" as set out in rr.6 and 7 (see 5.07-5.13);
(b) the earlier application should have a date of filing not more than twelve months earlier than that of the application in suit (see 5.18);
(c) an applicant can nevertheless request permission from the comptroller to make a declaration of priority in respect of an application filed within the period prescribed by r.7(1) (i.e. within two months of the expiry of 12 months from the date of filing of the earlier application) but such permission will only be granted when the request complies with r.7 and the comptroller is satisfied that failure to file the application within the 12 month period was unintentional (see 5.26.3-4);
(d) the earlier application must have been made by the same applicant as the application in suit or by his predecessor in title (see 5.19-19.2); and
(e) it must be a "relevant application" (see 5.30).
The earlier application must also be one which is not disregarded under the provisions of s.5(3) (see 5.27-5.28.5). However so long as it has a filing date, the outcome of the earlier application is not relevant, and it may serve to establish a priority date even if it is subsequently withdrawn or refused.
5.05 The priority date conferred by an earlier application cannot be earlier than the date on which it was filed, even if the authority with which it was filed has allowed it to be antedated, for example to the date on which it was shown at an exhibition (La Soudure
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Electrique Autogene SA's Application, 56 RPC 218).
5.06 Priority may be claimed from any number of earlier applications. So long as they are all "relevant applications" (see 5.30) there is no requirement that they should have been filed under the same national law or international agreement. However it should be remembered that the periods for complying with r.6 to 8 (see 5.08-5.12) are measured from the date of the earliest declared application (see 5.16), and that all necessary documents should be supplied within this period.
RELEVANT REQUIREMENTS
The Declaration
Where the earliest priority date to be claimed is not more than 12 months before date of filing of the application in suit
s.5(2A) 5.07 Where the earliest priority date to be claimed is not more than 12 months r.6(1) before the date of filing of the application in suit, the declaration should be made at the r.6(4) time of filing. However, there are possibilities to make a declaration after filing the
application (see 5.07.1). In all cases, the declaration must state the date of filing of the (or each) earlier application and the country it was filed in or in respect of. Such a declaration is made by completing the relevant part of Form 1. Errors or mistakes in declarations can be rectified by correction (see 117.19). In order for the earlier application to be uniquely identified, it is advisable to give the application number of that application at the earliest time that it is available although this information may be added later (see 5.08 )
r.6(2) 5.07.1 If a declaration is not made at the time of filing, it can be made (or r.6(3) another declaration can be added) at any time up to sixteen months after the earliest PR Sch. 4, priority date claimed provided that the declaration is made on a Form 3 accompanied by Part 1 the prescribed fee and a request to publish the application under section 16(1) has either
not been made or any such request was withdrawn before the preparations for publication of the application had been completed. This sixteen month period cannot be extended. The provisions allowing a declaration of priority to be made later than the filing date only apply to applications filed on or after 1 January 2005.
Where the earliest priority date to be claimed is more than 12 months before date of filing of the application in suit
s.5(2A)(b) 5.07.2 An applicant may request permission to make a declaration of priority in s.5(2B) respect of an application filed in the two months following the expiry of the period r.7(1) specified in s.5(2A)(a) but the comptroller shall only grant such permission if:-
s.5(2C)(a) (a) the permission is requested in accordance with rules, and
s.5(2C)(b) (b) the comptroller is satisfied that failure to file the application within the time specified in s.5(2A)(a) was unintentional (see 5.26.4), and
r.7(8) (c) either there is no request for accelerated publication under section 16(1), or if a request for accelerated publication was made, it was withdrawn before the preparations for publication were completed.
r.7 5.07.3 Except for the situation set out in 5.07.4, the request must be made on PR Sch. 4 Form 3 and must be filed before expiry of the two month period prescribed in r.7(1), which Part 1 cannot be extended. The declaration must be made at the time of filing the request and
the reason why the application was not filed within the period allowed by s.5(2A)(a) must be stated. Evidence supporting that reason must also be provided. Where that evidence does not accompany the request, the Comptroller must specify a period within which the evidence must be filed. Where an international application has entered the national
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phase, a request may be made under s.5(2B) within one month of the date the national phase of the application begins.
r.7(4) 5.07.4 If, however, the application in suit is a new application filed under section r.7(6) 8(3), 12(6) or 37(4) or as mentioned in section 15(9), the request may be made in writing
instead of on Patents Form 3, no evidence need accompany the request, and both the new application and the request may be made after the end of the two-month period prescribed in r.7(1) but must be made on the same date.
Priority documents
Certified copies
r.8(1)-(2) 5.08 The application number of the priority application must be supplied within r.8(5) sixteen months (extendable in accordance with r.108(2) or (3), see 123.34-42) of the r.21 declared priority date. Moreover, except in the circumstances referred to in paragraph PR Sch. 4 5.09, a copy of the earlier application, either certified by the authority with which it was
filed or otherwise verified to the satisfaction of the comptroller, should also be supplied within this period. Where the application claims an earlier date of filing, these conditions should be complied with within two months of the date of filing (or later in accordance with an extension under r.108(2) or (3) and (4) to (7), see 123.34-41) if the sixteen month period has already expired (but see 5.09), except if the new application is filed less than six months before the compliance date, in which case these conditions should be complied with on the filing date (extendable under r.108(2) or (3) and (4) to (6)). In the case of a divisional application the sixteen month period is automatically extended if that period has been extended in respect of the earlier application. Failure to comply with these conditions within the prescribed period cannot be rectified under s.117 (Klein Schanzlin & Becker AG's Application [1985] RPC 241, see 117.01).
r.8(3) 5.09 However, if an application specified in the declaration is an application for a patent under the Act, an international application for a patent which was filed at the Office, or any other application of which a copy has been filed pursuant to a declaration of priority in respect of another application under the Act, then, under r.112 any necessary certified copy will be prepared in the Office without the applicant having to request it or pay any associated fee. If the earlier application has been withdrawn or treated as withdrawn, documents may be transferred to serve as priority documents for the application in suit (see 15A.18). In all cases, the applicant should inform the Office of the number of the file on which the earlier application is to be found.
r.8(4) 5.10 Where the application in suit is an international application for a patent r.8(5) (UK), the requirements referred to in 5.07 and 5.08 are regarded as having been s.81(3)(c) complied with to the extent that the requirements of r.4.10(a) and (b), subject to rules
26bis.1 and 26bis.2(b), and of rule 17.1 of the PCT have been fulfilled. (A copy of the priority documents is supplied to the Office by the International Bureau). Likewise if the application is one converted from a European application under s.81, these conditions are treated as having been met to the extent that r.52 and 53 of the EPC have been complied with.
Translations
Applications filed on or after 1 January 2005:
r.9 5.11 Translations of foreign-language certified copies of priority applications (or declarations that the application in suit is a complete translation into English of the priority application) will only be required where the matters disclosed in the earlier application are relevant to the determination of whether or not an invention, to which the application in suit relates, is new or involves an inventive step. Where an examiner considers that a translation is necessary, a direction will be issued to the applicant and a period for complying with the direction will be specified. The period is extendable under s.117B and r.109. Failure to comply with a direction will result in the declaration made for
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the purposes of s.5(2) being disregarded.
r.115 5.12 There is no requirement for any translation filed in response to a direction of the comptroller under r.9(1) to be verified. Where there is a genuine doubt with respect to the accuracy of a translation the comptroller may notify the applicant of the reasons for his doubts and require evidence to establish the accuracy of the translation.
Applications filed before 1 January 2005:
PR 1995 5.13 [deleted] r.6(6) (pre- RRO)
5.13.1 [deleted]
5.13.2 [deleted]
Loss of priority
5.14 If any of the requirements of rr.6-9 are not met in respect of an application declared for priority purposes, then the declaration is invalid in respect of that application and any rights which would have derived from it are lost. If (but only if) preparations for publication have not yet been completed, the declared priority date may be affected (see 5.16).
DECLARED PRIORITY DATE
s.130(1) 5.15 "Priority date", as used in the Act, is defined in s.130(1) as "the date determined as such under section 5", and is a property ascribed to the invention(s) and other matter contained in an application but not to the application itself. Instead the term "declared priority date" of an application is defined (in r.3); this date confers no rights, but serves only as a "marker" from which various time limits are measured. It may be noted that while the contents of an application may have several priority dates (one of which may be the filing date), an application can only have one declared priority date, and may have none (in which case prescribed periods are measured from the filing date).
r.3 5.16 In the case of an application made under the Act, "declared priority date" means the date of filing of the earliest relevant application specified in a declaration made for the purposes of s.5 where the date has not been lost or abandoned, or the declaration withdrawn, before the completion of preparations for publication. Thus for example if a certified copy of the (or the earliest) declared application is not supplied within the prescribed period (see 5.08), then not only is the priority date claimed from that application lost, but also, since the application in suit will necessarily not yet have been sent for publication, that date will cease to be the declared priority date; its place is taken by the next earliest declared application or, where there is none, the filing date, and time limits and dates, including the date when publication is due, are reckoned from this new date. On the other hand, where a translation is required and it (or a declaration that the application in suit is a complete translation into English of the priority application) is not filed within the specified period (see 5.11-5.13.1), then although this will result in the priority claim being disregarded, if (as will generally be the case) this takes place after completion of preparations for publication, the declared priority date will remain unchanged.
5.17 Similarly, the declared priority date of an international application is the earliest priority date which has not been lost or abandoned under the provisions of the PCT, i.e. before entering the national phase (see 89A.04). And in the case of a converted European application it is the earliest priority date still extant when the comptroller directs under s.81 that it be treated as an application under the Act.
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PERIOD FOR CLAIMING PRIORITY
5.18 In accordance with Article 4C of the Paris Convention, priority may be claimed from an earlier application if the application in suit has a date of filing not more than twelve months later than that of the earlier application, and this is reflected, via s.5(2), in s.5(2A)(a). However if this period expires on an excluded day or on a day which is certified as one on which there was an interruption under r.110(1) (see 123.43) then the period is extended to include the first following day which is not excluded or certified. The period may also be extended under r.111 in particular cases affected by a failure or undue delay in a communication service (see 123.46-47). The period may also be extended under r.107 in particular cases where the circumstances of r.107(3) exist (see 123.06-10). In no other circumstances may the twelve months period be extended – although in limited circumstances it is possible for the date of filing of the application in suit to be outside the twelve months period; see 5.07.2 to 5.07.3, and 5.26.2 to 5.26.4.
THE APPLICANT
5.19 For priority to be claimed, the person making the application in suit must either be the same person who made the earlier application or must be his successor in title. Furthermore, for priority to be claimed in the circumstances where the earlier application has more than one applicant, the application in suit must be made by all of the same applicants, or their successor(s) in title. It is not sufficient if the application in suit is made by only one or some of the earlier applicants, as confirmed by the Patents Court in Edwards Lifesciences AG v Cook Biotech Inc [2009] EWHC 1304 (Pat); [2009] FSR 27.
5.19.1 Where the applicant of the application in suit is not the applicant of the earlier application, the applicant for the application in suit must have acquired from the earlier applicant (or applicants) the right to be granted a patent, for example by virtue of employment or by assignment. It does not matter if the original applicant retains some rights in the earlier application – he may for instance have assigned the rights to some only of the matter contained in that application, or have assigned only the right to apply in certain countries – so long as he has transferred to the present applicant the right to be granted a patent on the application in suit. In order for the declaration of priority to be valid at the time it is made, i.e. at the time of filing the application in suit, the transfer must already have taken place. This was also confirmed in Edwards Lifesciences v Cook Biotech.
5.19.2 In KCI Licensing Inc & Ors v Smith & Nephew Plc & Ors [2010] EWHC 1487 (Pat); Arnold J considered whether an application having two applicants could validly claim priority from an earlier application made by only one of those applicants, where no formal assignment of priority rights had been made. He concluded that the circumstances surrounding the filing of the later application inferred that the earlier applicant had agreed by conduct to transfer part of their interest in the invention to the second applicant, and that was sufficient to make the second applicant a successor in title for the purposes of claiming priority. It follows that, where an application names a further applicant (or applicants) in addition to the applicant(s) named on a priority application, a formal assignment may not necessarily be required for the priority claim to be valid.
PRIORITY DATE OF INVENTION OR OTHER MATTER
5.20 The test for deciding whether an invention is supported and sufficiently described by matter disclosed in an earlier application is basically the same as that for deciding whether a claim of a specification is supported and sufficiently described by the description (see 14.60-14.104 and 14.142-14.156).
s.130(3) 5.21 As Article 4H of the Paris Convention makes clear, it is not necessary
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s.125(2) that the invention be found in the claims of the earlier application. In order to determine whether there is support for an invention or other matter in the earlier application, everything claimed or disclosed (other than by way of disclaimer or acknowledgement of prior art) in the earlier application may be taken into account (see 14.171.1 for practice relating to what is included in an abstract). Support may not however be derived by combining the teaching of separate applications unless one of them contains directions to do so.
5.22 The priority date of a feature or combination of features is the date of the earliest application whose disclosure supports that feature or combination and if different ways of putting an invention into practice were disclosed at different dates, they will have different priority dates, even if they are covered by a single claim.
5.23 The earlier application must disclose the particular combination of features which make up the invention and also provide an enabling disclosure of that invention (Asahi Kasei Kogyo KK [1991] RPC 485). Thus, in Biogen Inc v Medeva Plc [1997] RPC 1 it was confirmed that the same test for sufficiency of disclosure applies whether directed to an earlier application for determining whether a claim is entitled to a priority date or to the description of the application or patent in suit under sections 14(3) and 14(5)(c). The Court of Appeal adopted this approach in Pharmacia Corp. v Merck & Co. Inc. [2002] RPC 41, in which it was held that the technical contribution to the art contained in the earlier application must justify the claimed monopoly in the application in suit, with the result that the earlier application contains sufficient disclosure to constitute an enabling disclosure across the entire width of the claim. In the case in question, the application in suit claimed a narrower range of compounds than that disclosed in the earlier application. The court held that the priority claim was not supported, since the earlier application did not provide an enabling disclosure concerning the technical contribution to the art made by selecting the subclass of compounds claimed in the application in suit.
5.23.1 In Hospira UK Generics (UK) Ltd (t/a Mylan) v Novartis AG [2013] EWCA Civ 1663 the Court of Appeal held that claim 7 of the Novartis patent was not entitled to priority because the disclosure of the priority document was either too broad or too specific. Claim 7 contained features relating to a drug for the treatment of osteoporosis, an intravenous mode of administration, a dosage size of about 2-10 mg and a dosing interval of about once a year. Although the priority document contained a passage disclosing “2-10 mg once a year”, it did not tell the reader that this dosage range would be suitable no matter what condition was being treated or mode of administration was used. The passage instead suggested that, dependent on the method of administration and condition being treated, some doses within the given range may be suitable. The priority document also contained an example (example 5) specific to intravenous administration which showed that 4 mg, once a year was effective in treating post-menopausal osteoporosis. Example 5 did not however teach anything about other doses at that dosage interval and so the other doses claimed were not supported by the disclosure in this example.
5.23.2 In Evans Medical Ltd's Patent [1998] RPC 517, Laddie J held that what is important is what the document teaches, not how the contents got there, saying “if an inventor through clever foresight or lucky guess work describes something which works and how to do it, his disclosure is enabling”. Nevertheless, in a case relating to a second medical use invention, the Patent’s Court in Hospira UK Ltd v Genentech Inc [2014] EWHC 1094 held that the earlier application must show that the claimed therapeutic effect was plausible. If this was not the case, then the earlier disclosure could not be considered enabling (see 4A.29.1).
5.23.3 In Unilin Beheer BV v Berry Floor NV [2004] EWCA (Civ) 1021, Jacob LJ held that the approach to determining priority is not formulaic, it is a question about technical disclosure, explicit or implicit. The question is whether there is enough in the priority document to give the skilled person the same information as is in the subject of the claim and enables them to work the invention in accordance with that claim. He goes
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on to say that a priority document should contain the information that justifies the later claim irrespective of whether it is expressed in a claim, consistory clause, statement of invention, other text or drawing or in any combination of these. In this case it was submitted that the priority document disclosed three features, A+B+C, in combination. It was therefore argued that a claim to one of those features, without the other two, cannot have priority. However, the judge rejected this argument, noting “that when features A+B+C are disclosed, a lot must turn on what they actually are. Some inventions consist of a combination of features – the invention consists in the very idea of putting them together. In other cases that is simply not so – the features are independent one from the other. Whether, given a disclosure of A+B+C, there is also a disclosure of A or B or C independently depends on substance, not a formula. The ultimate question is simply whether the skilled man can derive the subject-matter of the claim from the priority document as a whole.”
5.24 The criteria to be applied can be said to be similar to those used to decide whether a claim is anticipated by the disclosure of an earlier document (see 2.03- 2.20). Thus if a priority document is silent about any essential element for which a patent is sought, the right to priority cannot generally be established. In particular, if a claim in a priority document is broad enough to cover a particular specific technical feature, it does not follow that it discloses that feature for the purpose of claiming priority. On the other hand, a feature which would necessarily be present when the teaching of the earlier application is put into practice may be treated as having been disclosed by implication (c.f. 2.07). In Letraset Ltd v Rexel Ltd [1974] RPC 175 at pages 195-7, a claim which included the feature that adhesion between indicia and a carrier sheet was breakable by local stretching of the sheet was held to be fairly based on a provisional specification which was silent on this feature, since it was in fact something which could be shown to happen when the material described in the provisional specification was made and used.
5.25 This approach is also consistent with the Opinion of the Enlarged Board of Appeal in Requirement for claiming priority of the “same invention” [2002] EPOR 17 (G 2/98), in which it was held that implicit disclosure in the earlier application may be taken into account, so that a priority claim is valid if the skilled person can derive the subject matter of the claim of the application in suit “directly and unambiguously, using common general knowledge, from the previous application as a whole”. This would appear to be consistent with the earlier decision in Biogen/Human beta-interferon [1999] EPOR 451 (T207/94), in which it was held that the disclosure of the earlier application was enabling in respect of the claims of the later application, despite the fact that the disclosure would have required a non-negligible amount of work on the part of the skilled person to achieve the invention as claimed in the later application. This was acceptable since the work required by the skilled person would have been quite feasible given the existing state of the art. Nevertheless, the criteria for assessing a valid priority claim are not identical to those used when considering anticipation. As the Enlarged Board concluded in G2/98, priority can only be validly claimed where the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. However it is also possible for a single claim to set out a number of alternative subject matters (an “OR”-claim) which may each be entitled to different priority dates – see below.
5.25.1 A claim in a patent application can have multiple priority dates, see 125.08. In Novartis AG v Johnson & Johnson [2009] EWHC (Pat) 1671, Kitchin J referred to G 2/98 and said that different priority dates can be assigned to different parts of a patent claim where those parts represent a limited number of clearly defined alternatives and those alternatives have been disclosed by different priority documents. This is known as partial priority.
5.25.2 In Nestec SA & Ors v Dualit Ltd & Ors [2013] EWHC 923 (Pat) the claims of a patent were held to lack novelty over the disclosure of the document from which it claimed priority. In this case the claims of the patent were found not to be entitled to the claimed priority date, as they covered a whole range of different arrangements (i.e. not a limited number of clearly defined alternatives) – some of which were not disclosed in the
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r.23 r.6(1) r.24(1) r.6(4) r.6(5)
priority document. The earlier document was published, thereby forming part of the state of the art under s. 2(3), and anticipated the claims of the patent (see 5.26, 15.22). This situation is sometimes referred to as ‘poisonous priority’. It is important to note that this situation can also arise when the state of the art is not the priority document itself but a published application sharing a priority claim, for example in a divisional application (see 15.22).
5.25.3 This issue of partial and poisonous priority was considered by the EPO Enlarged Board of Appeal in G 01/15. In its decision, the EBA concluded that, where claims are generalised, they may be conceptually divided into two parts corresponding to that aspect which was disclosed in the priority application and is entitled to partial priority, and that aspect which was not disclosed and is not entitled to priority. Following this decision, the previous requirement (arising from G 02/98) that a claim must provide a “limited number of clearly defined alternative subject-matters” to be allowed partial priority, no longer applies at the EPO. Decisions of the Enlarged Board of Appeal are not binding on UK courts, although they are persuasive (see 0.09), so it remains to be seen whether the UK courts adopt this approach or continue with the approach set out in Nestec above. In the meantime, examiners remain bound by, and must therefore follow, the approach in Nestec above.
EXAMINATION OF CLAIM TO PRIORITY
Application filed within 12 months of earliest priority date claimed
Declaration made at the time of filing
5.26 Where the declaration of priority is made at the time of filing of the application in suit, the formalities examiner must determine during the preliminary examination whether the requirements of r.6 to 9 have been met and whether any priority date claimed is more than twelve months before the filing date of the application in suit; any other discrepancies noticed in the declaration or the priority documents should be reported at this stage (see 15A.13-15A.17). In general no comment should be made on the content of the earlier application, except that the applicant should be informed if it is so different from the application in suit that it appears likely that he has declared and/or filed the wrong earlier application. The question of whether the invention is supported by matter disclosed in the earlier application should be considered only when this is necessary in order to determine whether or not a given document forms part of the state of the art (see 18.15-18.17). Examiners should be aware that if the declaration of priority is found invalid the priority document itself, if published, may form part of the state of the art (see 5.25.2). Even if it is found that an invention is not supported by an earlier application, the “declared priority date” should remain unchanged (see 5.15).
Declaration made after time of filing
5.26.1 Where a declaration is made or added after the date of filing of the application in suit, the formalities examiner must ensure the Form 3 was filed within the sixteen month period prescribed in r.6(2)(b), that option (ii) on part 4 of the Form has been correctly indicated, and that the application has not already been published. If the applicant requested accelerated publication but the preparations for publication have not yet been completed, the publication cycle should be suspended and the applicant given the opportunity to withdraw the request to enable the priority declaration to be accepted. The criteria are otherwise as given in 5.20-25 above, and, if the declaration is validly made, the priority date must be recorded and other dates recalculated as necessary.
Application filed more than 12 months after earliest priority date claimed
r.7 5.26.2 Whenever permission to make a late declaration of priority is made on a Form 3, the formalities examiner must check:-
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(a) that option (i) is correctly indicated on part 4 of the Form;
(b)(i) that for domestic applications both the request and the application in suit were filed before expiry of the two-month period prescribed in r.7(1) (unless the application in suit is a new application filed under section 8(3), 12(6) or 37(4) or as mentioned in section 15(9), in which case see 5.07.4;
(b)(ii) that for PCT applications, the application in suit was filed before expiry of the two-month period prescribed in r.7(1) and the request was filed within one month of entry into the national phase;
(c) that the reason for failing to file the application within the period specified in s.5(2A)(a) is entered into part 5 of the Form and is supported by evidence;
(d) that the declaration has been correctly made in part 6 of the Form.
5.26.3 Where a request is correctly made in compliance with rules and the comptroller is satisfied that the failure to file the application in suit within the period allowed by s.5(2A)(a) was unintentional, he shall grant the permission and treat the declaration as valid. The priority date should be recorded and other dates recalculated as necessary, but the date of filing of the application in suit will remain the date on which it was actually filed.
5.26.4 There is no definition in the Act or rules as to what is meant by “unintentional” as stated in section 5(2C)(b) in determining whether to allow a request for permission to make a late declaration of priority under section 5(2B). In Abaco Machines (Australasia) Pty Ltd’s Application [2007] (CH/2006/APP/0827) Lewison J held that an intention to file a PCT application was not an intention to file the “application in suit”, which the judge expanded by way of the meaning given to “application in suit” in section 5(2) of the Act and the definition of “application” provided by section 130(1) of the Act to read “an application for a patent under this Act”. In the similar case of Sirna Therapeutics Inc’s Application [2006] RPC 12, the hearing officer held that the unintentional failure by the applicant to file the application within twelve months of the earliest priority date must however relate to the application in suit in its entirety and not merely a failure to file the subject matter of the application. As in the case of Abaco this case involved a request for late declaration of priority which was refused as the application that was unintentionally not filed was a PCT application and there was no intention to file the application in suit within the twelve-month priority period. The hearing officer observed that the requirement to show an intention to file an application in time differed from the test of “continual underlying intention to proceed” as held in Heatex Group Ltd’s Application [1995] RPC 546 when exercising discretion under rule 110(4) of the Patents Rules 1995, which is equivalent to rule 108(3) under the Patents Rules 2007 (see 123.37), but case law under this rule may be of relevance in analysing the evidence to establish the applicant’s intentions.
5.26.5 Sirna Therapeutics Inc’s Application [2006] RPC 12 and Anning’s Application (BL O/374/06) established that the "continual underlying intention” test in Heatex is not applicable in determining the meaning of the word “unintentional” (in section 5(2B) or section 20A).
5.26.6 In Matsushita Electric Industrial Co. v Comptroller General of Patents [2008] EWHC 2071 (Pat), which concerned a request for restoration under s.28, Mann J gave some guidance on the level of evidential burden required to “satisfy” the Comptroller that the failure in section 28(3) was “unintentional”. The applicant in that case chose not to file any evidence beyond a bald assertion of the statutory test that the failure to pay the renewal fee on time was unintentional. It argued that that was all the statute required to satisfy the comptroller. It was held by the Judge that a mere assertion that the failure to pay the renewal fee was unintentional is not sufficient to enable the Comptroller to determine that the requirements of s.28(3) are fulfilled. He said:
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“…the Act requires a judgment to be formed by the Comptroller so that he can be satisfied of the relevant matters. A judgment usually has to be made on the basis of evidence… The evidence required in any particular case where satisfaction is required depends on the nature of the enquiry and the nature and purpose of the decision to be made… A significant matter requires significant proof. I repeat, the Act does not require a statement that the failure to pay fees was unintentional. It requires the Comptroller to be satisfied of that fact.”
5.26.7 It is clear from this judgment that while there is no universal rule as to what level of evidence has to be provided to satisfy the comptroller of the unintentional lapse in section 28(3), and by implication in sections 5(2B) and 20A, some evidence is required above and beyond a bald assertion that the statutory test has been met.
Section 5(3)
Where an invention or other matter contained in the application in suit was also disclosed in two earlier relevant applications filed by the same applicant as in the case of the application in suit or a predecessor in title of his and the second of those relevant applications was specified in or in connection with the application in suit, the second of those relevant applications shall, so far as concerns that invention or matter, be disregarded unless -
(a) it was filed in or in respect of the same country as the first; and
(b) not later than the date of filing the second, the first (whether or not so specified) was unconditionally withdrawn, or was abandoned or refused, without -
(i) having been made available to the public (whether in the United Kingdom or elsewhere);
(ii) leaving any rights outstanding; and
(iii) having served to establish a priority date in relation to another application, wherever made.
5.27 Subsection (3) derives from Article 4C(4) of the Paris Convention and deals with the situation where two (or more) earlier applications both contain the subject matter of the application in suit. The effect of the subsection is that, in most circumstances, the priority date of the subject matter in question is established by the earliest previous application containing that matter. However, the subsection goes on to provide an exception to that position, by which a second (or subsequent) earlier application can be used to establish the priority date of that matter. This exception only applies when certain specific conditions have been met regarding the earlier applications.
5.28 The specific conditions which must be met in order for the application in suit to use the second (or subsequent) earlier application as the basis for a priority claim are derived directly from Article 4C(4) Paris Convention, and are as follows:
(a) the second application was filed in or for the same country as the first application, and
(b) at the date of filing of the second application, the first application had been unconditionally withdrawn, or abandoned or refused, had not been published, and did not leave “any rights outstanding”, and
(c) at the date of filing of the second application, the first application had not been used for priority purposes for any other application.
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5.28.1 Article 4C(4) goes on to make clear that, once these conditions have been met, the first application cannot be used subsequently as a basis for claiming priority. The effect of meeting these conditions is therefore that the first application is entirely disregarded, and the second application can legitimately be used as a basis for claiming priority and as the starting point of the 12 month priority period (see 5.18). Withdrawing the first application and filing a second application while meeting these conditions is often referred to as “regenerating the priority date”.
5.28.2 An applicant who files a second application and wants to use it for priority purposes must therefore ensure that the first application has not been published or used to form the basis of a priority claim. He must also ensure that, at the time of filing the second application, the first application has been withdrawn, abandoned or refused “without leaving any rights outstanding”. On an application that has been refused by a decision of the comptroller, an outstanding right may be the right to appeal that decision, or the right to request reinstatement of the application under section 20A (see 20A.02 to 20A.07). On an abandoned application (i.e. one that is treated as refused or withdrawn), the right to request reinstatement under section 20A may again be an outstanding right. On a withdrawn application, an outstanding right may be the right to request correction of an erroneous withdrawal under section 14(10) and section 117 (see 14.209 and 117.22.1).
5.28.3 In order to regenerate the priority date successfully, the applicant therefore needs to ensure that any such outstanding rights on the first application have explicitly been given up at or before the date of filing of the second application. For example, the applicant may make an explicit statement, on withdrawing the first application, that the withdrawal is done “without leaving any rights outstanding”. Making such a statement leaves open the possibility of filing a second application later and using it as the priority application. However, the statement would also seem to rule out the possibility of later making a request to correct the withdrawal of the first application. Another example may be where the first application has been treated as withdrawn. If the applicant wishes to regenerate the priority date, he will need to make clear (at or before filing the second application) that no rights are being left outstanding on the first application. Again, such a statement would seem to rule out the possibility of later making a request to reinstate the first application.
5.28.4 If the conditions for regenerating the priority date have not been met, and the application in suit is filed too late to use the first application as a basis for claiming priority (see 5.18), then the application in suit will not be able to use either the first or the second application as a basis for claiming priority of the subject matter in question. The effect is that the priority date of that subject matter, contained in both the earlier applications, is the filing date of the application in suit. If either of the earlier applications has been published then that matter will also form part of the state of the art with respect to the application in suit.
5.28.5 Section 5(3) is only concerned with subject matter which appears in both the first and second earlier applications. Therefore, it does not rule out the possibility that the application in suit may legitimately claim priority from both the earlier applications. For example, the two earlier applications may contain different subject matter, all of which is relevant to the application in suit. Alternatively, the two earlier applications may share matter, but the second earlier application may contain further matter relevant to the application in suit, which is not present in the first application. The fact that the second application contains matter which is also present in the first application does not affect the legitimate use of the first application to establish the priority date for this matter.
Section 5(4)
The foregoing provisions of this section shall apply for determining the priority date of an
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invention for which a patent has been granted as they apply for determining the priority date of an invention to which an application for that patent relates.
5.29 The priority date of an invention in a specification is therefore determined in the same way regardless of whether the specification forms part of an application or of a granted patent.
Section 5(5)
In this section "relevant application" means any of the following applications which has a date of filing, namely -
(a) an application for a patent under this Act;
(aa) an application in or for a country (other than the United Kingdom) which is a member of the World Trade Organisation for protection in respect of an invention which, in accordance with the law of that country or a treaty or international obligation to which it is a party, is equivalent to an application for a patent under this Act;
(b) an application in or for a convention country (specified under section 90 below) for protection in respect of an invention or an application which, in accordance with the law of a convention country or a treaty or international convention to which a convention country is a party, is equivalent to an application for a patent under this Act.
5.30 Priority may be claimed only from a "relevant application", which must be:
ss.78,89 (a) an application for a patent under the Act, including a European or International application designating the UK,
(aa) an application for protection for an invention filed in a country which is a member of the World Trade Organisation (WTO), or
(b) an application for protection for an invention which was filed either under the laws of a convention country (see 90.02-90.03) or under the PCT or EPC (designating a country other than the UK) or some other international agreement to which a convention country is a party.
s.130(7) What constitutes "protection for an invention" is not specified in the Act; however s.5 is intended to have the same effect as the corresponding provisions of the EPC, and it appears likely that the term is restricted to the kinds of application referred to in Art.87(1) EPC, which allows priority to be claimed only from an application for a patent, for the registration of a utility model (e.g. German Gebrauchsmuster), for a utility certificate or for an inventor's certificate. During pre-grant proceedings in the Office no objection should be raised to a claim to priority based on a US provisional patent application (notice in Official Journal (Patents), 31 January 1996). Such a provisional application is valid in the USA as a priority document for a subsequent patent application and expires after one year. Following a change in US law in 1999, a provisional application can be converted into a full US patent application within one year of filing. UK practice as it relates to US provisional applications would have to be reviewed if doubt were to be cast upon it in any proceedings before the courts or the comptroller. An application for a registered design is not a relevant application (Agfa-Gevaert AG's Application, [1982] RPC 441).
Section 5(6) [Repealed]
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5.31 Section 5(6) was added by the Patents and Trade Marks (World Trade Organisation) Regulations 1999 with effect from 29 July 1999, with the aim of enabling WTO member countries to be automatically treated as convention countries. However, an Order in Council was still needed to declare such WTO member countries as convention countries.
5.32 Section 5(5)(aa) was inserted and section 5(6) was repealed on 1 October 2014 by the Intellectual Property Act 2014, with the effect that from 1 October 2014 an application filed in or for a country which is a member of the WTO is automatically treated as a "relevant application".
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Section 6: Disclosure of matter, etc, between earlier and later applications
Section 6(1)
It is hereby declared for the avoidance of doubt that where an application (the application in suit) is made for a patent and a declaration is made in accordance with section 5(2) above in or in connection with that application specifying an earlier relevant application, the application in suit and any patent granted in pursuance of it shall not be invalidated by reason only of relevant intervening acts.
Section 6(2)
In this section -
"relevant application" has the same meaning as in section 5 above; and
"relevant intervening acts" means acts done in relation to matter disclosed in an earlier relevant application between the dates of the earlier relevant application and the application in suit, as for example, filing another application for the invention for which the earlier relevant application was made, making information available to the public about that invention or that matter or working that invention, but disregarding any application, or the disclosure to the public of matter contained in any application, which is itself to be disregarded for the purposes of section 5(3) above.
6.01 This is an avoidance of doubt section and is based on the wording of Arts. 4A and 4B of the Paris Convention. The section confirms the provisions of ss.2, 3 and 5 that if an invention in an application in suit is entitled for priority to the filing date of an earlier application specified in a declaration of priority under s.5(2) then any disclosure or use of matter contained in that earlier application on or after the filing date of the earlier application cannot invalidate a claim to that invention.
6.02 In Beloit Technologies Inc v Valmet Paper Machinery Inc [1995] RPC 705 Jacob J held that s.6(1) does not carve out from the state of the art matter made available to the public in the priority interval just because that matter is in the priority document. Thus, an invention which is not entitled to the priority date of an earlier application can be invalidated by the disclosure or use, between the filing dates of the earlier application and the application in suit, of matter contained in the earlier application.
6.03 In his judgment in Beloit Technologies Jacob J reached the same general conclusions as the Enlarged Board of Appeal (G3/93 OJEPO 1-2/1995) which considered the implications of a document published during the priority period, the technical content of which corresponds to that of the priority document, and concluded that the published document constitutes prior art citable against the application claiming priority from the priority document to the extent that such priority is not validly claimed. This also applies if a claim to priority is invalid due to the fact that the priority document and the subsequent application do not concern the same invention because the application claims subject matter not disclosed in the priority document.
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RIGHT TO APPLY FOR AND OBTAIN A PATENT AND BE MENTIONED AS INVENTOR
Section 7: Right to apply for and obtain a patent
Section 7(1)
Any person may make an application for a patent either alone or jointly with another.
7.01 The status of a properly-launched application (see 15.02-15.06) is not impugned if it subsequently transpires that the applicant has no right to the grant of a patent or that he only acquired the right after making the application.
7.02 The term "person" includes one or more individuals or a corporate body but not a firm, partnership or body which is unincorporate, although in such cases application may be made by individual partners jointly. In the case of a limited partnership, the application may be in the names of all personally responsible partners (see also 7.05).
7.03 The following are regarded as corporate bodies:-
British companies limited by guarantee;
Cooperative Societies (Home and Foreign);
Euratom and similar international organisations;
Foreign States;
Limited liability partnerships (LLP) in the UK;
Ministers and other Heads of Government Departments (Home and Foreign);
Trade Associations (on evidence of incorporation);
Universities.
See 32.06 with regard to the effect of re-registration as a p.l.c and conversion to LLP.
7.04 The following are examples of foreign companies regarded as corporate bodies by whom applications may be made:-
Akciova spolecnost
Aktiebolag, Aktiebolaget
Aktiengesellschaft (A.G.)
Aktieselskab, Aktieselskabet, Aktieselskapet
Arbeitsgemeinschaft
Besloten Vennootschap met beperkte aansprakelijkheid (B.V)
Eingetragene Genossenschaft
Eingetragenen Verein
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Gesellschaft mit beschrankter Haftung (G.m.b.H)
Gewerkschaft
Handelsbolag
Handelsvenootschap
Kabushika Kaisha
Kollektivgesellschaft
Kommanditbolag
Kommanditgesellschaft auf Aktien
Naamlooze Vennootschap (N.V.)
Reszveny-tarsasag
Sociedad anonima
Sociedad Limitada
Societa Anonima
Societa per Azioni (S.p.A.)
Societe Anonyme
Societe a responsibilite limitee
Societe en commandite par actions
Societe en commandite simple
Societe en nom collectif
Versicherungsverein auf Gegenseitigkeit.
7.05 An application by a German or Austrian "Kommanditgesellschaft", "offene Handelsgesellschaft" or a Swiss "Societe Commandite", may be made in the names of the responsible partners. Following a decision by the Patents Appeal Tribunal (Schwarzkopf's Application, [1965] RPC 387) an application made in the names of one of these bodies is also allowed to proceed, but such a course is at the risk of the applicants should their representations thereafter be found to be false. Consideration will be given to other foreign firms if it is affirmed by the applicant or agent, that under the laws of the foreign state in question, such firms can acquire title to land and property in their own name, such title being wholly unaffected by changes in the personnel of the members. A Scottish partnership firm may apply in its own name, the partners' names being given. Applications may also proceed in the name of a limited partnership organised under the laws of the American state of Arkansas, California, Connecticut, Delaware, Illinois, Louisiana, Michigan, Minnesota, Missouri, New York, Ohio, Pennsylvania , Tennessee, Texas or Wyoming. In Canada, limited partnerships may be incorporated either federally or provincially. In the latter case, the name of the province (e.g. Quebec, Ontario) should be given as the state or incorporation.
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Section 7(2)
A patent for an invention may be granted -
(a) primarily to the inventor or joint inventors;
(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;
(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned; and to no other person.
7.06 The right to grant of a patent belongs primarily to the inventor, but this may be overridden by any rule of law or any legally enforceable agreement existing at the time the invention was made. The commonest way in which this proviso would cause the rights to pass from the inventor is when the invention was made in the course of employment (see s.39). The right to the patent will also pass to another person if for example the inventor or a person who has acquired the right by operation of law assigns those rights, or dies or becomes bankrupt.
s.13(2) 7.07 Any applicant who is not an inventor must file Form 7 identifying the inventor and indicating his own right to be granted a patent - see 13.08-13.16. If the period allowed for doing this has expired at the time the rights are assigned, the procedure described in 32.08-09 must be followed.
7.08 If an applicant dies the application may proceed in the name of his personal representative. Likewise if an inventor dies before an application is made the personal representative may act on his behalf. If the Office becomes aware of the death of an applicant before a patent is granted but the application has not been assigned to another party by the time it is in order for grant then, if a personal representative has been appointed, the patent should be granted in the name of the personal representative. If, however, a personal representative has not been appointed by the time the application is in order for grant, the patent should be granted in the name of the deceased applicant.
7.09 The term "personal representative" is interpreted in its ordinary meaning as "executor or administrator", and is restricted to a representative appointed in the UK. Probate or Letters of Administration must be produced to confirm the standing of the personal representative. A person is not regarded as a personal representative merely by being an assignee or by holding a power of attorney, nor is an Official Receiver or trustee in bankruptcy. The personal representative may be a corporate body.
7.10 Where an applicant is less than eighteen years of age the application may proceed in his name. Alternatively, the application may be made by his parent or guardian.
7.11 Where an applicant is of unsound mind the application should nonetheless proceed in his name. Where there is no patent agent acting the application should be signed (see 14.04.20) by the person duly appointed to administer the applicants' property.
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Section 7(3)
In this Act "inventor" in relation to an invention means the actual deviser of the invention and "joint inventor" shall be construed accordingly.
s.130(1) 7.12 This definition of “inventor” applies to all references in the 1977 Act. In Henry Brothers (Magherafelt) Ltd v The Ministry of Defence and the Northern Ireland Office [1999] RPC 442 the Court of Appeal emphasised that a two-step approach was necessary to determine inventorship. One must first identify the inventive concept and then determine who devised that concept.
Identifying the inventive concept
7.12.1 The need to keep in mind the inventive concept was also highlighted in Stanelco Fibre Optics Ltd’s Applications [2005] RPC 15, where Christopher Floyd QC, sitting as a Deputy Judge in the Patents Court, commented “It is clear that a mechanistic, element by element approach to inventorship will not produce a fair result. If A discloses a new idea to B whose only suggestion is to paint it pink, B should not be a joint inventor of a patent for A’s product painted pink. That is because the additional feature does not really create a new inventive concept at all. The feature is merely a claim limitation, adequate to overcome a bare novelty objection, but having no substantial bearing on the inventive concept. Patent agents will frequently suggest claim limitations, but doing so does not make them joint inventors. Some stripping of a claim of its verbiage, may be necessary to determine the inventive concept, and consequently the inventor.” This statement was approved by the Court of Appeal in Markem Corp v Zipher Ltd [2005] RPC 31. In the case of joint inventorship, the question is therefore whether all parties are jointly responsible for devising the inventive concept.
7.12.2 The inventive concept may reside in more than an idea and may encompass the means of realisation of that idea (Minnesota Mining & Manufacturing Company v Birtles, Lovatt and Evode Ltd (BL O/237/00)). Where the invention consists of a combination of individually known elements, the inventor is the person who in substance made the combination rather than one who merely contributed to it (Henry Brothers (Magherafelt) Ltd v The Ministry of Defence and the Northern Ireland Office [1997] RPC 693; whilst the Court of Appeal disagreed with Jacob J on the facts of this case, it did not disagree with the principle). In Statoil ASA v University of Southampton (BL O/204/05), the hearing officer held that if the thrust of the disclosure is that the invention covers a broad area, it would be wrong to determine inventorship and entitlement solely by considering only a narrow subset of that area.
Determining who devised the inventive concept
7.12.3 A person is not the inventor merely because he contributed to a claim - his contribution has to be the formulation of the inventive concept (University of Southampton’s Applications [2005] RPC 11). In this case, Laddie J also held that devising an invention and providing an enabling disclosure were two quite different things, and pointed out that it is possible to make a good invention but to lose one’s patent for failure to make an enabling disclosure. The requirement to include an enabling disclosure is concerned with teaching the public how the invention works, not with devising the invention in the first place. On the facts of this case, the Court of Appeal ([2006] RPC 21) concluded that all that was needed to get a patent was disclosure of the idea for the invention (substituting electrostatic particles for magnetic particles in an insect trap); from this idea the skilled person could readily practice the invention without disclosure of a means of enablement. However, Jacob LJ held obiter dictum that: “In the context of entitlement to a patent a mere, non-enabling idea, is probably not enough to give the patent for it to solely the deviser. Those who contribute enough information by way of necessary enablement to make the idea patentable would count as ‘actual devisers’, having turned what was ‘airy-
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fairy’ into that which is practical ... On the other hand those who contribute no more than essentially unnecessary detail cannot on any view count as ‘actual devisers’ as Laddie J rightly said, see his para. [45].”
7.12.4 Stanelco Fibre Optics Ltd’s Applications [2005] RPC 15 demonstrated that more than a theoretical proposal is required to be an “actual deviser”. An antecedent worker responsible for an initial prompt without which the invention might never have been made but with no idea as to whether it could actually be done or how it might be done could never be an inventor. Christopher Floyd QC (sitting as Deputy Judge) continued in this case: “But where the antecedent worker comes up with and communicates an idea consisting of all of the elements in the claim, even though it is just an idea at that stage, it seems to me that he or she will normally, at the very least, be an inventor of the claim. What US patent law calls ‘reduction to practice’ is not, it seems to me, a necessary component of a valid claim to any entitlement.”
7.12.5 In Statoil ASA v University of Southampton (BL O/204/05), the hearing officer held that contributing information that cannot really be said to have an owner - and that might include the knowledge of an expert - may not be sufficient to justify a claim to entitlement.
Section 7(4)
Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.
s.72(2) 7.13 Thus an applicant who has stated that he is the inventor or that he s.37(4) derives a right from the inventor (see 13.08-13.10) is presumed prima facie to be entitled to
be granted a patent. The Office makes no attempt to question these assertions. If any person wishes to dispute them and to claim that the patent should be granted to them, either instead of or as well as, the present applicant they must take action under s.8 or 37 as appropriate. In University of Southampton’s Applications [2005] RPC 11, the Patents Court held that in order to succeed in being added to an application the claimants had to prove on the balance of probabilities that they had made a relevant contribution to the inventive concept. But the requirement to remove the defendants as inventors was greater, as the claimants also had to overcome the presumption in s.7(4) and prove not only that they devised the inventive concept or concepts but that the named inventors contributed nothing of substance to any of them.
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Section 8: Determination before grant of questions about entitlement to patents etc
8.01 Questions about entitlement to patents may be referred to the comptroller under s.8 (patents under the 1977 Act which have not yet been granted), s.12 (patents under foreign or international law which have not yet been granted) or s.37 (granted patents under the 1977 Act). Such entitlement is a matter of property in a patent or application and is distinct from the right under s.13 to be mentioned as an "inventor" as defined in s.7(3). The comptroller is the primary jurisdiction for entitlement disputes.
8.02 A granted European patent (UK) is treated for the purposes of these sections as if it were a patent under the 1977 Act resulting from an application made under the 1977 Act, so that questions relating thereto may be referred under s.37. Questions arising before the grant of a European patent are however dealt with in accordance with s.82, by virtue of which s.12 is to some extent applicable.
s.9 8.03 The procedure for a reference under s.8 is prescribed by Part 7 of the Patents Rules 2007 (see 123.05 – 123.05.13). Certain effects of orders or directions given under s. 8 are laid down by s.11. Where an order is made under s.8 (or s.12) that a patent application should proceed in name(s) none of whom was an original applicant, or that a new application for a patent may be made, the Office notifies all original applicants and their licensees of whom it is aware of the making of the order.
s.25(1) 8.03.1 If a question referred to the comptroller under s.8 has not been determined by the time the patent in question is granted, the question shall, in accordance with s.9, then be treated as having been referred under s.37. For the purpose of section 8 (as with all of sections 1-24), the date of grant is the date on which the grant letter is issued informing the applicant under s.18(4) that the application complies with the requirements of the Act and Rules and that the patent is therefore granted. However, for the purpose of s.37, the effective date of grant is the date on which the notice of grant appears in the Journal and the patent is published, and so further action under s.37 on an existing reference cannot take place until after this date. If a question relating to entitlement is referred to the comptroller between the date on which the grant letter is issued and the date on which the notice of grant appears in the Journal, then no immediate action can take place under either of sections 8 or 37. Instead, the question is treated as having been referred under s.37 on the date on which the notice of grant appears in the Journal.
8.04 Some guidance with regard to the determination of questions of entitlement is given by the judgments and decisions referred to below, some of which were under s.8, but others of which were under s.12 or s.37. The considerations applying to such questions under s.8, s.12 or s.37 are essentially the same, subject to the effects of the relevant foreign or international law in the case of a s.12 reference.
Section 8(1)
At any time before a patent has been granted for an invention (whether or not an application has been made for it) -
(a) any person may refer to the comptroller the question whether he is entitled to be granted (alone or with any other persons) a patent for that invention or has or would have any right in or under any patent so granted or any application for such a patent; or
(b) any of two or more co-proprietors of an application for a patent for that invention may so refer the question whether any right in or under the application should be transferred or granted to any other person;
and the comptroller shall determine the question and may make such order as he thinks fit to
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give effect to the determination.
s.8(7) 8.05 A question about entitlement may be referred to the comptroller under s.8 at any time before a patent has been granted for an invention, even before the making of an application. Such a reference may be made by any person claiming a right in any application or resultant patent for that invention, in accordance with subsection (1)(a), see 8.12 to 8.16, or by a co-owner of an application contending that a right therein should be transferred or granted to any other person, in accordance with subsection (1)(b), see 8.20. The comptroller normally in due course determines the question but he may instead decline to deal with it, see 8.28-8.30.
[ The action officer in Tribunal Section should check at each stage of the proceedings whether or not a patent has been granted on the application. If and when a patent is granted, action should be initiated under s.9 (see 9.04). ]
8.05.1 In line with the preliminary decision in Brooks and Cope's Application (BL O/71/93), in general the preliminary examination, search, publication under s.16 and substantive examination of a patent application should not be deferred pending the determination of a reference under s.8. Similarly, grant of the patent in general should not be deferred if the patent is in order for grant before the determination of a reference under s.8; the claimant is then treated as having made the reference under s.37 (see 9.03).
8.06 The law on entitlement was considered by the House of Lords in Yeda Research and Development Company Limited (Appellants) v. Rhone-Poulenc Rorer International Holdings Inc and others (Respondents) [2007] UKHL 43. Lord Hoffmann giving the leading judgement noted:
“Section 7(2), and the definition in section 7(3), are in my opinion an exhaustive code for determining who is entitled to the grant of a patent. That is made clear by the words "and to no other person." In saying that the patent may be granted "primarily" to the inventor, section 7(2) emphasises that a patent may be granted only to the inventor or someone claiming through him. The claim through an inventor may be made under one of the rules mentioned in paragraph (b), by which someone may be entitled to patent an invention which has been made by someone else (the right of an employer under section 39 is the most obvious example) or the claim may be made under paragraph (c) as successor in title to an inventor or to someone entitled under paragraph (b).
In my opinion, therefore, the first step in any dispute over entitlement must be to decide who was the inventor or inventors of the claimed invention. Only when that question has been decided can one consider whether someone else may be entitled under paragraphs (b) or (c).
The inventor is defined in section 7(3) as "the actual deviser of the invention". The word "actual" denotes a contrast with a deemed or pretended deviser of the invention; it means, as Laddie J said in University of Southampton's Applications [2005] RPC 11 (at page 234), the natural person who "came up with the inventive concept." It is not enough that someone contributed to the claims, because they may include non-patentable integers derived from prior art: see Henry Brothers (Magherafelt) Ltd v Ministry of Defence [1997] RPC 693 (at page 706); [1999] RPC 442. As Laddie J said in the University of Southampton case, the "contribution must be to the formulation of the inventive concept". Deciding upon inventorship will therefore involve assessing the evidence adduced by the parties as to the nature of the inventive concept and who contributed to it. In some cases this may be quite complex because the inventive concept is a relationship of discontinuity between the claimed invention and the prior art. Inventors themselves will often not know exactly where it lies.
The effect of section 7(4) is that a person who seeks to be added as a joint inventor bears the burden of proving that he contributed to the inventive concept underlying the claimed invention and a person who seeks to be substituted as sole inventor bears the additional burden of proving that the inventor named in the patent did not contribute to the inventive concept. But that, in my opinion, is all. The statute is the code for determining entitlement and there is nothing in the statute which says that entitlement depends upon anything other than being the inventor.”
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8.07 [deleted]
8.07.1 [deleted]
8.08 [deleted]
8.08.1 [deleted]
8.08.2 Where a dispute concerns a claim under section 7(2)(b) involving a contract, then the issues often centre on implied, rather than express, terms. For example, in Goddin and Rennie's Application [1996] RPC 141 the claimant had shown prototype fish tank covers to the defendant in confidence. The claimant subsequently entered into a contractual agreement with the defendant for him to make improved net covers for use with an arched frame devised by the claimant. On appeal to the Court of Session it was held that the claimant was entitled to the benefit of the improved net covers. It would not have made business sense if there were an implied term of the contractual relationship between the parties that any improved design which was worked out by the defendant was the property of the defendant rather than the claimant. On the other hand the Court held that the defendant was entitled to the benefit of claimed improvements suggested by him prior to and separately from the contractual arrangement. The Court therefore ordered that the patent should be granted in the name of the claimant alone subject to the condition that he granted to the defendant an irrevocable exclusive licence with power to sub-licence under the claims for the non-contracted improvements.
8.09 Although section 74 does not allow validity to be put in issue in inventorship or entitlement disputes, where an unanswerable case of validity was raised, the Court of Appeal in Markem Corp v Zipher Ltd [2005] RPC 31 held that the Comptroller can act upon it. Jacob LJ said: “If a patent or part of it is clearly and unarguably invalid, then we see no reason why as a matter of convenience, the Comptroller should not take it into account in exercising his wide discretion. The sooner an obviously invalid monopoly is removed, the better from the public point of view. But we emphasise that the attack on validity should be clear and unarguable. Only when there is self-evidently no bone should the dogs be prevented from fighting over it”. In this case, the claimants alleged that a claim was invalid, but that this should be considered irrelevant to their entitlement claim. The court disagreed, saying that there is simply no point in the Comptroller handing rights in an invalid monopoly from one side to another, and concluded that if an inherent part of a claim to entitlement is also an assertion of or acceptance of invalidity, the entitlement claim must fail. The hearing officer in Statoil ASA v University of Southampton (BL O/204/05) held that this principle should apply to both parties, so that a defendant should not be allowed to get away with pleading invalidity as an inherent part of his defence.
8.10-8.11 [moved to 8.21]
Procedure
PR part 7 8.12 A reference under s.8(1) (or s.12(1) or 37(1)) should be made on Patents Form 2 accompanied by a copy thereof and a statement of grounds in duplicate. This starts proceedings before the comptroller, the procedure for which is discussed at 123.05 – 123.05.13.
Reference by person other than co-owner (s.8(1)(a))
8.13 [deleted]
8.14 [deleted]
8.15 [deleted]
8.16 In proceedings under s.8(1)(a), the hearing officer may where appropriate
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grant any of the orders or reliefs set out in s.8(2) and (3), see 8.21 to 8.25.1. This is without prejudice to the general power to make orders under s.8(1), see 8.21.1.
Reference by co-owner (s.8(1)(b))
8.17 [deleted]
8.18 [deleted]
8.19 [deleted]
s.8(4) 8.20 In proceedings under s.8(1)(b), any order made by the hearing officer under s.8(1) may contain directions to any person for transferring or granting any right in or under the patent application in question (see also 8.26 where such directions are not complied with).
Section 8(2)
Where a person refers a question relating to an invention under subsection (1)(a) above to the comptroller after an application for a patent for the invention has been filed and before a patent is granted in pursuance of the application, then, unless the application is refused or withdrawn before the reference is disposed of by the comptroller, the comptroller may, without prejudice to the generality of subsection (1) above and subject to subsection (6) below -
(a) order that the application shall proceed in the name of that person, either solely or jointly with that of any other applicant, instead of in the name of the applicant or any specified applicant;
(b) where the reference was made by two or more persons, order that the application shall proceed in all their names jointly;
(c) refuse to grant a patent in pursuance of the application or order the application to be amended so as to exclude any of the matter in respect of which the question was referred;
(d) make an order transferring or granting any licence or other right in or under the application and give directions to any person for carrying out the provisions of any such order.
Specific remedies available
8.21 The remedies available under s.8(1)(a), provided that the patent application in question has not been granted, refused or withdrawn, thus include orders under subsections (2)(a), (b) or (d) with regard to the name(s) in which the application or any licence or other right therein should proceed or be vested. However, where there is alleged to be a transaction, instrument or event as set out in s.8(6), no such order is made unless notice of the s.8 reference has been given to the affected parties as required by subsection (6) (such notice normally having been given by the Office). See also 8.26 if directions for putting into effect an order under subsection (2)(d) are not complied with.
8.21.1 Section 8(1) provides that the comptroller may make such order as he thinks fit to give effect to his determination of an entitlement question. In Szucs' Application (BL O/4/86) where relief under s.8(2) or (3) was not available under s.8(1), the hearing officer held that the claimants were entitled to a declaration that certain matter (a beam of particular cross- sectional form) was their property.
8.21.2 In Georgia Pacific Corp's Application [1984] RPC 467, the applicants claimed that their
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r.20(1) r.20(3) r.20(4) r.108(1)
application should be deemed to have as its priority date one of the priority dates of an earlier application which they alleged was made in contravention of their rights. They also sought revocation of the patent resulting from the earlier application. The hearing officer held that there was no provision for an application to be accorded an earlier priority date unless it was claimed in a declaration of priority at the time of filing of the application; and that s.37 did not provide any facility whereby the application in suit could be deemed to have a more favourable priority date, whatever the outcome of the revocation action. (The same is apparently true of s.8).
8.22 Other remedies in s.8(1)(a) proceedings include refusal of the application or an order for amendment of the application to exclude any of the disputed matter, under subsection (2)(c).
Section 8(3)
Where a question is referred to the comptroller under subsection (1)(a) above and -
(a) the comptroller orders an application for a patent for the invention to which the question relates to be so amended;
(b) any such application is refused under subsection 2(c) above before the comptroller has disposed of the reference (whether the reference was made before or after the publication of the application); or
(c) any such application is refused under any other provision of this Act or is withdrawn before the comptroller has disposed of the reference, (whether the application is refused or withdrawn before or after its publication);
the comptroller may order that any person by whom the reference was made may within the prescribed period make a new application for a patent for the whole or part of any matter comprised in the earlier application or, as the case may be, for all or any of the matter excluded from the earlier application, subject in either case to section 76 below, and in either case that, if such a new application is made, it shall be treated as having been filed on the date of filing the earlier application.
Making of new application
8.23 Subsection (3) provides, at the discretion of the comptroller, for the making of a new application by the claimant under s.8(1)(a) when the original application is no longer proceeding or (as a result of amendment ordered under s.8(2)(c)) no longer contains the matter to which the claimant is held to be entitled, with the new application being treated as having been filed on the filing date of the original application. If no longer proceeding, the original application must have been refused under s.8(2)(c), refused under any other provision of the Act or withdrawn before the comptroller has disposed of the reference. In Stevens' Application (BL O/63/93) the hearing officer held that where a claimant was seeking an order under s.8(3)(c) allowing him to file a fresh application in respect of matter comprised in an earlier application, it was incumbent on him clearly to identify the subject matter of which he was claiming ownership. It was not sufficient for the claimant merely to state that there was subject matter somewhere in the specification to which he was entitled and which could form the basis for a fresh application. Amendment of the register as to ownership of a withdrawn application was allowed by the hearing officer in Shape and Potemkin's Applications (BL O/140/92) so that the claimant could claim priority in a new application made under s.8(3)(c).
8.24 The new application should be made within a period of three months calculated from the day on which the order was made under s.8(3) or, where an appeal is brought, from the day on which it is finally disposed of. This period may be extended or shortened at the discretion of the comptroller.
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8.25 The new application under s.8(3), 12 or 37(4) is treated as having been filed on the date of filing of the earlier application. If matter extending beyond that disclosed in the earlier application or patent is disclosed, s.76(1) requires that such an application shall not be allowed to proceed unless it is amended so as to exclude the additional matter, and the examiner should make an objection (much as in the case of an attempted application under s.15(9), see 15.35 and 15.45).
8.25.1 In the case of new applications filed under s.8(3), 12(6) or 37(4) as the result of entitlement proceedings, the compliance period for putting the application in order is prescribed by r.30(3).
Section 8(4)
Where a person refers a question under subsection (1)(b) above relating to an application, any order under subsection (1) above may contain directions to any person for transferring or granting any right in or under the application.
Section 8(5)
If any person to whom directions have been given under subsection (2)(d) or (4) above fails to do anything necessary for carrying out any such directions within 14 days after the date of the directions, the comptroller may, on application made to him by any person in whose favour or on whose reference the directions were given, authorise him to do that thing on behalf of the person to whom the directions were given.
Directions not complied with
8.26 An application under s.8(5) for authority to do anything on behalf of a person to whom directions have been given under s.8(2)(d) or (4) is not included in Schedule 3 to the Patents Rules 2007. Patents Form 2 need not therefore be filed in order to start an application under s.8(5); the application should however set out fully the facts upon which the applicant relies and the nature of the authorisation sought. Such an application may be made by any person in whose favour or on whose reference the directions were given.
8.27 The Office sends a copy of the application to the person alleged to have failed to comply with the directions. The comptroller may give such directions as he may think fit with regard to the subsequent procedure, and may grant authorisation if he thinks fit.
Section 8(6)
Where on a reference under this section it is alleged that, by virtue of any transaction, instrument or event relating to an invention or an application for a patent, any person other than the inventor or the applicant for the patent has become entitled to be granted (whether alone or with any other persons) a patent for the invention or has or would have any right in or under any patent so granted or any application for any such patent, an order shall not be made under subsection (2)(a), (b) or (d) above on the reference unless notice of the reference is given to the applicant and any such person, except any of them who is a party to the reference.
Section 8(7)
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If it appears to the comptroller on a reference of a question under this section that the question involves matters which would more properly be determined by the court, he may decline to deal with it and, without prejudice to the court's jurisdiction to determine any such question and make a declaration, or any declaratory jurisdiction of the court in Scotland, the court shall have jurisdiction to do so.
Comptroller declines to deal with question
CPR 8.28 The comptroller has discretion under s.8(7) (and similarly under s.12(2) 63.11 and s.37(8)) to decline to deal with a question if it appears to him that it involves matters which
"would more properly be determined by the court". In such a case any person entitled to do must, within 14 days of the comptroller's decision, issue a claim form to the court to determine the question.
8.29 There is no corresponding provision for the comptroller to transfer s.13 inventorship proceedings to the court. However, if the comptroller declines to deal with the entitlement reference, the comptroller can order a stay in the s.13 proceedings pending decision by the court, as occurred in BioProgress Technology Limited v Stanelco Fibre Optics Limited (BL O/351/03).
8.30 The questions to be considered by the comptroller in declining to deal with entitlement cases under sections 8 and 12 of the Patents Act 1977 were considered in Luxim Corp v Ceravision Ltd [2007] EWHC 1624 (Ch), [2007] RPC 33. Whereas previous practice had been to consider declining to deal only where one or both of the parties requested it, following Luxim, it is necessary for hearing officers to consider the matter in all cases. Furthermore in some cases where both parties request it, the hearing officer may decide that it is nevertheless proper for the matter to be determined by the comptroller. The most common reason for a request is that there are parallel High Court proceedings covering much the same issues, and it would be undesirable for the both the court and the comptroller to be deciding the same issues. However, other arguments may be advanced and the hearing officer will have to decide where the balance lies. If he does decline to deal then the court can exercise all the powers given to the comptroller by section 8, which it could not do if the parties had simply gone first to the court and launched proceedings for a declaration as to entitlement.
8.31 [deleted]
[Further guidance on declining to deal is given in chapter 2 of the Patents Hearings Manual.]
Section 8(8)
No directions shall be given under this section so as to affect the mutual rights or obligations of trustees or of the personal representatives of deceased persons, or their rights or obligations as such.
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Section 9: Determination after grant of questions referred before grant
9.01 This section deals with the situation where a reference to the comptroller made under s.8 has not been disposed of when the patent application in question is in order for grant. Section 8 provides for the determination of questions of entitlement to a patent for an invention prior to the grant thereof but is not applicable once grant has occurred, when s.37 instead applies to the determination of such questions.
9.02 [deleted]
Section 9
If a question with respect to a patent or application is referred by any person to the comptroller under section 8 above, whether before or after the making of an application for the patent, and is not determined before the time when the application is first in order for a grant of a patent in pursuance of the application, that fact shall not prevent the grant of a patent, but on its grant that person shall be treated as having referred to the comptroller under section 37 below any question mentioned in that section which the comptroller thinks appropriate.
9.03 When an application is in order for grant, it proceeds to grant in the normal way notwithstanding the existence of an unresolved entitlement question under s.8.
9.04 On the grant of the patent, the Office sends a letter informing the claimant that the reference is being treated as made under s.37, and that this may affect the relief available, but should not otherwise affect the course of the proceedings. A letter in identical terms is sent to the defendants. Unless the claimant and defendant respond, it is assumed that both parties agree that the question of relief should be deferred until the substantive hearing.
Page 1 of 1 April 2007
Section 10: Handling of application by joint applicants
10.01 Under this section, certain disputes between joint applicants for a patent may be resolved by the comptroller in response to a request in accordance with part 7 of the Patents Rules 2007 (see 123.05 – 123.05.13).
10.02 In addition, a joint applicant may under s.8(1)(b) refer to the comptroller the question whether any right in or under the application should be transferred or granted to any other person, see 8.05 to 8.12 and 8.20. The rights of and relating to joint applicants are laid down by s.36.
10.03 Section 10 is applicable in relation to European and foreign applications to the extent laid down by s.12(4), see 10.05.
Section 10
If any dispute arises between joint applicants for a patent whether or in what manner the application should be proceeded with, the comptroller may, on a request made by any of the parties, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it shall be proceeded with, or for both those purposes, according as the case may require.
10.04 The disputes to which s.10 relates are those between joint applicants whether or in what manner the application should be proceeded with. Any of the parties may make a request to the comptroller for directions under this section.
s.12(4) 10.05 In the case of an application under the Act, the comptroller may give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone and/or for regulating the manner in which it should be proceeded with. However, in the case of an application under foreign or international law (including the EPC) such directions enabling the comptroller to regulate the manner in which an application is to proceed cannot be given. In all other respects, s.10 applies to disputes between joint applicants under foreign or international law as it applies to joint applicants under the Act.
s.12(5) 10.06 Any directions given under s.10, including those given under s.10 by virtue of s.12(4), are subject to s.11. Section 11 concerns the effects of such directions in relation to any licences or other rights in or under the application.
10.07 In N J M Pelling and R J Campbell's Application (BL O/134/87), the first of the joint applicants had paid all the costs of making patent applications in the UK and elsewhere; the second applicant refused to contribute except from any proceeds of future exploitation of the invention. The hearing officer declined to make any direction under s.8 or s.12 but, under s.10, directed the second applicant to assign his interest in the UK patent application to the first, in return for a free non-assignable, non-revocable licence excluding any right to sub-licence. With regard to the object to be achieved in such proceedings, he observed: "the correct approach is for the comptroller to seek to implement the overall purpose of the Act in the most equitable manner that he can".
10.07.1 At a preliminary hearing the hearing officer in Brooks and Cope's Application (BL O/71/93) made a direction under s.10 that substantive examination of a UK application should proceed and that the report under s.18 should be sent to both parties.
Procedure
PR part 7 10.08 A request under s.10 (or s.12(4)) by a joint applicant should be made on Patents Form 2 accompanied by a copy thereof and a statement of grounds in duplicate. This starts proceedings before the comptroller, the procedure for which is discussed at
Page 1 of 2 April 2008
123.05 – 123.05.13.
10.09 [deleted]
10.10 [deleted]
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Section 11: Effect of transfer of application under s.8 or 10
11.01 Orders or directions regarding the name(s) in which a patent application should proceed may be given under s.8 (determination before grant of questions about entitlement to patents under the Act) or s.10 (disputes between joint applicants). The effects of such orders or directions on licences or other rights in or under the application are laid down by s.11. This section also gives certain rights to applicants or licensees who worked the invention, or prepared to do so, before the registration of a reference under s.8, see 11.05 to 11.07.
s.12(5) 11.02 Section 11 is also applicable in relation to orders made under s.12(1) (determination before grant of questions about entitlement to patents under foreign or international law) and orders made by a convention court with respect to corresponding questions. For the purposes of s.11, those orders are treated as if made under s.8. The directions under s.10 to which s.11 applies include those given in relation to patents under foreign or international law by virtue of s.12(4). With regard to the applicability of sections 8 to 12 in relation to European patents, see also 8.02, 10.03 and 12.09.
Section 11(1)
Where an order is made or directions are given under section 8 or 10 above that an application for a patent shall proceed in the name of one or some of the original applicants (whether or not it is also to proceed in the name of some other person), any licences or other rights in or under the application shall, subject to the provisions of the order and any directions under either of those sections, continue in force and be treated as granted by the persons in whose name the application is to proceed.
Where an original applicant is retained
11.03 This subsection applies where the effect of an order or directions under s.8 or 10 (or s.12, see 11.02) is that the name(s) in which the application proceeds include one or more of the original applicants. Licences or other rights continue in force as if granted by the person(s) in whose name the application proceeds, unless the order or directions provide otherwise.
Section 11(2)
Where an order is made or directions are given under section 8 above that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant (on the ground that the original applicant or applicants was or were not entitled to be granted the patent), any licences or other rights in or under the application shall, subject to the provisions of the order and any directions under that section and subject to subsection (3) below, lapse on the registration of that person or those persons as the applicant or applicants or, where the application has not been published, on the making of the order.
Where none of the original applicants is retained
11.04 Subsections (2) to (5) apply where the effect of an order or directions under s.8 (or s.12, see 11.02) is that the name(s) in which the application proceeds include none of the original applicants. Licences or other rights lapse on registration of the new name(s) or, where the application is unpublished, on the making of the order, unless in either case the order or directions provide otherwise (but see 11.05 to 11.10).
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Section 11(3)
If before registration of a reference under section 8 above resulting in the making of any order mentioned in subsection (2) above -
(a) the original applicant or any of the applicants, acting in good faith, worked the invention in question in the United Kingdom or made effective and serious preparations to do so; or
(b) a licensee of the applicant, acting in good faith, worked the invention in the United Kingdom or made effective and serious preparations to do so;
that or those original applicant or applicants or the licensee shall, on making a request within the prescribed period to the person in whose name the application is to proceed, be entitled to be granted a licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention.
Section 11(3A)
If, before registration of a reference under section 8 above resulting in the making of an order under subsection (3) of that section, the condition in subsection (3)(a) or (b) above is met, the original applicant or any of the applicants or the licensee shall, on making a request within the prescribed period to the new applicant, be entitled to be granted a licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention so far as it is the subject of the new application.
11.05 The making of a reference under s.8 (or s.12) is recorded in the register, see 123.05.4. If the reference results in an order under s.8 (or s.12) to the effect that none of the original applicants is retained or that a new application for a patent may be made, the Office notifies all original applicants and their licensees of whom it is aware of the making of the order.
r.90(1) 11.06 An applicant or licensee so notified may make a request under s.11(3) (or r.108(1) under that subsection as applied by s.12(5)) to the person in whose name the application is
to proceed for a non-exclusive licence to work or continue working the invention. Similarly, following the insertion of s.11(3A) by the Patents Act 2004 with effect from 1 January 2005, an applicant or licensee notified may make a request to the person making a new application under s.8(3) for a non-exclusive licence to work or continue working the invention. Any such request should be made within two months of the date of the order under s.8 or, where s.11 is applied by s.12(5), under s.12(1), this period being extensible at the discretion of the comptroller. (For the meanings of "exclusive licence" and "non-exclusive licence", see s.130(1).)
- 11.07 The original applicant or licensee making the request is entitled to such a licence if he, acting in good faith, worked the invention in the UK or made effective and serious preparations to do so, before the registration of the reference. The period and terms of the licence should comply with s.11(4), ie, be "reasonable". Any dispute regarding such period or terms or whether he is entitled to a licence may be referred to the comptroller under s.11(5) by either party, see 11.08 to 11.10.
Section 11(4)
Page 2 of 3 April 2008
A licence under subsection (3) or (3A) above shall be granted for a reasonable period and on reasonable terms.
Section 11(5)
Where an order is made as mentioned in subsection (2) or (3A) above, the person in whose name the application is to proceed or, as the case may be, who makes the new application, or any person claiming that he is entitled to be granted any such licence may refer to the comptroller the question whether the latter is so entitled and whether any such period is or terms are reasonable, and the comptroller shall determine the question and may, if he considers it appropriate, order the grant of such a licence.
PR part 7 11.08 The dispute (see 11.07) should be referred by filing Patents Form 2 r.76(4)(c) accompanied by a copy thereof and a statement of grounds in duplicate. This starts
proceedings before the comptroller, the procedure for which is discussed at 123.05 – 123.05.13. The statement should include the period or terms of the licence which the claimant is prepared to accept or grant.
r.77 11.09 The Office sends a copy of the reference and statement to every person (not being the claimant) in whose name the application is to proceed or, as the case may be, who makes the new application, and every person claiming to be entitled to a licence. If any recipient does not agree to grant or accept a licence as specified he should file a counter- statement in the proceedings.
s.108 11.10 When the comptroller determines the question to which the reference relates he may, if appropriate, order the grant of such a licence (see 11.06). Without prejudice to any other method of enforcement, such an order has effect as if it were a deed, executed by the proprietor of the patent and all other necessary parties, granting a licence in accordance with the order.
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Section 12: Determination of questions about entitlement to foreign and convention patents, etc
12.01 This is the second of the three sections (8, 12 and 37) under which questions about entitlement to patents may be referred to the comptroller. Section 12 relates to such questions in the case of patent applications under foreign or international law, ie the law of any country other than the UK or any treaty or international convention. This includes the EPC, for which subsections (3) and (6) make special provision, see 12.09 and 12.14.
s.12(7)(a) 12.02 This section also applies in relation to applications under foreign or international law which are equivalent to applications for patents or are for protection of inventions by means other than patents.
s.12(4) 12.03 Section 12 makes additional provision for the resolution of disputes between joint applicants, see 12.11.
Section 12(1)
At any time before a patent is granted for an invention in pursuance of an application made under the law of any country other than the United Kingdom or under any treaty or international convention (whether or not that application has been made) -
(a) any person may refer to the comptroller the question whether he is entitled to be granted (alone or with any other persons) any such patent for that invention or has or would have any right in or under any such patent or an application for such a patent; or
(b) any of two or more co-proprietors of an application for such a patent for that invention may so refer the question whether any right in or under the application should be transferred or granted to any other person;
and the comptroller shall determine the question so far as he is able to and may make such order as he thinks fit to give effect to the determination.
12.04 Questions about entitlement may be referred to the comptroller under this section at any time before a patent (or other form of protection, see 12.02) for an invention is granted, even before the making of an application. Such a reference may be made by any person claiming a right in any application or resultant patent etc. for that invention, in accordance with subsection (1)(a), see 12.06, or by a co-owner of an application contending that a right therein should be transferred or granted to any other person, in accordance with subsection (1)(b). In Magill’s International Application (BL O/256/00) a US patent for the invention had already been granted in pursuance of the international application. Whilst the comptroller thus had no jurisdiction as far as that patent was concerned, s.12 was interpreted as meaning that the comptroller retained jurisdiction in respect of all other live designations in the international application.
s.12(2) 12.05 The comptroller normally in due course determines the question so far as he is able to although he may instead decline to deal with it, see 12.08. The comptroller may make such order as he thinks fit to give effect to the determination. Much of the discussion with regard to the determination of questions of entitlement under s.8, see 8.06 to 8.11, is applicable mutatis mutandis to s.12 proceedings. However, the extent to which the comptroller is able to determine the question may be affected by the particular foreign or international law under which the application in question was or is to be made and the stage reached in the prosecution of the application, as well as the availability of information regarding the issues in question. The exercise of the comptroller's discretion with regard to the making of orders may be affected by similar considerations. In some cases, the
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comptroller may be able to make a determination but not to make any effective order, in view of the fact or likelihood that the foreign or international authorities in question also have jurisdiction. In Cannings' United States Application, [1992] RPC 459, where an employee- inventor had refused to execute an assignment of his rights in a US application, which had entered the national phase by the PCT route, it was determined that (a) the comptroller has powers, subject to such other provisions of the Act as are relevant, to determine the question of ownership of an invention, which is the subject of such a US application; (b) although the comptroller's powers under s.12 were inherently limited by the particular foreign or international law under which an application is made, since the inventor's employer was entitled to the invention, he was also entitled to the US application itself and to any patent granted thereon; (c) it was within the comptroller's broad powers under s.12(1) to order the employee to execute an assignment if this was necessary to give effect to the determination of entitlement and if such an assignment was required for the employer to enjoy the full benefit of any patent on the US application; and (d) the generality of s.12 in relation to the orders that may be made to give effect to the determination of entitlement permitted the comptroller to follow the approach sanctioned by s.8(5), which establishes the principle that in appropriate circumstances the comptroller has powers, at least in relation to rights in UK patent applications, effectively to bypass the unwillingness of an uncooperative party by authorising an affected party to sign, for example, a licence or assignment on his behalf.
12.05.1 In University of Southampton’s Applications [2002] RPC 44, the hearing officer was mindful of the fact that where an entitlement action under s.8 has been launched, the Office will avoid taking any irrevocable action which might be detrimental to the claimant, should they subsequently be found to be entitled. He therefore held that the same approach should, as far as possible, be taken to actions under s.12 and so ordered that the defendants should identify any foreign equivalent applications to the application in dispute, thus allowing the claimants to draw national or regional offices’ attention to their interest.
Procedure
12.06 The procedure with regard to a reference under s.12(1) is the same as that for a s.8(1) reference, see 8.12.
12.07 [moved to 12.06].
Section 12(2)
If it appears to the comptroller on a reference of a question under this section that the question involves matters which would more properly be determined by the court, he may decline to deal with it and, without prejudice to the court's jurisdiction to determine any such question and make a declaration, or any declaratory jurisdiction of the court in Scotland, the court shall have jurisdiction to do so.
Comptroller declines to deal with question
CPR 63.11 12.08 The comptroller may decline to deal with a question, referred under s.12, involving matters which he considers would more properly be determined by the court. This provision has the same wording as s.8(7) and the comments in 8.28 to 8.30 and chapter 2 of the Patent Hearings Manual are also relevant here. The procedure for transfer to the court, subject to rule 63.11 of Part 63 of the Civil Procedure Rules, is the same as set out in 8.28.
Section 12(3)
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Subsection (1) above, in its application to a European patent and an application for any such patent, shall have effect subject to section 82 below.
Entitlement to European patents
s.82(8) 12.09 Prior to grant, entitlement questions relating to applications for European patents may be referred under s.12 which is applicable to the extent laid down by s.82 (see the chapter on that section) in line with the EPC Protocol on Recognition. The court and the comptroller each have jurisdiction to determine such a question (including the making of an order under s.12) if the circumstances set out in s.82(4) to (6) are met. Determinations of such questions by authorities of other states which are party to the EPC may have effect in the UK, see s.83. See also 12.14 to 12.16.1 with regard to applications for European patents (UK) which are terminated.
12.10 Once a European patent (UK) has been granted, it is treated for the determination of questions about entitlement as if it were a patent under the Act resulting from an application under the Act, and such questions should then be referred under s.37.
Section 12(4)
Section 10 above, except so much of it as enables the comptroller to regulate the manner in which an application is to proceed, shall apply to disputes between joint applicants for any such patent as is mentioned in subsection (1) above as it applies to joint applicants for a patent under this Act.
Disputes between joint applicants
PR part 7 12.11 This subsection makes s.10 apply (except as follows) to disputes between joint applicants for patents (or other forms of protection, see 12.02) under foreign or international law as it applies to those under the Act. Any of the parties may therefore make a request to the comptroller for directions to settle a dispute such as referred to in 10.04, the procedure for such a request being that described in 10.08 and 123.05 – 123.05.13. The exception is that the comptroller cannot give directions under s.12(4) which regulate the manner in which an application is to proceed.
Section 12(5)
Section 11 above shall apply in relation to -
(a) any orders made under subsection (1) above and any directions given under section 10 above by virtue of subsection (4) above; and
(b) any orders made and directions given by the relevant convention court with respect to a question corresponding to any question which may be determined under subsection (1) above;
as it applies to orders made and directions given apart from this section under section 8 or 10 above.
Effect of transfer of application
s.130(1) 12.12 This subsection makes s.11 apply to orders under s.12(1) (see 12.04 and 12.05) and directions given under s.10 by virtue of s.12(4) (see 12.11) as it applies to other orders and directions under s.8 or 10. It also makes s.11 similarly apply to orders and directions given by the "relevant convention court" with respect to questions such as may be
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determined under s.12(1). That court, in relation to any proceedings under the EPC, CPC or PCT, means the court or other body which under that convention or treaty has jurisdiction over those proceedings, including (where it has such jurisdiction) any department of the EPO.
12.13 Section 11 concerns the effects of orders or directions regarding the name(s) in which an application should proceed. Its provisions and the procedures to be followed thereunder are discussed in the chapter on s.11 which is equally applicable to operation of the section by virtue of s.12(5).
Section 12(6)
In the following cases, that is to say -
(a) where an application for a European patent (UK) is refused or withdrawn, or the designation of the United Kingdom in the application is withdrawn whether before or after publication of the application but before a question relating to the right to the patent has been referred to the comptroller under subsection (1) above or before proceedings relating to that right have begun before the relevant convention court;
(b) where an application has been made for a European patent (UK) and on a reference under subsection (1) above or any such proceedings as are mentioned in paragraph (a) above the comptroller, the court or the relevant convention court determines by a final decision (whether before or after publication of the application) that a person other than the applicant has the right to the patent, but that person requests the European Patent Office that the application for the patent should be refused; or
(c) where an international application for a patent (UK) is withdrawn, or the designation of the United Kingdom in the application is withdrawn, whether before or after the making of any reference under subsection (1) above or the publication of the application;
the comptroller may order that any person (other than the applicant) appearing to him to be entitled to be granted a patent under this Act may within the prescribed period make an application for such a patent for the whole or part of any matter comprised in the earlier application (subject, however, to section 76 below) and that if the application for a patent under this Act is filed, it shall be treated as having been filed on the date of filing the earlier application.
Making of new application
12.14 Subsection (6) provides, at the discretion of the comptroller, for the making of a new application for a patent under the Act for matter comprised in an earlier application for a European patent (UK) which is no longer proceeding (in the circumstances of subsection (6)(a) or (b)) or international application for a patent (UK) which is no longer proceeding (in the circumstances of subsection (6)(c)). The comptroller may make an order allowing such a new application to be made by any person other than the original applicant who appears to him to be entitled to the grant of a patent for the matter in question. (See 12.12 for the meaning of "relevant convention court" in subsection (6)(a) and (b); and s.12(7)(b) for the meaning of "final decision" in subsection (6)(b)).
12.15 The period for making the new application is the same as for an application under s.8(3) - see 8.24
s.76(1) 12.16 The new application is treated as having been filed on the date of filing of the earlier application. However, the application requires amendment in order to be so
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treated if it discloses matter which extends beyond that disclosed in the earlier application as filed, as discussed in 8.25.
12.16.1 The r.30 compliance period for putting in order an application under s.12(6) is the same as that for an application under s.8(3) or 37(4) -see 8.25.1.
Section 12(7)
In this section -
(a) references to a patent and an application for a patent include respectively references to protection in respect of an invention and an application which, in accordance with the law of any country other than the United Kingdom or any treaty or international convention, is equivalent to an application for a patent or for such protection; and
(b) a decision shall be taken to be final for the purposes of this section when the time for appealing from it has expired without an appeal being brought or, where an appeal is brought, when it is finally disposed of.
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Section 13: Mention of inventor
13.01 This section deals with the right of an inventor to be mentioned in an application or a patent, the obligation on the applicant to identify the inventor(s) and the right of any person to object to a mentioned inventor. Relevant procedures are prescribed in r.10 and part 7 of the Patents Rules 2007. The inventor may also apply to waive his right to have his name and address mentioned following the procedures prescribed by r.11.
s.125(1) 13.02 Since the invention to which a patent or an application relates is determined by the claims, which may differ as between application and patent, it is possible that a person may be entitled to be named as an inventor in the application but not in the patent. The meaning of "inventor" is discussed in paragraph 7.12.
Section 13(1)
The inventor or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention and shall also have a right to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right to be so mentioned in accordance with rules in a prescribed document.
r.11(1) 13.03 The front pages published with the specification of the application and any r.11(2) patent granted normally each contain separate lists of all the applicants and all the r.11(3) inventors even when these lists are identical. However, before the preparations for r.26(2) publication have been completed, anyone identified as an inventor may apply in writing to r.44(2) the comptroller to waive his right to have his name and address mentioned as those of the r.51(3)(e) inventor, or to waive this right in respect of his address only. If the application is to
withhold both the inventor’s name and address, satisfactory reasons must be given, but this is not required if the application is to withhold just the address. Where an application to withhold an inventor’s details has been accepted, they will not appear in the patent application as published. The comptroller will also omit the details from the Register, and unless otherwise directed, no document bearing them shall be open to public inspection.
r.11(4) 13.03.1 Where an application to waive an inventor’s right to be mentioned has been r.11(5) accepted, the inventor can later apply to the comptroller to end the waiver. An agreement
by the comptroller to end such a waiver may be subject to any conditions he may direct.
PR part 7 13.04 Under s.13(1) and r.10(2) any person who alleges that he or another person ought to have been mentioned as the or an inventor in a granted patent or a published application may apply on Form 2 to have the matter rectified. There is no time limit on when an application may be made. Form 2 should be accompanied by a copy thereof and by a statement of grounds in duplicate; this starts proceedings before the comptroller, the procedure for which is discussed at 123.05 – 123.05.13. There is no need to file an additional Form 2 and statement to deal with inventorship when it has been put in issue by a reference in entitlement proceedings under section 8 or 37.
s.78(2) 13.04.1 In the case of an application for a European patent (UK) an incorrect designation of an inventor may also be rectified before the EPO under r.21 EPC. (An application under s.13(1) may be made once the grant of a patent has been mentioned in the European Patent Bulletin (see also 13.18)).
[The front page of the specification will be republished together with an amendment sheet giving details of the changes indicating that the addition is only in respect of EP(UK) (see file of EP 0370590). Publication Section will send a copy of the republished specification to the applicant. A copy should also be sent to the EPO for information suggesting that they might like to associate it with the B publication (again see EP 0370590). ]
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r.77 13.05 Provided that they have not given written consent to the application, the comptroller will send a copy of Form 2 and the statement to the or each proprietor of, or applicant for, the patent, to each person identified as an inventor either in the application or on Form 7 (see 13.08) and to any other person whose interests the comptroller considers may be affected by the application under s.13. Copies are not of course sent to the person making the application. Any recipient of such a copy who wishes to oppose the application should file a counter-statement in the proceedings.
13.06 [deleted]
r.10(1) 13.07 If the comptroller is satisfied that a person should have been mentioned in the published application or patent an addendum or erratum to this effect should be issued. The Register should be altered but not Form 7.
Section 13(2)
Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement -
(a) identifying the person or persons whom he believes to be the inventor or inventors; and
(b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent;
and, if he fails to do so, the application shall be taken to be withdrawn.
r.10(4) 13.08 The request for grant of a patent (Form 1) requires an indication as to whether the applicant(s) is/are the sole/joint inventor(s). If the or any applicant is not an inventor or if any inventor is not an applicant it will be necessary to file Form 7 identifying the inventor(s) and indicating how any applicant who is not an inventor derives the right to be granted a patent.
[ The surname or family name of the inventor(s) should be underlined in black ink. Where this has not been done the underlining can be effected in the Office. However, caution must be exercised in the case of overseas inventor since the surname or family name may not be obvious. Guidance from the applicant/agent should be sought in such cases. ]
13.09 While it is not necessary to give details of the derivation of right, sufficient information particular to the application should be given. For example it is acceptable to indicate that the applicant is the employer of the inventor, or has rights by virtue of an assignment from the inventor to the applicant, or that the applicant is the personal representative of a deceased inventor. Alternatively, at the very least an indication should be given of which of the s.7(2) categories the applicant falls under (Nippon Piston Ring Co Ltd's Application [1987] RPC 120). Thus, vague statements to the effect that the applicant acquires his rights "by operation of law", or "by virtue of s.7(2)" are not sufficient, nor is an incomplete chain of title, such as "by assignment from A to B", the applicant being C. However "By assignment" on its own is, in the context of Form 7, sufficient to indicate an assignment directly from the inventor to the applicant.
[ Where the Formalities Examiner discovers a defective description of derivation of right, the matter must be immediately discussed with the Formalities Manager. If the Formalities Manager confirms the objection, and provided at least three weeks remain of the prescribed sixteen-month period for submitting the Form 7, the
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agent/applicant must be telephoned and advised to correct the defect within two weeks by submission either of a fresh Form 7 or of a written request for correction. (A telephone conversation report should issue in the usual way, with a copy placed on file). If, however, there is less than three weeks left of the sixteen-month period, or the agent refuses to correct the defect, or the Form 7 or written request for correction is submitted after expiry of the sixteen-month period, the Formalities Manager must refer the matter immediately to the Divisional head of admin for further action. ]
s.7(4) 13.10 An applicant is not required to substantiate a statement of derivation of right to the invention. In the absence of anything being established to the contrary he is assumed prima facie to be entitled to be granted a patent (see 7.13).
r.10(3) r.21
13.11 The period prescribed for filing Form 7 is sixteen months from the declared priority date or, where there is none, from the filing date. This period may be extended in accordance with r.108(2) or (3) and (4) to (7), see 123.34-41, if for example all the required information has not been supplied in time. A longer time limit may however apply in the case of a divisional application (see 15.26) or other application claiming an earlier date of filing. Different periods also apply in converted European applications (see 81.11) and international applications (see 89A.12 and 89A.18); see also 13.12.
s.81(3)(c) 13.12 In the case of a converted European application the requirements of s.89B(1)(c) s.13(2) are regarded as being met, and hence Form 7 is not needed, if the provisions of
the EPC requiring the applicant to give the full name and address of each inventor and an indication of the derivation of title to the invention have been met. In the case of an international application which enters the UK national phase, Form 7 is not needed if a statement required by the PCT giving the name and address of each inventor has already been filed.
13.13 If, in a case where it is required, a properly-completed Form 7 is not filed within the prescribed period (see 13.11) the application is taken to be withdrawn, and is consequently not published. (See also 15A.12).
[ For termination procedure, see 14.199 and 15.55. ]
13.14 A defect in the form may be rectified by filing a fresh form, provided that the prescribed period has not expired or, if it has, an extension has been allowed (see 13.11). (If the application is one where copies of Form 7 are sent to the inventors (see 13.15), they should be sent copies of the replacement form). No evidence is needed to substantiate this alteration, but if the prescribed period and any extension has expired the only way in which the information on the form can be changed is (in an appropriate case) by submitting a written request to correct an error (see 117.22). However if any discrepancies are minor, so that the requirements of r.10(3) can be regarded as having been complied with, they can be rectified, within a period specified by the Office. An insufficient indication of the derivation of title (see 13.09) is not regarded as a minor discrepancy, and if the prescribed period has expired an extension of the period would need to be sought under r.108 to enable the required information to be supplied. The decision in Payne's Application [1985] RPC 193 means that s.117 cannot be invoked to overcome the mandatory requirements of s.13(2) (see 13.13).
[ If the fresh form is acceptable the Formalities Examiner should endorse it as the effective form. ]
13.14.1 In the case of an international application in its international phase, a request to record any change in the person, name or address of the inventor should be made to the International Bureau under PCT Rule 92 bis before the expiry of 30 months from the priority date.
13.15 There is no longer a need for more than one copy of Form 7 to be filed for multiple inventors. The comptroller will, however, send a copy to each inventor who is not
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one of the applicants.
13.16 If a copy of Form 7 is undelivered and is returned to the Office, the agent or applicant should be contacted to see if the address is correct or if a current address is available. If this is not forthcoming, the undelivered Form 7 should be placed on file.
[ Where a forwarding address has been lodged with the Post Office, mail will be re- directed automatically. Under no circumstances is the Post Office allowed to give details of any forwarding address. The application should be minuted accordingly whenever an undelivered Form 7 is placed on file. ]
Section 13(3)
Where a person has been mentioned as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time apply to the comptroller for a certificate to that effect, and the comptroller may issue such a certificate; and if he does so, he shall accordingly rectify any undistributed copies of the patent and of any documents prescribed for the purposes of subsection (1) above.
PR part 7 13.17 Anyone may apply for a certificate to the effect that a person should not have been mentioned as inventor in a published application or a granted patent. The application is made by filing Form 2 and a statement of grounds in duplicate. This starts proceedings before the comptroller, the procedure for which is discussed at 123.05 – 123.05.13 and is essentially similar to that for an application under s.13(1), (see 13.04- 13.05). If the person making the application satisfies the comptroller he will issue a certificate accordingly and will correct, by means of an erratum, any copies of the patent which are subsequently distributed. The formal decision incorporates any such certificate. The Register is altered accordingly, but not Form 7.
13.18 Where before a patent is granted, an application is made on Form 2 for a certificate that a person should not have been mentioned in a published application, the hearing officer should issue a certificate in respect of the application if appropriate and make an order that that person is not entitled to be mentioned as an inventor in any patent granted for the invention.
[ The order shall be given effect as far as the register is concerned by the head of Tribunal Section. If an erratum or addendum is required for the published application, these will be issued by the appropriate formalities group at the earliest opportunity in the pre-grant cycle. If the patent is granted, responsibility for requesting republication of the front page and production of an amendment sheet giving details of the changes rests with Tribunal Section. ]
13.18.1 Action under s.13(3) is not immediately appropriate where, following amendment of an application before a patent is granted, it is no longer fitting for a person correctly mentioned as an inventor in the published application still to be mentioned in any granted patent. Form 2 should not be filed in such cases. Instead the relevant facts accompanied by, whenever possible, the agreement of all parties to the person not being so mentioned, should be filed in writing at the Office. If necessary, the Office will write to any party who has not already consented, giving an opportunity for comment. If the Office is satisfied that all registered applicants, named inventors and any other person whose interests it considers might be affected, agree, it will not mention the inappropriate person as an inventor in any granted patent. If the matter cannot be agreed and the patent application becomes in order, then the application should be granted and the question resolved by an action under s.13(3).
s.78(2) 13.19 In the case of an application for a European patent (UK) an application under s.13(3) may be made either before or after the mention of grant of a patent in the
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European Patent Bulletin but if made before such mention of grant, the relief available in respect of a published application is limited to the issue of a certificate (see also 13.04.1). An incorrect designation of an inventor may also be cancelled before the EPO under r.21 EPC.
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APPLICATIONS
Section 14: The application
CONTENTS
Introductory notes
CODE OF PRACTICE
SECTION 14(1)
SECTION 14(1A)
SECTION 14(2)
REQUEST FOR THE GRANT OF A PATENT Application of Rule 4(2) Amendment or correction of Form 1
FORM AND PRESENTATION OF DOCUMENTS Size and presentation Alterations Further requirements for drawings Language Content of the application Title Some requirements for technical content
SECTION 14(3)
SUFFICIENCY: SUMMARY OF GENERAL PRINCIPLES Claim construction Date at which sufficiency is judged The person skilled in the art
CLASSICAL INSUFFICIENCY Degree of sufficiency required Quality of product enabled Functional claims Errors and omissions
INSUFFICIENCY BY AMBIGUITY
INSUFFICIENCY BY EXCESSIVE CLAIM BREADTH A principle of general application
Undue burden Considerations during examination and search Inventions contrary to well-established laws Prior art References to other documents Trade marks
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Relationship of s.14(3) with s.14(5)
SECTION 14(4) (Repealed)
SECTION 14(5)
SECTION 14(6)
DEFINING THE INVENTION: CLARITY Construction of the claims Purposive construction The Protocol to Article 69 of the EPC Inventions defined by ranges Invention defined by reference to intended use Product by Process claims Chemical cases Omnibus claims Disclaimers Clarity
CONCISENESS
SUPPORT BY THE DESCRIPTION Broad or speculative claims
UNITY OF INVENTION
SECTION 14(7) The abstract
SECTION 14(8) (Repealed)
SECTION 14(9) Withdrawal
SECTION 14(10)
14.01 This section prescribes the manner of making an application, its form and content, the requirements which must be fulfilled by the contents, and provides for withdrawal of the application. Specific provisions relating to some of these matters are also laid down in rr.12-16.
The Regulatory Reform (Patents) Order 2004 and Patents (Amendment) Rules 2004: Coming into Force and Transitional provisions
14.01.1 The form and contents of an application as set out in s.14(1) and the conditions governing withdrawal of applications at the request of the applicant under s.14(9) were deregulated by the Regulatory Reform (Patents) Order 2004 (“the 2004 Order”) in conjunction with the Patents (Amendment) Rules 2004 (“the 2004 Rules”). The 2004 Order and the 2004 Rules incorporated the principles of Articles 5 and 6 of the Patent Law Treaty, and both statutory instruments came into force on 1 January 2005. The Patents Rules 1995 as amended have been replaced entirely from 17 December 2007 by the Patents Rules 2007.
CODE OF PRACTICE
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14.01.2 The Code of Practice (the first part of which can be found below) identifies best practice points for patent applicants and agents, which if followed widely will lead to savings and efficiencies in the Office, and consequently to better service and better value. Examiners and other Office officials may on occasion draw the Code to the attention of the applicant or agent, and may ask for it to be complied with before the case is processed further if that would be more efficient.
14.01.3 However, it is not to be expected that best practice can always be adhered to. The Office has no right to demand compliance with the Code of Practice because the Code is advisory only and has no legal force.
14.01.4 If an application does not comply with one of the points of the Code of Practice then this does not necessarily justify an objection under the Patents Act or Rules. For example, an application having more than one independent claim in one category would not comply with code point 1e, but this would not usually justify an objection under s.14(5)(b). When drawing attention to non-compliance with the Code of Practice, examiners should therefore make it clear whether they are also raising a formal objection under the Act or Rules.
CODE OF PRACTICE FOR APPLICANTS AND AGENTS
Drafting and filing patent applications
This part of the Code of Practice for applicants and agents relates to the drafting and filing of patent applications under the Patents Act 1977. The quality of the application that is received by the Office determines in large part the effort that has to be expended during the statutory search and examination, in putting the application in a state to be granted, and is thus a central factor for the Code. The Code does not seek to eliminate the need for search and examination, but rather to optimise drafting towards UK law and practice and to avoid formulations that are clearly problematic for the UK search and examination. When drafting specifications for filing at this Office the aim should therefore be to adhere to the Code points below.
This part of the Code also deals with presentational and procedural matters that have to be checked by the Office after the initial filing. The Office tries to keep red tape to a minimum, but some formalities are necessary for the system to work properly. There is substantial scope for efficiency savings if the best practices set out in this Code are known and followed.
POINT 1: The claims as filed: structure
The claims as filed should be structured to have:
a. One independent claim defining all the technical features essential to the invention or inventive concept. Inessential or optional features should not be included in this claim; consequently terms such as “preferably”, “for example”, or “more particularly” should not be included, as the feature being introduced by such terms does not restrict the scope of the claim in any way. The independent claim should include sufficient details of interrelationship, operation or utility of the essential features to enable the scope of the claim to be determined (see 14.110.1); and
b. Dependent claims incorporating all the features of the independent claim and characterised by additional non-essential features (see 14.134).
In addition:
c. Further independent claims are only justified where the inventive concept
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covers more than one category, e.g. apparatus, use, process, product (see 14.159 and 14.168), complementary versions within one category, e.g. plug and socket, transmitter and receiver, which work only together (see 14.161), or distinct medical uses of a substance or composition (see 14.162).
Therefore claims as filed should not, where it might have been avoided, contain:
d. Multiple unrelated inventions that would clearly give rise to a plurality objection (see 14.157.1).
e. Multiple independent claims in any one category, even if only one inventive concept is present (see 14.110.1 and 14.140).
f. Claims of a total number or complexity not justified by the nature of the invention (see 14.110.1 and 14.140).
g. Claims which are in principle unsearchable by reason of the number of alternatives embraced, or the choice of characterising parameters or desiderata (see 14.110 and 14.133).
h. Dependent claims that are not fully limited by the terms of the preceding independent claim, e.g. dependent claims which omit, modify or substitute a feature of an independent claim (see 14.134).
If these points are not met on filing, suitable claim amendments should be filed if the search examiner requests them to enable search (see 17.94.9 and 17.108). Amendments may be required by the substantive examiner before examining such claims (see 18.43.1 and 18.39).
The above points also apply at the entry into the UK national phase of international applications under the Patent Cooperation Treaty.
POINT 2: The claims as filed: patentability
a. The claims as filed should not, where it might have been avoided, define an invention which is clearly excluded from being patentable under the Act (see 1.07 to 1.40.4).
If this point is not met on filing, suitable claim amendments should be filed if the search examiner requests them to enable search (see 17.94.9). Examiners may either require amendment before searching or examining such claims, or may issue a report that a search would serve no useful purpose (see 17.94-17.94.10 and 17.98).
POINT 3: Other aspects of the specification as filed
a. The use of a compact style of consistory clause, which in the description defines the invention by reference to the claims, is strongly encouraged (see 14.148).
b. Trade marks are an indication of the origin rather than the composition or content of goods, and should not be used in patent applications where a generic term can be used instead. Trade marks are only permitted in claims where it can be shown that their use is unavoidable and does not introduce ambiguity (see 14.137). Where marks that are registered are mentioned, they should be acknowledged as such (see 14.100 and 14.101). If a trade mark is not registered, its owner should be indicated (see 14.100).
c. Passages which confuse the scope of the invention (see 14.139.1) or claims that are unspecific (e.g. those claiming “Any novel matter...” ) (see 14.139)
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should not be filed. Removal of such passages will be required.
d. The specification should be clear and precise. It should not repeat matter unnecessarily, nor should it contain matter which is irrelevant to the invention - for example the complete details of well-known ancillary features need not be given (see 14.74).
e. Only the most relevant prior art should be discussed (see 14.91 and 14.92). For example, a few documents which illustrate how a problem has previously been approached could be discussed with a view to distinguishing the invention in suit from them or illustrating its advantages.
f. If the specification has been drafted abroad then it should be adapted to comply with sections 14(3) and 14(5) of the Patents Act 1977 and the Code points before it is filed here. Action should be taken to ensure that it is written in a reasonable standard of English before it is filed.
g. The patent specification is intended to describe the invention precisely and it is vital that the meaning of all abbreviations and words used is clear and unambiguous. Words, abbreviations or acronyms used in the specification that are new, may be considered to be jargon, or may be at risk of being ambiguous (for example because their meaning is not yet generally settled in the field in question) should not be used unless unavoidable, in which case a definition should be given in the specification.
POINT 4: The abstract
a. The abstract and abstract title should meet the requirements of rule 15 of the Patents Rules 2007, concisely summarising the matter contained in the specification, including the technical field, distinctive technical features, and principal use of the invention (see 14.173 to 14.184).
b. An abstract having wording that merely reproduces an independent claim will not comply with this Code and may be rejected on the ground of non- compliance with the Rules (see 14.184).
POINT 5: Forms and formalities on filing
a. The presentation of the application (including drawings) should meet the requirements of rule 14 of the Patents Rules 2007 (see 14.26 - 14.57). For example, documents must be legible and capable of reproduction, and the margins should be kept clear and free from headers or footers denoting references or other matter (see 14.28). Shading is allowed in drawings so long as it does not obscure any detail in the drawings. In addition, a specification may include photographs if they are clear enough to be reproducible (see 14.41).
b. An official form should be used where required by the Rules, and it should be completed fully and accurately (see 14.04 for the application form).
c. Supporting documents should also be provided where appropriate; for example:
a fee sheet where fees are being paid a covering letter where some explanation is needed.
d. To allow us to direct incoming items quickly to the right place all appropriate identifiers should be given:
- Form 1 should give ADP number(s) and customer reference;
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- Forms and letters filed after Form 1 should give application number and (optionally) customer reference;
- Fee sheets should give all relevant details, such as deposit account number or credit/debit card details;
- Bank transfers should state the application or patent number, or, if not known, the reason for payment e.g. search fee.
In correspondence with applicants and their representatives, the Intellectual Property Office will use customer references if given, and will tell agents the applicant’s ADP numbers (see 14.04.1 and 14.04.5).
e. If it is critical that an application be filed within a certain time window such as the twelve months of the Paris Convention, the application should be filed with sufficient time remaining for any fatal defects to be detected and put right.
f. The originals of faxed documents should only be filed when requested to do so by the Office (see 14.02).
g. Electronic filing of applications is strongly encouraged; official fees are reduced for certain electronically-filed documents. See www.ipo.gov.uk/p-apply- online.
[Deleted]
Section 14(1)
Every application for a patent -
(a) shall be made in the prescribed form and shall be filed at the Patent Office in the prescribed manner;
(b) [repealed]
Section 14(1A)
Where an application for a patent is made, the fee prescribed for the purposes of this subsection (“the application fee”) shall be paid not later than the end of the period prescribed for the purposes of section 15(10)(c) below.
s.119 14.02 The prescribed form of the application is laid down in the rules. The filing fee was abolished by the 2004 Order, which replaced it with the application feeCoP specified in s.14(1A). An application may be filed by hand, by post, or by facsimile transmission (fax). Alternatively, an application may be submitted online via the Office website, or using the secure online filing system provided by EPO Online Services if the filer has completed the enrolment procedure for that service. The number for fax filing of applications is +44 (0)1633 817777. Applications should not be sent to any other fax number in the Office; amendments and correspondence relating to applications should not be sent to any other number unless specifically instructed otherwise in a particular case. Although the Office's designated fax filing machines are open to receive transmissions 24 hours a day, seven days a week and record the time and date of receipt automatically, the filing date accorded is the date of receipt if the Office is open for that class of documents; if not, the next working day (see also 14.29). Confirmation copies are only required if requested by the Office e.g. if there is a problem with the clarity/completeness of the faxed
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document received. Confirmatory copies should be prominently marked “In confirmation of fax”. See also 22.07 for filing considerations relating to documents which might include information of relevance to national defence or security. The hours and days when filings may be made are governed by s.120. Under r.97 of the Patents Rules 1995, an application filed by post was deemed to have been filed when the letter containing it would be delivered in the ordinary course of post. However, the Patents Rules 2007 do not include a rule relating to postal deeming and therefore any document posted on or after 17 December 2007 will be accorded the date of receipt it is actually received in the Office.
[Normally if an urgent document is expected by fax, the intended recipient should instruct the sender to mark the header sheet clearly as urgent and for the attention of the recipient. The staff attending the fax machine should be alerted by telephone (ext.4570) and will then advise the recipient when the fax arrives so that it may be collected by hand. In the exceptional case that correspondence or draft amendments is requested to be sent to a fax machine other than at the number above it is the recipient's responsibility to ensure that it is properly stamped as received and sent to Index & Scan to be scanned on to the relevant dossier. ]
Section 14(2)
Every application for a patent shall contain -
(a) a request for the grant of a patent;
(b) a specification containing a description of the invention, a claim or claims and any drawing referred to in the description or any claim; and
(c) an abstract;
but the foregoing provision shall not prevent an application being initiated by documents complying with section 15(1) below.
14.03 While an application must eventually contain all the items referred to in s.14(1A) and this subsection, the final proviso of s.14(2) makes clear that for an application to be initiated and given a filing date it is sufficient for it to comply with the conditions of s.15(1), (see 15.02-15.06).
REQUEST FOR THE GRANT OF A PATENT
r.12(1) 14.04 The request must be made on Patents Form 1; this is designated a r.25(1) formal requirement (see 17.07).
Considering each part of the form:-
1 Reference Number
CoP 14.04.1 Although there is no obligation to provide such a reference, it is clearly in the applicant's interest to do so, since until an application number has been accorded by the Office there is no reliable way of identifying a particular application. It may also be useful should any confusion arise over the application numbers accorded to several cases filed together. If provided, the Office will use the applicant’s reference number in correspondence related to the application.
14.04.2 [deleted]
14.04.3
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2 Applicant's Details
CoP 14.04.4 The applicant’s name and address should be entered in Part 2 of the r.12(2) Form (see 15.03), but failing that the Form must contain sufficient information to enable the r.12(3) applicant to be contacted. Where a date of filing is accorded to an application which does
not give the applicant’s name and address, the applicant must be notified of the failure, and the comptroller may refuse the application if the applicant fails to file his name and address within two months of such a notification. Under r.108(1) together with r.108(5) and (7), the two-month period for filing the applicant’s name and address may be extended at the comptroller’s discretion in tranches of 2 months, but no extension may be granted after two months following the expiry of the period as prescribed or previously extended - see 123.36.10-12. Where Parts 2 and 4 of the Form do not, between them, contain enough information to enable the applicant to be contacted, the contact information in Part 12 may suffice.
[If contact details are provided but establishing contact is difficult, advice should be sought from Legal Section.]
s.7(1) 14.04.5 An application may be made by any person either alone or jointly with another. ("Person" means either an individual or a corporate body, see 7.02). If the inventor is not also an applicant he should not be named on Form 1.
14.04.6 An applicant who is an individual should apply in his true name. Exceptionally, a pseudonym may be used if it is well established and is customarily used by the individual for banking and other business purposes. The name must be given in full, the surname or family name being underlined. Letters or statements denoting academic or professional qualifications may appear after the name. A statement of nationality or occupation is not required and should not be given. Once a particular established name and signature has been used subsequent business should not be effected by the same individual using a different name or signature unless the name has changed, eg due to marriage. A corporate body should be designated by its legal name. In the case of either an individual or a corporate body, a business name or trading style, eg "trading as XYZ", or a former name is not required and should not be given. If known, the automatic data processing (ADP) number of the applicant should be given for identification of the applicant; this number will supplied to an applicant’s agents.
14.04.7 If an application is made on behalf of a Government Department, the applicant should be stated to be the Secretary of State or Minister responsible for the department, and not the individual holding such office. Applications from police forces should be made by the relevant Police Authority.
14.04.8 Each applicant must give, in full, a permanent address, which may be either a private or a business address. A c/o is not acceptable unless it can be shown that it is a permanent address for the applicant which the Office can rely on for communicating with the applicant, e.g. if, in the case of a company, it is registered with Companies House as the company’s address. It is in the applicant’s best interests to provide the Office with a secure and reliable address. Standard abbreviations, e.g. Rd, USA, are allowable.
14.04.9 Since the United Kingdom does not accord diplomatic recognition to Taiwan the statement "Republic of China" for the country of incorporation or address of an applicant located in Taiwan cannot be accepted and should be objected to. If the applicant disagrees he should be advised that the onus is on him to ascertain from the Foreign Office what is considered to be an acceptable designation.
14.04.10 Where there is not enough space on the form for the details of more than one applicant, any further names and addresses should be given on a continuation sheet and the use of a continuation sheet should be indicated in part 9 of the form.
3 Title of Invention
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r.44(1)(d)
CoP r.101(1)
r.103
CDPA s.281(5)
r.104
PR Sch. 4 Parts 2 & 3
14.04.11 This is the title entered in the register and in the list of new applications in the Journal. By virtue of s.14(1)(a) and r.12(1), a title is a formal requirement, thus if there is no title given on Form 1 the applicant should be required to provide one, or to confirm that the title, if any, on the specification is to be used on Form 1. (See also 14.49- 51 and 19.24). The title should avoid disclosing the invention, since it is published in the Journal prior to publication of the application under s.16(1).
4 Address for Service Details
14.04.12 If the applicant has appointed an agent his name should be given in this part of Form 1. The agent need not be registered (see 274.03).
[If the agent’s name is missing from Form 1, but it is clear from the information supplied who the agent is, the agent’s details should be inserted on COPS by the Formalities Examiner, and Form 1 annotated appropriately.]
[Deleted]
14.04.13 An agent filing an application is assumed to be duly authorised to act for the applicant, and in general no specific evidence to this effect is required. (The comptroller has the power to require an agent to produce evidence, at any stage in proceedings, that he is authorised. This will be done only if there is some reason for doubting the authority or for requiring it to be confirmed). If however, subsequent to the filing of Form 1, the applicant wishes to change his agent or an agent is appointed for the first time, the incoming agent must file Patents Form 51. Notification on Form 51 should not be made if the (new) agent will only perform administrative tasks such as paying renewal fees or registering an assignment. If an applicant who has been represented by an agent decides to dispense with the services of the agent and represent himself as a private applicant, then he should be advised to provide written confirmation of this change. A copy of the applicant’s letter will then be sent to the former agent.
[The Office is no longer prepared to retain general authorisations; if one is filed it should be returned to the agent. If a specific authorisation is filed it will, although redundant, be allowed to remain on the file. ]
14.04.14 Every application must include an address for service, which must be in the United Kingdom, another EEA state or the Channel Islands. An address for service of a patent agent cannot be accepted in the Channel Islands unless they also have a residence or place of business in the UK, Isle of Mann or the European Economic Area (see 281.04). The address for service is treated for all purposes as the address of the person concerned with the proceedings and all communications must be addressed to the applicant at or c/o this address. Communication with the applicant can only be through this address; if an agent has been appointed and the applicant contacts the office direct he must be advised to communicate through his agent. If there is no acceptable address for service on an application and there is sufficient information to contact the applicant, he should be contacted and be directed to file an acceptable address for service within 2 months (this period can be extended using Rule 108(2) and 108(3) – see 123.36.5). If an acceptable address is not provided within this time period, or there is insufficient information to make contact with anyone to provide such an address, the application is treated as withdrawn.
[Where the address for service is not in the EEA or the Channel Islands, a request for compliance with this requirement within 2 months should be made, with a warning that failure to comply will lead to the application being withdrawn under r.104(4)(a). ]
[If no address has been given at part 5, but it is clear from the information given that an agent is acting for the applicant the Agent's address will be entered on COPS by the formalities examiner, and Form 1 annotated appropriately. Likewise
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5
if no agent has apparently been appointed and an address given in part 3 is within the United Kingdom, another EEA state or the Channel Islands, this will be entered as the address for service on COPS.]
[Deleted]
Declaration of Priority
r.6(1) & (4) 14.04.15 If priority is claimed from an earlier application (see s.5), the date and country of filing of the earlier application should normally be declared at the time of filing the application in suit. The file number of the earlier application should preferably also be stated if it is available. A copy of the earlier application and any necessary translation do not however need to be filed at this stage.
6 Claiming an Earlier Application Date
s.15(9) 14.04.16 The number of the earlier application and its filing date should be given. In the case of an application under s.15(9) (a divisional application) the request for an earlier filing date must be made at the time of filing the application in suit, (see 15.18).
7 Inventorship
s.13(2) 14.04.17 Where all the applicants named in Part 2 of the Form 1 are also the inventors, a mark should be made in the top “Yes” box. If one or more of the applicants is not an inventor, the top “No” box should be marked instead. Where there is one or more inventor whose name is not given as an applicant in Part 2 of the Form, a mark should be placed the lower “Yes” box in part 7 of the Form. It follows that the lower “No” box in part 7 of the Form should only be marked in the case where all inventors are named applicants and all named applicants are inventors.
s.7(3) 14.04.18 Since "inventor" means the actual deviser of the invention a corporate body cannot claim to be an inventor. Where an applicant named in Part 2 of the Form is a corporate body and the top "Yes" has been marked in Part 7, an objection should be raised.
8 Application Fee
s.15(10)(c) 14.04.17.1 While the application fee may be paid at any time up to the expiry of the r.22(2) period prescribed by r.22(7), nevertheless when it is paid at the time of filing this fact r.22(7) should be indicated by placing a mark in the “Yes” box in part 8 of the Form 1, and where it
is not paid at the time of filing it follows that the “No” box should be marked. If the application fee is paid at a later date, a surcharge will be payable.
9 Documents making up the application
14.04.19 It should be noted that the information in the check list relates to the application as filed; pages filed subsequently should not be indicated in this check list.
s.15(1)(c)(ii) 14.04.18.1 Where the application is not accompanied by a description, and a reference s.15(10)(b) to an earlier application under s.15(1)(c)(ii) is relied upon for qualifying for a date of filing,
the application number, country of filing and date of filing of that earlier application should be entered in Part 9 of the Form. A reference must be substantiated by the filing of a certified copy within the time specified by rule 22(3), which is four months from the date of filing, and a description must be filed within the time specified by rule 22(1), which is the same period as for the claims and abstract and is the later of twelve months from the earliest date or two months from the date of filing. Where both a description is filed and the details of an earlier application are given in Part 10 of the Form, the applicant (or his agent) should be contacted to clarify under which of the (mutually exclusive) options of s.15(1)(c) the application is made.
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r.22
10
[If the check list has not been completed, or if it has been completed in a manner which is not consistent with what has been filed, the formalities examiner should raise the matter with the agent or applicant. ]
Documents accompanying the application
14.04.20 Documents or forms filed subsequently should not be indicated in this check list.
11 Request
14.04.21 The form must be signed at this part either by the or each applicant or by the agent who has filed the application. Where a signature is missing, the formalities examiner should raise an objection requiring a duly signed form to be submitted (see 15A.20).
12 Person to contact
14.04.22 If a contact name and telephone number is given any telephone enquiry about how the form has been filled in should be made to the person named.
Application of Rule 4(2)
r.4(2) 14.04.23 Where an earlier version of Form 1 is used, and where the information on that Form is sufficient for the application in question, no objection should be raised and the Form should be regarded as a Form acceptable to the comptroller and containing the information required.
[ 14.05-14.24 Deleted ]
Amendment or correction of Form 1
r.49 14.25 If the applicant wishes to correct his or her name, then Form 20 is required. However, correction of any of the other information given on Form 1 merely requires notification in writing. (See 19.05-19.12, 32.06 and 117.17-117.21.)
FORM AND PRESENTATION OF DOCUMENTS
r.25(1) 14.26 The size and presentation of the documents (including drawings) r.25(2) making up an application are governed by r.14. The requirements of r.14(1), (2) and (3)
are designated as formal requirements (except for where an application is delivered in electronic form or using electronic communications, in which case only the requirements of rule 14(1) are formal requirements); those that are not so designated are identified in paragraphs 14.54, 14.55 and 14.57. Some general provisions regarding the content of the specification are laid down in r.12(4)-(7); these are not designated formal requirements.
Size and presentation
PR Sch. 2 14.27 All documents making up an application must be on A4 matt white part 1 paper.
PR Sch. 2 14.28 For drawings, the minimum margins must be 20mm at the top and the parts 1-3 left hand side, 15mm at the right hand side and 10mm at the bottom. There must not be CoP any frames (lines surrounding matter). For documents other than drawings the minimum
margins must be 20mm at the top, right, left and bottom. The margins of all documents should be completely blank, even from case reference details; line numbers and page numbers are regarded as being part of the text rather than being in the margin.
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2
[It will not be necessary to object to de minimis deviations from the prescribed minima if it is certain that printing and binding of the document will not be affected.]
PR Sch. 2 14.29 The contents of all documents, including drawings, making up an part 1 para. application or replacing such documents must be suitable for reproduction.
Any document which has been filed by facsimile transmission (fax) must be legible, and the responsibility for ensuring legibility rests with the sender. If upon subsequent examination any part of a document received is unintelligible, no filing date will be accorded to that part. Appraisal of documents filed by fax occurs not upon receipt but when they are examined in the normal course of business (see 14.02).
PR Sch. 2 14.30 The description, claims and abstract must use at least 1½ line spacing parts 1-3 and the capital letters in any typeface or font used must be more than 2mm high.
[If the specification of a private applicant's case does not meet the r.14 requirements the applicant should be given the opportunity to overcome any deficiency. In the event that the applicant does not comply with an initial request and providing that there are no other outstanding requirements, the specification should be retyped in the Office with the approval of the Formalities Manager. The retyped application should be accompanied by a suitable instruction for publication. The applicant should also be advised in writing that his application has been retyped and given four weeks from the date of the letter being issued in which to object. If there is no objection, the application can be allowed to proceed to A-publication.]
14.31 [deleted]
PR 1995 14.32 The specification (including drawings) and abstract, and any r.20(2) replacement sheets, must be filed in duplicate for cases filed before 26 June 2006, but
there is no need to do so for cases filed after this date. (See also 14.02 and 14.29 regarding documents filed by fax.) Carbon copies are acceptable provided that the requirements set out in Schedule 2 are met.
PR Sch. 2 14.33 The request for grant (Form 1), the description, the claims, the paras. 8 & drawings and the abstract must each begin on a new sheet. The pages of the description, 13 claims and abstract are normally secured, eg by stapling, in the top left-hand corner; the
request for grant and the drawings normally remain as separate sheets.
PR Sch. 2 14.34 The pages of the description and claims must be numbered paras. 4, 5, consecutively in a single series. This is so even when the claims and/or the abstract are 12 & 14 filed later than the description. The sheets of drawings must also be numbered
consecutively in a single series, and the drawings themselves must be numbered consecutively in a single series. Where a sequence listing is set out at the end of the application, it must be numbered consecutively in a separate series.
[When re-numbering of pages is required as a consequence of addition or excision of pages, this will be carried out by the formalities examiner before grant. Replacement pages therefore should not be required. Numbering with a letter suffix (eg page 2a) is not satisfactory and should be corrected (together with deletion of any explanatory note such as "page 2a follows" on a preceding page) before an application is sent for grant. The formal re-numbering will then be effected prior to B publication. No objection should be raised to the absence of line numbering. ]
PR Sch. 2 14.35 For documents other than drawings, page numbers must be located at para 6 the top or bottom of the page (but not in the margin) in the centre; the numbers are
regarded as part of the text rather than as being in the margin.
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PR Sch. 2 part 1
[If page numbers are in the wrong place and there is a space in the right place, the amendment should be made by the formalities examiner by deleting and re- entering without making an objection. Line numbering may be ignored when measuring margins. ]
Alterations
14.36 All documents, including drawings, making up an application or replacing such documents must be suitable for reproduction and must not include frames (lines surrounding matter).
14.37 Alterations may thus be allowed if they can be regarded as de minimis. Any such alterations in manuscript should be neat and printed rather than written. They must not extend into the minimum margins and they must not be so placed as to hinder the normal scanning of the page by the reader. They must also be in black ink - blue ink is not acceptable as it cannot be reproduced reliably.
[In applying the de minimis rule the overriding consideration is that the resulting document must, in all respects, be suitable for direct reproduction and that the legibility of the text must not be impaired by any alterations. Further, the number of alterations and the manner of their execution should not give the page an untidy appearance. The determination of where to draw the line must be left to good sense. As a guide it may be taken that if, say, one or two words of a claim are changed, the consequential manuscript amendment of these words whenever they occur throughout the description could be permitted. On the other hand, a manuscript amendment of several lines should not be regarded as de minimis. Manuscript insertions made by the examiner should be printed, but objections should not be raised if the applicant or agent writes rather than prints provided the writing is neat and clearly legible. ]
14.38 The question as to what is the number and nature of deletions that would be considered reasonable is a matter for judgement; it should be borne in mind that the aim is to obtain a document which is reasonably free of deletions. It may be reasonable to delete the same word or part of a word throughout the specification, or to delete a few words, all or part of a sentence or a short paragraph on a single page. A single deletion comprising most of a page is not considered reasonable unless it is done in a manner leaving the deleted area blank. Nor is it considered reasonable to have many deletions on a single page, or deletions which break up the text in a manner making reading awkward. No objection is raised to otherwise reasonable deletions occurring on several pages so long as the total number remains moderate having regard to the length of the specification. While the extent of deletions may not be such as to require objection the subsequent inclusion of further deletions may not be allowable.
14.39 Whilst the overriding consideration is that the specification shall be capable of being directly reproduced, there is a further consideration that any deletions should not either by their number or the manner of their execution spoil the appearance of the finished document. Deletions should preferably be effected by erasure or obliteration - visible or "invisible". Striking-out should be clear and neat; a straight-edge should be used, except for crossing out single letters. Deletions should be made in black ink and be such as to ensure satisfactory reproduction. There must be no uncertainty as to the extent of the deletion.
Further requirements for drawings
PR Sch. 2 para. 18
14.40 Drawings must not only be such as to permit direct reproduction, as laid down in paragraph 2 of Schedule 2, but the scale of the drawings and the distinctness of their graphic execution must be such that it would still be clear if it were reduced by linear reduction to two thirds of its original size. Since the drawings when reproduced may be of a different size than when filed, no scale should be specified in words and no dimensions
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should be given in the drawings. If it is considered desirable, a scale or other reference for making reference may be included, but it must be represented diagrammatically.
PR Sch. part 3
2 14.41 Drawings should comprise black lines, but may also include shading so long as the shading does not obscure detail within the drawings. Cross-sections should be indicated by hatching. A specification may include photographs, however as with all parts of the specification, they must be clear enough for reproduction. Colour drawings or photographs are not allowable.
PR Sch. para. 12
2 14.42 Figures of the drawings should be numbered consecutively in a single series, independently of the numbering of the sheets.
PR Sch. para. 20
2 14.43 All numbers, letters and reference signs on the drawings should be simple and clear; brackets, circles or inverted commas should not be used in association with numbers and letters. The capital letters in any typeface or font used in any drawing must be more than 3mm high. The Latin, and, where customary, the Greek alphabet should be used.
14.44 The drawings should not contain extensive textual matter. A few words may be allowed as aiding understanding of the drawings. In the case of electrical circuits and block schematic or flow sheet diagrams, a few short catchwords are allowable and may be desirable. If extensive text is present, such that the sheet may be considered to constitute part of the description, then objection should be raised under r.14(3) together with paragraph 19 of schedule 2, which states that a drawing must not be included in the description.
14.45 The title of the invention, and the applicant's or agent's name, should not appear on the drawings.
14.46 Flow sheets and diagrams are considered to be drawings.
Language
r.14(1) r.113(1) s.15(2)(a)
14.47 Apart from the certified copies of priority applications required by r.8, all documents (including drawings) making up an application, or replacing such documents, must be in English or Welsh. Where the original document is not in English or Welsh this requirement can be met by the foreign-language document being accompanied by a translation into English.
r.12(8) r.12(9)
14.47.1 Notwithstanding the requirement to file an application in English, an application can qualify for a date of filing if the description (or what appears to be the description) is in a foreign language, providing that the indication that a patent is sought and the identity of the applicant (or the means of contacting him) are in English. Where a date of filing is accorded to an application comprising a foreign-language description, the applicant must be notified of the failure to comply with r.14(1). The comptroller may refuse the application if the applicant fails to file a description in English or Welsh within two months of such a notification (extendable at the discretion of the comptroller under r.108(1) together with r.108(5)-(7)).
Content of the application
r.12(4) r.12(7)
14.48 The specification should state the title of the invention and should continue with the description, claim or claims and any drawing referred to in the description or any claim, in that order. Where the specification includes drawings, the description must include a list of drawings briefly describing each of them. The claims should be headed in such a way that the commencement of the claims is clearly identifiable, eg by the title "Claims". In R v Comptroller-General of Patents, ex parte Penife International Ltd [2004] RPC 37 which considered the requirement of Art.11(1) of the PCT to file claims with the application, it was held that a consistory clause setting out the scope of the invention was
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part of the description and was not a claim.
[There is no prescribed preamble to the claims. Although the simple title "Claims" is preferred, no objection should be raised to any title which serves the required purpose. The title "What I (or we) claim is", (as used under the 1949 Act) is allowable. ]
Title
r.12(6) 14.49 The title must be short and indicate the matter to which the invention relates. If it is not in agreement with that given on Form 1, (see 14.04.10), or even if there is no title on the specification, the specification as filed should be published under s.16(1). The substantive examiner will in due course require the presence of a suitable title on the specification but it is permissible for this to differ from that on Form 1; amendment of the latter would not be necessary.
[The maximum length of a title permitted by COPS on the computerised register is 158 characters. If a title to be entered on the Register exceeds this the Office will amend the title accordingly (see also 18.42, 18.86). ]
14.50 The title should not contain a fancy or trade name, a person's name, the word "patent" or the abbreviation "etc" - whatever is intended to be covered by this later term should be indicated more explicitly, or the words "and the like" may, if appropriate and clear in context, be used.
14.51 The titles of specifications (and those on Form 1) are used by patent searchers and to be of assistance in this connection a title should not only adequately indicate the subject of the invention but should also avoid the use of words which might convey different meanings to persons interested in different arts.
Some requirements for the technical content
PR Sch. 2 14.52 The request for grant, the description, the claims and the abstract must para. 19 not contain drawings; any drawings forming part of the specification must be on sheets
which are separate from the text and numbered as a separate series.
r.13(7) 14.53 The description, the claims and the abstract may contain chemical or PR Sch. 2 mathematical formulae. If it is considered necessary an applicant may be required to file a para. 5 copy of such formulae prepared in the manner prescribed for drawings (see 14.31). For
applications which include a sequence listing, this listing is considered to form part of the description (rather than the drawings) and therefore may be inserted at any point in the description. These would then be subject to excess pages fees as they are part of the description. It is usual, however, for the sequence listing to be placed at the end of the description and before the claims. Alternatively, a sequence listing may be set out at the end of the application, in which case it must be numbered consecutively in a separate series to the description and claims, and rule 12(4) does not apply. In this case, the sequence listing would not be subject to excess pages fees. See 15A.04 for practice at preliminary examination stage when a sequence listing has not been filed.
[Rule 13(6) requires that, if it is reasonably possible, a sequence listing shall be delivered in electronic form or using electronic communications, even where the patent application is not delivered in electronic form or using electronic communications.]
PR Sch. 2 14.54 The description and the abstract may contain tables. The claims may para. 22 contain tables of information only if the comptroller agrees. This is one of the requirements r.25(1) set out in part 4 of Schedule 2 and is therefore not a formal requirement. The question as r.14 to whether tables in a claim are allowable is therefore a matter for the substantive
examiner, and no objection should be raised at an earlier stage.
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r.14
PR Sch. 2 part 4 r.25(1)
14.55 The terminology and any references used must be consistent throughout the application for a patent. Only technical terms, signs and symbols which are generally accepted in the field in question may be used. The same features should be denoted by the same reference sign throughout the application. References must only be included in the drawing(s) where they are mentioned in either the description or the claims. These are not formal requirements; hence amendment to meet them should not be required at the preliminary examination stage.
PR Sch. 2 para. 24-25
r.25(1)
14.56 Where units of measurement used in the application are not standard international units of measurement, the equivalent standard international units of measurement must be provided, and where no international standard exists, units must be used which are generally accepted in the field. Temperatures should be given in degrees Celsius (centigrade), except that as a matter of practice, degrees Kelvin are acceptable to express cryogenic or colour temperatures. There is, however, no objection to non- standard units used in a statement of prior art by way of direct quotation.
[Council Directive 80/181/EEC (as amended by Council Directive 89/617/EEC and Directive 1999/103/EC of the European Parliament and of the Council) prescribes the use of SI units. While applicants should be advised to use such units, there is no sanction against the use of non-SI metric-based units (eg Angstrom units), and they should not be objected to. ]
14.57 The EC Units of Measurement Directive (Council Directive 80/181/EEC, as amended by Council Directive 89/617/EEC and Directive 1999/103/EC of the European Parliament and of the Council of 24 January 2000) requires the sole use of metric units in documents (such as patent specifications) sent out by any part of government on or after 1 October 1995. Under transitional provisions which last until 31 December 2009, non- metric units may be used but only in conjunction with metric ones and then only as supplementary indications with metric units predominating. There is therefore an inconsistency between paragraph 24 of Schedule 2 of the Patents Rules 2007 and the Directive in that the Rules permit dual expression without limit to time and without any requirement for metric predominance. The same inconsistency exists between the Directive and PCT Rule 10.1(a). Moreover, for international applications entering the national phase it is not permissible under the PCT to impose national or regional requirements relating to the form or the content of the application different from or additional to those of the PCT itself. Pending resolution of these inconsistencies, examiners should simply ensure that the requirements of paragraph 24 of Schedule 2 are met in any specification sent for grant. No amendment should be required at the preliminary examination stage to secure compliance with that rule, since it does not define a formal requirement nor is it specified in rule 23 as being one of the rules relevant to preliminary examination. Applications which do not comply with paragraph 24 of Schedule 2 (or the Directive) are nevertheless published under s.16 as filed.
[RC35 should be used to object to the absence of metric or Celsius units. When both non-metric and metric values are given, the examiner should not check that the conversions are accurate for consistency's sake, but objection should be raised in the case of manifest error. ]
Section 14(3)
The specification of an application shall disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.
14.58 S.14(3) is intended to have, as nearly as practicable, the same effect as the corresponding provisions of the EPC, PCT and CPC. Article 83 EPC and Article 5 PCT require the invention to be disclosed "in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art". An objection under this section of Art is
s.130(7)
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s.76(2)
often said to relate to “sufficiency of disclosure” or “sufficiency”. The pre-grant provision under s.14(3) accords directly with s.72(1)(c) which sets out the same requirement for the validity of the granted patent. Whilst the bulk of the case law discussed below relates to proceedings under s.72, the principles set out in these cases are pertinent both to s.14(3) and s.72(1)(c).
14.59 It is the responsibility of the applicant to ensure that, at the time of filing the application, the disclosure is clear and complete in respect of the invention claimed in each of the claims. If it is not, then either the application must be refused or, if it is possible to do so, the claims must be restricted to that matter which has been adequately disclosed i.e. that for which there is an enabling disclosure (see 14.67 relating to enablement). Deficiencies in the disclosure cannot be rectified by adding matter subsequent to filing without falling foul of s.76(2).
SUFFICIENCY: SUMMARY OF GENERAL PRINCIPLES
14.60 In Eli Lilly v Human Genome Sciences [2008] RPC 29 at [239] Kitchin J gave the following summary of the relevant principles, to be applied when assessing whether an application satisfies this section of the Act:
"The specification must disclose the invention clearly and completely enough for it to be performed by a person skilled in the art. The key elements of this requirement which bear on the present case are these: (i) the first step is to identify the invention and that is to be done by reading and construing the claims; (ii) in the case of a product claim that means making or otherwise obtaining the product; (iii) in the case of a process claim, it means working the process; (iv) sufficiency of the disclosure must be assessed on the basis of the specification as a whole including the description and the claims; (v) the disclosure is aimed at the skilled person who may use his common general knowledge to supplement the information contained in the specification; (vi) the specification must be sufficient to allow the invention to be performed over the whole scope of the claim; (vii) the specification must be sufficient to allow the invention to be so performed without undue burden."
Similar summaries have also been utilised in a number of court decisions (see e.g. Wobben v Vestas-Celtic Wind Technology Ltd [2007] EWHC 2636 (Pat).)
The purpose of the requirements imposed by s.14(3) and s.72(1)(c) is to prevent a patentee laying claim to products or processes which the teaching of the patent does not enable the skilled addressee to perform (Zipher Ltd v Markem Systems Ltd [2009] FSR 1). Thus, all consideration of sufficiency in essence deals with the extent to which the applicant has provided an enabling disclosure for their invention (see also 2.10 and 72.03).
14.61 Whilst there is only one provision under the Act, it is now settled law that sufficiency in terms of the disclosure being clear and complete enough for the invention to be performed by the person skilled in the art is approachable in three different ways:
(1) Classical insufficiency
(2) Insufficiency by ambiguity
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(3) Insufficiency by excessive claim breadth
A summary of what should be understood by each of these approaches to sufficiency is provided in Zipher Ltd v Markem Systems Ltd [2009] FSR 1, with the first two also being set out in Medimmune Ltd v Novartis Pharmaceuticals UK Ltd, Medical Research Council [2011] EWHC 1669 (Pat). These three approaches will be considered in more detail in 14.67-14.82 below, however first it is necessary to set out some general points common to all three.
Claim construction
14.62 Construction of the claims should be approached in the usual fashion (see s.125). This involves putting a purposive construction on the claims, interpreting them in the light of the description and drawings as set out in Section 125(1).
Date at which sufficiency is judged
14.63 In Biogen Inc. v Medeva plc [1997] RPC 1 the House of Lords held that sufficiency should be decided at the date of filing of the application (rather than the date of publication as had been the case under the 1949 Act). This being the case because “[i]t would be illogical if a patent which ought to have been rejected under section 14(3) is rendered immune from revocation under section 72(1)(c) by advances in the art between the date of application and the publication of the specification.”
The person skilled in the art
14.64 The concept of the skilled person is that of the uninventive, but technically competent person (or team) who is considered for the purpose of assessing inventive step (see 3.26-3.28.2). As stated by Aldous J in Mentor Corporation v Hollister Inc. [1991] FSR 557 (at page 561):
“The section requires that the skilled man be able to perform the invention. Such a man is the ordinary addressee of the patent. He must be assumed to be possessed of the common general knowledge in the art and the necessary skill and expertise to apply that knowledge. He is the man of average skill and intelligence, but is not expected to be able to exercise any invention. In some arts he may have a degree, in others he will be a man with practical experience only. Further, in circumstances where the art encompasses more than one technology, the notional skilled addressee will be possessed of those technologies which may mean that he will have the knowledge of more than one person.”
However, although the phrase “person skilled in the art” is construed in the same way when considering sufficiency and inventive step, for the purposes of s.14(3) the skilled person is seeking to make the patent work and does so with the common general knowledge at the time the patent was filed. In contrast to the situation for inventive step purposes, the skilled worker has the patent in front of them, and thus is “trying to carry out the invention and achieve success,...not searching for a solution in ignorance of it.” (see Zipher Ltd v Markem Systems Ltd [2009] FSR 1 at page 50). This can be significant in determining the nature and skills of the skilled person (or team), as they need not be the same for both inventive step and sufficiency purposes (See Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] RPC 33 at paragraphs 40 and 61-64, and MoPP 3.28-3.28.2).
14.65 In Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] RPC 2, the Patents Court held that where a programmer formed part of the
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addressee team of a computer-based invention, it was essential to form a view of his capabilities. It was mentioned that the writing of anything other than a trivial program required substantial effort in writing and debugging even though much programming required no creative thought and a competent programmer would have substantial experience in his area of expertise.
14.66 The court in Kirin-Amgen Inc. v Roche Diagnostics GmbH [2002] RPC 1 concluded that, once the addressee’s skill and knowledge has been assessed, it may nevertheless be appropriate to consider that the skilled person might consult someone else on a certain point when trying to implement the teaching of the patent. Since a patent is a document which is intended to be practical, rather than theoretical, in nature - and its teaching is there for the purpose of being worked - it would be unrealistic to adopt too rigid an approach to the question of the knowledge of the skilled addressee.
14.66.1 In Regeneron Pharmaceuticals v Kymab Ltd [2018] EWCA Civ 671, it was held that “the skilled person is not bound to carry out the invention precisely as described and can use the common general knowledge to perform the invention and make any obvious changes that may be necessary, provided of course that any work involved is not undue” (see 14.85-14.88 for detail on undue burden).
Classical Insufficiency
14.67 This is the name now commonly given to what was previously understood simply as ‘insufficiency’. It relates to the situation where there is no enabling disclosure. In Zipher Ltd v Markem Systems Ltd [2009] FSR 1 Floyd J offers the following useful summation of the objection:
“Classical insufficiency arises where the express teaching of the patent does not enable skilled addressee to perform the invention. This type of insufficiency requires an assessment …of the steps to which it would be necessary for the skilled reader or team to take in following the teaching of the specification and in order to arrive within the claim. Plainly the steps should not include inventive ones. But a patent can also be found insufficient if the steps can be characterised as prolonged research, enquiry or experiment.”
Degree of sufficiency required
14.67.1 In order to be sufficient the application must include at a minimum something amounting to one embodiment or example that can be put into effect. However this should not be equated with one embodiment being enough to necessarily render the application sufficient as was regarded as the situation under some previous authorities (Chiron Corp. v Organon Teknika Ltd (No.3) [1994] FSR 202 at 241, Mölnlycke AB v Procter Gamble (no.5)[1994] RPC 49). Indeed Generics (UK) Limited and others v H Lundbeck A/S [2009] RPC 13 illustrates how even when a claim defines only a single discrete product, in that case a single chemical compound, there can still be argument over whether that is sufficiently enabled. Instead the application must be sufficient to enable the whole breadth of the claim to be worked. This is discussed further under ‘Insufficiency by excessive claim breadth’ below (14.79-14.82). However in all situations sufficiency is a question of fact – does the patent enable the invention to be worked across the breadth of the claim? The courts have sought to provide some guidance in answering this question, but have warned “one must be on one’s guard against formulations that gloss the statutory requirement as there is always a risk that they will end up being substituted for it” (Halliburton Energy Services Inc v Smith International (North Sea) [2006] RPC 2 at para.133). As noted in Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9 “Whether
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the specification is sufficient or not is highly sensitive to the nature of the invention. The first step is to identify the invention and decide what it claims to enable the skilled man to do. Then one can ask whether the specification enables him to do it.”
14.68 There has been much discussion regarding what should be expected of the skilled worker in establishing this enablement. However, a useful test, given in Edison and Swan Electric Light Co v Holland 6 RPC at page 282, consists in asking whether anything new has to be found out by a person of reasonably competent skill following the directions in the specification in order to succeed; if the answer is yes, the disclosure is not complete enough. Similarly, the classic statement of the test for insufficiency in Valensi v British Radio Corporation [1973] RPC 337 at 377 (CA) is useful:
“We think the effect of these cases as a whole is to show that the hypothetical addressee is not a person of exceptional skill and knowledge that he is not to be expected to exercise any invention nor any prolonged research, inquiry or experiment. He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors in the specification, if a means of correcting them can readily be found.”
14.69 This negative test, the absence of prolonged research, was approved by the Court of Appeal in Mentor Corporation v Hollister Inc [1993] RPC 7 as was the judge in the lower court’s statement regarding the positive test that only the performance of “routine trials” should be required:
“When, a little later, Aldous J came to apply the law to the facts of this case, he refers to "routine trials" and "normal routine matters that the skilled man would seek to do and would be able to do". Mr. Thorley criticises the use of the word "routine". To require the performance of routine trials is, he said, to ask too much of the addressee. I do not agree. "Routine" is just the word I would have chosen myself to describe the sort of trial and error which has always been regarded as acceptable; and "routine trials" has the further advantage that it is a positive concept, which is easily understood and applied. In practice, therefore, it may provide a surer test of what is meant by "clearly enough and completely enough" in section 72(1) of the Act than the negative test proposed in Valensi, namely the absence of prolonged research, enquiry and experiment. If the trials are unusually arduous or prolonged, they would hardly be described as routine.”
14.70 However, it was stressed in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] EWCA Civ 1715 that not only did the setting of a gigantic project, even if merely routine, not satisfy the test, but also that no analogy should be drawn with genetic engineering and pharmaceutical inventions, where much routine work is involved in implementation, as in such cases the work that goes into bringing them to market relates to testing efficacy and safety — not in actually making the invented product.
14.70.1 In Regeneron Pharmaceuticals v Kymab Ltd [2018] EWCA Civ 671 it was held that the patentee does not have to enable each and every embodiment of a claimed invention and that “a claim may encompass inventive improvements of what is described and a specification is not insufficient merely because it does not enable the person skilled in the art to make every such invention. It is important, however, that any such improvement is still a way of working the original invention”. In addition, the court held that if the claim of a patent is adequately enabled across its breadth and its scope is comparable with the technical contribution made to the art, the patent does not cease to be sufficient simply because the specification promises too much. For example, the present case related to genetically modified mice where large sequences of DNA were inserted into the mice’s DNA. At the time of the earliest date, the skilled person was not able to insert large sequences. However, Regeneron argued that the skilled person would be able
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to reduce the size of the DNA sequence and insert each smaller sequence. The court agreed and held that the skilled team would have identified that inserting large sequences would be a challenge but they would also appreciate that an obvious way forward would be to reduce the size of the inserts. Therefore, even though the specification promised too much (i.e. inserting larger sequences), the court held that the skilled person would be able to overcome the challenge and so implement the claimed invention without undue effort.
Quality of product enabled
14.71 In Mentor Corporation v Hollister Inc [1993] RPC 7 (at page 17 lines 4- 14) it was accepted that it was enough that the patent allowed a “workable prototype” to be arrived at with comparative ease (see reference to routine trials above at 14.69) and the requirement was not to produce a “successful commercial product”. Similarly, the fact that a specification does not refer to a step which may well be useful for the purpose of being able to reproduce consistently reliable products of commercial quality and range does not render the disclosure incomplete provided that the directions in the specification lead to a product which has "patent utility", i.e. is suitable for and fulfils the purpose for which the specification states it is intended. For instance, a useful perfecting step in making a compound does not have to be disclosed if the imperfectly produced compound can still be used for the application’s purpose. (American Cyanamid v Ethicon [1979] RPC 215 at page 265). Thus the applicant also does not have to disclose preferred embodiments.
In addition, the applicant is not required to disclose the best method of performing the invention which he is entitled to claim. (Rule 5.1(a)(v) of the PCT specifies that the best mode should be described, but goes on to say that where the national law of a designated state does not require description of the best mode (as in the UK) failure to describe the best mode shall have no effect in that State).
Functional claims
14.72 The criteria for adequacy of disclosure are the same whatever the form of the claim and are not stricter when the claim is of functional form, that is when it is limited by result, e.g. is of the "No-Fume" type (see 14.120), (International Business Machines Corporations Application [1970] RPC 542). However, where claims are defined by functional features or desirable results, the specification does need to provide enough instruction for the skilled person to be able to achieve the desired result without embarking on a research program (see 14.69, 14.82 and 14.87). In order to be sufficient, functional or mechanistic claims must also not be so ambiguous as to be unworkable (see 14.76- 14.78).
Errors and omissions
14.73 An error will not cause a patent to be found invalid, whether it is found in the description or in a drawing, provided that the skilled worker would both observe it and be in a position to correct it. In No-Fume Ltd v Frank Pitchford & Co. Ltd. (1935) 52 RPC 231 at 243 Romer LJ stated:
“The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistake or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency.”
14.74 It is neither necessary nor desirable that details of well-known ancillary
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features should be given, but the specification must disclose any feature essential for carrying out the invention in sufficient detail to render it obvious to the skilled person how to put the invention successfully into practice. In Badische Anilin and Soda Fabrik v La Societe etc du Rhone 15 RPC 359, a specification which referred merely to the use of an autoclave of unstated material, was held to be insufficient. It was necessary for success that an iron vessel be used, and yet it was shown that other autoclaves, e.g. enamelled, were frequently used in the trade.
14.75 In Mayne Pharma v Debiopharm and Sanofi-Synthélabo [2006] EWHC 1123 (Pat), it was held that for a claim defining “a stable oxaliplatin solution formulation comprising oxaliplatin, an effective stabilising amount of a buffering agent ... and a pharmaceutically acceptable carrier” to be sufficient, it must be possible to design a test which can answer the question: “have I used such an amount or not?”. The specification pointed, however, to the answer “you don’t have to add any at all”, and the invention so claimed was therefore insufficiently disclosed.
Insufficiency by ambiguity
14.76 Whilst the skilled person is taken to be trying to make the invention work, as held by Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9, the second way in which sufficiency can arise is when the disclosure is so ambiguous as to make it impossible to know whether one had worked the invention or not. This Lord Hoffman distinguished from a simple lack of clarity in Kirin Amgen. The relevant claim required the recombinant erythropoietin (rEPO) of the invention to have a higher molecular weight compared to urinary erythropoetin (uEPO). However different uEPOs have different molecular weights, thus whether or not a product fell within the claim depended on the choice of uEPO and the specification did not tell the skilled person how to make this choice. Lord Hoffman elaborated “In the present case, however, the choice of uEPO has nothing to do with making the invention work. It is simply a criterion against which one tests whether rEPO falls within the claims...All the skilled man can do is try and guess which uEPO the patentee had in mind and if the specification does not tell him, then it is insufficient.” Elsewhere in his judgement Lord Hoffman provided an artificial example of how lack of clarity can overstep the mark into insufficiency:
“If the claim says that you must use an acid, and there is nothing in the specification or context to tell you which acid, and the invention will work with some acids but not with others but finding out which ones work will need extensive experiments, then that in my opinion is not merely lack of clarity; it is insufficiency. The lack of clarity does not merely create a fuzzy boundary between that which will work and that which will not. It makes it impossible to work the invention at all until one has found out what ingredient is needed.”
Similarly in Sandvik Intellectual Property AB v Kennametal UK Ltd [2011] EWHC 3311 (Pat) (at paragraph 164), a claim to a coating having a particular texture coefficient on a cutting tool was insufficient for ambiguity because calculating the value of the coefficient required reference to a value measured against a standard and there was no disclosure of which of the two widely used common standards was used by the patentee. In this case, this ambiguity only made a difference between infringement and non-infringement at the extremities of this one parameter, nonetheless in those circumstances it was impossible to say whether the product fell within the claim or not, because it was uncertain what the correct test was. In Zipher Ltd v Markem Systems Ltd [2009] FSR 1 (at paragraph 374) Floyd J cautioned that “If the skilled person cannot tell whether he is working the invention or not, the specification is insufficient. It is not, however, enough to establish this type of insufficiency to show that there may be a puzzle at the edge of the claims. It will normally be necessary for the problem to permeate the whole claim”.
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14.77 Functionally or mechanistically-defined uses are not considered to be inherently so ambiguous as to be insufficient by the UK courts. In the context of medical uses, Regeneron Pharmaceuticals v Genentech [2012] EWHC 657 the Patents Court considered whether a claimed use for the treatment of “a non-neoplastic disease or disorder characterised by undesirable excessive neovascularisation” was so ambiguous as not to be defined sufficiently for the skilled person to determine whether or not the claims are infringed. Floyd J rejected this allegation:
“There was no evidence that the skilled addressee would have any difficulty in determining whether a given disease would fall within the terms of the claim as I have construed them.”
14.78 The description is presumed to be addressed to a person skilled in the art who is doing his best to understand and not to criticise; technological defects or obscurities which are unimportant and do not cast doubt on the scope of the invention are not fundamentally objectionable. Objection should not be raised merely because it is possible to describe the invention more clearly, provided there is an invention that is sufficiently described (cf. Schwarzkopf and Ors' Application, 31 RPC 437 at 439).
Insufficiency by excessive claim breadth
14.79 The disclosure of an invention must be sufficient to enable the invention to be performed to the full extent of the monopoly claimed. In contrast to the situation where a patent or application is classically insufficient, there may be an enabling disclosure for some portion of the invention, but not for the full breadth of the claims. It therefore follows that restricting the scope of the claims to that which is enabled can overcome the objection.
The House of Lords in Biogen Inc v Medeva plc [1997] RPC 1 held that for the purposes of s.14(3) and 72(1)(c) the disclosure must be sufficient to enable the whole width of the claimed invention to be performed, and the disclosure of a single embodiment will not always satisfy the requirement regardless of the width of the claim. Insufficiency arising from a disclosure which does not enable the invention to be performed across the entire claim width is thus sometimes referred to as “Biogen insufficiency”. This principle is not confined to chemistry and biotechnology patents. In Nokia GmbH v IPCom GmbH & Co KG [2009] EWHC 3482 (Pat) the patent for synchronization of mobile radio telephones was attacked on the grounds that the whole scope of the claim was not workable. The initial synchronization required “coarse frequency synchronization at least if the accuracy of the carrier frequencies is not adequate, in which case the coarse frequency synchronization operates independently of bursts and determines whether the frequency of the determined carrier is within a tolerance band”. Nokia’s attack was based on the fact that the coarse frequency synchronization was not enabled while IPCom argued that if the coarse frequency synchronization did not work then it would have been possible to obtain an oscillator of sufficient accuracy to avoid the need for coarse frequency synchronisation at all. In effect two methods were claimed and IPCom’s defence was, that if one didn’t work, the skilled person could still perform the other. Floyd J (as he then was) rejected the argument and restated the principle set out in Biogen that the entire scope of the claim must be enabled, not just part of it. In effect both methods had to be enabled.
14.80 Pumfrey J held in Minnesota Mining & Manufacturing Co’s (Suspension Aerosol Formulation) Patent [1999] RPC 135 (at 150-151) that a specification is insufficient if it provides no teaching relating to the criteria according to which the skilled person is taken to be using the invention. What will suffice to satisfy the criterion that the disclosure must be sufficient across the whole width of the claimed invention will vary depending upon the nature of the claim. Thus, for example, when there is in truth more than one product which is claimed, the question has to be asked whether the invention of one product is the
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invention of the other. Unless it is they are different inventions and each must be sufficiently described. A similar conclusion had been reached by the Court of Appeal in that case and Chiron Corp. and ors v Murex Diagnostics Ltd and ors [1996] RPC 535 (pages 612 and 613).
14.81 This approach is consistent with that taken by the EPO Technical Board of Appeal in EXXON/Fuel oils [1994] 9 OJEPO 653 (T409/91) and UNILEVER/Detergents [1995] 4 OJEPO 188 (T435/91) which held that an application should provide enough information to allow a person skilled in the art to carry out substantially all that which falls within the ambit of what is claimed. In T435/91 the Board considered the sufficiency of a 'functional' definition of a component in a claimed composition and found that the indefinite and abstract host of possible alternatives must all be available to the skilled person if the definition is to satisfy the requirement for sufficiency. Novartis AG v Johnson & Johnson [2009] EWHC (Pat) 1671 drew on the EPO case law in T 435/91, T 694/92 and (in particular) T 1743/06 when considering the sufficiency of a claim to a contact lens defined almost entirely by desirable characteristics. Kitchin J (as he then was) stated:
“...a claim to a class of products said to possess a useful activity must be based upon the identification of a common principle which permits a reasonable prediction to be made that substantially all the claimed products do indeed share that activity. Further, it is not permissible to by-pass that requirement simply by adding a functional limitation which restricts the scope of the claim to all products which do have the relevant activity, that is to say all those which ‘work’. In the case of a claim limited by function, it must still be possible to perform the invention across the scope of the claim without undue effort.”
This was upheld at the Court of Appeal in Novartis AG v Johnson & Johnson [2010] EWCA Civ 1039. Jacob LJ observed:
“Generally patents with functional claims give you guidance as to what to do if you embark on a trial and error process. The reader can learn from the errors so as to reach something that works. But not here.”
The claim was therefore considered to amount to “if you try any pair of polymers, to see if they work...and find anything that does, we claim it." Moreover, it was not clear even whether the examples provided in the patent “worked” according to the parameters defined in the claim. The patent was therefore revoked on grounds of sufficiency.
14.82 In American Home Products Corp. v Novartis Pharmaceuticals UK Ltd [2001] RPC 8, the invention concerned the use of a known antibiotic (rapamycin) for the preparation of a medicament for inhibiting organ or tissue transplant rejection. The Court of Appeal reversed the lower court’s decision and held that the claim only covered rapamycin, but did not cover derivatives of rapamycin, and was thus sufficient. The court then observed that, had the claim covered derivatives, the patent would have been insufficient because there was no disclosure in the description enabling the skilled person to decide which of the many possible derivatives would have worked. Although there was a strong possibility that some of the large number of derivatives would work in the same way as rapamycin itself, it was impossible to say which would so work, unless the skilled person undertook the “vast and correspondingly burdensome” research task necessary. Thus the court distinguished between a sufficient description, which requires the skilled person to use his skill to perform the invention, and an insufficient description, which requires the skilled person to go to the expense and labour of trying to ascertain which of the products encompassed by the claim actually has the required properties. Similarly, in DSM NV’s Patent [2001] RPC 35 (see paragraphs 181-194), a claim was insufficient because a skilled worker seeking to implement the invention over the whole width of the claim would have been required to depart from the express teaching of the patent and experiment over a long period of time before possibly achieving the desired result.
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A principle of general application
14.83 The approach taken in the functionally defined cases above (Novartis, American Home Products etc.) deals with the question of where the specification discloses a “principle of general application”. In both Novartis and American Home Products (above), the insufficiency arose in part because the cases did not contain a “principle of general application” by which the limited examples could be said to enable the general terms used in the claims. In Biogen Inc. v Medeva plc [1997] RPC 1 Hoffmann LJ stated:
“Thus if the patentee has hit upon a new product which has a beneficial effect but cannot demonstrate that there is a common principle by which that effect will be shared by other products in that class, he will be entitled to a patent for that product but not for the class, even though some may subsequently turn out to have the same beneficial effect... On the other hand, if he has disclosed a beneficial property which is common to the class, he will be entitled to a patent for all products of that class (assuming them to be new) even though he has not himself made more than one or two of them.”
14.84 Biogen Inc. v Medeva plc (above) was clarified by the Court of Appeal in Kirin-Amgen Inc. v Transkaryotic Therapies Inc. [2003] RPC 3, and at the House of Lords appeal (Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9). Lord Hoffmann held that “a principle of general application” was simply an element of the claim stated in general terms. Such a claim was sufficiently enabled if it could be reasonably expected that the invention would work with anything falling within the general terms. For example, a requirement of “connecting means” was enabled if the invention could reasonably be expected to work with any means of connection, but it was not necessary for the patentee to have experimented with all of them.
Similarly in Regeneron Pharmaceuticals Inc v Genentech Inc [2012] EWHC 657 (Pat) (upheld at appeal Regeneron Pharmaceuticals Inc, Bayer Pharma AG v Genentec Inc [2013] EWCA Civ 93) the Patents Court considered that a second medical use claim relating to “Use of a hVEGF antagonist in the preparation of a medicament for the treatment of a non-neoplastic disease or disorder characterised by undesirable excessive neovascularisation” did relate to a “principle of general application" and as such a claim in correspondingly broad terms was acceptable (See also Examination Guidelines for Patent Applications relating to Medical Inventions in the Intellectual Property Office paragraphs 149 and 156-7). In many of these cases, the extent to which the breadth of the claim is excessive has to be assessed according to how much work the skilled person needs to carry out to make the invention work.
Undue burden
14.85 The specification does not need to disclose all the details of the operation to be carried out in order to perform the invention since an enabling disclosure is to be interpreted by the skilled person, in light of common general knowledge, who is reasonably expected to carry out tests. In Eli Lilly & Co. v Human Genome Sciences, Inc.[2008] EWHC 1903 (Pat) [2008] RPC 29, Kitchin J held that the specification must be sufficient to allow the invention to be performed without undue burden, having regard to the fact that the specification should explain to the skilled person how the invention can be performed. The question whether a burden is undue must be sensitive to the nature of the invention, the abilities of the skilled person and the art in which the invention has been made (at the time of filing).
14.86 It should always be remembered that the skilled person is also taken to be trying to make the invention work, as held by Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9. Thus if the skilled person would quickly realise that
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one method would work and another would fail, the specification is not insufficient because the claim is expressed in terms broad enough to include both methods.
14.87 In Chiron Corp. v Organon Teknika Ltd. [1994] FSR 202 where it took the applicants themselves several years from filing an application, claiming among other things a vaccine, to successfully produce the vaccine, the vaccine claim was held to be invalid. However, in American Cyanamid v Ethicon [1979] RPC 215 at 265, in which it had been contended that a patent claiming a surgical suture made of a particular polymer was invalid for, inter alia, insufficiency in that it did not point out the need for adequately drying the polymer and freeing it from undesired monomer, it was held that the disclosure was not insufficient since these were steps which "the instructed reader desirous of achieving success could be expected, if necessary, to take". Accordingly the hypothetical addressee had to be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors and omissions in the specification if a way of correcting them could readily be found (Mentor Corporation v Hollister Inc [1993] RPC 7), although is not expected to exercise any invention or any prolonged research, inquiry or experiment. Referring to this case, Pumfrey J in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] RPC 2 agreed that the straightforward test for sufficiency was whether the specification required the addressee to carry out tests or developments that went beyond routine trials. Where the specification is very complex and its development would be expected to be accompanied by a great amount of work, it is always necessary to keep a balance between the interests of the public and the interests of the patentee in the sense that it is necessary to guard against imposing too high a standard of disclosure merely because the subject matter was inherently complex.
14.88 The question of an undue burden was at the heart of the sufficiency of a claim to a functionally-defined product in T 1743/06 INEOS/Silicas. In this case, the Board held that, while it was acceptable that the skilled person would need to use a reasonable amount of trial and error to select conditions which would achieve the desired result, there must be adequate instructions in the specification, or on the basis of common general knowledge, to lead the skilled person towards success, through evaluation of initial failures.
Considerations during examination and search
14.89 Care should be taken to make it readily apparent what sort of sufficiency objection is being made. Therefore a classical insufficiency objection should be raised only in the clearest cases, when the disclosure appears inadequate to support a valid claim. However where the claims are unduly broad and speculative objection may be raised under s.14(3) and/or under s.14(5) (see also 14.102-14.104). Such an objection may not be overcome by the addition of further examples or features to the specification since this is prohibited under s.76(2), however an objection to the excessive breadth of the claims under either section may be remedied by restricting the scope of the claims. If made under s.14(3) as an objection to insufficiency due to excessive claim breadth then some indication that a portion of the claim(s) is regarded as enabled should be made clear to the applicant. This is not only an issue to be considered at substantive examination, but the examiner should consider the scope of the search to be conducted in light of the enabled disclosure. If the search has been restricted because only a portion of the claims appear to be enabled then that should be made clear to the applicant either in the search letter, exam opinion or examination report as applicable.
Inventions contrary to well-established laws
14.90 If successful performance of the invention is inherently impossible because it would be contrary to well-established laws (e.g. where the alleged invention is a
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perpetual motion machine) objection may arise under s.14(3). If the claims are directed to its function and not merely its structure objection may also arise under s.4(1) - see 4.05 and also Eastman Kodak Co. v American Photo Booths Inc. (BL O/457/02), in which the hearing officer held that the invention could not function as described and claimed, and so lacked both industrial applicability and sufficiency of disclosure. Similarly, the Hearing Officers in Blacklight Power Inc.’s Application BL O/170/09, and Robinson’s Application BL O/336/08 held that the applications in question were both insufficient and lacking in industrial applicability as the claimed inventions relied on scientific theories of doubtful validity. The hearing officers in these cases followed the test set out in the Patents Court judgment in Blacklight Power Inc. v The Comptroller-General of Patents [2009] RPC 6 and held that there was not a reasonable prospect that the applicant’s theory might turn out to be valid if it were to be fully investigated at a trial – see 4.05.1-4.05.2. Regardless of whether objection arises under s.4(1) or s.14(3), one of the procedures set out in 17.94- 17.96.4 should be followed at the search stage.
Prior art
14.91 The applicant is not obliged to describe or acknowledge the prior art, since the reader is presumed to have the general background technical knowledge appropriate to the art. There may however be instances in which the absence or inadequacy of a statement of prior art renders it difficult to understand how the invention is to be performed. Alternatively, documents found during the search or otherwise, may show that the statement of prior art is inadequate or misleading. This could be the case if an ambiguous presentation gave the impression that the prior art had solved less of the problem than was actually the case.
14.92 A specification may include fair and reasonable comment on prior inventions with a view to distinguishing the invention in suit from them or illustrating its advantages, but no statement disparaging a prior patent or describing it in an unfair or misleading manner should be included. There is however no objection to a mere statement that a prior invention is in some respects unsatisfactory.
References to other documents
14.93 An application as filed may contain a reference to another document or webpage, in which further information is to be found. For example, the application may refer to another document or webpage “the contents of which are incorporated herein by reference”. The allowability of such a reference must be considered if the further information to be found in the other document is essential for there to be a clear and complete disclosure of the invention (see 14.94). On the other hand, a reference to a document containing information which is not essential for sufficiency need not be considered; such references are allowable.
14.93.1 Pumfrey J in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] RPC 2, [2005] EWHC 1623 made it clear that cross-referencing for the purpose of supplementing a disclosure is highly undesirable, stating that applications should be complete in themselves (see paras. 61-62 and 30). Since the date at which sufficiency has to be judged is the date of filing, not the date of publication (see 14.63), Pumfrey J also held in the same case that a document referred to in the specification must have been published by the date of filing the application for a reference to be effective.
14.94 If the information contained in a referenced document is necessary for a person skilled in the art to carry out the invention then the examiner should confirm that the document was published at the filing date. If not, then objection should be raised under s.14(3) informing the applicant that references to documents containing essential information and published later than the filing date, or not at all (including applications withdrawn before publication and applications unpublished at the time of filing of the
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application in suit) should be deleted. Supplementing or replacing of the reference by an indication of the contents of the documents (beyond what is already explicitly contained in the application as filed) is not allowed. Where the publication date of a reference containing essential information is unclear the applicant should be asked to verify the date. For instance, in the case of a reference to a webpage essential for a complete disclosure of the invention, a copy of the verifiably-dated webpage showing its contents prior to the date of filing must be provided. Furthermore, in the situation where it appears to the examiner that a referenced document might contain information necessary for sufficiency but the document is not readily available, the applicant should be asked to file a copy and verify its publication date.
[If the entire text of another specification is appended to the application in suit it should be removed from the copy for publication but should remain on the open part of the file so that it will subsequently be published by laying open. The following footnote should be added to the front page of the published application (see 16.29) - "A specification referred to in the application and appended to it is not included in this publication but is available for inspection in accordance with the provisions of Section 118(1) of the Patents Act 1977". At substantive examination the removal from the specification of the appended specification should be required. Relevant matter from it may be added to the description if required for sufficiency. ]
14.95 Provided that the publication requirements set out above are satisfied and if requested by the applicant, the examiner should allow a reference to be replaced by the matter referred to, provided that, when the reference is to another application, the matter was present in that application as filed. Where the language of the documents referred to is other than English and the disclosure of the invention would not be clear and complete enough without the reference, such replacement (in English) should be required. Where the reference is to a document not readily available to the examiner the applicant should be asked to file a copy and/or a translation, as necessary.
r.44 14.96 There is an indication on the front page of a granted patent specification if that case relates to a “parent” or divisional application. There is no reason why applicants should not be encouraged to include cross-references in other suitable circumstances where the front page of the granted patent will not give any warning of a related application or patent, e.g. where another application of the same date by the same applicant claims matter described in the application in suit.
Trade marks
14.97 The description should be as clear and straightforward as possible, with the avoidance of unnecessary technical jargon. Since however it is addressed to persons skilled in the art to which it relates it is acceptable, and will often be desirable, for it to use technical terms which are well known in that art. Little known or specially formulated technical terms may be used provided they are adequately defined and that there is no generally recognised equivalent. Foreign terms may be used where there is no English equivalent. Terms already having an established meaning should not be used differently if this is likely to cause confusion, but in some circumstances it may be appropriate for a term to be borrowed from an analogous art.
14.98 A recognised trade description should not be used in such a way as to give rise to uncertainty or ambiguity; eg "leather" should not be used as a general term covering materials resembling leather, unless the precise meaning given to the word "leather" is defined. If a specification contains a reference to a proprietary article or specific product the composition of which is not well known, the description should state the composition of the article or the way in which it is prepared. If the applicant maintains that the information is well known in the art, or if the specification so states, and the examiner is
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unable to verify this, evidence in support of the contention may be required.
14.99 The use of proper names or similar words to refer to materials or articles is undesirable in so far as such words merely denote origin, or where they may relate to a range of different products. The product should be sufficiently identified, without reliance on the word, to enable the invention to be carried out by the skilled person. Such words which have generally accepted meanings as standard descriptive terms may however be used without further explanation; examples are Bowden cable, Belleville washer, zip fastener.
CoP 14.100 A trade mark should preferably not be used in a specification since it is an indication of origin rather than of composition or content and on that account cannot properly be used to describe an article. (For trade marks in claims, see 14.137). If a registered trade mark is used it should generally be accompanied by wording showing that it is a trade mark, since its use as a descriptive term without acknowledgement may be prejudicial to the rights of its owner (Official Ruling 1914 (A) 31 RPC Appendix i). However, a word that has been registered as a trade mark only requires acknowledgement if it is being used in the specification with reference to the goods or services for which the trade mark is registered. Acknowledgement should preferably take the form of „( bTM)” inserted after the trade mark. However, use of the symbol ® is also regarded as acceptable. The acknowledging of registered trade marks should extend to their obvious derivatives. Any word which is a trade mark should commence with a capital letter. Any statement that a term is a trade mark or a registered trade mark should not be challenged, nor should any attempt be made to determine whether such a term is being used within its registered class; the registered owner may be using the mark for goods not covered by registration and he may have common law rights to its use in this way. If a mark is known not to be registered it is good practice to indicate the name of the owner. The validity of the trade mark is not material. Community trade marks and international trade marks registered under the Madrid Protocol (and effective in the U.K.) should be acknowledged in exactly the same way as trade marks registered directly with the Office. (For acknowledgement of trade marks without the applicant's consent, see 19.24-19.26).
[In order to check whether a word used in a specification is a registered trade mark, the examiner should access the Trade Mark Database provided on the Office’s external website. This contains details of all trade marks registered or effective in the U.K., including Community and international trade marks effective in the U.K. For advice on how to ensure that trademarks are acknowledged, see 19.24-19.26. See 14.137 if a trade mark is used in a claim. ]
14.101 A number of words which are registered trade marks have come into such general use that the fact that they are trade marks tends to be overlooked. Examples of such words are ‘Bakelite’, ‘Caterpillar’, ‘Filofax’, ‘Frisbee’, ‘Jacuzzi’, ‘JCB’, ‘Kodak’, ‘Lycra’, ‘Rollerblade’, ‘Tabloid’, ‘Thermos’, ‘Vaseline’, ‘Velcro’, ‘Walkman’ and ‘Yale’. Such words should be acknowledged in just the same manner as other less well- known trade marks.
Relationship of s.14(3) with s.14(5)
s.125(1) 14.102 Since "the invention" whose disclosure must be clear and complete is s.76(2) that defined in the claims, the requirement of s.14(3) may overlap with those of s.14(5),
that the claims define the invention, be clear and be supported by the description, since all are concerned with the relationship between the extent of the disclosure and the scope of the claims.
14.103 When considering whether an objection should be made under s.14(3) or under s.14(5) consideration should first be given as to the extent of the enabling disclosure. If the objection to be made is clearly that the, or part of the, claim lacks an enabling disclosure then objection should be made under s.14(3). If the objection is simply one of consistency between the claims and description, or the description in some other way casts doubt on the true scope of the invention, then objection should be made under
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s.14(5)(c). Examples of this would be a reference to an embodiment or variant not falling within the scope of the claims. Many situations will fall between the two scenarios but care should always be exercised to ensure that the invention considered is that of the claims properly construed rather than simply the embodiment(s). However where the claims are unduly broad and speculative objection may be raised under s.14(3) and/or under s.14(5) (see also 14.79-14.82). Such an objection may not be overcome by the addition of further examples or features to the specification since this is prohibited under s.76(2), however an objection to the excessive breadth of the claims under either section may be remedied by restricting the scope of the claims. When considering whether an objection should be made under s.14(3) or s.14(5)(b) then consideration should first be given to whether the unclear word or phrase creates merely a “fuzzy boundary”, as described by Lord Hoffman in Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9, to the scope of the claim or whether it renders it impossible to determine what falls within and without the claim as a whole (see insufficiency by ambiguity above at 14.79-14.82).
14.104 Objection does not arise under s.14(3) merely because particular matter claimed is absent from the description, since it is the specification (which includes the claims) which is required to disclose the invention; objection should in such a case be made under s.14(5)(c), (see 14.145). However while the insertion in the description of a passage in agreement with an originally unsupported claim may overcome the objection under s.14(5)(c), objection will remain if this passage is not in itself a clear and complete enough disclosure of that particular aspect of the invention, so that the applicant has failed to discharge his duty under s.14(3) not only to disclose the invention but to do so in a manner which allows it to be performed.
[Section 14(4) Repealed]
14.105 Subsections (4) and (8) of s.14 were concerned with how an invention which required for its performance the use of a micro-organism could be disclosed. This is now provided for in s.125A.
Section 14(5)
The claim or claims shall -
(a) define the matter for which the applicant seeks protection;
(b) be clear and concise;
(c) be supported by the description; and
(d) relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.
Section 14(6)
Without prejudice to the generality of subsection (5)(d) above, rules may provide for treating two or more inventions as being so linked as to form a single inventive concept for the purposes of this Act.
s.130(7) 14.106 S.14(5) and (6) are specified as provisions which are so framed as to have, as nearly as practicable, the same effect as the corresponding provisions of the
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EPC, PCT and CPC; a.84 EPC and a.6 PCT use essentially the same wording as s.14(5)(a)-(c), and a.82 EPC is essentially the same as s.14(5)(d). (There is no requirement of unity of invention in the articles of the PCT, but Rule 13.1 of the Treaty is essentially equivalent to s.14(5)(d)).
14.107 The provision in the Rules referred to in s.14(6) is to be found in r.16. There is no article in the EPC or PCT equivalent to s.14(6) but Rules 44 and 13.2 of the respective treaties use wording similar to that of r.16. (See further 14.159).
DEFINING THE INVENTION: CLARITY
14.108 With the exception of r.16 there is no provision in the Rules regarding the form and content of claims. Although the EPC and PCT Rules do contain such provisions, s.130(7) is not interpreted as requiring compliance with these rules, and indeed some of the provisions of the EPC and PCT are at variance with UK practice. Rule 43(1) EPC and Rule 6.3 PCT prescribe the so-called Germanic form of claim, in which a recital of the prior art is followed by a statement of what characterises the invention. This type of claim is often described as being in “two-part form”, and in the US is sometimes referred to as a Jepson claim. (The PCT Rule goes on to say that where the national law of a State does not require this form of claiming, failure to use it shall have no effect).
14.109 In contrast it is established practice in UK law that the form of the claim is a matter for the applicant, any claim which fulfils the requirements of the Act being acceptable. Although the Germanic form of claim may in many cases be the most convenient, particularly for example when the invention is an improvement in a known type of apparatus, the applicant cannot be required or urged to present his claim in this way. In British United Shoe Machinery Co Ltd v A Fussell and Sons Ltd, 25 RPC at page 651, it was stated that "a man must distinguish what is old from what is new by his claim; but he has not got to distinguish what is old from what is new in his claim".
CoP 14.110 The claims must be drafted in terms of the technical features of the invention and should not contain any statements relating, for example, to commercial advantages or other non-technical matters. In addition, claims should not define the invention over the prior art by unusual, non-standard or unreasonable parameters against which no comparison with the prior art can be made, unless the invention does not allow of a clear alternative definition. Statements of purpose, or reference to results or desiderata should only be used in claims if they assist in defining the invention and no better mode of definition is possible. It is not necessary that every feature should be expressed in terms of a structural limitation. Functional limitations may be included provided that a skilled person would have no difficulty in providing some means of performing this function without exercising inventive skill (see 14.48 for the relation of claims to the description).
CoP 14.110.1 The claims as a whole should aim to define and delimit the features of the invention, with the independent claims clearly establishing the essential features of the invention as well as sufficient details of interrelationship, operation or utility to establish that the invention achieves the intended objectives. The more independent claims there are, the more doubt is cast on the essential features of the invention, particularly where there is more than one independent claim in the same category, such as multiple independent claims for a product, process, apparatus, or use. The aim should therefore be to define the essential features of the invention using a single claim for each category, and to leave additional non-essential features to dependent claims. Under certain limited circumstances, this may not be appropriate, for example: where the invention relates to a number of closely-related products - such as transmitters and receivers (see 14.161), where there are different uses of a product or apparatus, or where there are closely-related alternative solutions to a particular problem. It follows that claims in a style where many independent claims in one category are included, all of varying scope and features, are
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particularly inappropriate. In addition to lacking clarity, this style of patent claim may also be considered to lack conciseness (see 14.140) and give rise to plurality of invention (see 14.157-14.168).
Construction of the claims
s.125(1) (See also 2.11-2.17, 125 and, with regard to biotechnological inventions, 76A.07-76A.09)
14.111 The requirement that the claims shall be clear applies to individual claims and also to the claims as a whole, and is of the utmost importance in view of the function of the claims in defining the monopoly sought. Each claim should be read giving the words the meaning and scope which they normally have in the relevant art. The claim should also be read with an attempt to make technical sense of it; such a reading may involve a departure from the strict literal meaning of the wording of the claim (see 14.114). The claims are to be interpreted having regard to the description and any drawings (see also 125). If, in a particular case, the description gives the words used in a claim a special meaning, by explicit definition or otherwise, this should be clear from a reading of the claim alone; where a special meaning is given to a term or phrase in a claim by a definition in the description the use of some such phrase as “as hereinbefore defined” will reduce the risk of ambiguity. A reference to prior art in the specification is a factor to be taken into account in interpreting a patent. In Ultraframe (UK) Ltd v Eurocell Building Plastics [2005] RPC 7 the Patents Court held that this would depend on the way the prior art was acknowledged. If the specification identified some particular feature of the prior patent as disclosing a problem which the inventor claimed to have overcome, it might be of considerable relevance in interpreting the width of the claim.
14.112 The prima facie meaning of words used in a claim may not be their true meaning when read in the light either of a definition found elsewhere in the specification or of technical knowledge possessed by persons skilled in the art. In these circumstances a claim may bear a meaning different from that which it would have borne had no such assisting light been available. Thus, if the draftsman has specifically indicated somewhere in the specification what he means by a particular expression, then that must be taken into account – see Kirin-Amgen Inc. v Roche Diagnostics GmbH [2002] RPC 1, in which Neuberger J also cautioned against too heavy a reliance on dictionary definitions, which are “shorn of any relevant context”. The House of Lords appeal on this case, Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9, confirmed that the meaning of words is what the skilled person would have understood the author to mean by using these words. Nonetheless, the starting point for interpreting words – especially non-technical words – in a claim will usually to be their ordinary definition, before considering their context and use in the specification; as held by the Court of Appeal in both Fabio Perini SPA v LPC Group plc and others [2010] EWCA Civ 525 and Occlutech GMBH and anr v AGA Medical Corp. and anr [2010] EWCA Civ 702. Further, in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2010] RPC 8, the Court of Appeal held that the skilled reader is taken to suppose that the patentee knew some patent law – that his claim is for the purpose of defining the monopoly and that it should be for something new. Knowledge of that may well affect how the claim is construed. For instance, the patentee would not be expected to have claimed what he had expressly acknowledged was old.
14.113 There is no justification for departing from the unambiguous and grammatical meaning of a claim and narrowing or extending its scope by reading into it words which are not in it, or for using stray phrases in the body of a specification for the purpose of narrowing or widening the boundaries of the monopoly fixed by the plain words of a claim. For example, the Court of Appeal in Fabio Perini SPA v LPC Group plc and others [2010] EWCA Civ 525 rejected an argument that the word “slit” should have a narrowly-defined meaning based on the exemplification in the patent, rather than the ordinary meaning of a long, narrow opening. The patentee is under a statutory obligation to state in the claims what is the invention he desires to protect. In Glaverbel S A v British Coal Corporation [1995] RPC 255 the Court of Appeal held that the claims should be read
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together with the body of the specification but if a claim is expressed in clear language, ie the meaning of the claim is clear, the monopoly sought cannot be extended or cut down by reference to the rest of the specification. This approach has subsequently been endorsed in, for example, Lubrizol Corporation v Esso Petroleum Co. Ltd [1998] RPC 727 and Cartonneries de Thulin SA v CTP White Knight Ltd [2001] RPC 6.
14.113.1 In the UK, “consisting of” is generally interpreted to mean “consisting exclusively of” whilst “comprising” is generally interpreted to mean “including” (i.e. other integers or features may be present). The conventional interpretation of “comprising” to mean “including” was approved of by Kitchin J. in DLP Ltd’s Patent [2007] EWHC 2669 (Pat), [2008] RPC 11. These terms are considered to be clear unless, on the facts of the particular case, there is genuine doubt as to their meaning. See also 14.123.1.
14.114 In view of the differences in the scope of protection which may be attached to various categories of claim (eg directed to a product, process, apparatus or use), the wording of a claim should leave no doubt as to its category.
Purposive construction; variation in non-essential features of a claim
(see also 125.13-125.14)
14.115 A patent specification should be given a purposive construction rather than a purely literal one as held by Lord Diplock in Catnic Components Ltd and another v Hill and Smith Ltd [1982] RPC 183 (see also 125). Variation in unessential features of the claimed invention may not be sufficient to take a product or process outside the protection of the claim. In Catnic, a claim to a lintel having inter alia a support member "extending vertically" was held to have been infringed by otherwise identical lintels in which the support member was 6 o or 8o from vertical, since this produced a negligible reduction in the vertical support provided by the member. Another example of purposive construction was the interpretation of the word “opaque” by Jacob J in Minnesota Mining and Manufacturing Co. and anr. v Plastus Kreativ AB and anr. (BL C/64/95; upheld on appeal [1997] RPC 737) where he construed the term by considering the stated reason for the flap being opaque, which was to eliminate the disadvantages of the prior art. However, when considering this case in Nikken Kosakusho Works v Pioneer Trading Co. [2005] FSR 15, Mann J held that although the meaning of a word in a claim can be qualified or explained by reference to the objective intended to be realised, this has to be stated clearly enough in the specification; otherwise the skilled but unimaginative reader, through whose eyes the patent had to be read, would be confused.
14.116 [deleted]
14.116.1 For discussion of the Protocol to Article 69 of the EPC, see 125. For a discussion on Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48, see 125.17.3-125.18.5 and 125.26.
Inventions defined by ranges
14.117 In Auchincloss and another v Agricultural & Veterinary Supplies Ltd. and Others [1997] RPC 649, Peter Prescott QC (sitting as a deputy judge) distinguished (at pages 663-665 and 689) a stated range from the term “descriptive word or phrase” used by Lord Diplock in Catnic and found that a departure from this range, however small, is not a variant in the Catnic sense. He stated (at page 689):-
"The aim of the Catnic line of cases is to ascertain the purpose of the patentee, but objectively, that is, through the eyes of the skilled reader of the document. Where the patentee has expressed himself in terms of a descriptive word or phrase there may be room for supposing that he was using language figuratively, and did not intend to restrict himself to the purely literal meaning. But where the patentee has defined an integer of his claim in terms of a range with specified numerical limits at each end, his purpose must be taken to have been to claim thus far and no
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further."
14.117.1 In Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] RPC 2, Pumfrey J held that a claim which defined the axial force on each cone as being between 31 and 35 per cent of the total axial force should be construed to mean the specified number to two significant figures, so including, for example, 30.500 per cent to 35.499 per cent.
14.117.2 In Smith & Nephew Plc v Convatec Technologies Inc [2015] EWCA Civ 607 Kitchen LJ confirmed that the approach to the interpretation of claims containing a numerical range is no different from that for any other claim. That is, the claims are construed to mean what a skilled person would have understood them to mean. The judge also considered a series of relevant cases and drew out certain points of particular relevance to claims which include a numerical range. First, the scope of any such claim must be exactly the same whether one is considering infringement or validity. Secondly, there can be no justification for using rounding or any other kind of approximation to change the disclosure of the prior art or to modify the alleged infringement. Thirdly, the meaning and scope of a numerical range in a patent claim must be ascertained in light of the common general knowledge and in the context of the specification as a whole. Fourthly, it may be the case that, in light of the common general knowledge and the teaching of the specification, the skilled person would understand that the patentee has chosen to express the numerals in the claim to a particular but limited degree of precision and so intends the claim to include all values which fall within the claimed range when stated with the same degree of precision. Fifthly, whether that is so or not will depend upon all the circumstances including the number of decimal places or significant figures to which the numerals in the claim appear to have been expressed.
14.117.3 The judge went on to determine that in this particular case the claimed range of “between 1% and 25%” would be understood by a skilled person to include all values greater than or equal to 0.5% and less than 25.5%. That is, the claim would include all values which would fall within the claimed range, once the values are rounded to the nearest whole number. He found that in the context of the claimed method, the purpose of expressing numbers to a particular degree of precision was to convey to the reader the range of permissible values and the accuracy with which those values need to be determined. The judge dismissed the ‘significant figures’ approach (which would have resulted in the claimed range including all values greater than or equal to 0.95% and less than 25.5%) in part because this would require values close to the bottom of the range to be determined with much greater accuracy than those near the top.
14.117.4 The above approach was reaffirmed in Napp Pharmaceutical Holdings Ltd v Dr Reddy’s Laboratories (UK) Ltd [2016] EWCA Civ 1053. Floyd LJ agreed with the decision in Smith & Nephew Plc, that claims must be construed to mean what the skilled person would understand them to mean. All of the figures in the patent were multiples of five. Floyd LJ stated that even though this is the case, this fact says nothing about the degree of precision to which these numbers are expressed and that this does not contradict the skilled person’s normal understanding that numbers written in this way would be treated as expressed to the nearest whole number. Floyd LJ also stated that the term “about” in a claim (e.g. about 10%) suggests that something wider was meant than if the word “about” was omitted and that a more generous degree of imprecision was claimed. He concluded, agreeing with the decision of the Patents Court, that “about 10%” in the claim should extend to 9-11%.
14.117.5 For situations in which the application in suit specifies a range which overlaps with a range disclosed in prior art, see 2.06.2.
Invention defined by reference to intended use
14.118 A claim to an apparatus or material for a particular purpose is construed as a claim to any apparatus or material having the features specified which is suitable for that purpose (see 2.12-2.14). On the other hand, a claim to something "when used in" a
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particular process is regarded as protecting only the use of the invention in this way (see 2.15), while a claim to "the use of" a material is regarded as equivalent to a claim to a method of using the material (see 2.16).
14.119 A claim merely directed to "Apparatus for carrying out the method of .... according to claim X", or some such wording will not normally be clear in scope. For further discussion of construction of phrases such as “for”, “suitable for” and “adapted to” see 2.12-2.14.1.The claim should normally clearly specify the essential features of the apparatus unless all the integers which would constitute such apparatus are clearly implicit in the method claimed, and all such apparatus would be novel and non-obvious.
14.120 The area defined by the claims must be as precise as the invention allows. As a general rule, claims which attempt to define the invention, or a feature thereof, by a result to be achieved should not be allowed. However, they may be allowed if the invention can only be defined in such terms or cannot be defined more precisely without unduly restricting the scope of the claims and if the result is one which can be directly and positively verified by tests or procedures adequately specified in the description and involving nothing more than trial and error. In No-Fume Ltd v Frank Pitchford Co Ltd, 52 RPC 231, a claim to an ash receptacle for smokers in which the dimensions of certain parts were such that smoke from objects thrown into the receptacle did not emanate from the receptacle was allowed on the grounds that the invention could be realised by dimensions other than those disclosed, by experiments not involving inventive ingenuity. However, claims of this kind are generally undesirable and it should be noted that the No-Fume claim was allowed solely because the invention did not admit of precise definition independently of the result achieved. Any claim which includes a subordinate clause prefaced by words such as "so that" or "the arrangement being such that" requires special consideration from this point of view. In BL O/031/17, the hearing officer considered a claim defining a seating assembly for an aircraft cabin. The claim was defined by the result that a passenger access path was produced between seats. The hearing officer found it was possible to define the invention without reference to the result to be achieved, however defining the invention in any other way would unduly restrict the scope of the monopoly sought. He also determined that the claimed result could be easily verified by a person skilled in the art. Based on these findings, and on the specific facts of the case, he concluded that the claim was clear despite being defined by result.
Product by Process claims
14.120.1 The House of Lords in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 held that ‘product-by-process’ claims (e.g. “Product X obtained by process Y”) should be construed as a claim to the product as such in line with EPO practice (see Decision T 150/82 International Flavors and Fragrances Inc [1984] OJEPO 309); this is irrespective of whether the term “obtained”, “obtainable”, “directly obtained” or an equivalent wording is used. Claims for products defined in terms of a process of manufacture are allowable only if the products as such fulfil the requirements for patentability; a “product-by-process” claim is not rendered novel merely by the fact it is produced by means of a new process (see also 2.15). A claim for a patentable product defined by its process of manufacture is only allowable if the product cannot satisfactorily be characterised by reference to its structure or composition; if the product can be defined by other means, an objection under clarity and/or conciseness should be raised. Product by process claims can be difficult to identify so care should be taken when assessing claims. If a product claim includes any method or process steps (even if those steps are not explicitly defined as ‘manufacturing’ steps), the claim is a product by process claim. For example, a claim to “an apparatus comprising features A and B, where feature A is treated in an oven”, is a product by process claim. In addition, a product by process claim will result if a product claim incorporates method/process steps as a result of a reference to another claim.
Chemical cases
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14.121 Where the invention relates to a chemical compound it may be characterised in a claim in various ways, eg by its chemical formula, or, exceptionally, by its parameters or as a product of a process. Characterisation of a chemical compound solely by its parameters should, as a general rule, be allowed only in those cases where the invention cannot be adequately defined in any other way, for example in the case of macromolecular chains. In such cases however only parameters usual in the art should be employed to characterise the compound, since use of unusual parameters may disguise lack of novelty (see 2.18-2.20 and 3.88-3.93).
14.122 Chemical "process" claims should define the starting material, the end product and also the means adopted for converting the one into the other (British Celanese Ltd's Application, 51 RPC 192). The definition of a process in the claims with reference to such "tools of the trade" as condensation, polymerisation, esterification and sulphonation, or even by the use of the term "reacting", is permissible provided the specification contains no reservations affecting the universality of the process. In Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9, the House of Lords held that the protection conferred by a process claim should extend to products directly obtained by the process in accordance with EPC Article 64(2) (see also 14.120.1)
14.123 The extent to which the ingredients of a composition need to be specified in order adequately to define the invention depends greatly on the subject-matter concerned. Thus a claim to "a pharmaceutical composition containing compound X together with a diluent or carrier" is allowable, X being a medically active compound which characterises the composition, and the diluent or carrier being any material suitable for the purpose and being choosable by knowledge of the art or by non-inventive experiment. In the field of alloys, sufficient of the constituents should be specified such that the claim is not speculative and is adequately supported by the disclosure.
14.123.1 In EPO Decision T 589/89, NATIONAL RESEARCH/Polyurethane compositions ([1994] EPOR 17), the use of the word "comprising" was held to mean that further reactive ingredients may be present in the claimed composition. However, where the word "consists" is used, the proportions of the specified ingredients must total 100 per cent (EPO Decision T 711/90, unreported). This is consistent with the long-standing practice in the UK that “consisting of” is generally interpreted to mean “consisting exclusively of” whilst “comprising” is generally interpreted to mean “including” (i.e. other integers or features may be present). The EPO has interpreted the phrase “consisting essentially of” as meaning that unspecified components could be present in the claimed composition if the characteristics of the claimed composition are not materially affected by the presence of these unspecified components (EPO Decision T 472/88, GENERAL ELECTRIC/ Thermoplastic resin ([1991] EPOR 486), EPO Decision T 340/89, GENERAL FOODS/caffeine ([1992] EPOR 199), EPO Decisions T 522/91 and T 759/91(each unreported)). This settled view of the EPO is followed in the UK. This has been confirmed by Anan Kasei Co Ltd & Rhodia Operations SAS v Molycorp Chemicals & Oxides Ltd [2018] EWHC 843 (Pat). Thus a claim to a composition "consisting essentially of X, Y and Z" could be found to be anticipated if the prior art includes such a composition which also contains other components which do not appear to materially affect its characteristics (e.g. its activity or function).
Omnibus claims
r.12(6A) 14.124 Claims to the preferred embodiments of the invention which end with some such words as "substantially as described and shown (or illustrated) in the accompanying drawings" are limited to the embodiments described and depicted in the drawings. Such claims fall within the type known as "omnibus" claims which also include claims referring to examples (eg in chemical cases) or to tables. As a result of the Patents (Amendment) (No.2) Rules 2016, it is not possible to include omnibus claims in UK patent applications, unless this is the only way to define the technical features of the invention clearly and
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concisely. If in response to an objection to an omnibus claim the applicant demonstrates that the invention cannot otherwise be clearly and concisely defined using words, a mathematical or chemical formula or any other written means, the examiner should allow the omnibus claim to remain. An example might be where the invention involves some peculiar shape, illustrated in the drawings, but which cannot be clearly defined either in words or by a simple mathematical formula.
[Substantive examiners should raise an objection to any omnibus claims present in a pending patent application, using PROSE clause RC37, unless:
(a) A notification of intention to grant has already issued; or
(b) The examiner is already convinced that the technical features of the invention cannot otherwise be clearly and concisely defined.
Examiners should note their reasons for not raising an objection in a minute.]
14.125 An omnibus claim should not suggest that a drawing, example or table illustrates or exemplifies the invention if it does not, for example if it is present for comparison or as prior art, but there is no objection to referring to the invention "as described with respect to" such drawings, examples or tables, provided the wording of the claim and of the description makes the position clear. However the words "substantially as described" are insufficient by themselves to limit a claim to the embodiment described, and its scope will be construed to be as wide as the statement of invention. In such cases care should be taken to ensure that the invention is set forth in precise terms in the body of the specification, that ambiguity does not arise (see 14.139.1 and 14.139.2) and that the statement of invention is not broader than the main claim (see 14.146). With regard to omnibus claims of copending applications describing the same apparatus, see 18.95.
14.125.1 In Raleigh Cycle Co Ltd and Anr. v Miller and Co Ltd, 65 RPC 141, an omnibus claim directed to a generator "constructed, and arranged substantially as described with reference to and as illustrated in the accompanying drawings" was construed as a narrow claim, but was held, by virtue of the qualification "substantially", to have been infringed by a generator not having stepped stator windings, even though the only embodiment specifically disclosed did have such windings. In Jansen Betonwaren B.V. v Ian Robbie Christie (BL O/496/15) the Hearing Officer considered the validity of an omnibus claim to “A building block substantially as described with reference to the drawings.” The claim was construed narrowly such that it required the “four main design features” disclosed in the description and all features shown in the sole figure. The claim was nevertheless determined to lack novelty on the basis of prior public use. The Hearing Officer also found an even narrower construction of claim 1 was possible. Under this construction the claim required the building block to be manufactured using “a mix of concrete sand and cement as well as elastomer and thermoplastics”. The additional limitation rendered the claim novel over the alleged prior use but resulted in the disclosure being insufficient.
Disclaimers 14.126 A disclaimer is a form of claim limitation. It is an amendment to an already existing claim comprising the incorporation of a “negative” technical feature. Typically, this will entail excluding specific embodiments or areas from a general feature. A disclaimer is allowed if what remains once the disclaimed material has been subtracted from the claim is clearly supported; that is, the disclaimer does not add matter contrary to s.76(2). An amendment to a claim by the introduction of an “undisclosed” disclaimer, where neither the disclaimer as such nor the subject matter excluded by it was disclosed in the application as filed, may be allowable providing certain criteria are met (see 14.127). These criteria were set out by the EPO Enlarged Board of Appeal in joined cases G1/03 (Disclaimer/PPG) and G2/03 (Disclaimer/Genetic Systems) [2004] 8-9 OJEPO 413 and [2004] EPOR 33. The Board later confirmed in G2/10 (Disclaimer/SCRIPPS) that if the criteria for allowing an undisclosed disclaimer were met the subject matter remaining in the claim after the introduction of the disclaimer would still need to be disclosed in the application as filed.
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14.127 The Board held that an undisclosed disclaimer is allowable in the following circumstances:
a) Delimiting a claim against an anticipation published after the priority date. Where a novelty objection is raised under section 2(3), an undisclosed disclaimer may be allowed to distinguish between an application and the s.2(3) prior art. The purpose of a disclaimer excluding a conflicting application is merely to take account of the fact that different applicants are entitled to patents in respect of different aspects of inventive subject matter. The disclaimer splits the invention as a whole into two parts: in respect of the identical part, it preserves the rights of the first applicant; for the rest, disclosed for the first time in the later application, it attributes the right to the second applicant;
b) Delimiting a claim against an anticipation in an unrelated field that the skilled person would never take into consideration (i.e. an accidental anticipation). This occurs when a piece of prior art would be disregarded by the skilled person, either because it belongs to a technical field remote from that of the invention, or because its subject matter suggests it would not help to make the invention. An undisclosed disclaimer may be allowed to distinguish an application from prior art such as this, even if cited under s.2(2). Take, for example, a claimed invention that concerns a large group of chemical compounds with certain properties which are advantageous for a specific use. One single compound within that group turns out to be known for a completely different use and, therefore, only properties irrelevant to the new use are known. A disclaimer may be used to prevent that one single compound from presenting a bar to patenting the group. A disclaimer cannot be used to delimit a claim against an anticipation that is not accidental;
c) Delimiting a claim against subject matter excluded from patentability for non-technical reasons, such as methods of treatment of the human body or inventions contrary to public morality For example, a method of avoiding offspring of a certain sex would be contrary to public morality when applied to humans, but not when applied to cows. If the claims are directed broadly to mammals, an undisclosed disclaimer may be used to exclude human beings and so avoid objection under s1(3). A disclaimer that excludes subject matter not eligible for patent protection may only serve the purpose of removing such specific legal obstacles. It is unlikely that a disclaimer can be used to disclaim excluded matter in general in order to meet to the requirements of novelty, inventive step, clarity and support, which all claims must satisfy;
Undisclosed disclaimers cannot be used to delimit a claim against non-working embodiments. If a claim is directed to a large number of alternatives, some of which do not work, then either the specification will contain sufficient criteria for finding appropriate alternatives over the claimed range or there are problems relating to the sufficiency of disclosure of the invention or the level of inventive step. A disclaimer is inappropriate for dealing with either of these situations. Furthermore, the disclaimer should not remove more than is necessary either to restore novelty or disclaim excluded subject matter. A disclaimer that was relevant to assessment of inventive step or sufficiency of disclosure would add subject matter and would not be allowed. The approach in G1/03 was affirmed by the Board in G1/16. In this decision, the Board also held that an undisclosed disclaimer “must not provide a technical contribution to the subject matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure”.
The decision of the Board was considered in M-Systems Flash Disk Pioneers Ltd v Trek Technology (Singapore) Pte Ltd (BL O/318/06), where amendment by undisclosed disclaimer was held in principle to be allowable to limit a claim in the light of conflicting prior art under s. 2(3), although the Hearing Officer was unable to exercise discretion to allow the amendment on other grounds. In Sudarshan Chemical Industries Ltd v Clariant Produkte (Deutschland) GmbH [2014] RPC 6 the Court of Appeal upheld the view of the lower court that the disclaimer resulted in a monopoly of ambiguous and uncertain scope and, having considered the board decision in G1/03, that it resulted in the disclosure of added matter. It was held that, far from the prior art disclosure being in a remote technical field, the prior art was in fact the most directly relevant earlier disclosure and the starting
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point from which the invention of the patent in suit had been made. In other words the circumstances in this case were not those described in 14.127 b) above.
Clarity 14.128 A claim is bad if it contains internal contradictions. The EPO Technical Board of Appeal has held that a claim to a composition containing, inter alia, 40-95% of polyamide was not clear since, even if the other essential constituents were present in the minimum quantities specified the maximum amount of polyamide that could be present was 89% (Decision T02/80; OJEPO 10/81).
14.129 A claim should not include vague or equivocal forms of wording which leave the reader in doubt as to the exact scope of a feature. Examples of this are relative terms such as "thin", "wide", "strong". If such terms appear in a claim it is usually necessary to have them either defined or excised. No objection arises, however, if the relative term has a recognised meaning in the art, eg "high-frequency amplifier", and this is the meaning intended. The term “predetermined” may need consideration: it may be meaningful in some contexts, e.g. to distinguish between fixed and variable values, but meaningless in other contexts, e.g. where all comparable values are fixed. In Nikken Kosakusho Works v Pioneer Trading Co. [2006] FSR 4, a tool chuck had “an annular groove of predetermined depth”, and it was held that this phrase was objectionable and in itself implied nothing about either the criteria for choosing the depth, or the range of values it should have. On the other hand, in Folding Attic Stairs Ltd v Loft Stairs Co. Ltd. [2009] FSR 24, the Patents Court held that a claim to a manufacturing process wherein an element was spaced at “a preset distance” from another element was meaningful in the context of the claim; it meant the spacing between these elements was selected by the manufacturer with a specific aim as described in the specification. The term “predetermined size” in the same claim was also held to be clear in context. Hence, if it is clear from the description that these factors are essential to the performance of the invention, they should be made explicit when clarifying the claims.
14.129.1 Although the claims are interpreted in the light of the description, it was held in IGT/Acres Gaming Inc.’s Application [2008] EWHC 568 that if a claim seems to bear a meaning that is, in fact, inconsistent with its real meaning when read in the context of the whole document, the claim is obscure and open to objection under s.14(5)(b) because the reader may be misled as to its scope.
14.130 Generalising expressions such as "substantially" or (applied to numerical data) "about" should be construed, both as regards the extent of the monopoly and the relationship between the invention and the prior art, according to the subject-matter and the context. They may be allowable if they do not render the scope of the claims indeterminate. In PLG Research v Ardon, [1995] RPC 287 Aldous J. applied the Catnic principle in holding that "substantially uniplanar" did not exclude an insubstantial departure from uniplanarity due, for example, to features inherent in manufacture. "Uniplanarity" should be judged on the basis of the eye of the skilled addressee, who would judge a departure by its size and quality. On the other hand, where such generalising expressions are inappropriate, eg a reference to "an alkyl group containing about five carbon atoms", objection should be raised.
14.131 The question as to whether such terms as "back", "front", "above", "upwardly", are allowable or whether they introduce uncertainty into the claim, must be decided upon the facts of the case. Particular care is needed when for example the location of a feature of the invention is defined by reference to apparatus not forming part of the invention claimed or even by reference to a person using the invention, although there will be many instances when such references are rendered clear by the inclusion of expressions such as "when in use", or "when held by an operator".
14.132 Expressions such as "preferably", "for example", "such as" or "more particularly" should be objected to if they cast doubt on the scope of a claim.
14.133 A claim whether independent or dependent, can refer to alternatives provided that this does not make the claim obscure or difficult to construe (see also 14.164).
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However, such claim formulations should be avoided if, by reason of the large number of alternatives, the generality of the claim is impossible to search in its entirety. Markush claims are an example of this type of claim: such claims set out a number of alternatives (possibly using words such as “selected from the group consisting of …”). They are often used in chemical cases as a way of setting out various functionally-equivalent alternatives in one or more parts of the chemical compound being claimed.
14.134 A claim whose wording suggests that it is appendant to a preceding claim, so that it purports to incorporate all the features of the preceding claim, but which on inspection is found not to be properly so appendant (since, for example, it states that a feature of the preceding claim is omitted or replaced by a different feature, so that the claim is not fully limited by the terms of the preceding claim) may be open to an objection of inconsistency. However a claim which expressly states that it is directed to a modification of the subject-matter of an earlier claim and particularises the modification may be acceptable, provided the scope of the claim is clear. Care should be taken to ensure that a search carried out in respect of a claim which is modified in this way by a later claim has covered the matter claimed in the later claim. (See also 14.164).
14.135 When a claim includes reference letters or numerals used in the description and drawings these should not influence the construction of the claim, but should be taken as a helpful identification of features in the specific embodiment which may help a reader orient himself at the stage when he is trying to work out what the patent is about (as held in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2010] RPC 8, and confirmed in Jarden Consumer Solutions (Europe) Ltd v SEB SA & Anor [2014] EWCA Civ 1629). The only restriction brought about by the inclusion of such reference letters or numerals is that the claim must be interpreted so as to include the specific example (Rodi and Wienenberger AG v Henry Showell Ltd, [1966] RPC at page 453). No objection should be raised to the presence of the references. (In contrast applicants for patents under the EPC or the PCT are urged, by Rules 43(7) and 6.2(b) of the respective treaties, to use references in their claims. The PCT rule goes on to say that such references may be removed by a designated Office for the purposes of publication; this is not the practice of the UK Office).
14.136 Although ideally it should be possible to ascertain the scope of any claim of a specification without recourse to other documents, (and certainly without recourse to evidence of what a patentee intended a claim to mean - see Glaverbel v British Coal Corporation and anr [1995] RPC 255), the inclusion of a reference to an earlier specification as one of the integers of a claim is not completely precluded. The overriding consideration is the clarity of the claim. A reference to a feature "as described in" an earlier document will not normally be clear in scope. It should also be remembered that if the reference is to a claim of an earlier patent specification, this may subsequently be amended, thereby altering the scope of the claim under consideration. The availability of the other document and inconvenience to a reader should also be borne in mind; in particular, objection should always be raised if the document referred to is in a foreign language. (Whether a reference can be replaced by matter from an earlier specification depends on its date of publication - see 14.85).
14.136.1 Claims defined by an industry standard which could change over time should generally be objected to under clarity. This was discussed in paragraphs 26-28 of the Hearing Officer’s decision in Bilgrey Samson Ltd’s Application, BL O/577/01.
14.137 Since a trade mark is indicative of the origin of goods rather than of their content or composition, the use of a Trade Mark in a claim should generally only be permitted where the applicant is able to show that its use is unavoidable and does not introduce ambiguity. However, in limited circumstances such as when trade marks relate to internationally agreed standards which specify the technologies identified by those trade marks, for example Bluetooth and WiFi, these trade marks may be allowable.
[If a Trade Mark is used in a claim, RC12 should be added to RC11 (see 14.100- 14.101, 19.25-19.26). Senior Examiners may decide to allow a reference to a Trade Mark in a claim without consulting their Deputy Director but Examiners
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should only allow such references with the concurrence of their senior officer. ]
14.138 Claims containing two or more sentences have always been resisted on the grounds of ambiguity. In Leonard's Application [1966] RPC 269, it was held that claims consisting of disjunctive sentences would of necessity give rise to uncertainty as to the precise scope of the monopoly sought, but a claim was eventually allowed directed to "an automatic change speed transmission having all the following characteristics in combination ...." followed by numbered paragraphs (each a separate sentence) setting out the characteristics of the transmission.
14.139 Claims directed to “Any novel matter ...” or which are similarly directed areCoP unacceptable and should not be filed as they serve no useful purpose: in particular such claims cannot be relied upon to form the sole support for claiming a broad scope of protection in a subsequent divisional application. These claims should be ignored at the search stage and their removal should be required before the application proceeds to grant.
14.139.1 [Moved to 14.144]
14.139.2 [Moved to 14.144]
14.139.3 [Moved to 14.144.1]
CONCISENESS
14.140 The requirement that the claims shall be concise refers to the claims in theirCoP entirety as well as to the individual claims. The number of claims must be considered in relation to the nature of the invention the applicant seeks to protect. In Contra Vision Ltd’s Patent (BL O/079/00) a request to amend the claims was refused partly on the grounds that the proposed amendments would have resulted in sixty-eight independent claims and a four-fold increase in the total number of claims, and thus the claims would not have been concise. A lengthy statement of claim in which the wording of one claim is repeated to an unnecessary extent is open to objection (Bancroft's Application 23 RPC 89). It follows that a statement of claim is not allowable if it is framed on the American system to include a long series of claims which are independent of each other yet almost identical in subject- matter. Multiple independent claims of slightly varying but overlapping scope also open up the need for analysis of subject matter common to those independent claims, with the result that plurality of invention may be found (see 14.157-14.168).
14.141 Each claim should cover some area of subject-matter not the subject of another claim, and objection should be raised when two or more claims are coterminous. While the Courts will if possible construe the claims so as to give a different meaning to each one, if little or no difference can be found between two of the claims, this affords no ground for departing from the reasonable and natural meaning of the language.
SUPPORT BY THE DESCRIPTION
14.142 The words “supported by the description” were new in the 1977 Act, replacing the 1949 Act requirement that the claims had to be fairly based on the matter disclosed in the specification. In Schering Biotech Corp's Application [1993] RPC 249 Aldous J felt that it was not right to rely on cases decided under the "fairly based" requirement and emphasised the importance of coming to the right decision since a patent, when granted, cannot be attacked on this ground (see 14.152).
14.142.1 The view of the EPO Technical Board of Appeal in AgrEvo UK Ltd (T 939/92 OJEPO 6/96) was that "support by the description" means that the technical features stated in the description as being essential features of the described invention must be the same as those used to define the invention in the claims, for otherwise the claims would not be true definitions but mere descriptions. This view that support is purely
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a drafting matter does not clearly correspond, for example, with the view of Aldous J in Schering Biotech Corp's Application [1993] RPC 249 (see 14.149). Thus, until such time as the courts endorse the EPO's interpretation of support in AgrEvo UK Ltd, the guidance given below should be followed.
14.143 Most claims are generalisations from one or more particular examples. The extent of generalisation permissible is a matter which must be judged in each particular case in the light of the relevant prior art. Thus an invention which opens up a whole new field is entitled to more generality in the claims than one which is concerned with advances in a known technology. A fair statement of claim is one which is not so broad that it goes beyond the invention nor yet so narrow as to deprive the applicant of a just reward for the disclosure of his invention. The applicant should be allowed to cover all obvious modifications, equivalents to and uses of that which he has described. In particular, if it is reasonable to predict that all the variants covered by the claims have the properties or uses the applicant ascribes to them in the description he should be allowed to draw his claims accordingly.
14.144 Where there is any serious inconsistency between claims and description, amendments to remove this will be required. For example:
• The description may state, or may imply, that a certain technical feature not mentioned in the main claim is essential to the performance of the invention. In such a case, the claims should normally be amended to include this feature. If however the applicant can show convincingly that it would be clear to a person skilled in the art that the description was incorrect in suggesting that the feature in question was essential, and if the main claim which implies (by omission) that the feature is not essential was present on the date of filing, amendment of the description may be allowed instead.
• Another form of inconsistency is where the description and/or drawings include one or more embodiments of the invention which appear to fall outside the subject- matter covered by the claim (eg the claims all relate to a control system employing an electric servo-motor and one of the embodiments employs a hydraulic servo- motor as an alternative). Here again either amendment of the claims or of the description and drawings is required to remove the inconsistency and thus avoid any possible uncertainty which could arise later as to the meaning of the claims. This can also occur where a particular part of the description or the drawings does not exemplify the invention claimed, for example where it is included to explain the invention or for comparison or where it relates to prior art, this should be made clear. This issue can arise, for example, where the description refers to ‘aspects / features / clauses / summaries of the invention’ which are not consistent with the claimed invention.
• The description sometimes includes general statements which suggest that the scope of protection is broader than the claims. For example that ‘the invention includes any novel combination of features in the description’ or ‘the invention should be taken to include any modifications, whether novel or not’. In this case, amendment will be required so that the description does not cast doubt on the scope of the invention claimed.
14.144.1 The test set out in Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48, is for determining whether certain equivalents fall within the scope of protection of the claims. This test does not mean that all equivalents are protected by the claims. Therefore any general statement within the description stating that the scope of protection of the claims includes all equivalents is not allowable (see 125.18.6).
14.145 Where certain subject-matter is clearly disclosed in a claim of the application as filed, but is not mentioned anywhere in the description, it is generally permissible to amend the description so that it includes this subject-matter. When however original claims filed later than the filing date of the application contain matter not present in the description, such matter will need to be deleted. Objection should be raised under s.14(5)(c), rather than under s.76(2) since later-filed original claims do not constitute an amendment of the application (but any subsequently-filed claims do, see 15.54).
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14.146 An opening statement or 'consistory clause' setting out the nature of the invention is normally included in the description. The consistory clause may however be omitted if the description indicates explicitly or implicitly and without ambiguity the essential features of the invention. If, however, the description of the invention contains generalising statements and the specification contains an omnibus claim (see 14.124-14.125) not of the narrow form discussed in Raleigh Cycle Co Ltd and Anr v Miller and Co Ltd, 65 RPC 141 then an opening statement defining the invention is necessary. (In the Raleigh Cycle specification the omnibus claim was directed to a generator, "constructed, and arranged substantially as herein described with reference to and as illustrated in the accompanying drawings").
14.147 It is not essential for a statement of invention to be identical in wording with a main claim, but it must not be inconsistent with such a claim. If it becomes necessary for the applicant to restrict the scope of his main claim in order to meet an objection of prior publication any corresponding statement of invention should be similarly restricted as the applicant can then no longer allege the broad statement to be his invention. A claim which is wider in scope than the statement of invention may be open to objection on the grounds that it is not supported by the description.
14.148 The use of a compact style of consistory clause, which imports a reference toCoP one or more claims into the statement of invention, is strongly encouraged since this avoids repetition and removes the necessity for redrafting following amendment of the claims. When the claims are read in their context as part of the description the true scope of the invention should not be in doubt. If such reference includes independent claims care should be taken that they do not import uncertainty into the description of the invention (United Shoe Machinery Application 57 RPC 71).
14.149 In Glatt's Application [1983] RPC 122 (see 14.151(a)) it was held that if claims are put forward which cover something which plainly was never within the contemplation of the invention as described in the specification then they lack support. This view was reinforced by Aldous J in Schering Biotech Corp's Application (see 14.142) when it was held that the correct approach was to consider the claims in the specification through the eyes of the skilled person in the art, to ascertain what is the invention which is specified in the claims, compare that with the invention described in the specification and thereafter decide whether the invention in the claims is supported by the description. Mere mention in the specification of features appearing in the claim is not necessarily sufficient support. "The word 'support' means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed." This approach was believed by Aldous J to be consistent with that of the EPO in Biogen NV v Hoffmann- La Roche & Co. AG (T301/87 OJEPO 8/90). It is also consistent with the finding of the Court of Appeal in Biogen v Medeva [1995] RPC 25 at p 87, regarding the implications of quoting a claim verbatim in the description.
14.150 If it appears that the description is inadequate to support a broad claim, it is possible to argue either that the disclosure is not clear and complete enough or that the claim is not supported by the description. In general a classical sufficiency objection (see 14.67-14.75) should be raised under s.14(3) only in the clearest cases, when the disclosure appears inadequate to support a valid claim. However where the claims are unduly broad and speculative objection may be raised either under s.14(3) as insufficiency through excessive claim breadth and/or under s.14(5) (see also 14.79-14.82). Such an objection may not be overcome by the addition of further examples or features to the specification since this is prohibited under s.76(2), however an objection to the excessive breadth of the claims under either section may be remedied by restricting the scope of the claims (See also 14.102-14.104).
14.151 The following are examples of cases where the relationship of the claim to the description has been considered:-
• (a) In Glatt's Application, [1983] RPC 122, an article for conditioning fabrics in a laundry dryer and comprising a flexible woven or non-woven sheet having on it
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areas of fabric conditioning composition was described in a way which indicated that it was an essential feature that the material of the sheet be permeable to air. A claim which was silent as to the permeability of the sheet was held by the Patents Court to be not supported by the description (see 14.149).
• (b) In Universite Rene Descartes (BL O/147/88) it was decided that to insert into a claim a specific numerical example, not expressly stated in the description, would result in a claim which was not supported by the description. (With regard to the narrowing of a claim to a sub-range not specified before, see 18.69- 18.69.1.)
• (c) In A C Edwards Ltd v Acme Signs & Displays Ltd [1990] RPC 621 and [1992] RPC 131 it was held that the invention of claim 1 (which was substantially amended pre-grant) was not directed to a different inventive concept than that disclosed in the original application. There was therefore support for the amended claim in the description. (In practice this decision may give support, in certain circumstances, for an intermediate generalisation - the case related to a 7 element digital display in which any required digit could be displayed using flaps which cover/uncover the elements. As described each flap was attached to a baseboard by two studs. The originally filed claim 1 was silent in respect of the studs but the amended claim 1 included, for each flap "a stud". It was held that this limitation to claim 1 "did not disclose use of a single stud any more than did claim 1 of the application". See also 76.15-15.1).
• (d) In Raychem Ltd's Applications [1986] RPC 547 the applicant sought to amend claim 1 by deleting the final step in a process and thus claim an intermediate product. It was held that the amended claim would not be supported by the disclosure which clearly disclosed the final step as an essential feature of the invention. It was held that such a claim must also offend against Section 76 (see also 76.17).
Broad or speculative claims
14.152 An applicant does not have to restrict his claims to the specific embodiment described, but the width of the claims must be properly supported by the description of the invention in the specification (for discussion of insufficiency by excessive claim breadth see 14.79 onwards). A claim can only be supported by an enabling disclosure (Asahi Kasei Kogyo KK's Application [1991] RPC 485, at page 536). When claims are broad and speculative, in that their scope extends beyond the description to embrace possibilities the effects of which cannot readily be predetermined or assessed on the basis of what is described, and the description gives merely an indication of the full breadth of scope of the invention but no, or inadequate, directions of how to put it into practice across the range claimed, objection should be raised that such claims are not supported by the description. In Esau's Application, 49 RPC 85 a claim for apparatus for influencing substances by means of high frequency electrical energy was refused since it embraced any kind of influence on any kind of substance. Eventually the law officer allowed the claims to be redrafted to cover a process for the aggregation of fine particles from gases or liquids for the purpose of effecting their removal. The law officer's remarks on page 87, lines 42-47 about broad and indeterminate claims are invoked again in Shell Development Co's Application, 64 RPC at page 154 and in General Electric Co Ltd's Application [1961] RPC at page 24. In Schering Biotech Corp's Application (see 14.142), the judge rejected the wider of two alternative claims 1 as unsupported: whereas the invention was the use of a new insert in a vector to produce a polypeptide having a certain activity, passages suggesting that by using that new insert other inserts of unknown code and amino-acid sequence could be found did not provide a description adequate to support a claim to a monopoly covering the other inserts. It was unjustified to claim the use of all vectors producing the required result, where only one vector had been investigated. This followed the judgment in the Court of Appeal in Genentech Inc's Patent [1989] RPC 147 concerned with genetic engineering, in which Dillon L J observed (at page 236-7) "the Patent Office ought to have very clearly in mind that it is undesirable to allow claims the
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object of which is to cover a wide and unexplored field or where there is no disclosure in the specification which is in any way coterminous with the monopoly indicated in the claims." The reasons of the three judges in Genentech in finding all claims invalid differed, but they were unanimous that the reason relied on by Whitford J, ie that the claims were not supported by the description, was not a ground for revocation under s.72(1). Mustill L J observed (at page 261) that "grounds of objection have always been prone to overlap, and that the very same factors may lead to an irredeemable flaw in the patentability of the supposed invention, and to an impossibility of framing an application which complies with section 14(5)". Subsequently, in Chiron Corpn v Organon Teknika [1994] FSR 202 Aldous J observed that s.72(1)(c) could not provide grounds for attacking a claim where in essence the complaint was one of lack of support; it being important that the effect of s.72(1) should be the same as the equivalent provision applied in many other European countries. In the case of medical inventions having at their heart a medical use (see 4A.16-4A.31), the description should not only identify a condition that may be treated but also demonstrate by reference to tests that the treatment is a reality and not just a possibility (Hoerrmann's Application [1996] RPC 341, Consultant Suppliers Ltd's Application [1996] RPC 348). However, in Prendergast’s Applications ([2000] RPC 446) Neuberger J emphasised that rudimentary tests would suffice and that full, detailed and rigorous testing of the drug for the proposed condition is not necessary.
14.153 In Pottier's Application [1967] RPC 170 a broad claim to: 'A process for the treatment of hydrated seedlings which comprises subjecting the seedlings to cold shock at a temperature below 0°C for a period sufficiently long to affect the size of the resulting plant', was refused, following Esau's Application (see 14.152), because the claim was broad and speculative. The treatment of sugar beet seedlings only was described. Such a claim might be permissible if it were made clear in the description that the conditions set forth in relation to that plant applied to other plants generally; but otherwise the claim would not be regarded as adequately supported unless the description gave a sufficient range of examples, relating to different kinds of plants, to enable a horticulturist to deduce how the process should be applied to virtually any plant. In Amchem's Products Inc's Patent, [1978] RPC 271, where claim 1 was directed to a process for increasing the resistance of any plant to any disease or internal malfunction by treating it with one or other of a number of specified compounds in an amount sufficient to increase the resistance, and the description referred only to protecting tomatoes, cucumbers and potatoes against particular diseases, it was held that the invention claimed had not been sufficiently and fairly described.
14.154 Claims directed to all solutions of a problem are not allowable unless invention lies in the identification of the problem. In N V de Bataafsche Petroleum Maatschappij's Application, 57 RPC 65, it was an essential feature of a claim to a process for impermeabilizing and tightening soils etc, that an aqueous dispersion of a bituminous substance forming part of a mixture caused to penetrate the soil and coagulate therein was "suitably stabilized". No general instructions were given in the specification as to how this was to be done and the claim was held to include "every method of achieving that suitable stability by achievement whereof the problem is to be solved" and to be invalid by the same reasoning as that promulgated by Lord Parker in British United Shoe Machinery Co Ltd v Simon Collier Ltd 26 RPC pages 48-51. In Chemische Fabrik auf Aktien's Application, 45 RPC 403, a claim to a chemical process using "a catalyst" and thus embracing any catalyst which would give the desired result was disallowed. In David Kahn Inc v Conway Stewart & Co Ltd [1974] RPC at pages 319-320 it was stated that "A patentee may rightly claim a monopoly wider in extent than what he had invented. If he has discovered a general principle or invented a general method and discloses one way of carrying it out, he may claim all ways of carrying it out, but he is not entitled to claim a monopoly more extensive than is necessary to protect what he has himself said is his invention. He cannot claim all solutions to a problem unless invention lies in identification of the problem".
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14.155 A claim in generic form ie relating to a whole class eg of products or machines, may be acceptable even if of broad scope, if there is fair support in the description, and there is no reason to suppose that the invention cannot be worked through the whole of the field claimed. Where the information given appears inadequate to enable the skilled person to extend the teaching of the description to parts of the field claimed, but not explicitly described, by using routine methods of experimentation or analysis, the applicant should be required to show that the invention can in fact be readily applied on the basis of the information given, over the whole field claimed, or, failing this, to restrict the claim to accord with the description. An example of this might be a claim to a specified method of treating "synthetic resin mouldings" to obtain certain changes in physical characteristics. If all of the examples described related to thermoplastic resins and the method was such as to appear inappropriate to thermosetting resins, then restriction of the claims to thermoplastic resins might be necessary.
14.156 A claim may broadly define a feature in terms of its function, even where only one example of the feature has been given in the description, if the skilled reader would appreciate that other means could be used for the same function. For example, "terminal position detecting means" in a claim might be supported by a single example comprising a limit switch, it being obvious to the skilled person that eg a photoelectric cell or a strain gauge could be used instead. In general, however, if the entire contents of the application are such as to convey the impression that a function is to be carried out in a particular way, with no intimation that alternative means are envisaged, and a claim is formulated in such a way as to embrace other means, or all means, of performing the function, then objection arises. Furthermore, it may not be sufficient if the description merely states in vague terms that other means may be adopted, if it is not reasonably clear what they might be or how they might be used.
Reach-through claims
14.156.1 “Reach-through” claims to compounds identified by an assay or screening method with particular properties, and to the downstream uses of such compounds are speculative as the claim covers all compounds possessing these properties when assayed, whether or not they have been specifically identified in the description of the patent. If the relationship between the function of the materials and their structural features is not defined, identification of all compounds from the assay with the desired properties would require substantial experimentation by trial and error to screen compounds for the desired activity. Therefore “reach-through” claims are both insufficient and unsupported by the description. Furthermore, these claims often give no information about the chemical and physical characteristics of the material possessing the desired activity screened for and will also be unclear.
UNITY OF INVENTION
s.125 14.157 Each claim of a specification defines at least one invention. However the requirements of the Act regarding unity of invention are met if the claims relate to a group of inventions which are so linked as to form a single inventive concept. The question as to whether the inventions are related in this way is not based on rigid rules but rather on broad considerations as to the degree of interdependence between the inventions claimed, and as to the state of the art concerned, as explained in the following paragraphs. The practice to be adopted for dealing with applications considered to lack unity of invention during search or substantive examination is discussed in paragraphs 17.106-17.114 and 18.37-18.41 respectively.
CoP 14.157.1 Multiple inventive concepts should not be included in the same application if they are unrelated to the extent that they will inevitably give rise to a plurality objection.
14.158 When considering unity of invention, regard should be had to the
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underlying inventive concept of each of the inventions claimed. This concept may be expressed in different ways (see 14.159) and may be implicit rather than explicit. Regard may be had to the purpose and/or result of each invention. One criterion which would be suitable for some sets of claims would be to determine whether the common subject- matter of the claims is novel and involves an inventive step. Other criteria are referred to in the subsequent paragraphs. The lack of novelty or the obviousness of the common subject-matter may be established by citing documentary evidence, but this is not necessary, at least in the first instance, if the common matter is clearly known or obvious. Specifications forming part of the state of the art by virtue of s.2(3) may not be used to demonstrate that common subject-matter is not new.
r.16 14.159 Inventions should be treated as being linked so as to form a single inventive concept where there exists between the inventions a technical relationship which involves the same or corresponding “special technical features”, i.e. features which define a contribution which each of the claimed inventions, when considered as a whole, makes over the prior art. The inclusion of any one of the following combinations of claims of different categories in the same application should be permitted :
• (a) in addition to an independent claim for a product, an independent claim for a process specially adapted for the manufacture of the product, and an independent claim for use of the product; or
• (b) in addition to an independent claim for a process, an independent claim for an apparatus or means specifically designed for carrying out the process; or
• (c) in addition to an independent claim for a product, an independent claim for a process specially adapted for the manufacture of the product and an independent claim for an apparatus or means specifically designed for carrying out the process.
This list of combinations of claims in different categories (process, product, use, apparatus) is not exhaustive, and other combinations should be considered on their merits.
14.159.1 Examiners should use their discretion to determine whether the claims in question share a single inventive concept, any doubt being resolved in favour of the applicant. In Dow Chemical Company's Application (BL O/175/83) the hearing officer concurred with the view expressed in EPO Decision T110/82 (OJEPO 7/83) that one of the determining factors is the equitable levying of fees between applicants. However the fact that the subject-matter of two claims cannot be covered by a single search does not necessarily demonstrate that unity of invention is lacking. On the other hand if a single search suffices on a borderline case the benefit of any doubt can be resolved in favour of the applicant.
s.72
s.26
14.160 Plurality of invention is not a ground on which a patent may be revoked, nor may any person, in any proceedings, raise such an objection to the claims of a patent as granted or as amended after grant (see 26.01).
14.161 Claims to separate articles which are inter-related, for example, by being characterised in that they are to be used together, may be regarded as linked to form a single inventive concept. This would be the case with separate claims to two parts of an electrical or other coupling, or to a housing and to contacts to be mounted in the housing, provided they were specifically adapted for one another and have no further obvious application. In particular separate claims may be justified to parts which may be manufactured or sold separately, such as a rupturable container of fuel and a burner adapted to pierce the container when mounted on it; or a container of chemicals to be sprayed which is adapted to be mounted on a carrier, and such a carrier specially adapted for receiving the container; or to a new form of cable and to a sheath stripper particularly adapted to deal with this cable. Another example where there is unity of invention would be a transmitter and receiver which were adapted to be used together, for example by
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employing a particular novel method of encoding or modulating the signal; however a transmitter and a receiver intended for use with it would be regarded as separate inventions if they could also be used with known receivers or transmitters.
14.162 When a specification discloses a number of distinct surgical, therapeutic or diagnostic uses for a known substance or composition, separate claims to the substance or composition for the respective uses are not, as a general rule, regarded as lacking unity of invention, if there has not been any previous medical use of the substance or composition.
14.163 The fact that the inventions defined in independent claims may be directed to solving the same problem or to implementing the same idea, or that separately claimed processes may lead to the same product, may not be sufficient in itself to confer unity of invention. In particular the fact that a class of chemical intermediates has been prepared solely in order to be converted to particular products may not demonstrate that there is a single inventive concept linking claims to the intermediates and the products. The EPO Technical Board of Appeal held in Decision T35/87 (OJEPO 4/88) that it is necessary for unity of invention between intermediates and end-products that groups of intermediates prepared and oriented towards the end-products be technically closely interconnected with the latter by sharing an essential structural element. Therefore, if intermediate and final products include a common structure which can be considered to be novel and involve an inventive step then claims to the products can relate to a single inventive concept even though separate searches for the products may be necessary.
14.164 There is normally no question of plurality of invention when one claim is within the scope of another, whether by repeating the wording of it or by being dependent on it, even though the additional matter in the narrower claim would have been capable of being claimed as a further invention. Where however a claim is presented as dependent on another but in fact is not limited to the invention of the other claim, for example, by directing a claim to an apparatus as suitable for use in a claimed system, or by stating that one or more integers of the other claim are omitted or are replaced by other features, there is the possibility of plurality of invention. Likewise when alternatives are specified in a single claim, the claim should be mentally rewritten as a series of independent claims which can then be assessed for unity of invention in the usual way. A plurality objection may also be raised if an independent claim is clearly unduly broad and speculative and not new or inventive, and is apparently merely a device for giving an impression of unity of invention between otherwise unrelated dependent claims (see 17.66 and 17.110).
14.165-167 [deleted]
14.168 Where an applicant has discovered a useful property in a group of chemically related compounds, some of which are known, claims to the new use (subject to the provisions of s.4A(1)), to compositions containing the compounds for such use, and to any of the compounds that are novel per se and to their method of preparation, are considered to form a single inventive concept provided that all of the compounds, whether novel or known, possess the common characterising property giving rise to the use.
Section 14(7)
The purpose of the abstract is to give technical information and on publication it shall not form part of the state of the art by virtue of section 2(3) above, and the comptroller may determine whether the abstract adequately fulfils its purpose and, if it does not, may reframe it so that it does.
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The abstract
s.14(2)(b) 14.169 The abstract is not part of the specification, and it is clear from s.125(1), and (c) which refers to the claims being interpreted by the description and any drawings contained
in the specification, that it cannot be used to give assistance in determining the extent of the protection conferred by the claims. The form and content of the abstract are governed by r.15.
s.97(1)(a) 14.170 If an abstract fails to meet any requirement of r.15 then it may be s.15(5)(a) amended by the examiner, using the power given to the comptroller by s.14(7). Although
amendments made by the examiner do not form a part of the application as filed, it is the amended form of the abstract that is included in the published 'A' document, see 16.08. (There is no appeal to the Patents Court from a decision of the comptroller under s.14(7)). If however the abstract as filed clearly fails to meet the dictionary definition of an abstract (ie a brief statement of the chief points of a larger work), for example when it is little more than a title, then objection should be raised that no abstract has been filed and the applicant asked to remedy this. If the time allowed for filing the abstract (see 15.50) has already expired (including any extension allowed under r.108), the application will be taken to have been withdrawn (see 15.55).
[An objection that the applicant has failed to file anything that meets the dictionary definition of an abstract should only be raised in the clearest cases. The desirability of giving every help to private applicants should be borne in mind.]
r.15 14.171 The purpose of the abstract is to provide technical information about the patent application, and so the abstract should reflect the content of the specification. However, in reality, matter is sometimes disclosed in an abstract which is not disclosed in the specification as filed. Following the decision of the Patents Court in Abbott Laboratories Ltd. v Medinol Ltd [2010] EWHC 2865 (Pat) it is important to note that the specification cannot be amended to incorporate such matter from the abstract into the description or claims, whether or not the abstract was filed on the day of filing. This decision (which overturns previous Office practice as established in ARMCO Inc's Application BL O/84/85 – see 76.08.2) has major implications for applications in which the abstract contains significant material not disclosed elsewhere in the application. In Abbott Laboratories Ltd. v Medinol Ltd, Arnold J held that s.14(7) should be interpreted as meaning that the purpose of the abstract is to give technical information only (by reference to the similar Art.85 EPC and associated EPO case law), and so is irrelevant for the purpose of determining the disclosure of the application as filed. The disclosure of the abstract, even if filed on the date of filing, cannot therefore be considered for the purpose of determining under s.76 whether an amendment adds matter extending beyond the disclosure of the application as filed. It is not possible to incorporate this material into the description or claims by subsequent amendment, and so it will not be possible for the applicant to claim this matter, or to rely on this disclosure to provide support for the claims or to overcome an objection of insufficiency. The applicant should therefore be informed of this situation and its implications as soon as possible, so that they may have the opportunity to withdraw and re-file the application with the matter in question included in the specification.
In addition, Arnold J said that the purpose of the abstract is to provide a summary of the disclosure of the specification, and so if it does not mean the same thing as the specification then it must be assumed to be an inaccurate summary. Therefore, when re- framing the abstract, the examiner should delete any material which does not appear elsewhere in the application, regardless of whether the abstract was filed on the day of filing or later.
[Inclusion of material in the abstract but not in the specification is most likely in applications from private applicants, and so examiners dealing with applications from private applicants should be particularly alert to this possibility.]
[Applications from private applicants are sent to the Private Applicant Unit (PAU)
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(see 17.03). PAU examiners will scrutinise abstracts to determine whether they contain matter not present elsewhere in the application. If the PAU examiner becomes aware that there is a significant disclosure in the abstract which is not present elsewhere in the application, then they may issue a letter to the applicant under the ABS or ABCSE procedure as set out in 17.94.5-9. This letter should give the applicant the options to withdraw the application and re-file (with a refund of the search fee), or to continue with the application.]
[Where a private applicant case has been sent to an examination group, this problem is most likely to come to light when the search examiner scrutinises and if necessary re-frames the abstract. If the search examiner discovers significant material in the abstract which is not disclosed elsewhere in the application, he should inform the applicant of this problem and its implications as soon as possible. This may be done by including an appropriate warning in the search letter. However, if the matter disclosed solely in the abstract is likely to be critical for the grant of a patent, then it may be more appropriate to issue an ABS or ABCSE letter.]
14.171.1 It appears to follow that a consequence of the decision that the abstract is to be ignored when considering the disclosure of the application is that an applicant cannot rely on matter contained solely in an abstract for the purposes of claiming priority. (See 5.20-5.25)
14.172 It follows from s.14(7) that subject-matter in the abstract but not in the specification can only be cited against an invention which has a priority date later than the date of publication of the application containing the abstract.
CoP 14.173 The abstract must have a title which encapsulates the invention r.15(1) disclosed in the specification. The abstract title is important to the public since it is the title
which appears in the Journal in the lists of applications published and which is used in the Names of Applicants Index.
[If there is no abstract title the search examiner should provide one in PROSE for translation into COPS without raising objection under r.15(1). It is not necessary to add the abstract title to the page containing the abstract. No other title should be entered, and because of restrictions inherent in COPS, the title should not exceed 158 characters (including spaces) or include subscripts, such as present in chemical formulae. No abstract title (or anything else in lieu of the title) should be entered in PROSE if an abstract has not been filed. ]
CoP 14.174 The abstract title can be different from the title given to the application on filing. The latter is unlikely to make a suitable abstract title if, as is generally the case, it is expressed in broad terms to avoid disclosure of the invention in the Journal before the application itself is published. If the abstract title is unsuitable (for example if it is too long or too vague) the examiner should amend it. Examples of titles which are regarded as unsuitable are
• (a) any title including such expressions as "improvements in or relating to" or "and the like"
• (b) titles such as "chemical compound" or "control circuit", which give little or no indication of the invention
• (c) over-long titles which are apparently intended merely to indicate that the specification contains claims in certain categories (process, apparatus etc), eg "Gas-permeable seamless pipe structure and method and apparatus for production thereof", or "Method of bleeding a hydraulic system and means therefor"
• (d) over-long titles which contain matter, for example relating to possible fields
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of application of the invention, more properly to be found in the body of the abstract
• (e) titles including a trademark (see 19.24).
14.174.1 When amending an abstract title to make it an effective search tool, care should be taken to avoid adding matter not in the specification. Before amending an abstract title, the search examiner should read enough of the specification to be certain that the alterations are accurate and that the amended title encapsulates the disclosed invention.
r.15 14.175 The text of the abstract should comply with r.15(2), (3) and (7), which read:-
(2) The abstract must contain a concise summary of the matter contained in the specification.
(3) That summary must include—
(a) an indication of the technical field to which the invention belongs;
(b) a technical explanation of the invention;
(c) the principal use of the invention.
(7) The abstract must not contain any statement on the merits or value of the invention or its speculative application.
CoP 14.176 The abstract should be primarily directed to that which is new in the art to which the invention pertains. Clearly an abstract which describes only the background or prior art or does not adequately reflect the technical disclosure in the specification is inappropriate. If the invention is in the nature of a modification to a known apparatus, process, product or composition, the abstract should, while making clear the context of the invention, be directed to the technical features of the modification. If the invention is of a basic nature the entire technical disclosure may be new in the art and the abstract should be concerned with the entire disclosure. In either case it should be clear from the abstract where the inventive contribution to the technical field lies by indicating this in the opening sentence(s). The main specifics about the invention and how it can be practised should then be set out.
CoP 14.177 The abstract should be drafted so that it constitutes an efficient instrument for the purposes of searching and disclosure in the particular technical field, in particular by making it possible to assess whether there is a need to consult the specification itself. The scope of the abstract, and the words used in it, should be selected to ensure that retrieval from electronic databases is likely when searching similar applications at a later date.
14.178 The check list in the "WIPO Standard ST.12/A" provides a useful guide for the writer or reviser of an abstract. It indicates that, provided that the specification contains the information, the abstract should include the following:-
• (a) where the invention is an article, its identity, use, construction, organisation and method of manufacture;
• (b) where the invention is a chemical compound, its identity (structure if appropriate), method of preparation, properties and uses;
• (c) where the invention is a mixture, its nature, properties, use, essential ingredients (identity, function), proportions of ingredients (if significant), and preparation;
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• (d) where the invention is a machine, apparatus or system, its nature, use, construction, organisation and operation;
• (e) where the invention is a process or operation, its nature and characterising features, material and conditions employed, product (if significant), and the nature of a relationship between the steps, if more than one.
• (f) where the disclosure involves alternatives, the abstract should deal with the preferred alternative and identify the others if this can be done succinctly; if this cannot be done, it should mention that they exist and whether they differ substantially from the preferred alternative.
This checklist is for guidance only. In particular the content of the abstract should be determined by the new technical disclosure of the specification rather than by the nature of the claims.
14.179 Where features are merely preferred or optional, the abstract should avoid any implication that they are essential to the invention. If the disclosure involves alternatives, the abstract should deal with the preferred alternative and identify the others, if this can be done succinctly; if this cannot be done, it should mention that they exist and whether they differ substantially from the preferred alternative. Where the claims relate to more than one invention, the subject matter of the further inventions should be included in the abstract, even though no search may yet have been carried out in respect of these inventions.
14.180 Where the specification contains extensive numerical data or tables, eg relating to physical properties or compositions, the presence of such data, and their nature, should be indicated in the abstract, if this can be done briefly.
14.181 The general nature of a chemical compound or composition should be given as well as the use thereof, eg "the compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics". For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example. Wherever applicable, the chemical formula should be given which, among all the formulae contained in the specification, best characterises the invention.
[When a search examiner wishes the abstract to be accompanied by a formula (other than one which can be typeset in normal typescript), he will generally have to provide a copy for use in preparing the front page of the 'A' publication.
For this purpose, the examiner should provide a document on the dossier containing a copy of the formula in question from a suitable page of the description or claims. This document may be created and imported onto the dossier electronically; or alternatively, created manually and subsequently scanned on to the dossier. A minute should also be added to the dossier giving clear instructions to Formalities concerning the document’s inclusion in the publication sub-file.
[Deleted]
The quality of the copy of the formula will be checked in Publishing Section for suitability for reproduction and a fresh copy will be made there if necessary. The above action is of course unnecessary if the abstract already includes an acceptable representation of the formula or a suitable formula drawing (see 15A.09) is available. ]
r.15(2) 14.182 An abstract should normally contain not more than 150 words, as it is unlikely to be considered to be concise if it extends beyond 150 words. However, if a longer text is considered essential, there is space on the front page which will accompany the published specification for approximately 200 words. Abstracts should therefore
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contain 200 words at the very most (including any reference numerals). Unnecessary phrases such as "the invention relates to" or "and the like" may be deleted, and an unduly long introductory statement which only indicates what is old and well-known may be curtailed or deleted. While the removal of such superfluous matter is of particular importance when the abstract is longer than 150 words, it may also be deleted even if the abstract is short.
14.183 It is not necessary for the abstract to indicate the kind of protection sought by the claims. Thus for example if an apparatus has been described in the abstract and the specification includes claims to a method of using the apparatus and/or to an article produced by the apparatus, there is no need for the abstract to indicate this if the technical features of the method and article are implicit in the description of the apparatus.
CoP 14.184 The legal phraseology or the sentence structure used in patent claims, should be avoided in abstracts. Thus an abstract that is identical to, or closely resembles, an independent claim should not be filed, nor should an abstract use words commonly associated with patent claims such as “said” and “means”.
14.185 The search examiner must keep in mind that the abstract is an important search tool and if it is unsatisfactory for that purpose he should amend it. A critical appraisal of the abstract by the search examiner is therefore necessary although this should not involve a rigorous analysis to determine how far r.15 is complied with. He should not attempt extensively to rewrite it for simply stylistic reasons. Thus if an abstract does not reflect the main contribution to the art in an application (eg where the claim is heavily anticipated or badly drafted) the search examiner should amend the abstract to incorporate that contribution. It may also be necessary to add to an otherwise adequate abstract one or two phrases to ensure that it reflects all of the matter in the application which has been classified including any further inventions.
[Any required amendments should made to the copy of the abstract provided on PROSE.]
[Deleted]
14.186 When reframing an abstract to make it an effective search tool, care should be taken to avoid adding matter not in the specification (but see 14.171 for the procedure where the abstract as filed includes matter not present in the specification). Before amending an abstract, the search examiner should read enough of the description to be certain that the alterations are accurate. The minimum to be read depends on what is necessary for the search examiner to obtain a clear understanding of the essential nature of the invention. Where a statement of the background of the invention is included in the abstract it should not normally be deleted, since it will frequently help to explain the solution provided by the invention.
14.187 The search examiner should resist the temptation to amend an abstract which adequately fulfils its purpose merely because he would have written it differently. Nor should subject-matter be deleted merely because it does not appear to be useful search material in the heading(s) in which the application is classified. In particular, matter relating to the use of the invention may appear to be of no relevance to the s.17 searcher, but may well be useful to other readers.
r.15(4)-(6) 14.188 Drawings particularly for the abstract are not required and should not be filed. The applicant is required to indicate on the abstract which figure, or, exceptionally, figures of any drawings of the specification should accompany the abstract when published. If he has not done so it is up to the search examiner to decide which figure(s) should be used and to record this as outlined in 14.190. The search examiner may decide that one or more figures other than those suggested by the applicant may be used instead or additionally if he considers that they better characterise the invention. Normally not more than one figure should accompany the abstract. Exceptionally two figures may be used provided that, when sufficiently reduced in size to be accommodated
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on the front page of the application, they, together with the reference characters thereon, would still be readable.
[No objection should be raised under r.15(4) in the event that no figure has been indicated on the abstract. In such circumstances the search examiner should decide upon a suitable figure. ]
14.189 It should be clearly apparent from the abstract what the or each accompanying figure represents. To aid identification of features mentioned in the abstract, relevant reference numerals which appear in the selected figure(s) should be freely used in the abstract. Numerals which appear only in other drawings should normally not be used, although exceptionally, a numeral which is considered necessary for an understanding of the abstract but appears only in these other drawings, may be referred to. Such reference should be bracketed, eg (29, Fig 16), without any additional wording such as "see" or "not shown". When this expedient is adopted it should be ensured that reference numerals which do appear in the abstract drawing(s) are without brackets.
14.190 The search examiner should revise or check the abstract and record the number of the figure which is to accompany it (see 14.188) on the abstract itself as well as in the “Fig. Ref.” field on PROSE (see below). If no figure is to accompany it, he should record this.
[The figure number should appear separately on the page to the text of the abstract. It is not necessary to put brackets around either the figure number or the application number, although this may be done to provide additional clarity.
[The figure(s) to accompany the abstract should be recorded using PROSE by entering the figure number(s), the word "FIG" where it is a single unnumbered figure, the abbreviation "RTA" (ie 'refer to the abstract') when special instructions are needed or the word "None" when no figure is to accompany the abstract.
In some instances (particularly chemical cases), a figure or formula may be included in the abstract itself, rather than separately within the drawing pages. In these cases, the abbreviation "RTA" should be recorded on PROSE, and no further information need be added to the abstract page itself; in such situations do not write “None” or “No Figure” either in PROSE or on the abstract text page.
In exceptional cases where part of a figure or a combination of two or more figures is required for the abstract, a document containing a copy of the relevant figure(s) should be provided on the dossier and annotated appropriately. This document may be created and imported onto the dossier electronically; or alternatively, created manually and subsequently scanned on to the dossier. A minute should also be added to the dossier giving clear instructions to Formalities concerning the document’s inclusion in the publication sub-file.]
[Deleted]
14.191 Amendments to the abstract submitted before s.16 publication should be taken into account by the search examiner when deciding on the text to be published. Since however when the specification of the patent is published after grant it is not accompanied by an abstract, amendments to the abstract filed after s.16 publication serve no purpose, although of course they remain on the file and are open to public inspection. If however the applicant draws attention to an error in the published abstract which is such as to render the abstract wrong or misleading in a material respect, an erratum may be issued provided that the error arose during publication or during reframing of the abstract by the search examiner. (See 16.33).
[Section 14(8) Repealed.]
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14.192 Subsection (8) has been repealed, see 14.91.
[14.193-14.198 Deleted]
Section 14(9)
An application for a patent may be withdrawn at any time before the patent is granted and any withdrawal of such an application may not be revoked.
Withdrawal
14.199 An intimation of withdrawal will not be acted on by the Office unless it is clear and unqualified and in writing, and from a person with the authority to make the withdrawal. The withdrawal request may be by paper or electronic communication.
14.199.1 Directions prescribing the form and manner in which email messages withdrawing applications should be delivered to the Office were published in the PDJ No.5946 on 7 May 2003 and came into effect from 8 July 2003. These directions are reproduced in full in the “Relevant Official Notices and Directions” section of this Manual. Email withdrawal requests should be titled “Withdrawal of patent application number GBYYXXXXX.X” and sent to withdraw@ipo.gov.uk and include in the main body of the message a clear statement of withdrawal and indication that the sender is authorised to make the withdrawal. This email address should not be used for other proceedings under the Act or any other correspondence relating to business carried out by the Office. The email should be in plain text (RFC822-compliant); messages in MS-TNEF/RTF or HTML formats and messages that are encrypted or digitally signed will not be accepted. If an email request does not comply with the directions, the Office may treat the message as not having been delivered. The time and date of receipt of the email message will be taken as the time/date stamp the message receives when it enters the Office internal email system, which will not be the exact time/date it was sent. A return email message will be sent by the Office to confirm receipt of the withdrawal request; the request cannot be treated as being delivered unless this acknowledgement has been sent. (See also 14.205)
[When an application has been withdrawn (or has been refused or treated as having been withdrawn or refused) the Formalities manager should add the appropriate label to the cover of the dossier, add “Fmls comp – Terminated” action to the dossier, and carry out the appropriate COPS action (so that, regardless of whether or not the application has been published under s.16, the termination is advertised in the Journal).]
[Deleted]
[Where on any application for which a valid notification of withdrawal is received, there is a Form 9 (and fee) already lodged but no copy of the external search report on file and/or a Form 10 (and fee) already lodged but no copy of the first substantive examination report on file, then before taking any other action the formalities examiner should refer the application to the appropriate Deputy Director for any action required in the examining group. The application should then be referred back to the relevant formalities manager for completion of the termination action as set out above and refund of the Form 9 and/or form 10 fee(s) in appropriate circumstances (see 14.207). ]
14.200 In General Motors Corporation (Longhouse's) Application [1981] RPC 41 a letter withdrawing the application was written, on instructions from the applicant company in the United States, by a technical assistant under the control of the authorised agent (both being employees of the applicant). Subsequently, the applicants having changed their minds, the authorised agent wrote requesting reinstatement of the
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application. Refusing the request, the hearing officer held that the technical assistant had the implied authority, by virtue of his employment, to make the withdrawal. In Siemens Medical Systems Inc.’s Application (BL O/063/00) it was held that withdrawal takes place as of the date on which the withdrawal request is filed, and not on the date that the Register is updated to show the withdrawal.
14.201 When there is more than one applicant a request for withdrawal will not be effective if made by only some of the applicants unless it is clear that the remaining applicants have given them the express authority to do so.
14.202 It is not necessary for a request to use the words "withdrawal" or "withdrawn"; it is sufficient if the statement expresses, in whatever terms (for example by referring to "abandonment") positive intention to terminate the application forthwith. However a statement of intention, such as that the applicant is no longer interested in prosecuting his application, is not sufficient. For example, an applicant may state that he does not intend to file a request for substantive examination; such an indication is not binding on him, and he may change his mind and file the request at any time within the prescribed period. Similarly an applicant may indicate that he does not intend to reply to a report issued under s.18(3). In such cases no specific action should be taken, the application being left to await further action by the applicant or until it is, in due course of time, treated as having been withdrawn or refused.
14.203 If the applicant or agent has indicated that he does not intend to proceed (or some such non-committal wording), but has not unequivocally and in writing withdrawn the application, and some course of action by the Office, such as search, A- publication, substantive examination or grant, is pending, he should be asked to indicate in writing his clear intentions. If no clear withdrawal is forthcoming the application will proceed. If the applicant or agent indicates over the telephone that he wishes to withdraw an application, he should be told to express his intention in writing. If no letter or email is received the request will not be acted on.
14.204 If at any time the applicant or agent purports to effect a conditional withdrawal, he should be requested to file an unqualified statement of withdrawal, failing which the application is regarded as still in being.
14.205 If an application is withdrawn before preparations for its publication have been completed it will not be published under s.16(1) (see 16.07). Thus if an applicant wishes to prevent publication of his application he must unequivocally withdraw it before preparations for publication have been completed (see 16.02). The directions prescribing the form and manner of delivery of email messages to the Office to withdraw applications (see 14.199.1) state that if an application is to be withdrawn in time to prevent publication, the email message must be received by the Office up to 23.59 on the day before preparations for publication are complete; if the email messages is received after that time, it will be too late to prevent publication. If a letter requesting that an application be withdrawn and not published is received too late to prevent publication and it appears likely, even if not explicitly stated, that the applicant intended to withdraw only if publication were not going to take place, he should be asked to state clearly his intentions.
[When a request for withdrawal is received for an application already in the A- publication cycle, the divisional publication liaison officer should be contacted immediately. When a request for withdrawal is received before publication but after preparations for publication are complete (as determined by 16.02), the relevant formalities group will issue an appropriate letter depending on whether or not withdrawal appears to be conditional on prevention of publication. In each case subsequent action will depend on any response from the applicant. ]
r.107 14.206 Likewise if he wishes to withdraw his application before grant he must do so before the issue of the letter informing him of the grant. If a written request for withdrawal is received in the Office before the issue of the grant letter but not in time to
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prevent issue of the letter, then the grant may be rescinded (see 18.89-90).
[When a written request for withdrawal is received for an application already in the grant cycle, the publication liaison officer for your division should be enlisted immediately. The publication liaison officer will call a meeting of all interested parties to decide whether withdrawal is appropriate, and take the necessary steps to effect withdrawal, including communication with the applicant to formally rescind the grant by letter when the grant letter has been sent. ]
14.207 If an application in respect of which Form 9A or Form 10 has been filed is withdrawn before the report under s.17 or s.18 respectively is issued, the fee paid may be refunded. Such a refund is however a matter of discretion and not a right.
[The refund is authorised by the appropriate formalities group. ]
14.208 A withdrawn application may be used for the purposes of claiming priority for a later application, subject to the provisions of the Act (see 5.04).
Section 14(10)
Subsection (9) above does not affect the power of the comptroller under section 117(1) below to correct an error or mistake in a withdrawal of an application for a patent.
14.209 This subsection was added by the Regulatory Reform (Patents) Order 2004, and establishes that, although section 14(9) provides that a withdrawal may not be revoked, the withdrawal may be corrected under the provisions of section 117. This provision came into force on 1 January 2005 and applies to applications filed both before and after this date. If the application in question had been published under section 16 and the fact of withdrawal had also been published, special provisions apply (sections 117(3), (4) and 117A).
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Section 15: Date of filing application
15.01 This section states the conditions which are necessary and sufficient for an application to be accorded a filing date, sets out the circumstances in which an application may be re-dated to a later date, makes provision for divisional applications and specifies further conditions which must be fulfilled before an application can proceed. Time limits and other provisions relating to these matters are prescribed in rr.18-22.
15.01.1 Section 15 was amended by the Regulatory Reform (Patents) Order 2004 (S.I. 2004 No. 3204) to incorporate the principles of Articles 5 and 6 of the PLT. The amended section applies to applications initiated on or after 1 January 2005 by the filing of documents which comply with the requirements of s.15(1). The relevant rules were amended with effect from this date by the Patents (Amendment) Rules 2004 (S.I. 2004 No. 3205). For applications initiated by documents that met the relevant requirements of the former section 15(1) on or before 31 December 2004, unamended sections 14(1) 15, 17 and 18 of the Act and the Rules continue to apply. The Patents Rules 2007 (SI 2007 No. 3291) have replaced the Patents Rules 1995 (as amended) with effect from 17 December 2007.
Section 15(1)
Subject to the following provisions of this Act, the date of filing an application for a patent shall be taken to be the earliest date on which documents filed at the Patent Office to initiate the application satisfy the following conditions-
(a) the documents indicate that a patent is sought;
(b) the documents identify the person applying for a patent or contain information sufficient to enable that person to be contacted by the Patent Office; and
(c) the documents contain either-
(i) something which is or appears to be a description of the invention for which a patent is sought; or
(ii) a reference, complying with the relevant requirements of rules, to an earlier relevant application made by the applicant or a predecessor in title of his.
Section 15(2)
It is immaterial for the purposes of subsection (1)(c)(i) above-
(a) whether the thing is in, or is accompanied by a translation into, a language accepted by the Patent Office in accordance with rules;
(b) whether the thing otherwise complies with the other provisions of this Act and with any relevant rules.
r.12(1) 15.02 Normally the indication that a patent is sought will be given by the r.25(1)(a) completion of Patents Form 1. This is designated a formal requirement, but it is not
necessary that it be explicit in order for a date of filing to be accorded. If the documents
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filed contain an implicit indication, however informal, which makes it reasonably clear that an attempt is being made to file an application for a patent then s.15(1)(a) can be regarded as having been complied with. The indication must, however, be in English or Welsh (at least to the extent that it is apparent to a literate person acquainted only with the English and/or Welsh language that a patent is sought).
15.03 The applicant is sufficiently identified if the name and address given are adequate to meet the customary requirements of postal delivery. The address may be anywhere in the world. Other information (such as a phone number) instead of an address may be sufficient identification to grant a filing date (but see 15.03.1). Where there is more than one applicant each must be adequately identified.
r.12(2) 15.03.1 The applicant’s name and address should normally be given at the time of filing, r.12(3) but failing that a date of filing can be accorded when the application contains sufficient
information to enable the applicant to be contacted. Where an application which does not include both the applicant’s name and address is accorded a date of filing, the applicant must be notified of the failure, and the comptroller may refuse the application if the applicant does not file the missing information within two months of issue of the notification. The name and address (or other means of contacting the applicant) must be in English or Welsh to the extent that it is useable by a literate person acquainted only with the English and/or Welsh language.
[ Where Parts 2 and 4 of Form 1 do not, between them contain enough information to enable the applicant to be contacted, contact information in Part 12 may be good enough, but where there is doubt the advice of Legal Section should be sought.]
s.7(1) 15.04 If the application is made in the name of a firm or other organisation which is not a corporate body this will not prevent it being accorded a filing date, provided the organisation is adequately identified. The formalities examiner should however require that one or more persons (that is, individuals or corporate bodies) be named at part 2 of Form 1.
15.05 Provided a document contains at least a small amount of technical information it will be regarded as complying with s.15(1)(c), and failure to comply with, for example, s.14(3) or r.14 will not prevent a filing date being accorded. If the description fails to comply with any formal or substantive requirement of the Act or Rules, objection will be raised sooner or later and the applicant given an opportunity to rectify the matter. It is therefore in the interest of the applicant to ensure that, at the time of filing, the description is not flawed in such a way that rectification would not be possible. For example, no amendment is allowed which would result in the description disclosing matter not either present at or referred to on the filing date.
[ In the rare event that although a filing date has been accorded, it transpires that what has been filed cannot conceivably be called a description, the filing date should be cancelled. ]
15.06 There is no requirement to pay a filing fee as a prerequisite to an application being accorded a date of filing. For details of payment of the application fee required for preliminary examination, see 14.02 and 14.04.17.
Disclosure
1. Description, Language of Description
15.06.1 In order to qualify for a date of filing something that is or appears to be a description will normally be required. Providing that the remainder of the application is in English or Welsh (i.e. with names and addresses etc. intelligible to and useable by a literate person acquainted only with English and/or Welsh) an application can qualify for a date of filing if the description (or what appears to be the description) is neither in English
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or Welsh nor compliant with rules such as r.14. The wording “something that appears to be a description” in s 15(1)(c)(i) reflects the wording “a part which, on the face of it, appears to be a description” of the PLT, and caters for possibility of that part of the application being in non-Roman notation.
r.12(8) 15.06.2 Where a date of filing is accorded to an application comprising a foreign-language r.12(9) description, the applicant must be notified of the failure to comply with r.14(1). The
comptroller may refuse the application if the applicant fails to file a translation into English or Welsh within two months of such a notification.
2. Reference to an earlier application
r.17(1) 15.06.3 Article 5(7) of the PLT requires Contracting Parties to accept, for the purposes of according a date of filing only, a reference to an earlier application as a replacement for the description, and this is reflected in s.15(1)(c)(ii). Where such a reference is made the application number, date of filing and country of filing must be stated in part 9 of Form 1.
s.15(10)(b) 15.06.4 The application will be treated as withdrawn if the disclosure contained in the r.17(2) reference fails to be substantiated by the filing of a certified copy of the earlier application r.22(3) (and, if that copy is not in English or Welsh, by an accompanying translation) within the r.108(1) four months (extendable at the discretion of the comptroller, see 123.34 to 123.41). r.108(5)(7) Applicants must bear in mind any difficulties which may be inherent in obtaining the r.17(3) necessary certified copies and translations within the time allowed. Where, however, a r.112(1) copy of the earlier application in question is available to the comptroller, the comptroller r.112(2) will make and certify the necessary copy and place it on the file without the applicant
needing to request or pay for it.
r.22(1) 15.06.5 The application will also be treated as withdrawn if a description (in English or r.108(2)-(7) Welsh) is not filed (as required by s.15(10)(b)(i)) before the expiry of the period prescribed
in r.22(1). This period is extendable once by two months as of right under r.108(2) and further extendable in tranches of two months at the discretion of the comptroller under r.108(3)-(7) (see 123.34 to 123.42). Rule 22 is listed in Part 3 of Schedule 4, so if a request for extension (or further extension) is not received before expiry of the requested extension, the application must be treated as having been withdrawn (see 123.34-41). A description must be filed in addition to the certified copy of the earlier application, and must be filed even where the earlier application is available to the comptroller. Where the description required by s.15(10)(b)(i) contains matter additional to that contained in the earlier application to which reference was made, s.76(1A) will not allow the application to proceed unless or until that matter has been removed from the description. Whether or not there is any added matter is a matter of fact which will have to be determined comparing the description against the certified copy (or, where relevant, the translation of the certified copy). Except in the clearest of cases (e.g. when the description is manifestly a complete photocopy of part or all of the certified copy) the document should be referred to an examiner to make the comparison.
Section 15(3)
Where documents filed at the Patent Office to initiate an application for a patent satisfy one or more of the conditions specified in subsection (1) above, but do not satisfy all those conditions, the comptroller shall as soon as practicable after the filing of those documents notify the applicant of what else must be filed in order for the application to have a date of filing.
15.06.6 Where an application fails to meet the requirements for being given a date of filing, the comptroller must notify him of that failure and state the reason.
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Section 15(4)
Where documents filed at the Patent Office to initiate an application for a patent satisfy all the conditions specified in subsection (1) above, the comptroller shall as soon as practicable after the filing of the last of those documents notify the applicant of-
(a) the date of filing the application, and
(b) the requirements that must be complied with, and the periods within which they are required by this Act or rules to be complied with, if the application is not to be treated as having been withdrawn.
15.06.7 Where an application meets the requirements for being given a date of filing, the comptroller must notify the applicant of that date, and must also notify the applicant of anything that still requires to be filed and for which the sanction for failing to file it within the time prescribed is that the application will be treated as withdrawn. Where applications (including divisional applications) are initiated by documents complying with section 15(1), these notifications will be embodied in the document receipts issued by Document Reception.
s.89A(3) 15.06.8 For international applications, the application fee is set at nil, but there is instead a national phase entry fee. As soon as the requirements of s.89A for national phase entry are met, preliminary examination and search can be carried out. In this case the notifications required by s.15(4) will be included in the formalities report rather than in the filing receipt.
Section 15(5)
Subsection (6) below applies where-
(a) an application has a date of filing by virtue of subsection (1) above;
(b) within the prescribed period the applicant files at the Patent Office-
(i) a drawing, or
(ii) part of the description of the invention for which a patent is sought, and
(c) that drawing or that part of the description was missing from the application at the date of filing.
Section 15(6)
Unless the applicant withdraws the drawing or the part of the description filed under subsection (5)(b) above (“the missing part”) before the end of the prescribed period-
(a) the missing part shall be treated as included in the application; and
(b) the date of filing the application shall be the date on which the missing part is filed at the Patent Office.
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Section 15(7)
Subsection (6)(b) above does not apply if-
(a) on or before the date which is the date of filing the application by virtue of subsection (1) above a declaration is made under section 5(2) above in or in connection with the application;
(b) the applicant makes a request for subsection (6)(b) above not to apply; and
(c) the request complies with the relevant requirements of rules and is made within the prescribed period.
Section 15(8)
Subsections (6) and (7) above do not affect the power of the comptroller under section 117(1) below to correct an error or mistake.
General Considerations: Missing Drawings and Missing Parts of the Description
15.07 Subsections (5) to (8) provide for missing drawings and parts of the description to be filed after the date of filing, and are intended to reflect the provisions of a.5(6) of the PLT. Unless or until the terminology is further clarified by case law, it should be considered that a part is missing only when it is evident from inspection of the documents on file that the description or drawings are manifestly incomplete. The page numbering may be discontinuous, or there may be a mismatch between the number of pages of text alleged to have been filed and the number actually present. In the case of drawings there may either be a discontinuity in sheet/Figure numbering or the absence of a drawing listed in the description.
15.07.1 Where, upon performing the preliminary examination, the formalities examiner finds that a drawing referred to in the description, or a part of the description, appears to be missing this must be formally notified to the applicant in the preliminary examination report as required by s.15A(4) and (9) (see 15A.23). The examination should be no more rigorous than is necessary to check for missing pages, missing sheets of drawings, or the absence of individual Figures listed in the description. There is no requirement to read and construe the text of the description (other than to identify the drawings that are listed).
15.07.2 Preliminary examination is not always performed soon after the date of filing, and although there is no statutory requirement for document reception to notify the applicant of any parts missing from an application at the time it qualifies for a date of filing, it is nevertheless in the applicant’s interest that he should be informed as soon as possible of any such defects. For this reason document reception should, as a matter of best practice and good customer relations, continue to report to the applicant any missing matter that is noticed when document reception procedures are being carried out.
Time Limits
s.15(6)(a) 15.07.3 Where a drawing or a part of the description is missing from an application on the date of filing, the missing material can be filed at any time before expiry of the period prescribed in r.18 (which is either at any time up to the preliminary examination per r.18(1) or, if the absence of the missing matter is notified with the preliminary examination report under s.15A(9), within two months of the date of issue of that notification per r.18(2)). When missing matter is filed within the allowed period, then the matter shall be treated as
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included in the application, unless the applicant requests in writing that the missing material is withdrawn before the remainder of that period has expired.
15.07.4 The period prescribed by r.18(1) can be extended in accordance with r.108(2) or (3) (see 123.36.5-123.36.8). The period prescribed by r.18(2) can be extended at the comptroller’s discretion in accordance with r.108(1) (see 123.36.9). The effect of these time periods and extensions is that missing material may be filed at any time up to the issue of the preliminary examination report. Once the preliminary examination report has been issued, then if the absence of the missing matter is notified in the report, the applicant has 2 months to file the missing material, and this period may be extended at the Comptroller’s discretion. If the preliminary examination report has been issued, but the report does not refer to the missing matter, the applicant may file the missing matter within two months of the report on filing Form 52 together with the appropriate fee. At the Comptroller’s discretion, this period may be further extended on filing a further Form 52 and fee.
Re-dating
15.08 Unless s.15(7) applies the date of filing the application must be amended to be the date on which the missing part was filed. Re-dating as a consequence of including missing matter is the only circumstance in which an application may be re-dated to a date later than the originally accorded filing date.
15.08.1 With respect to drawings, s.15(5) and (6) can only be applied where a drawing referred to in an application was not present in any form in the application at the filing date of the application; an application cannot be re-dated when formal drawings are filed to replace informal drawings which had been filed on the filing date. (If a late-filed formal drawing differs materially from an originally-filed informal drawing the only remedy lies in replacing the formal drawing with one which is in agreement with the drawing originally filed). The expression "any drawing" has been held to mean "any figure" (Alps Electric Co's Application (BL O/12/90)). In the case of a divisional application filed without a particular drawing, the date on which the application was initiated may be re-dated under s.15(6) to the date on which the missing drawing is filed. This does not affect the date which the application may be treated as having as its date of filing under s.15(9), allowance of which is determined in the normal way after the question of re-dating has been settled. (However, the change in the date on which the application was initiated may result in failure to comply with the period specified in r.19, but an extension of the period may be allowed in two month tranches, if considered appropriate, by exercise of the comptroller's discretion under r.108(1) and (5)-(7)).
15.09 Section 15(8) states that s.15(6) and (7) do not affect the comptroller’s discretion under s.117(1) to correct an error or mistake. Thus, if all of the requirements of s.117 and r.105 have been met (see 117.03-09), it is possible for the comptroller to permit a drawing which was omitted by mistake from the documents originally filed with an application to be filed later without loss of the original filing date. Requests to this effect should be considered on their merits, see 117.10.
r.18(2) 15.10 If on preliminary examination (see 15.07.1) it is found that a part of the description or a drawing referred to in the application has not been filed at all, a letter should be issued specifying a period of two months for filing the missing material, the application then being re-dated to the date on which the missing material is filed. However, sight should not be lost of the possibility that, rather than re-date, the applicant might prefer to use the defective application to provide priority for a subsequent application, which includes the missing part(s), so preserving the date for the disclosure present in the original, defective application (subject of course to the provisions of s.5).
[ If a part of a description or drawing has been filed late, LFB should be used, if it has not been filed at all, LFA should be used. After the formalities examiner has issued the appropriate letter and on completion of preliminary examination he should refer the case to the search examiner. The formalities examiner should
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r.18
s.118
create a minute to draw the search examiner's attention to the invitation to re- date. If the re-dating will or might invalidate a declaration of priority this should also be drawn to the search examiner's attention. It is for the search examiner to decide whether to carry out the search immediately or whether it would be more sensible to wait until the applicant has had the opportunity to respond to the invitation to re-date. For example, there may be no point in deferring the search if the applicant is unlikely to re-date, perhaps because the missing part is unimportant and re-dating would result in loss of priority. On the other hand, it may well be sensible to wait if there is a fair risk that the application will be withdrawn and used to provide priority for a new one. If the search examiner decides to defer the search, the COPS status should be set to 2 - “Out for ABS” and an appropriate diary entry should be entered in the PD electronic diary. This entry should state the examining group after the application number in the format GB0000000.0 – EX00. A diary action should also be added to the PDAX dossier.]
15.11 While a formal report under s.15(5) or (6) will normally only issue after preliminary examination, if the formalities examiner becomes aware before the filing of this form that a drawing is missing an informal notice should be issued informing the applicant of the options available from these subsections.
[This will normally only occur with private applicant cases. LFAA should be used.]
15.12 If, after re-dating, the new filing date is more than twelve months after a declared priority date then the claim to priority must be relinquished and the declared date cancelled, but see 15.16.1 and 2.
15.13 The applicant must be notified in writing whenever an application has been re-dated, and, if applicable, that the declared priority date has been cancelled.
15.14 Where the absence of missing matter is notified in the preliminary examination report, the period of two months allowed for filing the missing material and/or withdrawing the late-filed missing material may be extended at the Comptroller’s discretion in accordance with r.108(1) (see 123.36.9). If no reply or extension request is received within the two month period, or if a reply indicates that the applicant does not intend to avail himself of the opportunity to re-date, the missing matter and all references to it should be treated as omitted from the application. Instructions for publication should be provided to include on the front page of the published application a notice (see 16.29) that no copy of the particular drawing(s) or part of the description was included in the application as filed. Where the missing part or drawing is filed, it is not included in the published application s.16 but is open to public inspection after publication.
15.15 Where missing matter is treated as omitted, the specification as filed and published under s.16(1) is to be read skipping any missing pages of description or any reference to an absent figure (or a reference character in it which does not occur also in a figure which is present). For example, if Figures 2-4 are absent, a passage which reads "The cam 31 shown in Figures 2-4 controls the feed and is driven by the link shown in Figures 1 and 3 operated by the crank 33 shown in Figure 1" notionally reads "A cam (31) controls the feed and is driven by the link shown in Figure 1 operated by the crank 33 shown in Figure 1"; "31" is included if it occurs in a figure other than 2-4. If the specification when so read fails to comply with s.14(3) and/or (5) objection should be raised during substantive examination. Unless the applicant voluntarily amends the specification to delete those references which are to be treated as omitted, their deletion should be sought. (Such deletion should be requested in the substantive examination report. However, removal of references in the claims can be requested before s.16 publication).
15.16 If the applicant seeks to amend the specification after s.16 publication by filing or reinstating an omitted drawing, this may be allowed, provided it meets the requirements laid down for the timing and nature of amendments (see 19.13-19.22), in
s.76(2)
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particular that it must not add subject-matter (see 76.09).
Avoiding re-dating where there is a claim to priority
r.18(4) 15.16.1 Where a declaration of priority is present on the date of filing, s.15(7) allows that r.18(4)(b) s.15(6)(b) shall not apply providing that:-
r.18(4)(a) (a) the applicant requests that it shall not apply;
r.18(5)(a) (b) the request is made in writing (i.e. in a letter or e-mail) before expiry of r.18(5)(b) the period for filing the missing part(s) or drawing(s);
r.18(7) (c) the request identifies where the missing matter in question is contained in the priority application (or applications);
(d) all the missing material is contained in the priority application (or applications); and
(e) copies of the relevant priority applications, either certified or otherwise verified to the satisfaction of the comptroller, are filed within either sixteen months from the declared priority date or four months from the date of the request that s.15(6)(b) should not apply.
[Where there is any doubt as to whether the disclosure of late-filed allegedly missing drawings or parts of the description are contained in the priority application (or applications) the matter should be referred to an examiner.]
r.18(6) 15.16.2 Where the Office has access to a copy of the (or each) priority application, the r.112 comptroller will make and certify the necessary copies.
Section 15(9)
Where, after an application for a patent has been filed and before the patent is granted -
(a) a new application is filed by the original applicant or his successor in title in accordance with rules in respect of any part of the matter contained in the earlier application, and
(b) the conditions mentioned in subsection (1) above are satisfied in relation to the new application (without the new application contravening section 76 below),
the new application shall be treated as having, as its date of filing, the date of filing the earlier application.
15.17 Section 15(9) was introduced by the Regulatory Reform (Patents) Order 2004; the wording of this provision is identical to the previous section 15(4) in existence before the Order came into force on 1 January 2005. It allows for applicants to file, in certain circumstances, a new application (commonly referred to as a “divisional application”) which takes the date of filing of an earlier application (commonly referred to as a “parent application”). A divisional application under s.15(9) is made by inserting the application number and filing date of the parent application in part 6 of Patents Form 1. Section 15(9) does not exclude the possibility of a divisional application itself giving rise to a divisional application. Thus no objection should be raised simply because an application claims the date of an earlier divisional application. Where this is the case, the “earlier application” referred to in s.15(9) and r.19 will be the earlier divisional application, and so when deciding if the conditions of r.19 are fulfilled, it is the status of this application
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r.19(3)
r.19(2)(a)
s.15(9)
r.19(2)
r.30(3)(b) r.2(2) r.108(4)
r. 30(2)(b)
CoP
r.108(1)
and not that of the parent application from which the earlier divisional application derived that should be considered (see 15.19). The later divisional application will then take the filing date of the earlier divisional application, which, if validly claimed, will be the filing date of the original parent application.
[ Examiners in particular should be aware of the different procedures which apply when processing divisional applications. As well as the detailed guidance contained in the following paragraphs, reference should be made to the examiners’ aide-memoire and checklist for divisional applications (see15.58). ]
15.18 The requirement that such an application must include a request for antedating means that such a request must be made at the time of filing; there is no provision for converting an ordinary application into a divisional application after filing (P's Application [1983] RPC 269).
15.19 A divisional application may not be made if the parent application has been refused, withdrawn or taken to be withdrawn or treated as having been withdrawn, if the period prescribed for putting the parent application in order has expired, or if a patent has been granted on it.
15.20 Subject to the overriding considerations in 15.19 a divisional application may be made at any time up to the date three months before the compliance date (as prescribed by r.30). If the compliance period (i.e. the period for putting the application in order, as prescribed by r.30) is extended under rules 108(2) or 108(3), then the three month deadline for filing a divisional application is calculated from this extended period.
15.20.1 The compliance period for putting a divisional application in order generally expires at the same time as the compliance period for the earlier application, whose date of filing is to be treated under s.15(9) as the date of filing of the divisional application. Consequently, in accordance with rule 2(2), if the compliance period prescribed on the earlier application has been extended under rule 108, this extended compliance period will apply – as the unextended compliance period – to any divisional applications filed on or after the date that the period was extended.
If the compliance period prescribed on the earlier application is set under rule 30(2)(b) this compliance period will also apply to any divisional applications (see also 18.47, third paragraph in square brackets). However, if the compliance period prescribed on the earlier application is later extended under rule 108, that extension will not apply to any divisional applications which have already been filed; a separate request will be required to extend the compliance period for any such divisional applications. When a divisional application is filed before the first examination report on the parent has been issued, the compliance date of the divisional is undefined until this first examination report is issued.
15.20.2 In view of the fixed time period for placing an application in order prescribed by r.30, divisional applications should be filed early. For example, if all possible search reports under s.17(6) have been issued, it is helpful for applicants to come to early decisions as to what inventions are to be pursued in divisional applications and to file these applications promptly, filing the same number of divisional applications as there are inventions requiring protection since it is undesirable for divisional applications to raise further plurality of invention issues.
15.21 The comptroller has discretion to extend the period of time allowed under rule 19 for filing a divisional application. However, this discretion will normally be exercised only if the applicant shows that the circumstances are exceptional and that he has been properly diligent (Penwalt Corporations's Application (BL O/72/82); International Barrier Corporations's Application; Kokusai Denshin Denwa's Application (BL O/9/83); Luk Lamellan und Kupplungsbau GmbH's Application [1997] RPC 104.
The comptroller also has discretion to extend the compliance period of a parent
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application under rule 108(3) to allow a divisional application to be filed within the period prescribed by rule 19. This discretion will normally be exercised only if the applicant shows that the circumstances are exceptional and that they have been properly diligent (see Fergusson’s Application, BL O/272/09 and Knauf Insulation’s Application BL O/098/13).
It was held by the Patents Court in Kiwi Coders Corporation's Application [1986] RPC 106 that an appeal against a decision to refuse the allowance of a divisional application will succeed only if it is established that the comptroller’s discretion was exercised wrongly in principle, i.e. there was some error in approach. It is not sufficient that somebody else might have reached a different conclusion upon the same facts. The hearing officer had held that although a fresh citation had been raised in the second report on the parent application, the citation did not require or suggest the splitting out of subject matter and consequently did not provide justification for the comptroller to permit filing well beyond the period allowed.
In Anderson’s Application (BL O/297/02) the hearing officer held, on the facts of the case, that the comptroller should not exercise discretion to extend the period for filing a divisional application. He then rejected an argument that to refuse late filing of the divisional application was to deny the applicant his rightful property in contravention of his human rights. The applicant had been given ample opportunity to patent his invention, so there had been no limitation of access to the patent system and no deprivation of property within the meaning of UK patent law and the general principles of international law enforced by the Human Rights Act 1998.
r.6(5) 15.22 A divisional application may, but need not, make a declaration of priority where one is made in the parent application. However, a divisional application may not make a declaration of priority which is not also made in the parent application. It should not be overlooked that where a declaration of priority has been made in the parent application for matter forming the invention of the divisional application, then failure to make the same declaration in the divisional application will mean that the parent application will, when published, form part of the state of the art under s.2(3) for the divisional application. If a priority declaration on a divisional is not made or is determined to be invalid, there may be implications for the novelty of the divisional application, as demonstrated in Nestec SA & Ors v Dualit Ltd & Ors [2013] EWHC 923 (Pat) (see 5.25.1- 5.25.3).
[If a divisional does not make a claim to priority when one is present on the parent, formalities should contact the applicant to establish if this is intentional or an error.]
r.8(2) 15.23 In a case where the application specified in the declaration of priority is one for a UK (national) patent, is an international application filed at the Office, or is any other application of which a copy is on the file of another UK (national) patent application (eg the parent application) r.8(4)(c) in conjunction with r.112 relieves the applicant from the necessity to request or pay for a certified copy. Where the copy of the priority application is in a foreign language, there is no routine obligation to file a translation, but the applicant may be directed to do so under rule 9(1) if the examiner thinks necessary. Where a translation is required, there is no obligation that it must be verified.
15.24 A divisional application must be filed by the original applicant for the parent application or by his successor in title. Where more than one applicant is named in the parent application, it is possible for the divisional application to be made by only some of the original applicants. Where the applicants in the parent and divisional applications differ and no explanation is either apparent or submitted the formalities examiner should raise an objection; the application cannot proceed as a divisional if the provisions of s.15(9) have not been complied with. A divisional application may be filed, after the death of an applicant on the parent application, in the name of the personal representative of the deceased. The EPO Legal Board of Appeal in Trustees of Dartmouth College’s Application (J 2/01 [2005] OJEPO 88 and [2004] EPOR 54) held that for an application filed jointly with two or more applicants, the right to file a divisional application was only
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available to the registered applicants jointly, and not to one of them alone or to fewer than all of them.
r.31(5)(b) 15.25 If one of several applicants for the parent application no longer has any interest in or right to the invention of the parent application, that application may be amended by making a written request (see 19.09).
15.25.1 If, following amendment of a parent application, the applicant wishes to delete the name of an inventor, the procedure described in paragraph 13.18.1 should be followed.
r.10(1) 15.26 Where any applicant in the divisional application is not an inventor, Form r.10(2) 7 must be filed, even if this has already been done in respect of the parent application. r.21 This must be done within two months of filing the divisional application, or, if is expires
later, within the time allowed for filing this form for the parent application (see 13.11).
r.106(2) r.22(5) r.22(6) PR Sch. 4, Parts 2 and 3
15.27 A request for preliminary examination and search, together with the search fee, must be filed in respect of every divisional application, even if the invention to which it relates has already been the subject of a further search under s.17(6), on the parent application (see 17.111-17.114). In such a case however the comptroller may refund the whole or part of the search fee paid in respect of the divisional application (see 15.47-49). The Form 9A and the search fee should be filed within two months of filing the divisional application or within the period allowed for doing this in respect of the parent application, whichever expires later (see 15.50). This period may be extended in accordance with r.108(2) or (3) and (5)-(7) (see 123.34-41). However, if the divisional application is initiated within the last six months of the compliance period (including any extensions) (see 20.02-20.02.1) then the period for filing the Form 9A and fee expires on the date on which the divisional application is initiated. In this case, the period may be extended in accordance with r.108(1) and (5) to (7) (see 123.34-41).
r.28(5) 15.28 A request for substantive examination (Form 10) must be filed by the later PR Sch. 4, of a) two months after filing the new application or b) two years from the declared priority Parts 2 and 3 date, or, where there is no declared priority date, two years of the date to be treated as
the filing date. This time limit may be extended in accordance with r.108(2) or (3) and (5) to (7) (see 123.34-41). However, as with the search request, if the divisional application is initiated within the last six months of the compliance period (including any extensions) (see 20.02-20.02.1) then the period for filing the Form 10 and fee expires on the date on which the divisional application is initiated. In this case, the period may be extended in accordance with r.108(1) and (5) to (7) (see 123.34-41).
15.28.1 A divisional application on which Forms 9A and 10 have been filed together should be subject to combined search and examination. This applies even if no actual search is required because the claims of the divisional application have already been searched as part of the parent application.
CoP 15.29 An application filed under s.15(9) containing additional matter not disclosed in the earlier application may be filed, but shall not be allowed to proceed under s.15(9) unless it is amended so as to exclude the additional matter (see 76.02). It is therefore unnecessary to take the precaution of filing identical claims to the parent application in a divisional application to secure a filing date. This practice is discouraged as amendment of the claims will be necessary (see 15.31), and the search examiner will have no discretion but to defer the search (see 15.36) or issue a search report under s.17(5) in respect of the first invention claimed, even if this is identical to the parent application (see 15.38). An alternative remedy to the removal of the additional matter in a divisional application lies in the relinquishment of the request for divisional status (see 19.11). The search/ substantive examiner should object to the presence of additional subject matter either as a preliminary objection or at the time of the search or examination report, as set out in 15.35 or 15.45.
15.30 There is no need for the claims of the divisional application to be of the same scope as claims which were directed to the same subject-matter in the parent
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application; nor need there have been equivalent claims in the parent application. If a claim in a divisional application is broader in scope than an equivalent claim originally present in the parent application, this does not necessarily mean that the divisional application contains additional disclosure; this must be decided on the facts of the case (see 76.16-76.20). If however the objection arises under s.14(5)(c) instead of s.76(1) the divisional status is not impugned (see 76.21). Where the parent application specified a range and a claim in the divisional claims a sub-range, see 18.69-18.69.1.
s.18(5) 15.31 The parent and divisional applications or two or more applications divided from the same parent, may not claim the same invention (see 18.91-18.97.1).
CoP 15.32 In a parent or divisional application, there is no requirement to remove description appearing in the other application or for inclusion of a cross-reference if matter is described which is claimed in the other application. However, as for any other application, it should be considered whether the presence of extraneous description which does not relate to the invention claimed in the particular application may cast doubt on the scope of the claims. It is therefore helpful for the description and drawings of a divisional application to be filed in a form appropriate to the application, e.g. in terms of identification of the embodiments relevant to the claimed invention.
PROCEDURE IN EXAMINING GROUPS
Preliminary examination
15.33 Whether or not an application is allowed to be antedated determines the date when it should be published, and the time allowed for filing priority documents, Forms 7, 9A and 10, and for putting the application in order. Therefore where the formalities examiner has reported that an application is made under s.15(9), it is necessary for the search examiner, before doing anything else with the case, to consider whether all the conditions set out in s.15(9) and r.19 have been met. However, if a drawing referred to in the application is not filed with the application then the procedure under s.15(5), (6) and (7) concerning the possible re-dating of the date on which the application was initiated should be dealt with before consideration of whether the application can be treated as having an earlier date of filing under s.15(9) (see 15.08-16). If antedating is not allowable then it is possible for the application to proceed with its date of filing as the filing date (in which case a request to amend Form 1 should be made in writing, see 19.11).
15.34 When a divisional application is filed with less than three months remaining on the compliance period (but earlier than the date of issue of the grant letter), the first question to be decided is whether or not discretion under r.108(1) should be exercised to allow the application to proceed under s.15(9) (see 15.21). This matter should be disposed of before any further proceedings on the case, including any consideration as to whether amendment is necessary under s.76(1), take place. If no, or inadequate, reasons as to why the late filing should be allowed are given initially, a suitable explanation should be sought, only a short time being allowed for a reply. If a convincing response is not forthcoming, a hearing should be offered. The applicant should be informed that proceedings on the application will not continue until the question as to whether the late filing will be allowed has been settled.
[ The decision whether to allow the late filing may be taken by a Senior Examiner, who may also offer a hearing when a convincing reason for the late filing is not forthcoming. If an application seeking divisional status is received after the "parent" has been marked in order for grant and the grant letter has not yet been produced, the formalities examiner should set back the status of the case on COPS (for the search examiner to reinstate when appropriate) and minute the file to this effect. If the grant letter has already been produced but not issued, the formalities examiner should defer issue of the grant letter but should not take any action on COPS until the search examiner has indicated whether the parent
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should be withdrawn from the grant cycle. Where issue has already occurred, no further action can be taken as a divisional cannot be filed after grant of the parent.
15.35 The search examiner should not make an exhaustive analysis of the parent and divisional applications, but should investigate them sufficiently to come to a prima facie view as to whether s.76(1) has been complied with. If it has not, search should be deferred and a preliminary objection raised, requiring excision of the additional matter (unless the applicant can satisfy the examiner that there is no such matter present) before the application can proceed. The period allowed for response to the objection should normally be one month (extendable as-of-right by two months or until the expiry of the s.20 period - see 117B.01-05). However, if it is clear that the added matter is not relevant to the search, the search may be made and objection to the added matter issued simultaneously with the search report (see also 15.39 and 15.45).
[If search and/or examination are deferred EL24 should be used to make a preliminary objection. SC15 should be used to issue the objection to added matter with the search report. The Examination Support Officer should be instructed as to what is the correct processing status to be recorded. If EL24 issues the status should be set as “out for ABS/ABCSE”. If added matter is present and search (or CSE) is performed see 15.39.]
CoP 15.36 The search examiner may also defer search and examination of a divisional application not fulfilling the points laid out in the Code of Practice by requesting the filing of an amended specification before performing the search. The applicant should be informed which points of the Code are not met, and a period of one month should normally be allowed for filing an amended specification.
Search
15.37 Since, where it is determined that the antedating is allowable, the application will in many cases already be due for publication, a divisional application should, as far as possible, be given on receipt priority over other applications for search and publication. Where however the application, on the basis of the divisional date, is very close to the compliance date, it must be treated, in preference to all others, as a matter of urgency (see 15.20.1).
15.38 A search report under s.17(5), accompanied by a copy of each document cited (see 17.104.1), should be issued in the same manner as for an ordinary application. The fact that no actual search has been carried out on a particular divisional application, either because the initial search on the parent application was sufficiently wide to comprehend the invention of the divisional application, or because the invention had been the subject of a further search under s.17(6) on the parent application, does not render the issuing of a formal search report unnecessary. If the claims of the divisional application lack unity of invention the search report should be in respect of the first invention, even when a report in respect of this invention has already issued in connection with the parent application, since there is no discretion to do otherwise (see 17.106). If the parent application was an international application, it will be necessary to carry out a search unless it can be confidently deduced that the international search on the parent must have comprehended the divisional invention, but in any event a search report must be issued. If the claims were amended in response to an objection under s.76(1) and the search was done in respect of the amended claims, a notice to that effect should be included on the front page of the published A document (see 16.29).
[ To obtain such a notice on the front page, the examiner should add a minute to the dossier instructing Formalities of the exact wording of the notice. An appropriate message should also be sent to the relevant Formalities Group/Examiner alerting them to the minute on file, see 16.29. ]
S.16 Publication
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s.16(1) 15.39 The requirement that an application should be published "as soon as possible after the end of the prescribed period" (see 16.01) is construed as meaning as soon as is reasonably practicable after such date and, of course, applies equally to a divisional application. However, publication cannot occur until any added matter detected at that stage has been deleted from the application, under s.76(1) (see 15.35, 16.08 and 76.02). What is published under s.16(1) is not the application as so amended but the application as filed, ie including the additional matter. The divisional application should normally be sent for publication after search and as soon as at least 16 months and 3 weeks from the priority or filing date has elapsed, and before substantive examination, provided this is not due.
[Processing status 3 “Searched – Do not s.16 publish yet” should be used when added matter has been found in a divisional application. The examiner should also add a minute to the file noting where added matter is present and that the processing status has been changed. Once the added matter has been removed the processing status 5 “May be s.16 published” should be used.]
15.40 Full consideration of whether ante-dating is allowable is made at the substantive examination stage; at search stage (where the divisional does not undergo combined search and examination) only a prima facie assessment of added matter is made (see 15.35). Therefore when a divisional application is sent for publication before substantive examination is completed, allowance of ante-dating is only provisional. In such cases, instructions for publication should be provided to include a notice (see 16.29) on the front page of the application to the effect that the filing date accorded is provisional and is subject to ratification or amendment.
[ The formalities examiner should be alerted to the need for an appropriate notice to appear on the front page of the published A document by a minute added to the dossier. ]
r.31 15.41 If however the application is due or overdue for substantive examination when the search has been made, the search examiner should proceed to carry out the substantive examination, the report of which should be issued at the same time as the search report. When amendments have been filed the search report should relate to any amended claims if the amendments are allowable or to the original claims if the comptroller's consent to the amendments is withheld and the amendments would not have substantially affected the search strategy (see 17.35). Similarly, the substantive examination should be carried out on the basis of the original application or the application as amended, depending on whether the comptroller consents to the amendments. If the comptroller's consent is withheld, the objections to the amendments should be explained in the examination report.
[ SE4 should be used in the case of a report under s.18(3). If there is plurality of invention, RC6 and RC6A should be added to the examiner's combined search and examination report. In the case of a report under s.18(4), an SE5 can be issued only if the divisional is pre-publication, if invention in suit was clearly claimed in the published parent and if the parent was published for at least three months. The SE5 letter gives a two month period for reply. If an SE5 is issued, the examiner should set a two month diary action for the application. Whenever a diary is set, a diary action should also be added to the PDAX dossier. If the application remains in order after the diary returns, the examiner should send a minute to the examiner assistants asking them to issue an intention to grant letter (an EL34 or EL34F – see 18.86.2).
[Where the examiner has no objections to the application and the invention in suit was not clearly claimed in the parent, SE3 should issue indicating that a report under s.18(4) that the application complies with the Act and Rules will not normally be issued until three months after the application has been published; that such delay is to allow for third parties to be given the opportunity to file observations under s.21 and for the search to be updated (if necessary).
Page 14 of 23 January 2019
However, in the case of a divisional filed very close to the compliance date, there may not be sufficient time remaining to allow the usual three month period after publication for s.21 observations. Even if the invention of the divisional was not clearly claimed in the published parent application, the issuing of the intention to grant letter on the divisional cannot be delayed beyond the compliance date in order simply to allow for the expiry of this three-month period (for the procedure in this situation see 18.07.2 – second square bracket). If a divisional is filed late such that it will be published after the end of the compliance period, a modified EL32 should be issued and a diary entry should be created for the return of the file shortly after publication. The EL32 should be modified as required, for example: to note that the delay is to wait for the application to be published and to remove any reference to updating the search. When the diary returns, the examiner should send a minute to the examiner assistants asking them to issue an intention to grant letter (an EL34 or EL34F – see 18.86.2).
[Any allowable amendments filed before combined search and examination should be acknowledged using SC1.
[The fact that COC action (consequent on the filing of Form 23) has yet to be taken is not an outstanding formal requirement and, thus, does not prevent the examiner from issuing a s.18(4) report or from marking the application in order for s.16 publication (see 15.42). ]
15.42 If formalities are complied with for s.16 publication, the application should then be sent for publication. If formalities have not been complied with, the applicant will have been informed that the application cannot be published until the outstanding requirements have been met.
Substantive examination
(See also 15.41-15.42).
s.18(5) 15.43 During the substantive examination, the substantive examiner should not only satisfy himself that there is no added subject matter in any part of the application, but also that there is no conflict of claims between the parent and divisional applications (see 18.91-18.97.1). Likewise if two or more applications are divided from a single parent, then their claims must not be in conflict.
15.44 If at the first substantive examination stage a divisional application satisfies all the requirements of s.15(9) the allowance of the divisional date should be notified in the first report under s.18; if it does not, then notification of the allowance of antedating should be deferred until compliance is obtained.
[ RC21 should be used in a report under s.18(3) or s.18(4) to notify the applicant of the allowance of the divisional date. If allowance is deferred until grant, EL21 should be issued before the application is forwarded to grant. ]
15.45 If an objection that a divisional application as filed contains added matter is raised at substantive examination, it may be included in the report under s.18(3). However, if the nature of the added matter is such that it seems unlikely that the application will be pursued, a preliminary objection may be made and full examination deferred (see 15.35). If the application is withdrawn or refused, a request for the refund of the fee paid on Form 10 should be allowed if no report under s.18 has been issued.
[If examination is deferred EL24 should be used to make a preliminary objection. The Examination Support Officer should be clearly instructed to book the application as an 'Amendment before Examination' (see also 15.35). RC24 should be used to make the objection to added matter in the s.18(3) report. ]
Page 15 of 23 January 2019
r.108(2), r.108(3)
15.46 A parent application may be substantively examined early (provided Form 10 has been filed) and at the same time as a divisional undergoes combined search and examination unless the applicant or his agent agrees otherwise. When the parent application and the divisional application are processed together in this way, the same period for response to reports under s.18(3) should be set for both applications. If the examination of the parent application is deferred until after combined search and examination of the divisional application, the period for response to a report under s.18(3) on the divisional should be set to match that period which would have been applicable for a first response on the parent application (see 18.49). One application may be sent for grant before the other, however if amendment of the outstanding application subsequently resulted in conflict this would then need to be cured by amendment of that application, unless amendment is applied for under s.27 in respect of the granted application.
[Normally, a notification of intention to grant letter (EL34 or EL3) should be issued and the application sent to grant as soon as it is in order, irrespective of the state of the remainder of the family. However, an application may be held back where appropriate, for example if there is conflict of claims with another family member which is not yet in order or if it is not clear whether the current scope of another family member which is not yet in order conflicts with the claims of the application which is in order.
[The PROSE clause for objecting under s.14(5)(d) in the first instance (RC6) warns the applicant that there will be no automatic reminders of the deadline for filing a divisional. ]
[When a plurality objection has been overcome but a divisional application has not been filed, PROSE clause RC26 may be inserted into the subsequent s.18(3) report to inform the applicant of the deadline for filing a divisional application. This clause should be used at this stage regardless of whether a divisional has been foreshadowed or not.]
[Following the introduction of notifications of intention to grant on 1 October 2016, the practice of “foreshadowing” the filing of a divisional application (i.e. indicating that a divisional application is likely to be filed in the future) has no effect. The examiner should therefore take no further action in response to such a foreshadowing. The notification of intention to grant will always provide the applicant with at least one month’s advance notice of grant, during which time a divisional application may be filed (as long as it is filed at least three months before the compliance date) or other actions taken. The date given in the intention to grant letter is not a specified period and is therefore not subject to the two- month as-of-right extension. The application should be sent to grant shortly after this date if no actions have been taken since issue of the intention to grant letter (see 18.86.1-18.86.3).]
[ In the exceptional circumstance of a request for accelerated examination being acceded to in respect of a member of the family, the formalities examiner should be instructed to process that member for grant before the other member(s). Any conflict would need to be cured by amendment of the outstanding application, unless amendment is applied for under s.27 in respect of the granted application. For grant of a family member, see 18.87.]
15.46.1 Rule 108(2) and rule 108(3) can be used to extend the compliance period after the intention to grant letter has been issued, see 18.86.5.
Requests for refund of fees
15.47 The comptroller has discretion to remit the whole or part of the search fee paid in connection with a divisional application which relates to an invention in respect of which a search fee has already been paid on the parent application. A request for remission of the search fee must be made in writing by the applicant to the comptroller.
Page 16 of 23 January 2019
r.106
When an applicant appears to be entitled to a refund and it appears most unlikely that s.17(8) would need to be invoked after a refund had been made, a refund can be made before the divisional application is in order for grant. If on the other hand, an early refund seems inappropriate, eg because the need for a supplementary search under s.17(8) cannot be ruled out, consideration of a request for a refund should be deferred and reconsidered later, normally when the application is in order for grant.
15.48 When considering an application for a refund of the search fee, the general principle of one search fee per patent application should be followed. Therefore, if two (or more) search fees have been paid on the parent application, and the parent and divisional applications relate to different ones of the inventions searched for on the parent application, a refund should normally be given. If the parent application is an international application made under the PCT, a refund of the search fee paid on the divisional application should only be given if more than one search fee was paid during the national phase of the parent application, and one of those fees covered the invention being searched in the divisional application. If just one search fee was paid during the national phase then no refund is given. The number of search fees paid to the International Search Authority is not a consideration.
15.49 If the searching necessary on the divisional application has been restricted at all stages to the "top-up" search and to any further searching consequent upon the premature termination of the relevant further search on the parent application, the full search fee paid on the divisional application should be refunded unless this results in the payment of fewer search fees than the total number of parent and divisional applications in the patent family. Furthermore, no refund should be made if a search becomes necessary due to amendment of the claims of a divisional application. If, in view of the search made, the request is refused the examiner should inform the applicant so. If only one search fee has been paid on the parent application (and hence only the first invention specified in its claims has been searched), a refund of the search fee paid on a divisional application should not be given even if the divisional application is for the first invention of the parent. There is no appeal from a decision of the comptroller to refuse a refund.
[The substantive examiner should minute the file to indicate whether or not the request for a refund may be allowed. If a request for refund of the search fee paid in a divisional application is allowed before the application is in order, the substantive examiner should issue EL8 or ELC8, as appropriate, and instruct the appropriate formalities group to arrange for an early refund. On the other hand, if consideration of a refund request is deferred, the examiner should issue ELC9. If and when the refund is allowed, the appropriate formalities group should be asked to attend to it.
[Although no refund is given, a search for a second invention in a divisional application should be made without requiring an additional search fee when a search report has issued in respect of the first invention in the divisional application, despite this invention already having been searched in connection with the parent application (see 15.38), and a further search becomes necessary for the second invention sometime later upon deletion of the first invention. ]
Section 15(10)
Where an application has a date of filing by virtue of this section, the application shall be treated as having been withdrawn if any of the following applies-
(a) the applicant fails to file at the Patent Office, before the end of the prescribed period, one or more claims and the abstract;
Page 17 of 23 January 2019
(b) where a reference to an earlier relevant application has been filed as mentioned in subsection (1)(c)(ii) above-
(i) the applicant fails to file at the Patent Office, before the end of the prescribed period, a description of the invention for which the patent is sought;
(ii) the applicant fails to file at the Patent Office, before the end of the prescribed period, a copy of the application referred to, complying with the relevant requirements of rules;
(c) the applicant fails to pay the application fee before the end of the prescribed period;
(d) the applicant fails, before the end of the prescribed period, to make a request for a search under section 17 below and pay the search fee.
r.22(1) 15.50 Where there is no declared priority date, the claims, abstract, application r.22(2) fee, request for search (on Form 9A) and the search fee must all be filed not later than r.22(7)(a) twelve months from the date of filing. Where, instead of filing a description, a reference is r.22(7)(b) made under s.15(1)(c)(ii) to an earlier application, s.15(10)(b)(i) also requires the
description to be filed within this period. Where there is a declared priority date these elements (including, where relevant, a description filed under s.15(10)(b)(i)) must be filed before expiry of whichever is the later of twelve months from the earliest priority date or two months from the date of filing. The periods specified in r.22(1) and (2) are listed in Part 2 of Schedule 4 of the Rules. They may therefore be extended once by two months as of right under r.108(2), and further extensions (in tranches of two months) may be granted at the discretion of the comptroller under rr.108(3) to (7). So as to provide a clear demarcation between extension of time under r.108 and reinstatement under s.20A, these Rules are also listed in Part 3 of Schedule 4, and if a request for extension (or further extension) is not received before expiry of the requested extension, the application must be treated as having been withdrawn (see 123.34-42). Once extension is not longer available, reinstatement under s.20A may be requested.
r.22(3) r.108(5) r.108(7)
r.22(5) r.22(6) PR Sch. 4 Parts 2 and 3
15.51 Where a reference is made under s.15(1)(c)(ii) to an earlier application, s.15(10)(b)(ii) requires that a certified copy of the application referred to (accompanied, if necessary by a translation) must be filed within the four months if the application is not to be treated as withdrawn. This period can be extended under r.108(1) and (5)-(7) in tranches of two months (see 123.36.10-123.41) at the discretion of the comptroller in cases where there is a genuine difficulty in obtaining the necessary certified copy within the time prescribed.
15.52 In the case of an application which claims an earlier filing date under s.8(3), 12(6), 15(9) or 37(4), the claims, abstract, application fee, request for search and search fee must be filed within two months of making the application or within the relevant period for the earlier application - whichever is the later. This period is extendable once by two months as of right under r.108(2), and then in two month tranches at the discretion of the comptroller under rr.108(3) and (5) to (7), provided the request is received before the expiry of the requested extension (see 123.34-41). If this extension is no longer available, reinstatement under s.20A may be requested. However, if the application is filed within the last six months of the compliance period (including any extensions), the claims, abstract, application fee and the search request and fee must be filed at the time of making the application.
15.53 In the case of an application which has been converted from an application for a European patent (UK), the period for paying the application fee, filing Form 9A, paying the search fee and filing Form 7 is governed by r.58(4), (see s.81); in the case of an international application the application fee is nil, and the period for filing Form 9A and paying the search fee is governed by r.68(3) (see 89A.12 and 89A.18).
Page 18 of 23 January 2019
s.14(5)(c)
s.16(1) s.118(3)(b) r.55
r.22
r.108
r.10
15.54 Although the Act provides for the claims to be filed later than the description, they must of course be supported by the description as originally filed. If no claims were present on the filing date of the application, then when claims are filed for the first time this does not constitute amendment of the application. However once the application contains at least one claim, the subsequent filing of claims (except by way of correction under s.117) does entail amendment of the application and is governed by r.31.
15.55 If the claims, abstract, application fee, request for search, search fee, and where a reference under s.15(1)(c)(ii) is made, a description and certified copy of the application, have not all been filed by the end of the respective prescribed periods, the application is taken to be withdrawn. It is not published, but the fact that it has been withdrawn is advertised in the Journal. It may continue to serve as a basis for a declaration of priority in respect of a later application, subject to s.5(2), (2A) and (3).
[Where no claims and/or an abstract have been filed within the period prescribed by r.22 and the two-month period in which an extension could be requested on Patents Form 52 under r.108(2) has expired, the application is taken to be withdrawn. It is not possible for any extension to be granted once this two-month period has passed (r.108(7)). A standard letter (WR4) is issued by the Formalities Manager warning of the intention to advertise the application as taken to be withdrawn. Similar considerations apply where a Patents Form 7 has not been filed within the period prescribed by r.10. For termination procedure, see 14.199.1.]
15.56 Once the application has been treated as withdrawn through failure to file any of the claims, abstract, application fee, request for search, search fee, and, where a reference under s.15(1)(c)(ii) is made, a description and certified copy of the application, reinstatement under s.20A is the only option remaining available. In particular, the deletion of an incorrect claim to priority as a correction under section 117 is not allowable, even if allowance of the deletion would mean that time for filing a request for search still remained (Payne's Application [1985] RPC 193); see also 117.19.
Section 15(11)
In this section “relevant application” has the meaning given by section 5(5) above.
15.57 Where a reference is made under s.15(1)(c)(ii) to an earlier application, that earlier application may be either an application for a patent under the 1977 Act or an application made in a convention country. The definition of what is a relevant application is the same as for s.5 of the Act (see 5.30).
Annex to section 15 of the Manual - Divisional applications
15.58 Section 15 of the Manual refers at various points to the processing of divisional applications. In particular, references are to be found from 15.17 to 15.49.
[Examiners in particular should be aware of the different procedures which apply when processing divisional applications. Of particular help will be the examiners’ aide-memoire and checklist for divisional applications, which are reproduced below. Neither the aide-memoire nor the checklist is intended to be exhaustive. More detailed guidance is given in the paragraphs of the Manual referred to in square brackets.
[ DIVISIONAL APPLICATIONS: EXAMINERS' AIDE-MEMOIRE
When a purported divisional is filed
Page 19 of 23 January 2019
1. There are various basic formal requirements which must be satisfied if an application is to qualify as a "divisional". These matters are considered by the appropriate formalities group [15.17-15.19, 15.22-15.24].
Has it been filed in time?
2. This is the first thing for the examiner to decide (unless a drawing has been omitted). If the requirements of s.15(9) and r.19 are not met, there can be no progress as a divisional [ 15.33 ].
3. R.19 sets out the time periods within which a divisional can usually be filed. Put simply, a divisional can be filed as-of-right on a parent providing that the parent has not been granted or terminated, and the divisional is filed at least three months before the compliance date (including any extensions) [ 15.19-15.20 ].
4. If lodged outside these periods, an application can still be admitted as a divisional filing, but only at the comptroller's discretion. This requires exceptional circumstances and a diligent applicant [ 15.21, 15.34 ]. However, a divisional cannot be filed after grant [15.19].
Added matter
5. S.15(9) means that a divisional cannot be allowed to proceed unless amended to exclude any detected additional matter [ 15.29, 76.02, 76.19 ]. The usual criteria are used to determine whether or not matter has been added [ 76.03 ]: for example, the presence in a divisional of claims having a different scope from, or no equivalent in, the parent does not necessarily mean that matter has been added. An objection under s.14(5)(c) should not be confused with one under s.76; the former does not impugn divisional status [ 15.30 ].
6. At the search stage, if this is separate from substantive examination, a prima facie view is taken by the search examiner on the added matter question. If added matter is judged to be present, its excision may be requested before the application is allowed to proceed, the search being deferred; EL24 is sent and one month allowed. An alternative if the added matter is not relevant to the search is to do the search and object to added matter in the search letter using SC15 [ 15.35 ]. The implications of added matter for publication under s.16 are given in para 11 below.
7. Since the search examiner's view is not definitive, the substantive examiner needs to satisfy himself/herself on the point [ 15.43 ]. If added matter is judged to be present, full examination may be deferred if the application is not likely to proceed, sending EL24 and allowing one month for reply. Otherwise the full examination is conducted and objection raised using RC24 [ 15.45 ].
Allowing divisional status
8. Once ante-dating is allowable, by virtue of the requirements of s.15(9) and r.19 being met (see above), the applicant should be informed using RC21. If a search or examination letter is issuing before it is allowable, notice that compliance is awaited should be given [ 15.44 ].
The search
9. The search itself is performed as usual, unless combined with examination (see paras 17-20 below). Issue of a search report on a divisional cannot be dispensed with even if the search has been covered by that on the parent [ 15.38 ]. Consideration of a request for a refund of the search fee [ 15.47-15.49 ] may be given now unless it appears likely that s.17(8) might need to be invoked, in which
Page 20 of 23 January 2019
case final consideration should be deferred until just before grant (see para 20 below). ELC8(EL8)/ELC9 can be used to notify allowance/deferment respectively of such a request.
Publication
10. Publication cannot occur until any added matter detected at that stage has been deleted from the application. However, what is published is not the application as so amended but the application as filed, ie including the added matter [ 15.39, 16.08, 76.02 ].
11. In addition, special instructions for publication may need to be given if:
• publication is before allowance of the divisional date (e.g. because substantive examination has not yet taken place), to say that the filing date is provisional [ 15.40 ].
• amended claims have been filed in response to an objection under s.76(1). This is an examiner's free text entry [ 15.38, 16.29 ].
12. [deleted]
Substantive examination
13. It is not necessary (though it is of course allowable) to include cross-references between parent and divisional applications. Nor is there any specific requirement that disclosure should not be unnecessarily duplicated between the applications. However, it should be considered whether description of matter which is not relevant to the application in suit throws any doubt on the scope of the claims [ 15.32 ].
14. To comply with s.18(5) parent and divisional claims should not conflict. Special care is needed with omnibus claims [ 15.31, 18.91-18.97.1 ].
15. Reply periods to s.18(3) reports should be set having regard to the expiry of the compliance period, which is the later of 4½ years from the priority/filing date of the earlier case, whose date of filing is to be treated under s.15(9) as the date of filing of the divisional, or 12 months from the date of issue of the first s.18 report on this earlier case (see also para 17 below).
Combined search and examination
16. If Forms 9 and 10 have been filed on the same day or shortly one after the other with a request for combined search and examination, the search and examination are combined. If the examination report is one under s.18(3) a single combined search and examination report should issue using SE4. Where the examiner has no objections to the application just the search report or a single combined search and examination report should issue using SE3 or SE5 depending on whether the invention claimed in the divisional was claimed and published in the parent application [ 15.41 ]. If amendments have been filed before issue of the search report the appropriate version of SC1 should be added [ 15.41 ]. ELC5 should also be added to the covering letter of the first s.18 report on a divisional when the first s.18 report on the relevant earlier case issued more than 3½ years from its priority/filing date (see also para 16 above) [ 18.47, 20.02 ].
17. Post-“A”-publication COPS statuses, eg 9 and 10, must not be set until after “A”- publication is complete.
18. If the first substantive examination report on a late-filed divisional is under s.18(4),
Page 21 of 23 January 2019
grant cannot be accelerated by waiving the usual two-month period as it is necessarily delayed until after s.16 publication [ 18.81 ].
In order stage
19. Any outstanding request for a refund of the search fee can be determined now and the applicant notified of the outcome (see para 10 above) [ 15.47-15.49 ].
20. Applications do not normally have to be held back from grant until the remainder of the family is in order. However an application may be held back where appropriate, for example if there is conflict of claims with another family member which is not yet in order. [ 15.46 ].
21. Even if the invention of the divisional was not clearly claimed in the published parent application, the issuing of the intention to grant letter on the divisional cannot be delayed beyond the compliance date in order simply to allow for the expiry of the three-month period for third-party observations. [ 15.41 ].
[ DIVISIONAL APPLICATIONS: EXAMINERS' CHECKLIST
There are various basic formal requirements for a divisional, which the formalities examiner assesses. [ 15.17-15.19, 15.22-15.24 ]
1. Has the divisional been filed in time? [ 15.19-15.21, 15.33-15.34 ]
2. Is there any added matter? Are SC15/EL24/RC24 necessary? [ 15.29-15.30, 15.35, 15.43, 15.45, 76.02-76.03, 76.19 ]
3. Is ante-dating allowable? Is RC21 necessary? [ 15.44 ]
4. Is a search fee refund due? Is ELC8(EL8)/ELC9 necessary?
5. Publication:
6. a. is it due?
b. what is to be published?
c. are any special instructions for publication needed?
d. has the applicant been told?
Is any description of matter included which is relevant to the claims of the parent but not the divisional and casts doubt on the scope of the claims? [ 15.32 ]
7. Is there claim conflict, eg of omnibus claims? [ 15.31, 18.91-18.97.1 ]
8. Is combined search and examination appropriate? Which of SE3, SE4 or SE5 is necessary? Is ELC5 necessary? [ 15.41, 18.47, 20.02 ]
9. When does the compliance period expire, and what should the s.18 report reply deadline be? [ 15.20.1 ]
10. Don't set post -“A”-publication COPS statuses until “A”- publication is complete.
11. Before issuing an intention to grant letter:
12. a. is there any possibility of conflict with other applications in family?
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b. have 3 months elapsed from publication if claims were not in parent?
[NB: issuing of the intention to grant letter on the divisional cannot be delayed beyond the compliance date solely to allow for the expiry of the 3-month period - 15.41 ]
Page 23 of 23 January 2019
Section 15A: Preliminary examination
15A.01 This section sets out the conditions necessary for an application to proceed to preliminary examination, makes provision for carrying out the preliminary examination and for reporting the results. Rules 23, 24 and 25 are particularly relevant to this section.
Information security: a reminder
s.118(2) 15A.01.1 The preliminary examination of UK patent applications is carried out before A publication, and so most of the guidance in this section relates to pre-publication actions. Before A publication, the application, the preliminary examination report, and any other documents or information concerning the content of the application (other than that prescribed under s.118(3)) must be protected and must not be communicated to anyone outside the Office other than the applicant or his designated representative – see 118.16- 118.16.1 for further guidance on these issues.
15A.01.2 More generally, in all cases, whether pre-or post-publication, formalities examiners should ensure that any communications (including telephone conversations) are directed to the intended recipient.
[Where correspondence from the Office is reported as never having arrived at its intended destination, or is reported as being misdirected or delayed, this fact should be recorded by sending a minute to the relevant formalities group with any relevant details.]
Section 15A(1)
The comptroller shall refer an application for a patent to an examiner for a preliminary examination if -
(a) the application has a date of filing,
(b) the application has not been withdrawn or treated as withdrawn; and
(c) the application fee is paid.
s.15(10)(c) 15A.02 The payment of the application fee will initiate preliminary examination. There is provision to pay the application fee on Form 1 and on Form 9A although it is not a requirement for the fee to be filed with these forms. If the application fee is paid independently of these forms it is suggested that it be accompanied by non-statutory form AF1.
15A.03 The time allowed for filing the application fee is prescribed in r.22(7), (see 15.51 - 15.53). The preliminary examination should be carried out by the formalities examiner as soon as possible after the application fee has been paid and a letter should be issued (see 15A.20) if there are any outstanding objections.
[ Security Section should carry out a coarse allocation of applications to the appropriate Formalities Group Manager. The Formalities Group Manager should in turn finely allocate cases on which a search fee has been filed to the appropriate classification heading and forward these cases to the formalities group associated with that heading. ]
[ The formalities examiner making the preliminary examination should complete the appropriate parts of the formalities checklist and enter any appropriate amplifying comments in a minute added to the dossier. If a procedural
Page 1 of 9 October 2018
requirement is outstanding, a letter should be sent to the applicant. A report in a minute added to the dossier may also be addressed to a specific person, for example the search examiner, and may be by way of explanation or reminder. ]
[ When before publication, all the formal requirements have been met, the formalities examiner should add the appropriate action to the dossier. ]
[ Private applicants' cases ]
[Any application filed without the services of an agent should be identified by addition of the appropriate label to the cover of the dossier. The formalities examiner should normally issue an LFEPA (if the application fee has been filed) letter immediately, but should consult the Private Applicant Unit (PAU) first if the application is considered to be a ‘no case’ (i.e. an application which cannot be given a filing date due to lack of technical description).
[Where an application is identified as a ‘no case’, the PAU examiner will issue a ‘No Case Letter’, informing the applicant of the requirement to file a technical description in order to establish a filing date. Where fees have been filed with such an application, the unspent fees should be refunded and the applicant informed either by phone or in the ‘No Case Letter’. PAU desk notes provide further guidance on the process.
[More information on preliminary examination processes for private applicants is provided in Chapter 15 of the Formalities Manual.]
Section 15A(2)
On a preliminary examination of an application the examiner shall -
(a) determine whether the application complies with those requirements of this Act and the rules which are designated by the rules as formal requirements for the purposes of this Act; and
(b) determine whether any requirements under section 13(2) or 15(10) above remain to be complied with.
r.23(1) 15A.04 The formal requirements are those designated by r.25(1), namely the requirements of r.12(1) and r.14(1)-(3). The formalities examiner should therefore establish whether a properly-completed Form 1 has been filed (see 14.04 - 14.25) indicating an address for service (see 14.04.13), and whether or not the drawings and other documents comply with the formal requirements of r.14 (see 14.26-14.57). The preliminary examination should also establish whether action under s.15(3) is necessary, and whether the requirements of rr.6-9 (see 15A.13 - 15A.17) and rr.10(1) and 10(2) (see 15A.11 - 15A.12) have been met. If any requirements in relation to s.13(2) or 15(10) are outstanding these should also be determined. If it is established as a result of this preliminary examination that there is no outstanding objection, the application should be reported "Formalities complied with for A-publication".
r.13(2)-(7) [ Where the specification of a patent application concerning biological material discloses a sequence, the formalities examiner should also check that it includes a sequence listing, in accordance with rule 13(2). If a sequence listing has not been provided then the preliminary examination report should specify a period of 2 months from the date of the report within which the applicant must provide the sequence listing. Although this is not a formal requirement designated by r.25(1), the comptroller may refuse the application if the sequence listing is not provided within the period specified. If there is any doubt as to whether an application falls under these circumstances then the formalities examiner should consult the
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examiner.]
THE SPECIFICATION
15A.05 If the pages of text of the specification do not conform with the formal requirements of r.14, the formalities examiner should itemise the outstanding requirements (see 15A.20).
[ In view of the propensity of some private applicants to add matter or even totally redraft a specification, objection under r.14 against a private applicant's specification should not normally be raised. If unavoidable, any necessary typing or other essential remedial action for the purposes of s.16 publication may be undertaken in the Office unless this is clearly impossible (see 14.30). Where such remedial action has been taken, the appropriate notice should be inserted on the front page (see 16.29). The applicant should be advised of the retype and a copy of the typed pages included.]
r.14(3) 15A.06 If the drawings are formal, that is to say, they comply with the formal requirements, then, provided they were present on the filing date of the application, they should be annotated appropriately in the TOC. Any additional copies should also be annotated appropriately. (For the procedure when formal drawings are filed late following the initial filing of informal drawings, see 15A.22; for the case where a drawing not present in any form on the filing date is subsequently filed, see 15A.23).
15A.07 If the drawings are informal, that is, if they fail to comply with the formal requirements of r.14, a report to this effect should be made, detailing the deficiency unless it is clear that the drawings filed were intended only as an informal version. Informal drawings should be annotated appropriately in the TOC.
15A.08 [deleted]
15A.09 A drawing containing formulae which appear in the text of the specification (see 14.31) is rarely needed. If such a drawing has been filed but is not to be used in publishing the A document, no action is necessary and it should be left in the correspondence part of the file. If the drawing is required, if it complies with the Rules it should be annotated appropriately. Such drawings do not need to be in duplicate, and any further copies should also be annotated appropriately. Any discrepancy between the drawing and the formulae in the text should be drawn to the attention of the search examiner. If, in the search examiner's opinion the text is wrong, and the drawing correct, and the drawing was present on the date of filing the application, no action should be taken before substantive examination; the drawing is used in preparing the published application and may be used for the abstract. If the search examiner considers that the text is correct and the drawing wrong, or cannot form an opinion, the applicant should be asked to provide a drawing agreeing with the text. (If formula drawings were supplied later than the filing date of the application, see 15A.22).
[ If the search examiner is sure that, where there is a discrepancy, the text is correct and the drawing wrong, he may correct the drawing and so inform the applicant. Publishing Section should be given suitable instructions where a formula drawing is to be used in producing the A document. ]
r.25(3) 15A.10 If the application is an international application (UK) the formal requirements of rr.12(1) and 14 are regarded as having been met if the requirements of the corresponding rules of the PCT have been met. Rule 12(1) is equivalent to r.53.1 PCT and r.14 is equivalent to r.11 PCT. According to section 81(3)(c), any document filed with the European Patent Office under provisions of the EPC corresponding to sections 2(4)(c), 5, 13(2) or 14 shall be treated as having met the requirements of those sections. Rule 12(1) is equivalent to r.41(1) EPC and r.14 is equivalent to r.45(1),(2),(3) and r.49 EPC.
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FORM 7
r.10(4) 15A.11 The formalities examiner should determine whether the questions in part 7 of Form 1 (see 14.04.16) have been properly completed, and, if correctly completed should report whether Form 7 has been filed, properly completed and with any necessary further copies (see 13.15).
r.10(3) 15A.12 If it is found that Form 7 is outstanding or if there appears to be a defect in the Form, and the end of the 16 month period (see 13.11) is near, the applicant or agent should be notified at once. If an applicant is required to file a Form 7 on the basis of the answers to the questions in part 7 of the form 1 and the applicant fails to file Form 7 within the prescribed period the application is taken to be withdrawn (see 13.13). The prescribed period in the case of a divisional application is determined by r.21 - see 15.26).
PRIORITY DOCUMENTS
r.24(1) s.120(2) r.7 r.24(2)-(3)
15A.13 If a declaration of priority has been made at part 5 of Form 1 (see 14.04.14) the formalities examiner should determine whether the filing date of the application is within the period of 12 months from any priority date so declared (always remembering that if the period of 12 months expired on an excluded day or on a day which is certified as one on which there was an interruption under r.110(1), see 123.43, the period is extended to include the first following day which is not excluded or certified, and the period may also be extended under r.111, see 123.46-47). If it is not, the applicant should be informed that the claim to priority is not valid and be advised if a request for late declaration of priority under s.5(2B) may be applied for. Where it is not possible to claim the priority date declared, the applicant must provide a corrected date for which a valid priority claim is possible within two months of being notified by the formalities examiner, otherwise the declaration will be disregarded.
r.112 15A.14 The formalities examiner should determine whether the file number of the or each r.8(2) PR Sch. Part 2
4, application from which priority is claimed has been supplied, either on Form 1 or subsequently. If a copy of the priority claim application is available to the office the formalities examiner should obtain a copy of the application for the dossier (see 15A.18 - 15A.19). Where the priority claim application is not available the formalities officer should determine if a certified copy of the application has been filed within the prescribed period of 16 months (extendible in accordance with r.108(2) or (3) and (4) to (6), see 123.34-41) from the earliest declared priority date. Where priority is claimed from more than one application, all the certified copies must be filed within this period. Where no certified copies of the application have been filed the formalities examiner should report this and should also report if an application from which priority is claimed is not an application for a patent under the Act, an international application filed at the Office or any other application supplied to the Office in support of a declaration of priority on another application made under the Act (see 15A.20). (For the periods allowed for filing priority documents when the application in suit is one for a European Patent (UK) converted under s.81, or is an international application see 5.10; for the periods in respect of a divisional application see 15.23).
r.8(1) 15A.15 When such a copy is filed, it must be established that it is of a "relevant application" (see 5.30) from which priority can legitimately be claimed, and that the document is consistent with the details given on Form 1. If there is a discrepancy an explanation should be sought from the applicant. If there is an error in the declaration of priority on Form 1, an application to correct it should normally be made in writing. If the wrong priority document has been filed, or if details on it are clearly incorrect, a replacement (duly certified) should be requested and must be filed before the end of the prescribed period; if it is filed later, a written request for its admission as a correction under s.117 should be filed.
Page 4 of 9 October 2018
[ If there is a discrepancy between the declaration of priority on Form 1 and the priority documents the agent should be contacted by telephone (followed by written confirmation) to establish where the error lies. If only the file number on Form 1 is wrong then it may be corrected in the office, provided that the error is notified within 16 months of the earliest declared priority date, since the applicant is allowed to supply the file number at any time within this period. If the fault lies in the priority document and the prescribed period has already expired, the matter must be referred via the Formalities Manager to the divisional Head of Admin. ]
15A.16 If a page of text or drawing is apparently missing from the priority document the formalities examiner should ask the applicant whether or not the document is in agreement with the application, of which it purports to be a copy, as filed. If it is, no further action is necessary. If it is not, a replacement (duly certified) should be requested if the prescribed period has not expired. If that period has expired, the applicant can seek the admission of such a replacement as a correction under s .117.
[ If the priority document is deficient and the prescribed period has already expired, the matter must be referred via the Formalities Manager to the divisional Head of Administration. ]
s.5(2) r.3 r.26(1)
15A.17 If, after 18 months from the earliest declared priority date, any required certified copy of a priority application has not been filed, the claim to priority in respect of that application is relinquished and the application will then proceed with its own filing date as priority date, or, where not all of several declared dates have been relinquished, with the earliest remaining priority date. Time limits and other dates, including the date on which publication is due, are reckoned from the new priority date. The applicant must be notified of the loss of any declared claim to priority and of the reason for this. Even if a claim to priority is relinquished, any related priority documents should be kept in the open part of the file so as to be available for inspection under s.118.
[ The appropriate standard letter should be issued warning of the intention to cancel the declaration or date of priority, and giving two weeks for any observations which might justify extension of the relevant period under r.108(3). In the normal case, after the two weeks has ended, the application should be referred with an explanatory minute to the Formalities Manager. The Formalities Manager will authorise the cancellation of the relevant priority details, annotate Form 1 appropriately and add an explanatory minute to the PDAX dossier and carry out, or arrange for, the appropriate COPS action. On a PCT application, the Formalities Manager will add an explanatory minute to the PDAX dossier and amend the WIPO print and NP1 and carry out, or arrange for, the appropriate COPS action. The formalities examiner must also inform the applicant by issuing LFH.]
[Deleted]
[ A minute on the PDAX dossier should direct the search examiner's attention to the new priority date. ]
Priority claimed from an application filed at the Office
15A.18 If priority is claimed from a UK application, an international application filed at the Office or any other application supplied to the Office in support of a declaration of priority in a UK application, and the UK or international application has been withdrawn by the applicant or has been treated as withdrawn because the period prescribed by r.22(2), (together with a two month extension possible under r.108(2)) has expired without Form 9A and the search fee being filed, documents may be transferred from the earlier application to serve as priority documents for the application in suit. When priority is claimed from an earlier UK application itself only documents present on the filing date of
Page 5 of 9 October 2018
the earlier application may be so transferred; in particular, later filed claims or late-filed drawings may not be transferred. A full set of these documents must remain on the file of the earlier application.
[ In the case of a UK application the documents to be transferred are a copy of the Form 1 (prepared by the formalities examiner) and a copy of all other documents (and only those documents) submitted on the filing date of the earlier application. Care must be taken to ensure that there still remains on the file of the earlier application a complete set of documents representing copies of those transferred. Thus, in accordance with the above:-
the claims, abstract and drawings thus transferred must be those submitted on the application date. If none was filed on the application date no such transfer can occur; claims, abstract, or drawings filed after the application date (including formal drawings following initially-filed informal drawings) must not be transferred.
[ When documents are transferred from one application to another, the Dossier Action Log must be updated on each dossier. The TOC should be annotated to advise the examiner as to whether the/each priority case has been searched.]
15A.19 [deleted]
Section 15A(3)
The examiner shall report to the comptroller his determinations under subsection (2) above.
s.15A(2)(b) 15A.20 A letter should be issued following the preliminary examination setting out any r.23(2) objections arising therefrom. If the specification does not comply with r.14, or if any other
formal requirement has not been met, the report should set out the precise grounds of objection. If it is clear that drawings which are informal are only intended as such, a statement that formal drawings should be filed will suffice. The applicant should be requested to rectify these deficiencies within 15 months of the priority date or, where there is none, of the filing date. If this period has already or nearly expired a period of two months should be allowed for compliance. If any other matters are outstanding, for example, if a priority document has not been filed and the time for filing it has not expired, or if Form 7 is not yet on file, a reminder to this effect should be included in the report.
[ It is usual for any objection arising out of the preliminary examination to be conveyed to the applicant by standard paragraphs and issued directly by the formalities examiner. If however the circumstances demand it, any outstanding procedural requirements may be communicated to the applicant by "first" letter or by telephone followed by a confirmatory telephone conversation report. A first letter must be authorised by the Formalities Manager and will issue under his name. If, exceptionally, an outstanding formal requirement is conveyed for the first time by a communication using other than standard paragraphs, that communication must specify a period in which the applicant should comply with the requirement: it must also state that unless the applicant complies within the period specified, the comptroller may refuse the application after giving the applicant an opportunity to be heard in the matter. ]
[ A copy of a standard letter, of a telephone conversation report or of a first letter must be made available on the "open to public inspection" part of the file. ]
15A.21 When replacement pages of text are filed, the formalities examiner should check that they are in exact conformity with those originally filed and that they comply with the formal requirements and should incorporate them into the application. The published
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r.109
application should carry a notice (see 16.29) stating that it takes account of replacement documents filed later than the application. If, however, the original text was illegible (as distinct from merely difficult to read) the matter should be referred to the search examiner (see 16.09).
[ If the replacement pages are acceptable, new versions of the relevant documents should be assembled for the dossier. The latest versions of the claims and description should be annotated appropriately. See also 15A.22. ]
15A.22 When formal drawings are filed, whether or not in response to an Official request, in a case where the drawings present on the filing date were informal, they should be checked by the formalities examiner for conformity with the informal drawings. Any discrepancy which appears prima facie (that is, without requiring undue investigation) to be material should be resolved before publication. Otherwise, the matter can be deferred for resolution at the substantive examination stage (see also 18.08). The consideration of discrepancies in formal drawings is a matter for the search examiner. The drawings should be annotated as in 15A.06 (the originally-filed informal drawings being regarded as a third copy). The published application should bear a notice (see 16.29) stating that the original drawings were informal and that the published drawings have been prepared from a later-filed formal copy. If formula drawings (see 15A.09) have been filed later than the filing date of the application and are to be used in producing the published application the formalities examiner should check that they agree with the formulae in the specification, any discrepancy being reported to the search examiner, and instructions for publication should be provided to include a notice that such drawings were filed late.
[ When replacement formal drawings are received the formalities examiner should check that they are identical to the informal drawings on file. Once the formalities examiner is satisfied that there is no discrepancy between the drawings and that all other requirements are met, the application should be sent for publication at the appropriate time without further referral to the search examiner (assuming the search report has issued). However, the search examiner should be consulted if the formalities examiner is unsure as to whether the later filed formal drawings are identical to those originally filed or has any doubt that what purportedly has been filed are formal or replacement drawings. Responsibility for deciding to raise the matter of any discrepancy with the applicant or agent will then rest with the search examiner, but it is the role of the formalities examiner to request replacement drawings if the search examiner determines they are needed. If the search examiner decides to defer until substantive examination the question as to whether any such discrepancy is material, he should add a minute to the dossier to alert the substantive examiner to the situation. ]
[ If formal drawings or replacement pages are filed outside the period specified, an extension of time may be allowed. An automatic extension of two months to the specified period can be allowed on receiving a request in writing before the end of the period as extended. If the period has already been extended by two months a further extension of time may be allowed but this request must be accompanied by an explanation of the cause of delay. Any such request should be referred to the Formalities Manager for consideration. Any request made to extend a specified period after the two month automatic extension period has expired should also be referred to the Formalities Manager]
Section 15A(4)
If on the preliminary examination of an application it is found that-
(a) any drawing referred to in the application, or
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(b) part of the description of the invention for which a patent is sought,
is missing from the application, then the examiner shall include this finding in his report under subsection (3) above.
r.18(2) 15A.23 The formalities examiner should check during the first preliminary examination that s.15(6)(b) all drawings referred to in the description or claims were present (in either formal or
informal versions) on the filing date of the application and that all the pages of the description are numbered consecutively. If such a drawing is missing or it appears that a page is missing this should be reported in the preliminary examination report. The report should state that the missing part should be filed within two months of the date of notification. Subsequent filing of missing drawings or pages will lead to the application being re-dated unless there is a claim to priority and an application to avoid re-dating is allowed (see 15.07 to 15.16).
Section 15A(5)
Subsections (6) to (8) below apply if a report is made to the comptroller under subsection (3) above that not all the formal requirements have been complied with.
Section 15A(6)
The comptroller shall specify a period during which the applicant shall have the opportunity-
(a) to make observations on the report, and
(b) to amend the application so as to comply with those requirements (subject to section 76 below).
Section 15A(7)
The comptroller may refuse the application if the applicant fails to amend the application as mentioned in subsection (6)(b) above before the end of the period specified by the comptroller under that subsection.
Section 15A(8)
Subsection (7) above does not apply if-
(a) the applicant makes observations as mention in subsection (6)(a) above before the end of the period specified by the comptroller under that subsection, and
(b) as a result of the observations, the comptroller is satisfied that the formal requirements have been complied with.
15A.24 If an applicant has been notified at least once that a requirement designated as formal by r.25(1) has not been complied with, and no satisfactory response has been received within the period specified (see 15A.20), a report should be issued stating that unless the applicant submits observations or requests a hearing within one month the
Page 8 of 9 October 2018
application will be refused under s.15A(7). If no satisfactory response is received within this period, or if, following a hearing, the matter is decided against the applicant, a decision should be issued formally refusing the application
[ If the period specified in FL1 has elapsed without a satisfactory reply having been received, a letter drafted in some such terms as the following should be issued:-
"The .................... requested by .................... have not been filed. The Comptroller will refuse your patent application unless by .................... (i) you file the requested .................... with a full explanation why they were not filed on time; or (ii) you make observations; or (iii) you request the opportunity to present your case, in person if you choose, to a senior official at the Office."
Care must be taken when preparing the letter, using the above as a base, to ensure that the correct requirement is inserted. The official letter must be authorised by the Formalities Manager. Where the formal requirement remains outstanding after expiry of the period specified in the Official Letter issued as above, the application is refused. Where the refusal is undisputed, a decision of refusal should be prepared and submitted through the Formalities Manager to the divisional Head of Admin for approval and signature. Cases where refusal is disputed should be submitted through the Formalities Manager and divisional Head of Administration to the appropriate Senior Legal Adviser in Legal Section for a hearing. ]
Section 15A(9)
If a report is made to the comptroller under subsection (3) above-
(a) that any requirement of section 13(2) or 15(10) above has not been complied with; or
(b) that a missing drawing or part of the invention has been found to be missing,
then the comptroller will notify the applicant accordingly.
r.10(3) 15A.25 Any requirements of section 13(2) or 15(10) which have not been complied with r.22(7) within the prescribed periods (as extendible under r.108(2)) will be reported to the
applicant in warning letter WR4. The formalities manager should issue the letter at the appropriate time.
15A.26 Failure to respond to any finding under s.15A(4) that a part of the application appeared to be missing at the time of filing will result in a letter being issued by the formalities manager stating that the missing part has not been filed and that the application will proceed in the form that it was originally filed.
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Section 16: Publication of application
Section 16(1)
Subject to section 22 below and to any prescribed restrictions, where an application has a date of filing, then, as soon as possible after the end of the prescribed period, the comptroller shall, unless the application is withdrawn or refused before preparations for its publication have been completed by the Patent Office, publish it as filed (including not only the original claims but also any amendments of those claims and new claims subsisting immediately before the completion of those preparations) and he may, if so requested by the applicant, publish it as aforesaid during that period, and in either event shall advertise the fact and date of its publication in the journal.
s.130(5) 16.01 References in the Act to publication of an application are to publication r.26(1) under s.16, the publication consisting of the application as filed including the original r.26(2) claims and also any amendments of those claims and any new claims subsisting
immediately before the completion of preparations for publication (see 16.02). The application is published as soon as possible after the expiry of the period of eighteen months from the declared priority date or, where there is none, the filing date. On the publication date an "A document" is made available consisting, as far as possible, of (a) the specification as published; (b) a front page bearing certain bibliographic data, classification information, a list of the documents cited in the search report under s.17, the abstract and any drawing selected to accompany the abstract; and (c) a copy of the external search report(s). The bibliographic data will not contain an inventor’s name if the comptroller has accepted an application from the inventor to waive his right to be mentioned (see 13.03). See 89A.14-89A14.2 regarding PCT applications entering the national phase under section 89.
[Deleted]
s.118(2) 16.02 The determination as to when preparations for publication have been completed is made on a case by case basis. The hearing officer in Peabody International's Application [1986] RPC 521 applied the guidance given by the Court of Appeal in Intera Corporation's Application [1986] RPC 459 that preparations have been completed when the print-out of the application data and the specification have been allocated to one of the printing contractors and are ready to be sent to or collected by him from Publishing Section. Following subsequent computerisation, the nearest equivalent point in the procedure is now selected. Unless accelerated publication is requested (see 16.04), a letter issued with the search report gives an estimated date soon after which the preparations for publication of the application will be completed. This letter mentions that the applicant will receive a further letter at this time giving the date of publication, publication number and exact date when the preparations for publication will be completed (the PPC date). The letter with the search report also advises the applicant that any amended or new claims for inclusion with the published application or any request to withdraw the application so as to prevent publication must be filed before the PPC date since it is not possible to withdraw an application from publication on or after this date. This letter should not be relied upon as a reminder if the applicant wishes to withdraw the application before publication. If accelerated publication has been requested, it is unlikely that there will be sufficient time after issue of the search report to file amended or new claims for inclusion with the published application or to request withdrawal before publication because the preparations for publication will be completed very soon after issue of the report. Unless accelerated publication is requested, completion will be at least sixteen months and three weeks after the declared priority date or the filing date and at least four weeks after the date of issue of the search report. The fact of publication is advertised in that issue of the Patents Journal which is published on the same date as the application, since information about the application may not be disclosed before the date of publication (except for the bibliographic information which may be published earlier
Page 1 of 9 January 2019
under s.118(3)(b), see 118.18).
s.118; r.51 16.03 On the date of publication the file on the application becomes open to public inspection, as does the relevant entry in the Register. In particular, any amendments to the claims which were filed too late to be included in the published application and any amendments to the description or drawings, are published on that date by being open to public inspection, as is any matter omitted (other than under s.16(2) - see 16.34-16.37) from the A document, for example, in the circumstances referred to in 16.27. In addition, certain documents are available free of charge on the Office website through Ipsum, the Office’s online patent information and document inspection service.
16.04 S.16(1) permits the publication of an application before the expiry of the period prescribed by r.26(1) at the request of the applicant. When such a request is made, an application should be sent for publication as soon as the necessary formal requirements have been complied with and a report under s.17(5) has been issued. The application is thus accelerated in that it is placed at the head of the queue waiting to pass through the publication cycle. It is not necessary to give a reason for wanting accelerated publication.
[ A case on which accelerated publication has been requested should have the appropriate label applied to the cover of the dossier by the Formalities Examiner. Formalities should check the action log and minute sheet on PDAX for an indication that the application has been diarised to return to the examiner after publication. If such a diary entry is present formalities should update it so that the case returns at the appropriate time after accelerated publication.]
[ There are no established Office procedures for providing "instant" publication of an application, or for shortening the 5-week A-publication cycle. To make the most of the 5-week cycle, Formalities need to generate "Ready for A Publication" by the end of Wednesday. DIS PRO should be checked by the examiner on the following day to make sure that the case has been picked. If "Ready for A picklist" is still displayed, contact PD/A3 immediately. ]
s.22(3)(a) 16.05 An application on which, for security reasons, directions prohibiting publication have been imposed will not be published until such directions have been revoked.
r.8 16.06 Where there is a declared priority date the claim to priority is relinquished if the file number of the priority application and priority document is not filed within sixteen months (extendible in accordance with r.108(2) or (3), see 123.34-41), unless this requirement does not apply (see 5.08 to 5.10). If this occurs the applicant should be so informed and the declaration on Form 1 amended and COPS updated. If the priority date so lost is the earliest or only date declared then the time when publication becomes due will be correspondingly later (see 16.01). An application should not be sent for publication until either the priority document has been filed or the priority date has been lost. Thus the filing of a priority document towards the end of the prescribed period will cause an application to be sent late for publication (see 16.31) and will thus delay publication under s.16 until after the end of the normal eighteen month period. Publication should not however be delayed solely because a translation (when needed) of a priority document has not been filed.
s.118(3)(b); 16.07 If an application has been withdrawn or treated as withdrawn or has been refused (either under s.15A(7) or, after a hearing following a preliminary objection (see 17.96.2), under s.18(3)) before the completion of preparations for publication, it will not be published, nor, subject to the exceptions provided for in s.118, will any of the documents become open to public inspection. However, the termination will be advertised in the Journal.
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r.55
CONTENT OF THE PUBLISHED APPLICATION AND "A DOCUMENT"
The application as filed
s.130(4) 16.08 The application must be published as filed, that is, in the state in which it was on the filing date. Therefore if any of the documents originally filed is subsequently replaced by another, for example because the original did not comply with formal requirements, the new document must conform essentially with the original. (See 14.30 for private applicant cases and 15A.22 for the situation where there is a discrepancy between formal and informal drawings). The A document will carry a notice (see 16.29) that replacement documents or drawings or formulae, as the case may be, were filed later than the filing date. (If the examiner has reframed the abstract (see 14.170-191) then the A document includes the abstract in its amended form instead of as originally filed.) A divisional application which as filed discloses additional matter may under s.76.(1) proceed following exclusion of the additional matter (see 76.02). However it should be published under s.16(1) as filed, that is including the additional matter (see also 15.35 and 15.39).
16.09 If the formalities examiner is unable to establish that the text of a replacement page is identical with that originally filed he should refer the matter to the search examiner. If the search examiner confirms that the original text is literally illegible (as distinct from merely difficult to read) then square brackets should be placed around the text replacing the illegible matter in the copy of the document to be published, and the front page should carry a notice, in addition to the notice referred to in 16.08, to the effect that matter so shown was submitted after the filing date to replace defective text. If no legible replacement for illegible matter is filed, arrangements should be made to omit it from the A document and to insert on the front page a notice that this has been done. In view of the serious consequences for the applicant which may follow an allegation that the application as filed contained illegible matter, the procedure referred to in this paragraph should be followed only when the examiner is satisfied that the original matter cannot be deciphered.
[ When the search examiner wishes illegible matter which has not been replaced by legible matter to be omitted from the A document, he should send the case to the appropriate formalities group for retyping and/or blanking out as appropriate. ]
16.10 In deciding the "as filed" state of an application, account should be taken of any documents relating to the application which were present in the Office at the close of business on the date of filing (or in the case of a divisional application, on the date of lodging of that application). Any such document or set of documents tending to complete an otherwise deficient application should be incorporated into the application, as should any alterations to the specification, whether in the form of replacement pages or proposed in a letter. If the resulting specification does not comply adequately with formal requirements (see 15A.05) objection should be raised under s.15A(3), making it clear what form of the application is being objected to.
16.11 Where two versions of a document were present on the filing date and the only difference is that one is formal and the other informal, then the formal version should be regarded as the effective one; the informal copy should be marked "surplus". Where there is a difference in substance between two versions of the same document, then, if the applicant has given explicit instructions, or if it is implicit or obvious which version is intended to be definitive, the application should be reconstituted accordingly.
[ If the formalities examiner is in doubt how to proceed he should consult the Formalities Manager and, if necessary, the divisional Head of Administration or relevant Deputy Director. If he is unsure the case should be referred to the Divisional Director. If he considers that the applicant's intention is in doubt he should select which appears to him to be the most appropriate version and
Page 3 of 9 January 2019
proceed as in 16.12. ]
16.12 If the applicant's intention regarding amendments or different versions of the same document is in doubt he should be informed which version appears to the Office to be most appropriate and that, unless he indicates clearly his intentions within a specified short period (generally one month), that version will be treated as definitive. When the application is subsequently reconstituted (whether after a reply or not), the applicant should be informed in writing of the course taken.
[ Letter SL11 should be used in the first instance, and SL12 to inform the applicant of the action eventually taken. ]
16.13 [ Deleted ]
16.14 Where the description as filed is in a foreign language and is not accompanied by a translation, see 15.06.1-2. If a translation is filed, the A document will carry a notice (see 16.29) that the specification was originally filed in a foreign language.
Later-filed claims
16.15 The published application includes not only the specification in the state in which it was on the date of filing but also original claims filed later than the filing date within the period prescribed by r.19(1) and (3). The front page of the A document should carry a notice (see 16.29) that the claims were filed later than the filing date of the application, but the actual date on which the claims were filed will not be referred to in the published application.
Amended or new claims
16.16 Amendments to original claims, or new claims, are also included in the published application, provided they are filed before preparations for publication have been completed. (The actual date on which they were filed is not material and is not mentioned in the A document). Since the publication is required to include, in addition to original claims, only those amended or new claims which subsist immediately before completion of preparations for publication, any amended or new claims which have been in the meantime further amended or cancelled are not included. The amended or new claims are included in the A document if they are available in a suitable form for direct reproduction with the original description and claims. For this purpose, it is necessary for all the changes to appear on fresh pages which are self-explanatory and do not rely on instructions in a covering letter. The first such page should preferably be suitably headed, eg "Amendments to the claims". If suitable pages are not received by the time preparations for publication are completed the amended or new claims are omitted from the A document but published by inclusion in the file laid open to public inspection: a notice on the front page of the A document indicates that amended or new claims unsuitable for reproduction have been filed.
[ To obtain the footnote re omitted amendments to the claims, an appropriate free text entry should be entered on COPS. ]
16.17 As a consequence of the wording of s.16(1), if a prohibition order under s.22 is revoked but the application is published under s.16 only after substantive examination the published application will include both the claims in their original form and (if they have been amended) the claims of the application as in order for grant.
16.18 When amendments to the claims, or new claims, are filed they should be checked and collated for inclusion in the A document by the formalities examiner. Amended or new claims are to be published with the original claims only if the changes to the claims are filed as fresh pages meeting the requirements of r.14 and Schedule 2. The applicant or agent should be informed of any deficiency but publication should not be delayed to await any response. The formalities examiner should consult or refer the
Page 4 of 9 January 2019
application to the search examiner for advice when necessary.
[ No attempt should be made to edit new sets of claims to avoid unnecessary repetition of the wording of the original claims nor add explanatory text. Furthermore, unless new claims are received before the search (see 17.35), they should not be considered for any lack of clarity as to the precise effect of the changes on the existing claims until substantive examination. Applicants and agents are now encouraged to provide a heading identifying the fresh pages as relating to changes to the claims.
When new or amended claims are filed the formalities examiner should check that they meet the requirements of r.14 and Schedule 2 and annotate them with “Incorporate after A Pub” in the TOC on the dossier. If the new or amended claims are not a complete set, the document assembler should be used to create a full set, the pages of new or amended claims and external search report being renumbered as appropriate. After publication, the amended claims should be annotated “Working Copy” in the TOC by the formalities examiner.
If on receipt of new or amended claims (a) the search report has not yet issued, (b) a report, such as letters SL2 or SL2PA, that no search is possible has already issued, (c) new or amended claims have already been filed, (d) there is a gap in the numbering of the new or amended claims, or (e) there is reason to doubt that what has been filed are new or amended claims, the application should be referred to the heading or search examiner. ]
16.19 Unless amended or new claims are filed under r.31(5)(a) before search, no attempt should be made to establish whether they introduce new subject-matter. Amended or new claims allowed under r.31(5)(a) or filed at the applicant's own volition under r.31(4) are published as filed, subject to the omission of matter under s.16(2).
Other amendments, corrections or alterations
s.118 16.20 Any amendments to the specification other than the claims are not included in the A document, although they do become open to public inspection on the publication date.
r.31(5)(b) 16.21 Any amendment to the Request for Grant (Form 1) is however included, r.49 provided that a written notification or Patents Form 20 (required for a correction of a
name), as appropriate, setting out the proposed amendment has been filed before preparations for publication have been completed (see 19.05-19.12 and 32.06); the front page of the A document will bear an appropriate notice (see 16.29) eg that such amendment has been made under r.31(5) or under r.49(1). (If the amendment concerns the declaration of priority the date on which the application is due to be sent for publication may need to be revised - see 16.01).
[ Where a footnote regarding amendments made under r.49(1) is required, an appropriate free text entry should be entered on COPS. ]
16.22 If it is requested that the application proceed in the name of a person other than the or an original applicant, for example because the application has been assigned under s.30, or because the original applicant has died and the application is to proceed in the name of the deceased's personal representative, then, provided the change has been effected before preparations for publication have been completed, the A document will reflect the change and will carry an appropriate footnote (see 16.29). (See also 19.09).
r.105(1) 16.23 If correction of a clerical error (see s.117) is sought and allowed before r.49(1) completion of preparations for publication, the application will be published as corrected
and the A document will bear a notice (see 16.29) that a correction has been made. Except in the case of a name (where correction must be requested on Form 20), an error
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may be rectified merely by written notification (see 117.03); if no form has been received in the case of a request for correction of a name, the examiner should ask by telephone that it be filed. Reasonable time should be allowed for this, although a case should not be retained on this account for long after it is due to be sent for publication. If no Form (or suitable evidence) is forthcoming the application should proceed to publication uncorrected, and the matter may be dealt with afterwards.
16.24 If an application contains an applicant's or agent's identifying reference to another application filed on the same day or earlier under the 1977 Act, the search examiner should supplement it by the application number, even if it is necessary to telephone the applicant or agent to ascertain the number. All other references are published as filed.
s.19(2) 16.25 The comptroller may, of his own volition, amend the specification contained in an application in order to acknowledge a registered trade mark (see 19.23- 19.26).
16.26 Since the Office is under a statutory obligation to publish an application in the conditions in which it was filed, subject only to the derogation of s.16(2), if an application contains matter accompanied by wording suggesting that the copyright is owned by a person other than the applicant, then it must still be published as filed.
Computer programs, biological sequence listings and other bulky ancillary material
16.27 Computer programs, and nucleic acid or protein sequences listings, ancillary to the main text and extending over many pages are unduly burdensome to include in the published specification. This is also the case with other extensive material clearly ancillary to the main text. Therefore if an application contains such a program, sequence listing or material, it is normally omitted from the A document at the discretion of the examiner, although of course it remains part of the published application and becomes open to public inspection on the publication date (see also 24.04). A notice referring to the omission should be included on the front page (see 16.29). If however the search examiner considers that the program or other material would facilitate a ready understanding of the invention it may be included in the A document.
[ If the program or other ancillary material is to be omitted from the A document the examiner should minute the file to instruct Formalities which pages of the application are not to be included. The minute should also instruct Formalities that the appropriate common standard text (see 16.29) relating to computer programs et al is to be included on the front page of the A document. If other material is to be omitted, the minute should include details of an appropriate non- standard text. ]
16.28 If the pages of a computer program, sequence listing or other ancillary material do not comply with r.14 and Schedule 2 the formalities examiner should report accordingly, but no objection should be raised unless the pages are to be included in the A document or are unsuitable for reproduction in response to requests on Form 23 after publication. (If the applicant retains the pages in the specification, objection should be made during substantive examination).
FINAL PROCEDURE
16.29 When one or more notices is to be included on the front page of the A document, the formalities examiner and/or the search examiner should give appropriate instructions.
[ Where appropriate, the search examiner should add a minute to the dossier instructing Formalities which of the standard texts (see the "Notices for front page of 'A' document" form in annex 8A of the formalities manual) are to be included on
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the front page of the A document. When necessary, a minute should also be added to the dossier outlining the exact wording of any non-standard texts to be inserted. A PSM message should then be sent to the appropriate Formalities Group/Examiner. This data will subsequently be inputted to COPS for preparation of front page data. Note that, the text of pre-printed notices should not be altered in any way, save the non-standard text relating to drawings omitted under s.15(5) or (6) which requires completion. ]
[As part of the pre-A publication checks, formalities examiners should check all documents and consider if personal or sensitive information contained therein should be redacted for Ipsum. After publication, formalities examiners should check all incoming documents as they are received and redact as necessary.]
[The Enhance feature on PDAX may be used to redact any personal information, either at the head or foot of the correspondence or in the body of the text. Once this has been done, “set handle” is applied to the redacted version and the redacted document is annotated as “OLFI” to enable post–publication display of the letter on Ipsum.]
16.30 When the search examiner sends the application for issue of the search report and of any documents cited thereon (see 17.104, 17.104.1) or of a report that a search would serve no useful purpose he should normally authorise publication of the application, regardless of whether this is yet due, whether or not there are any outstanding formal objections and whether formal or formula drawings are awaited. He should not however authorise publication if the abstract is awaited.
[The search examiner should record the appropriate COPS processing status in PROSE. Processing status 5 “May be s.16 published” will apply to the majority of completed searches and CS&Es (including divisionals). It applies when the application will be in order for A-publication with respect to the examiner's requirements once the search report is ready to be issued. It also applies to PCT national phase applications which have been classified and are ready for republication. This status should also be used when an application is in order for publication having previously had a status recorded as processing status 2 (see 18.47) or 3. Processing status 3 “Searched – Do not s.16 publish yet” should be used when a formal search or CS&E has been carried out but for some reason the examiner needs to see the dossier again before it is sent for publication. This is most often used when no abstract has yet been filed.]
16.31 If formalities have been complied with and unless accelerated publication is requested (see 16.04), the application should be sent for publication 16 months and 3 weeks after the earliest declared priority date or, where there is none, the filing date, provided that 4 weeks have elapsed since issue of the search report. When accelerated publication is wanted the application should be sent for publication immediately because the normal 4 week wait after issue of the search report is taken to be waived.
[ On receipt of the application the formalities examiner will use COPS to check the date of intended publication. The formalities examiner will either accept this date or overtype with "today's date" for accelerated publication. Once this COPS action has been completed the application enters the A-publication queue. At the start of the publication cycle the appropriate applications are picked and transferred to Publishing Section. ]
[Deleted]
16.32 If formalities have not been complied with or if the 16 months and 3 weeks has not yet passed (provided accelerated publication is not requested) publication should be deferred, the application being sent for publication at the appropriate time and after any objections have been met without, in general, being referred to the examiner. Applications should however be referred to the search examiner if necessary upon the filing of
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amendments or formal drawings or formula drawings (see 15A.22, 16.09 and 16.18), or if a letter needing the examiner's attention or a request for further search is received. In such circumstances, the documents selected for publication may need amending before publication.
[Deleted]
[Once all the formalities are complied with, the application should be transferred to Publishing Section or enter the A-publication queue, or the application should be referred to the search examiner, whichever is appropriate.
[ When the search examiner has dealt with any such matters referred to him after issue of the search report (see the second sentence of 16.32), then he should refer the application to the appropriate formalities group, after setting the appropriate COPS status if he has not already done so (see list in 18.47). The formalities group will resume responsibility for forwarding the application to Publishing Section at the appropriate time.]
Correction of printer's errors
16.33 If the A document contains a printer's error, whether in the specification, the bibliographic or classification data or in a footnote (see 16.29) or in the search report, it may be corrected by the issue of an erratum. In this context, "printer's error" is interpreted broadly to embrace any error originating within the Office or during the publication process. However, it does not extend to errors made elsewhere, such as by the applicant. (See also 14.191).
[ An erratum should not be issued to correct an error in the specification which is detected by the search/substantive examiner unless the error is significant, in the sense that it misleads or introduces doubt. An erratum should be issued for an error in the specification which is notified by the applicant or by a member of the public or for any error in the bibliographic or classification data or the footnotes or for an omitted footnote. An erratum should also be issued whenever an error is found in an external search report or when an additional citation is found before A- publication (see also 17.105), but where in each case it is too late for the amended or corrected external search report form to be incorporated in the A document. No erratum is necessary in respect of citations found after A- publication.
[ As soon as a search/substantive examiner appreciates that the classification assigned to an A document is erroneous and/or does not reflect fully the disclosure of an inventive concept or other significant disclosure, the COPS record should be amended to indicate the classification that the document should have carried at the date of A publication.
[ When the search/substantive examiner detects a significant error in the specification or any other error requiring correction, the relevant formalities group should be instructed to arrange for the production and issue of an erratum. Where the correction relates to classification or field of search bibliographic data, is in the text of the specification or abstract, or is complex, the search/substantive examiner should give precise instructions concerning the content and location of each deletion and insertion before referring the case to the formalities group. When errors are brought to the attention of a formalities group other than by search or substantive examiners, the formalities group will not normally consult the relevant examiner except in respect of technical matters.]
Section 16(2)
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The comptroller may omit from the specification of a published application for a patent any matter -
(a) which in his opinion disparages any person in a way likely to damage him, or
(b) the publication or exploitation of which would in his opinion be generally expected to encourage offensive, immoral or anti-social behaviour.
16.34 While the search examiner should not specially look for material of the kind referred to in s.16(2), where he becomes aware of such matter which is in his opinion both evident and blatant he should take steps to see that it is withheld from publication. The published specification will contain a statement at the place(s) concerned that "certain matter has here been suppressed from publication under Section 16(2)". If a specification is either completely offensive or is so riddled with offending matter that publication of any text would appear ridiculous, the whole of the specification may be suppressed. Care should be taken that any matter which it is considered should be omitted under s.16(2) is not only absent from the A document but also will not become open to public inspection after the publication date. Rule 51(2)(d) provides the same power in respect of documents other than the published application (see 118.07).
[ If formalities notice matter which may require omission under s.16(2) the document code should be changed to CONFIDENTIAL and the document annotated as “Not Open to Public Inspection”. A minute should be added to the dossier clearly and unequivocally identifying the matter to be suppressed and the reasons for it being withheld from publication. A PDAX message should then be sent to the examiner.
[ If the examiner becomes aware of matter which may require omission under s.16(2) he should immediately ask formalities to change the document code and annotate accordingly.
[ The Deputy Director should be consulted and the examiner should use the “Enhance” function on PDAX to blank-out the matter concerned. Once this has been done the redacted version should be annotated appropriately and given the appropriate document code (e.g. DESC). The original version should retain the document code CONFIDENTIAL and should not be made public following publication.]
[ If the highlighted material is not considered offensive or libellous, and may therefore be open to public inspection, the examiner should write a minute to formalities asking them to reinstate the original document code, remove any annotation and set public following publication.]
16.35 Statements which are critical of prior inventions (whether identified, eg by reference to specific patents, or not) should be regarded as falling within the scope of s.16(2)(a) only if they are explicitly disparaging of a person (natural or corporate) or if by very clear implication they reflect adversely on the character or competence of any person. Mere statements that prior inventions are in some way unsatisfactory cannot be omitted under s.16(2)(a).
16.36 The question as to what would be considered to encourage offensive, immoral or anti-social behaviour is discussed in paragraphs 1.41-1.45.
s.97(1)(b) 16.37 Although there is no appeal from a decision of the comptroller under s.16(2), the applicant should be informed that matter is to be omitted under this subsection from his application as published. The substantive examiner may be required to consider whether the matter may be restored before grant.
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EXAMINATION AND SEARCH
Section 17: Search
CONTENTS
Introductory notes
Information security: a reminder
SECTION 17(1)
[Private applicant cases]
SECTIONS 17(2) & 17(3) (Repealed)
SECTION 17(4)
PREPARING FOR A SEARCH Assessing the invention Matter to be searched for Acknowledged prior art Using the results of an earlier search
PERFORMING THE SEARCH Field of search Search strategy Reconsidering strategy during the search Other documents found
SECTION 17(5)
THE SEARCH REPORT [Private applicant’s cases] Field of search Claims searched Documents cited Further information Supplementary report Examination opinion International exhibitions The internal search report
SEARCH WOULD NOT SERVE A USEFUL PURPOSE Strategies at search stage where it appears that a search would serve no useful
purpose a) Action Before Search (ABS) b) Report under s.17(5)(b) that a search would serve no useful purpose c) Report under s.18(3) before search (“Rohde & Schwartz”)
No useful search possible: reasons a) No useful search possible because the invention is obscure b) No useful search possible because the invention is not patentable c) No useful search possible when the invention is not novel or is obvious
Page 1 of 41 January 2019
FINAL PROCEDURE
DOCUMENTS FOUND OR CONSIDERED IN FULL AFTER ISSUE OF THE SEARCH REPORT
SECTION 17(6)
PLURALITY OF INVENTION
Further search
SECTION 17(7)
SECTION 17(8)
17.01 This section sets out the conditions necessary for an application to proceed to search, makes provision for carrying out the search and for reporting the results, provides that in some instances a search may not be performed or may not be completed, specifies how the search shall be conducted in the case of an application which relates to more than one invention, and authorises the performance of supplementary searches. Rule 27 is particularly relevant to this Section.
Information security: a reminder
s.118(2) 17.01.1 The initial search at least for UK patent applications is carried out before A publication, and so most of the guidance in this section relates to pre-publication actions. Before A publication, the application, the search report, and any other documents or information concerning the content of the application (other than that prescribed under s.118(3)) must be protected and must not be communicated to anyone outside the Office other than the applicant or his designated representative – see 118.16-118.16.1 for further guidance on these issues.
17.01.2 More generally, in all cases, whether pre-or post-publication, formalities examiners should ensure that any communications (including telephone conversations) are directed to the intended recipient.
[Where correspondence from the Office is reported as never having arrived at its intended destination, or is reported as being misdirected or delayed, this fact should be recorded by sending a minute to the relevant formalities group with any relevant details. Use of r.111 to extend a deadline may only be authorised by the relevant Head of Administration (see 123.47.1).]
Section 17(1)
The comptroller shall refer an application for a patent to an examiner for search if, and only if-
(a) the comptroller has referred the application to an examiner for preliminary examination under section 15A(1) above;
(b) the application has not been withdrawn or treated as withdrawn;
(c) before the end of the prescribed period-
(i) the applicant makes a request to the Patent Office in the prescribed form for a search; and
(ii) the fee prescribed for the search (“the search fee”) is paid;
Page 2 of 41 January 2019
(d) the application includes-
(i) a description of the invention for which a patent is sought; and
(ii) one or more claims; and
(e) the description and each of the claims comply with the requirements of the rules as to language.
r.27(1) 17.02 The request for search must be made on Patents Form 9A; the time r.22(2) allowed for filing this is prescribed in r.22(7), (see also 15.52 - 15.53). Any further search
under s.17(6) or supplementary search under s.17(8) on an application should be requested on Patents Form 9 (for applications filed before 1 January 2005) or Form 9A (for applications filed after this date).
17.03 Before the application is sent to an examiner for search the requirements of s.17(1) must have been met, this includes the payment of any excess claims fees. The excess claims fee is part of the search fee therefore it follows that if the excess claims fee is not paid, the Patents Form 9A is considered not to have been filed.
[If any application does not meet the requirements of this section, on payment of the Application Fee, these will be requested in a preliminary examination report issued under s.15A by the Formalities Examiner (see 15A.20). Once the requirements of section 17(1) have been met, the Formalities Examiner will send the application to the appropriate examining group via the ESO.
[The application should be inspected immediately upon receipt in the examining group to ensure that it has been correctly allocated. Any case found to be incorrectly allocated should be transferred as quickly as possible. This should be done by direct enquiry on the part of the Deputy Director or of the search examiner in charge of the heading to which the case has been allocated. Difficult re-allocations should be settled between Deputy Directors. When transfer has been agreed to a heading in another examining group, a minute titled “ALLOCATED [HEADING] [GROUP]”, should be added to the dossier and the appropriate PDAX message should be sent to the Examination Support Officer in the search examiner’s group. The Examination Support Officer will then send a PDAX message to the Examination Support Officer responsible for the correct heading. Since it is for the search examiner to decide the subject matter to be searched, the dossier minute should indicate which headings have been considered and the subject matter for which search is or is not appropriate.]
[Private applicant cases
[Applications from private applicants are typically dealt with by the Private Applicant Unit (PAU). Unless the application has been identified as a potential ‘no case’ (see 15A.03), most applications from private applicants will be sent to PAU after preliminary examination in the normal way. PAU examiners will consider whether the application is insufficient under s.14(3), or clearly unpatentable under s.1(1)(c) or (d) because it lacks industrial applicability or falls within one of the excluded categories. If the PAU examiner considers that the application has no patentable content for one of these reasons, then the applicant should be sent a letter under the action before search (ABS), or action before combined search and examination (ABCSE), procedure described in full at 17.94.5-9, informing him of the shortcomings, and giving him the option to withdraw (with a refund of the search fee) or continue with the application.
[Otherwise, the PAU examiner will perform a search sufficient to identify documents relevant to novelty and inventive step. If the application contains subject matter that requires specialist knowledge, PAU examiners will consult with the relevant examination group, or transfer the case to that group.
[If the search provides strong evidence of a lack of novelty or inventive step, and
Page 3 of 41 January 2019
combined search and examination has been requested, the PAU examiner may defer the substantive examination and offer the applicant the option of withdrawing their application and receiving a refund of their examination fee.
[Further information on PAU workflow and process can be found in PAU desk notes.]
[If it appears that an invention is not patentable but may be suitable for some other form of protection, care should be exercised in suggesting this to applicants. It is important not to imply that such protection will be obtainable, nor to indicate that the subject-matter is appropriate to an application for design registration, without first referring the matter to Designs Section. If, e.g.: because of urgency, the opinion of Designs Section is not obtained, then the advice given to the applicant should be in general terms, e.g.: that it may be possible to take advantage of some other form of protection such as that afforded by design registration or copyright; the pamphlet "How to register a design" being enclosed.]
17.04 [deleted]
17.05 The search should be undertaken as promptly as possible, not only so that the application may be sent for publication in due time (see 16.31) but also so that the applicant can have an early opportunity to consider the search report and any documents cited (see 17.104.1). He will then be in a position to decide whether to take any action, such as the filing of amended claims or withdrawal, before preparations for publication have been completed. Moreover an applicant who files an application either without a declaration of priority or with some of the twelve-month priority period remaining may want to receive the search report in sufficient time to enable him to decide whether to file abroad under the International Convention.
[The aim should be for a search to be done as soon as possible. Where a backlog of work begins to build up a search examiner should ensure that his Deputy Director is made aware of the situation. The Deputy Director should make it one of his primary objectives to ensure that the work of searching is fairly and reasonably distributed among the members of his group.]
17.05.1 If the applicant has requested for an accelerated search to be performed, this should have been marked clearly to ensure prompt action is taken. Requests for acceleration should be in writing, and may be made electronically using the Office’s online patent filing services (as a covering letter). It is possible for an examiner to exercise discretion to accept an acceleration request by email; however this practice should not be encouraged. A request for an accelerated search, examination or CSE should be allowed if an adequate case specific reason is given; requests giving no (or inadequate) reasons should be refused. Where requests for accelerated search and publication are made at the same time, but the request for accelerated search is refused, the request for accelerated publication should also be refused. Once search has been completed in the usual timescales, the applicant may again request accelerated publication. Awareness of a potential infringer, a need for a faster processing to secure an investor, or a need for a granted patent in order to subsequently request accelerated processing under the Patent Prosecution Highway (PPH) at another office (see 18.07.1 for details of PPH processing at this Office) are likely to be accepted as adequate reasons for acceleration. These reasons are also set out in paragraph 6.2 of the Patents Fast Grant Guidance. In addition, where the applicant requests acceleration in order to take advantage of the Patent Box, the applicant should explain how a delay in grant would have a significant cash flow impact because of its effect on eligibility for the Patent Box; however, detailed financial records are not normally required. (A significant cash flow impact would be one which might affect solvency of the company or its ability to obtain significant financing or to continue with investment or research programmes). For Green Channel requests, the applicant must state in writing which action(s) they wish to accelerate, and provide an appropriate explanation of how their application relates to a “green” or environmentally-friendly technology. Examiners should not conduct any detailed investigation into such Green Channel explanations, but should refuse Green Channel requests if they are clearly unfounded, for example if the application relates to a perpetual
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motion machine.
17.05.2 What constitutes an adequate reason for acceleration may depend, in part, on the applicant’s actions. For example, any delay in filing the Form 9A may be taken into account, particularly if acceleration is being requested in order to obtain a search report before the end of the priority year, and filing a timely Form 9A earlier in the year would have achieved this. Where search and examination would normally be combined, similar considerations should be made when deciding whether to allow accelerated treatment, and if this is acceded to, both the search and examination of the application should be performed at the same time. The applicant should always be informed as soon as possible whether the request has been accepted or refused, and a record of this decision and its reasons should be placed on the dossier. If the request has been accepted, the search (or combined search and examination) report should be issued in a timescale which is in line with any existing Agency targets. If the search/CSE report is itself issued immediately then there is no need to send a separate acknowledgement, but an indication should be included in the covering letter to confirm that processing has been accelerated. It should be assumed, unless an explicit request is made, that accelerated publication is not required. A regular Notice to this effect appears in the Journal. (See 18.07.3 concerning a request for confidentiality relating to accelerated processing of an application.)
[A case on which accelerated search has been requested should be identified by the appropriate dossier cover label and an acceleration PDAX message. A GREEN CHANNEL label should also be added to the dossier cover where the acceleration request is under the Green Channel, and this should be recorded on COPS using the function Record Green Channel Patent Application (REC GRE). The examiner in charge of the classification heading concerned may decide whether to allow such requests]
17.06 A request for refund of the search fee is normally acceded to if it is received before a report under s.17(5) has been issued. This refund is a matter of discretion; it is not a right. Where a refund is requested after an ABS letter has been issued see 17.94.9, and see 17.96 where a refund is requested after the issue of a report under s.17(5)(b).
[The request should be dealt with by the formalities group; if the application has already been sent to an examining group the group should be informed immediately. A search report should not be issued after receipt of a request for a refund, even if the search has already been performed.]
[Sections 17(2) and 17(3) Repealed]
17.07 These subsections which covered preliminary examination of an application ceased to have effect when the Regulatory Reform (Patents) Order 2004 (S.I. 2004 No. 2357) came into force on 1 January 2005. For applications filed after this date, preliminary examination is covered by s.15A. For applications filed before 1 January 2005, preliminary examination is still performed under sections 17(2) and 17(3). The procedure for preliminary examination is described in 15A.01 et.seq.)
17.08 to 17.29 [deleted]
Section 17(4)
Subject to subsections (5) and (6) below, on a search requested under this section, the examiner shall make such investigation as in his opinion is reasonably practicable and necessary for him to identify the documents which he thinks will be needed to decide, on a substantive examination under section 18 below, whether the invention for which a patent is sought is new and involves an inventive step.
17.30 The search examiner must therefore put himself in the position of the substantive examiner and consider what kind of evidence he would require in order to make an objection of lack of novelty or inventive step (see also s.3). At the same time he may also
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need, in order to carry out the search, to come to an opinion on such matters as clarity of the claims and unity of invention. Also, although the search under s.17(4) is concerned solely with providing evidence touching on whether the invention satisfies the conditions for patentability set out in s.1(1)(a) and (b), it may in some cases be necessary at this stage for the search examiner to form an opinion as to whether the invention is excluded from patentability on other grounds. The search examiner should however act on these opinions only to the extent that this is necessary in order to carry out the search (but see 17.67, 17.94- 17.98.1). Views formed at this stage do not bind the substantive examiner.
17.31 It is not possible, given the wide variation in nature and scope of protection sought in different applications, the great variety of technical subjects and the wide divergence between classification systems in different subject-matter areas, to give more than general guidance as to how the search is to be performed. The search examiner is required to make "such investigation as in his opinion is reasonably practical and necessary", and while what is set out in the following paragraphs will apply to most applications, an unusual case may require an unconventional approach.
PREPARING FOR THE SEARCH
Assessing the invention
17.32 In order to carry out his statutory duty the search examiner must read as much of the specification as is necessary to obtain a clear understanding of the essential nature of the invention. The main claim itself may give a guide to this, particularly if it is in the two-part form prescribed by Rule 43(1) EPC and Rule 6.3 PCT, with a preamble setting out the state of the art followed by a statement of what characterises the invention. (This type of claim is also sometimes referred to as the Germanic form of claim or, in the US, a Jepson claim). A discussion in the specification of the prior art and/or of the problem to be solved by the invention may also provide, in conjunction with the main claim, a good guide to the essential nature of the invention. Neither the search examiner nor the substantive examiner is however bound to accept the applicant's assessment of what constitutes the inventive step.
17.33 Where there is no discussion of the prior art in the specification the search examiner will have to rely on his own knowledge to form an opinion as to what the invention is. If he is unable to do this a preliminary search may be necessary before the nature of the invention can be established with reasonable certainty.
17.34 The extent to which it is necessary to read the description and the dependent claims will therefore depend on the case. Although the search examiner need not study all the details of the description, he should consider them to the extent that this is necessary to understand the workings of the invention, the problem to be solved, the way in which this solution is arrived at, and whether all of the features specified in the main claim as characterising the invention are in fact technically essential in the sense that the invention could not be performed without them, or whether some could, without ingenuity, be replaced by equivalents or be omitted altogether (see 14.114-14.116.2). It is also necessary to establish whether there is unity of invention (see 14.157-14.168), particularly where there are two or more independent claims (but see 14.164); if there is not unity the search must be directed to the first invention claimed (see 17.106 and 17.107). See 19.23-19.26 for practice relating to trade marks in patent specifications.
17.34.1 For cases where the original claims were filed after the filing date of the application, the search examiner should also make a prima facie judgement of whether they are supported by the description. If support is clearly lacking (e.g. the claims include additional features not present in the description, or the scope of the claims is broader than the original teaching in the description), amendment will in due course be necessary to comply with s.14(5)(c) (see 14.145). The examiner should therefore direct his search to what the claim might reasonably be expected to cover after amendment (see 17.36). It is essential that this is drawn to the applicant’s attention at the search stage (see 17.83.2) in order for the
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r.31(5)(a) s.117(1)
applicant to decide how he wishes to proceed, since this defect may have serious consequences if significant amounts of technical disclosure are unsupported.
[A minute should be placed on the dossier to state whether late-filed claims are supported or not. If unsupported, the internal search report form should make clear if/how the search has been restricted. Where the claims contain additional features not in the original description, clause SC5 (at search stage) or SC6 (at CS&E) should be used. Private applicant versions of both these clauses are available (SC5PA and SC6PA).]
17.35 The applicant is allowed to amend the specification with the comptroller's consent before being informed of the search report, although only corrections under s.117(1) or amendments to the claims will be published in the A specification (see 16.20-16.23). When amendments are proposed before the search, the search examiner should consider their allowability, having regard to ss. 14(3), 14(5) and 76, and consent to those found allowable. Where relevant, an allowable amendment should be taken into account in determining the search strategy. If, during combined search and examination, a proposed amendment is found not to be allowable but would not, in any event, affect the search strategy, the amendment should be refused and the applicant advised accordingly, with reasons. Where search only is being undertaken and either it is impracticable for the search examiner to determine the allowability of a proposed amendment, or he considers that it is not allowable, consent should be withheld and the applicant advised that, pending consideration of the amendment at the examination stage, the amendment will be treated as a voluntary amendment filed under r.31(3) on the date of issue of the search report (see 19.15-19.19). If the proposed amendment is not allowable and would have affected the search strategy substantially, consideration should be given to consulting the applicant to determine whether the search should proceed in respect of the invention claimed in the application as filed. Amendments filed before A publication and unable to be published in the A specification will be incorporated in the specification and laid open to public inspection after A publication.
[The appropriate version of SC1 will usually serve to advise an applicant that consent has been given under r.31(5)(a) to an amendment filed before issue of the search report. Where search only is being undertaken and consent to an amendment filed before issue of the search report has been withheld, the other version of SC1 may be used to inform the applicant that the amendment will be treated as a voluntary amendment filed under r.31(3) and that it will be considered later at the examination stage.
[Purported claims which cannot be regarded as claims within the meaning of s.14 (eg claims to a sum of money), or claims which have clearly been filed on the wrong case may be replaced and if such replacement claims are filed within the prescribed period (see 15.50), they may be regarded as original claims for the purposes of the search.]
Matter to be searched for
17.36 The search should ideally cover all the subject-matter to which the claims are directed, or to which they might reasonably be expected to be directed after amendment (see also 17.34.1 and 17.83.2). On the other hand the search must be limited by what is practicable and reasonable. The completeness of any search is limited by the inevitable imperfections of any classification system and its implementation, and the vagaries of search words, and a complete search may not be justified, bearing in mind that the cost must be kept within reasonable bounds. The search examiner should therefore do his best within the time that is reasonably available to minimise the likelihood of failing to find existing highly relevant documents.
17.37 Although sometimes the subject-matter to be searched for will be based on what is defined in claim 1, as interpreted with due regard to the description (see 17.34), there are many instances in which a somewhat broader search will be necessary. This would be the case if there were a later, broader, independent claim linked to it by a single
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s.125
inventive concept, for example if claim 1 were directed to apparatus, defined narrowly, and a later claim to a method, defined more broadly. Also there may be a later claim which is formally dependent on, but is not within the scope of, the main claim (see 14.164), or there may be a specifically described embodiment, or a generalising statement in the description, which is not consistent with claim 1 (see 14.144). It is desirable that account be taken of such matters at the search stage in order to minimise the need for further searching at the substantive examination stage should the main claim be broadened on amendment. Moreover, it will usually be necessary for the matter to be searched for to be broader than claim 1 in some respects in order to cover inventive step as well as novelty (see also 17.50).
17.38 If what is claimed constitutes a novel application of what can be shown to be a known technique, material or structure, chosen for properties useful in the claimed field, the search will need to be directed to establishing whether there is anything in the prior art which points towards its use in the field in question, or whether it has been recognised as a generally available option in circumstances where the need for those properties arises. If either of these circumstances applies, or if it can be argued that the technique, material or structure and its properties would form part of the common general knowledge of the skilled person in the field in question, then the relevant disclosure(s) should be cited for lack of inventive step. The onus is then put on the applicant at substantive examination to argue that the skilled person in that field would be unaware of, or have reason to disregard that technique, material or structure.
17.39 If all or part of what is claimed is functionally equivalent to that which is known in the particular field, search should be directed to establishing this equivalence, unless it appears to be sufficient to rely on common general knowledge. If however the differences between what is known and what is claimed are matters of design having no functional significance it will normally be sufficient to assume that such differences do not provide a basis for establishing an inventive step, and no extensive search should be made for the non-significant differences.
17.40 If the claim is directed to a compound defined by a general chemical formula, the search should primarily be directed to finding compounds falling within the scope of the claim (preferably those described in the worked examples), and secondarily to discovering documents which disclose generic formulae overlapping the generic formula claimed. When citing documents disclosing generic formulae, citations relating to the same purpose as the application being searched should be cited in preference to those where a different use is envisaged.
17.41 If an invention is defined by reference to parameters (of a material or composition) which are not usually specified in the documents searched, and also by reference to a method of producing the material or composition, a search for the method per se may suffice. If the claim does not specify a method, reference data may be utilised to identify materials likely to possess the specified parameters, with a search then being made for such materials, and/or a search may be made for disclosures of prior art materials akin to those exemplified in the application and which might reasonably be expected to possess the required properties. Prior disclosures of such likely anticipations should be cited and the onus of distinguishing the invention thus put upon the applicant. The same procedure may be used if difficulties arise with the use of parameters in a method claim. (See also 2.18- 2.20, 3.88-3.93 and 14.121).
17.42 If the search examiner is of the opinion, after considering the whole specification, that the claims as they stand do not clearly define the invention, when for example because of an inappropriate choice of wording or terminology the claims in fact define something different from what has been described or unwittingly embrace matter which is well known, then the search should primarily be directed to what the search examiner perceives to have been invented. Documents may be cited against the claim as presently worded, but undue time should not be spent in finding "paper citations" which are likely to be rendered irrelevant when the claims are clarified.
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17.43 No special effort need be made to carry out a complete search in respect of an unduly broad or speculative claim (see 14.152-14.156). The search should be directed to that aspect of the claim which is supported by the description and which it is thought likely will form the subject of the claim if it is amended in response to an objection to its undue breadth. For example if an electrical servosystem is described and the claims also embrace a fluid pressure system, but it is not apparent from the description how a non-electrical system would be made, extension of the search beyond the electrical field would not normally be justified. If it is not possible to predict what is likely to be claimed after amendment or if an unduly broad and speculative claim appears to be merely a device for giving an impression of unity of invention, then the search examiner should use their judgement to decide the best course of action to follow as set out in 17.110.
Acknowledged prior art
17.44 If the specification acknowledges specific prior art, identified by document reference, the search examiner should consider the documents referred to, preferably before beginning the search, unless it is reasonably certain from the context that such documents are unlikely to be relevant to the issues of novelty and inventive step. Such declared prior art is often the most relevant available and may render the invention claimed obvious, or even, on occasion, anticipate it. Any such documents considered to be relevant should be reported in the same way as documents found as a result of the search. (See also 17.91)
[Where copies of acknowledged prior art documents are needed, they should be ordered at the first opportunity. However, where it is clear that the delay in obtaining the copies is going to be excessive, the search examiner may perform the search before receiving them. The action taken by the search examiner with regard to such documents and copies thereof should be recorded on the internal search report. If a document subsequently becomes available to the search examiner after issue of the external search report and proves to be relevant, then the search examiner should send a copy of it to the applicant together with SL5 or SL5B, as appropriate.]
17.45 If the search examiner is unable to obtain through normal channels a copy of an apparently relevant document he should contact the agent or applicant and make an informal request for a copy. (In the case of a reference to a German Gebrauchsmuster, the abstract (available in the Science Reference Library) should first be consulted). Such a request should still be made by the search examiner even if the search has already been done before the normal channels are exhausted or is likely to have been done before the request is answered. If the agent or applicant is unwilling to comply, or if to wait for him to do so would unduly delay s.16 publication, the matter should not be pursued. A formal request should not be made, nor should a translation of a foreign language document be asked for (see also 18.10, 89B.11). If the document is not available to the search examiner when the application is due to be sent for publication it may be included in the search report if the reference in the specification indicates that the document may be citable.
17.46 Documents said to be relevant which are referred to in a letter from the applicant or agent should be dealt with in the same way as prior art referred to in the specification.
17.47 Unidentified prior art referred to in the specification which appears to be relevant to the issues of novelty and inventive step should not be included in the search report, although it may be noted on the internal search report and considered at substantive examination (see 18.67).
Using the results of an earlier search
17.48 If the application claims priority from an earlier UK application the report of any search carried out on the earlier application should be inspected. (Even if it is merely necessary to update the previous search no refund of the search fee should be made).
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[It is necessary for the search examiner to be aware of any search performed on the earlier application. Therefore, if such a search has been carried out, the formalities examiner should annotate Form 1 and send the appropriate message to the search examiner. The examiner may import the ISR of the priority case into a dossier. If the earlier ISR is imported, then the examiner should ensure that the earlier ISR document is clearly distinguished from that of the application in question by appending the annotation “ISR of related case”. The copy function can be used to copy it across to the new dossier in which case it will retain its original document code. If no search has been made on the earlier application Form 1 should be annotated accordingly.]
[Deleted]
17.49 Likewise in the case of a divisional application the search done on the parent application should be consulted, see 15.38. (For refunds in such cases, see 15.47- 49). It may also be useful to inspect the search report of an earlier pertinent application referred to in the specification or found in the course of the search.
PERFORMING THE SEARCH
17.50 When the search examiner is satisfied that he has understood the essential nature of the invention he should draft a statement of the critical matter (search statement), any non-essential limitations in the claims being ignored (see 17.34, 17.36-17.37, 17.42-17.43, 17.53 and 17.57). The statement should as far as practicable be such that if no anticipation of it is found it can confidently be concluded that what is claimed is both new and inventive (see also 17.58). That is, if the critical matter is novel the invention claimed cannot be said to be obvious.
17.51 The search for the critical matter should then be made. The search examiner must use his knowledge and experience to formulate a search strategy, deciding which databases or other sources could contain citable documents and establishing the order in which these should be searched, taking into account all available classification systems and suitable search words. This decision depends not only on the technical character of the critical matter (whether corresponding to a broad concept of wide application or whether highly specific in a narrow technical field), but also on the manner in which the search material is organised.
17.52 When formulating the search strategy account should be taken both of the likelihood of search in a given area being fruitful and of the amount of effort needed to search that area. Thus search having a low (but finite) chance of success in a particular area may be justified if the search would be short, but not if a disproportionate amount of time would be necessary, and may even be done before a considerably longer but potentially more fruitful search.
17.53 If possible, the search statement and search strategy should be determined provisionally before beginning the search. Since the critical matter depends not simply on what is disclosed and claimed but also on its relationship with the state of the art, the search examiner must always be prepared to revise both during the search, and in some cases a preliminary search may be necessary before either can be decided upon.
Field of search
17.54 Although any matter (subject to certain specified exceptions), including prior use, which forms part of the state of the art (see s.2) may be cited in support of an argument that an invention is not new or does not involve an inventive step, for the purposes of the investigation under s.17(4) the search examiner is only required to consider documentary evidence. There are no limits as to where the prior disclosure was published. Publication anywhere in the world becomes effective on the date on which it takes place. This publication date must (except in the case of an application forming part of the state of
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the art by virtue of s.2(3)) be earlier than the priority date of the invention being searched. For search purposes, the priority date is that indicated in accordance with 17.74.
In considering internet disclosures, the search examiner should cite any documents which are considered to be highly relevant, even if no publication date can be established or there is a possibility that the document was published later than the priority date of the invention being searched. Such documents should be cited under category X or Y with an accompanying note in the covering letter to say that a ‘publication’ date cannot be established but that the disclosure appears highly relevant and there may well be a related patent application which does form part of the state of the art (see 17.83). When updating the search, the examiner should search for such corresponding patent applications. Where the application in suit has not been published the examiner should not contact the owner or author of any such prior art in an attempt to establish a publication date. Following publication of the application in suit examiners may contact a third party author if they feel such action is appropriate, however consideration should be given to the efficient processing of the application and unnecessary investigation should be avoided.
The documentary evidence may also include descriptive matter, published subsequently to the relevant priority date, but indicating that the invention was known before that date. Thus the search report may include a document containing a description of the invention together with a statement that it was used publicly before its priority date or that an oral description thereof was made public, e.g. in a lecture before a learned society, before that date (see 2.27). Non-documentary evidence of prior use should not formally be cited at this stage. However, if the search examiner is aware, either from personal experience or from information from another examiner or from a member of the public (see 21.12-21.13), of an instance of prior use which is apparently destructive of the novelty or inventive step of the invention claimed, all the relevant facts should be communicated to the applicant - provided sufficient circumstantial details of the prior use are available to enable the applicant to make his own independent enquiries. Therefore a vague or anecdotal allegation of prior use should not be pursued. (See also 18.24 for the procedure at examination stage).
[The letter accompanying the search report should be used for bringing an instance of prior use to the applicant’s attention. In no circumstances should the search examiner offer to make the anticipatory matter (or a drawing or photograph of it) available to the applicant or to third parties, unless provided by a member of the public. This is in order to avoid the involvement of the examiner in his personal, as opposed to his official, capacity in the patent proceedings.]
17.55 The search examiner consults documents available through online databases and may supplement this search with an internet search and/or a search through paper documents held in the Office. Online databases include patent databases (such as the European Patent Office Documentation (EPODOC) and Derwent World Patents Index (WPI) databases) and non-patent literature databases, which often cover specialist areas of technology. The choice of databases and tools used to perform the search will depend on the subject matter of the application, and should be based upon the examiner’s judgement of where relevant prior art is likely to be found.
[The search should not rely exclusively on CPC classification terms as there can be a delay between publication of non-EP/US patent documentation and its classification in CPC, and not all national document collections are classified to that scheme (for example most JP, KR and CN patent publications are not classified to the CPC). Therefore, unless the search is deliberately curtailed (see 17.83(d), 17.83(e) and 17.117), a search should also cover documents only classified to IPC (either directly or by word-only searching). The examiner should also consider whether a FICLA and/or FT search would be appropriate.]
17.55.1 Where a patent document is found during the search which is relevant for novelty and/or obviousness, the examiner should consider whether to perform a citation search on that document, to identify documents cited against it, and to identify other patent documents against which it has been cited. While such a citation search is normal practice
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for relevant patent documents (ie those which are to be cited as “X” or “Y”), this may depend on the factors such as the overall relevance of the document, the numbers of documents cited against it and the circumstances of the case; for example, if there are numerous novelty citations it is unlikely to be useful to perform citation searches to identify yet further relevant documents. Similarly, when a published case equivalent to the application in suit is found, citations on that case should generally be checked. This is discussed further in the discussion of the top-up search (see 17.115) as such equivalents will not normally be published at the time of the initial search.
[Citation searches can be carried out using COMBI, and noted in the internal search report. For citation search against family members of the application in suit, see 17.115]
17.56 As a matter of course and as necessary, to establish common knowledge in an art for the purpose of establishing the presence or absence of an inventive step the search may extend to other readily accessible published information e.g. standard text books and technical review articles. If, in any particular case, the search examiner is aware of a relevant prior publication, he should include it in the search report.
Search strategy
17.57 The areas most likely to contain the most relevant documents will normally be those relating to the technical subject with which the invention, or specific embodiments of it, is concerned. However if the critical matter is of broad application but is claimed narrowly, it may be appropriate first to search disclosures of general applicability, and it may then be unnecessary to extend the search to areas more specifically concerned with the particular manufacture claimed. For example if the claim were directed to a vehicle body or container comprising a particular structural joint, but the critical matter appeared to consist of the joint per se then the primary search would be in the areas relating to such joints. The search examiner should keep a look-out for any documents disclosing the use of similar joints in vehicle bodies or containers or in an art close enough for the document to be used in conjunction with a disclosure of the joint per se to show that it would not be inventive to use particular joints in this way. If an anticipation of the critical matter has been found, extension of the search to those areas concerned with the higher level of organisation (in this case vehicle bodies or containers) may not be necessary, particularly if a supporting document of the kind referred to in the preceding sentence has been found. This would also be the case even if no anticipation of the critical matter had been found if it could be said with reasonable certainty that if a document disclosing the joint per se did exist it would be found there.
17.58 If the invention is a prima facie new organisation for which documents would need to be found showing it to be known or obvious as a whole if an objection were to be sustainable, then a single search in the fields most relevant to such an organisation will generally suffice, and there will not normally be any point in searching at different levels of organisation. If the invention appears to be a non-inventive combination, for example a particular element in a particular machine, a search to establish whether the combination is known should be made as a matter of course, unless in the search examiner's opinion the chances of finding an anticipation are remote. If no such anticipation is found or searched for, search should be considered for the element and the machine per se, and/or for documents which could be used to argue the non-inventiveness of the combination by showing that the particular element is a conventional option in the relevant technical field. For example if a central heating boiler having a particular fuel spraying nozzle were claimed, and a disclosure of the same nozzle in an engine were found, a further document describing similar nozzles in a way which implied that they could be used in both boilers and engines would be highly relevant. Separate search statements should be written for the respective searches, which may need to be carried out in different headings. If both the element and the machine are sufficiently well known for this to be asserted without documentary evidence, and the obviousness of making the combination can be argued from common general knowledge, then the novelty search may suffice.
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17.59 In some circumstances it may only be feasible to make a novelty search, ie a search limited to the claimed context even though the characterising part of what is claimed is not peculiar to that context. This could arise if the claim were directed to the use of a generally applicable technique in a specific context but where the available classification and search words do not provide a way of feasibly searching for that technique in general and the searcher is unable readily to identify the various contexts in which it may find use.
17.60 When the search examiner considers that a search might usefully be made in an area which is the field of expertise of another examiner, he should consult and take advice on where to search and the likelihood of finding relevant documents. The results of these consultations should be recorded on the ISR. Consultation should be restricted to whatever is necessary for the other examiner to understand what the search need is, and a second analysis of the case by the other examiner should be avoided unless the latter has reason to believe (eg because of his greater experience) that it would be useful. The primary examiner should normally make the whole of the search himself. Exceptionally the application may be sent to another examining group for search, eg where the examiner consulted thinks that it would be more economical or convenient for him to do the search himself. It must however always be remembered that avoidance of delay is of the utmost importance and cases should be sent to another examining group for search instead of being done by the primary search examiner himself only when the time allowable for completion of the search is adequate.
17.61 The search examiner should beware of an ex post facto approach to the subject of obviousness when deciding to extend the search to arts not mentioned in the application. The question to be answered is not, given the invention, in what fields might it be applied, but, given the problem to be solved by the invention, in what analogous arts would it be reasonable for the skilled person to seek the solution (see also s.3).
Reconsidering strategy during the search
17.62 While searching for the critical matter the search examiner should keep in mind the nature of any evidence which would be needed, in conjunction with an anticipation of the critical matter, to support an argument of lack of inventive step. If an anticipation of the critical matter, but not of every feature of the claimed invention, has been found, the search examiner should consider whether to search for supporting evidence elsewhere.
17.63 If the novelty and inventiveness of the main claim cannot be impugned there is no point in making a special search for the subject matter of dependent claims. It is however as well to note any disclosure of the subject matter of a dependent claim which is found while searching the main claim, since this could become useful if material citable against the main claim were either found later on in the same search or came to light subsequently.
17.64 The search strategy should be reviewed on finding documents which demonstrate either that the invention of the main claim lacks novelty or is obvious or, when there is more than one independent claim, that the claims relate to more than one invention (see 17.88). It should be borne in mind that while several documents may produce a stronger argument that something forms part of the common general knowledge (for assessing inventiveness) than a single document, in the case of an objection of lack of novelty a multiplicity of citations may be merely redundant.
17.65 The search examiner should attempt to anticipate in what way the claim is likely to be amended. Often amendments will take the form of combining one or more of the dependent claims with the main claim; in other cases the search examiner may be able to tell, from his knowledge of the art and the results of his search, that a feature described but not brought out in the claims is likely to be used on amendment to characterise the invention. If the direction of amendment can be predicted with any reasonable confidence, the search should be focussed on finding documents of potential relevance to possible amended claims. However, no search is necessary for claims which merely add features which are trivial or
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conventional.
17.66 If it is not possible to predict what is likely to be claimed after amendment, the search examiner should use his judgement to decide the best course to follow. The aim should be to minimise the need for searching at the substantive examination stage, but there is no point in performing at the search stage any search for which there is a strong possibility that the effort will prove to have been misdirected. If the invention of the main claim is shown to be not novel or inventive, and a complete search in respect of it is not practicable, and the dependent claims diverge from it, for example in order to embrace different embodiments, so that while in form the claims relate to a single invention, in practice they do not, several courses are possible: see 17.110 and 14.164.
Other documents found
17.67 The search examiner should also, while searching for documents which bear on the questions of novelty and inventive step, note any documents which may be relevant for other reasons, for example conflicting UK or European (UK) applications (see 18.91-18.97.1, 73.05-73.12) or documents which support a view that the invention is non- patentable on other grounds or cast doubt on the validity of the claim to priority (for example suggesting that the priority document was not the first relevant application), or which illustrate the technical background or contribute to a better understanding of the invention. Such documents should be cited as “A” unless they are also relevant for the novelty or obviousness of the searched invention (see 17.80). No special search should however be made for such documents unless there is a good reason in a particular case for doing so.
Section 17(5)
On any such search the examiner shall determine whether or not the search would serve any useful purpose on the application as for the time being constituted and -
(a) if he determines that it would serve such a purpose in relation to the whole or part of the application, he shall proceed to conduct the search so far as it would serve such a purpose and shall report on the results of the search to the comptroller; and
(b) if he determines that the search would not serve such a purpose in relation to the whole or part of the application, he shall report accordingly to the comptroller;
and in either event the applicant shall be informed of the examiner's report.
THE SEARCH REPORT
17.68 In the normal case, where the examiner has been able to carry out a search, a report identifying the relevant documents and indicating why they have been cited is sent to the applicant. The documents are also listed on the front page of the published A- document which also includes a copy of the external search report(s).
[That information which is to constitute the search report to the applicant (see 17.69- 17.82) should be recorded within the upper and lower tables of the internal search report. Information which is intended solely for the substantive examiner (see 17.86- 17.93) should be recorded outside these tables. The search report to the applicant should not include an excessive number of citations. Where a very large number of items has been found, the search examiner is expected to use his judgment and select the most relevant. If it is difficult to determine which are the most relevant, normally only examples should be cited and the applicant so informed by adding a passage to the search report letter before the paragraph about other search results (see 17.83). The number of items cited should not in general exceed twelve unless there is a special reason for more, although a larger number can of course be noted outside the tables of the internal search report.
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[The Deputy Director or subclass examiner, after due consultation, should arrange for an appropriate early response to issue following enquiries from the agent or private applicant regarding the date of issue of the search report. Any letter confined to such an enquiry is forwarded by the formalities examiner direct to the relevant group Deputy Director. The method and substance of the response should be determined according to the particular circumstances: in general, the response should be by letter rather than telephone (plus telephone report), and may be issued by the appropriate Formalities Manager. When it is possible to make a relatively accurate estimate the response should specify the anticipated month of issue. In other circumstances it may be appropriate to be less precise eg to indicate that the report is not likely to issue before a specified date (month). In any event, the response should indicate the telephone number of a named contact.
[In most cases, publication of an external search report does not require any action on the part of the search examiner. However see 16.33 and 17.105 for action to be taken if the search examiner becomes aware of an error in the external search report or of an additional citation after the external search report has issued.
[Search report covering letters SL1, SL1A, SL3, SE1 and SE3 include a request for disclosure of details of search results from other patent offices on the same invention. This request covers official search reports only, but excludes reports issued by WIPO or the EPO, reports with no citations, or those already supplied on an earlier GB patent application. The request is active for reports issued before the first response made to a report under section 18 issued on the application, or two months after the date of a report under section 18(4) where no response is made to this report.
[Private applicants' cases
[The search examiner should use SL1PA to act as the covering letter for the external search report. The Preliminary Examination Report (using LFEPA) should be issued only if there are any formalities objections. Paragraphs may be added to the search report covering letter before the paragraph about other search results (see 17.03 and 17.83) and the search examiner should satisfy himself that the letter and any enclosures will make a coherent whole. The procedure for obtaining copies of cited documents for issue with the external search report is outlined in 17.104.1. Where there is plurality of invention on a private applicant case, SC13 can be used. Where there is no standard private applicant letter or clause available, other standard letters and clauses may be used where appropriate, with modification to suit the individual case if the search examiner sees fit. SC17PA should be included to recommend the use of a patent attorney or other professional advisor.]
Field of search
17.69 The search examiner should identify the field of search by entering the appropriate details in the “Field of Search” table in the internal search report. Only current IPC terms and (if used) terms from the final edition of the UK Key (edition X) can be entered. When a search is made through documents classified under the IPC, CPC or FICLA, the relevant IPC sub-class(es) should be indicated in the “IPC” entry - eg G03B, G06F. In the rare instances that the search was limited only by search words and was not limited to any IPC or CPC sub-classes, the “IPC sub-class” box should be left blank. The “UKC” entry should be used if the search has been conducted through documents classified on the UK Key (whether GB patent documents or otherwise). Only the heading(s) searched should be recorded under the “UKC” entry - eg G3N, H2F.
[Details of the field of search are entered into the “Field of Search” table by opening a dialogue box while editing the internal search report in Word; this is done by clicking on the ‘Add-Ins’ tab and then selecting ‘Maintain FOS’. There are two input fields for Other Field Of Search: The ‘Other Field Of Search for this ISR’ is used by PROSE to record the other field of search specific to the current ISR, while the ‘Other Field Of
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Search total for the case on OPTICS’ is that which is to be stored on COPS. This is because COPS only has one free text field for this information and different searches conducted on a case may include different fields of search. For the first ISR on a case the examiner should enter the same data in each field. For each subsequent ISR at the ‘A’ stage, the first field should be filled with the details specific to that ISR, while the second field should be filled with an accumulation of the data for all the ISRs up to that point, but should not contain any duplication. When the examiner enters the details for a second ISR, for example, the second field will already be populated with the data recorded for the case from the first ISR and so all the examiner need to add to the second field are further “other” fields of search, such as databases not searched in the first search. The examiner should enter the appropriate text (see 17.71) or right click to display standard texts for selection.
[Fuller details on the field of search should be entered outside the “Field of Search” table - usually under the heading “Other details about field of search”. For the UKC, a heading and any classifying terms searched in it should be recorded here - eg H2F (F3C, F3D). For a search of documents under the IPC or CPC, more detail should be given, including sub-classes, sub-groups and all CPC terms searched - eg E05B 1/00, 1/0007, 1/003, 1/04. Other details given may include any search using terms from earlier editions of the UKC or IPC, or an explanation if the CPC classifications have no suitable IPC equivalent at sub-group level.
[Deleted]
17.70 If the search has been stopped at a certain date because the search examiner considers that no relevant documents would be found earlier than that date, for example because of the nature of the technology used in the invention, there is no need to tell the applicant. If however the search has been discontinued for some other reason (usually because sufficient relevant documents have already been found) then the applicant should be informed (see 17.83).
17.71 Databases used and document collections searched should be recorded under the Field of Search entry “Online & other databases”. Online databases should be recorded using the standard database names e.g. EPODOC, WPI, INSPEC. When fulltext searching is conducted, this should be listed as “Patent Fulltext”. Those database names which are also registered trademarks are acknowledged as such in the standard database names document but not in the search report. If an internet search has been performed, this should be recorded as such in the external search report, but names of individual search engines that are used for the search should not be listed unless they have been accessed through a subscription and are not freely available. If however only one or two websites have been looked at, then the Internet should not be listed on the external search report because this may lead to the impression that a significant internet search has been conducted.
[Databases should also be recorded using PROSE. For further information on internet references, see the Internet Searching Manual.]
17.72 [Deleted]
Claims searched
17.72.1 The search report also includes an indication of the claims in respect of which the search has been done. In general, all claims dependent on a main claim which has been searched should be listed by number provided none falls outside the scope of the main claim (eg by virtue of specifying omission of some feature(s) of the main claim). Where a dependent claim introduces a feature which is not trivial or conventional, this claim should still be listed in the claims searched. However, if the search examiner considers that further searching in respect of this feature may be required at a later stage then the applicant should be warned in the covering letter. Independent claims and claims dependent upon them should also be listed by number when they fall within the scope of the search made. If the claims searched have been amended in wording or numbering from those originally filed, their date
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of filing should also be stated in the "Claims searched" box.
[The indication of claim(s) searched should be consistent with the indication as to which claim(s) the cited documents are considered relevant (see 17.77).]
17.72.2 Where there is lack of unity, then claims relating wholly to second or further inventions should not be included in the “claims searched”. Claims relating to a first invention and also dependent upon claims to subsequent inventions should be listed in the “claims searched” along with an indication that only a partial search has been performed in respect of these claims. In addition, independent claims should not be searched if they relate to subject matter wholly unpatentable under s.1(2), s.1(3) or s.4A (see 17.94 and 17.107). However, claims which are unpatentable under s.1(2), s.1(3) or s.4A as worded but which could form the basis of a patentable claim – for example, method of treatment claims which could be converted to a valid second medical use claim – should be searched if they fall within the first invention. Claims which are completely unsupported and of indeterminate scope (for example, “reach-through” claims to compounds identified by an assay or screening method – see 14.156.1) should not be searched. A brief explanation in the internal search report and search letter as to why the claim was not searched should be included in the internal search report and search letter. Occasionally applications contain totally indeterminate claims, for example, directed to "any novel matter disclosed". Such claims should be disregarded at the search stage; no reference need be made to them in either the external search report or the accompanying letter.
[In the “claims searched” the examiner should record “(in part)” after any claims which have been partially searched because they relate to a first invention and also depend upon independent claims to subsequent unsearched inventions]
Documents cited
17.73 The search examiner should report primarily those prior publications - including those acknowledged in the application - which could prove useful to the substantive examiner when constructing an objection based on lack of novelty or of inventive step. He should be generous in his assessment of what the substantive examiner might consider relevant and particularly in the absence of category X or Y documents should also include documents illustrating background art, see 17.80. The examiner should always cite at least one document in the first search report on an application, unless – exceptionally – he considers that the invention relates to a wholly new field of technology and so no relevant documents of any kind can be found. If a document of the kind referred to in 17.67 is included, the reason for its inclusion should be referred to in a supplementary report in the search letter (see 17.83).
[The first two columns of the lower table of the internal search report headed “Ref” and “Location” are for the convenience of the search examiner, who can include in the first of these a private shorthand reference code to readily identify a citation and, in the second, the source or location where the cited document is to be obtained or found. The information in these columns will not be carried over to the external search report.]
[In the exceptional case that no relevant documents have been cited, “None” should be inputted in the citation field of the ISR]
17.74 Whether or not a given document forms part of the state of the art in the case of an invention may depend on the priority date of the invention, and also on that of the matter in the document. The priority date may differ for different parts of the matter disclosed in an application or for different aspects of the invention (see 5.20-5.24). The search examiner should however treat the actual filing date of the application being searched as though it were the priority date of all the matter present. In this way, if it should transpire that an invention is not entitled to a priority date which has been declared, or if the applicant should relinquish his priority date, this will not cause him to be confronted with a citation of which he had been left unaware. In order to decide whether a published application should be included in the search report by virtue of s.2(3), the potential citation should be treated as
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though all the matter in it were entitled to the earliest priority date declared. All this is without prejudice as to what may be the true priority date of matter in either the application being searched or in the potential citation. (For the practice at substantive examination see 18.14- 18.16).
17.75 The citations should be listed according to relevance, starting with any category X documents, followed by category Y documents and lastly category A documents. The documents within each category should also be listed with the most relevant (eg the one relevant to most claims) first. The relevant passages for consideration in each document should normally be indicated (see 17.81). In the absence of any significant priority (eg where all the documents are category A), UK patent specifications should be listed first, followed by EP specifications, PCT pamphlets, foreign patent specifications in country code order and finally non-patent literature.
[Details on citation formats in PROSE can be found online].
17.76 [Deleted]
Further information
17.77 An indication of why each document has been included in the search report should be given by assigning a category indicated by a code letter (eg X, Y or A – see 17.78-17.80). The claims to which it is considered relevant should also be indicated, as should pertinent passages wherever possible (see 17.81). The relevance of the document to each claim (except for any relating to a second or subsequent invention where there is not unity of invention, see 17.106 to 17.110) should have been investigated and all of the claims affected should be listed on the search form, as far as it is reasonably practicable to do so. In cases which are complex or obscure or have a very large number of claims, it may not be practicable to consider all of the claims in sufficient detail for every claim affected to be identified. In any event, at least those claims (or those of the claims which relate to the first invention where there is not unity of invention) which are independent or which appear prima facie to relate to new or important features or the characterising features of particular embodiments, rather than merely reciting standard prior art features, should have if possible received particular attention and be listed if appropriate. While the substantive examiner will be guided by the search examiner's assessment of the citations, he is not bound by it, and may take a different view after his more detailed consideration of the whole specification.
[All claims listed against cited documents in the search report should be included in the list of claims searched. A supplementary report should issue in the form of an appropriately headed passage in the search letter (before the paragraph about other search results) if only a partial search was made in respect of any claims so listed (see 17.72.1). Examiners should consider and report on the relevance of citations to appendant claims only to the extent that it is reasonably practicable so to do. Where it has not been practicable to consider all of the claims, it is acceptable to qualify listed claims with “at least”. Consideration should then be given to including comments in the internal search report form (ISRF) and search letter explaining the extent to which the relevance of the citations to the claims has been consider