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MANUAL FOR SUBSTANTIVE EXAMINATION PROCEDURE
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CHAPTER I – INTRODUCTION
1. General
1.1
The present Manual for the examination of patent applications has been
written with the aim of providing a comprehensive reference guide for
both IPO patent examiners and the general public on matters of patent
law and interpretation. The Manual gives instructions as to the
practice and procedure to be followed in the various aspects of the
substantive examination of Philippine patent applications in accordance
with Republic Act No. 8293 (“IP-code”) and the implementing Rules and
Regulations (“IRR”). They are addressed primarily to the staff in the
IPO, but it is hoped that they will also be of assistance to the
parties to the proceedings and patent practitioners.
1.2
The Manual is intended to cover normal occurrences. It is therefore to
be considered only as general instruction. The application of this
Manual to individual patent application is the responsibility of the
examining staff and they may depart from these instructions in
exceptional cases. Nevertheless, the parties can expect the Office to
act as they are revised. It should be noted also that the Manual does
not constitute legal provisions. For the ultimate authority on practice
in the IPO, it is necessary to refer firstly to the IPO-code and the
IRR.
2. Format
2.1
It will be noted that in this Manual, the text has been divided into
Chapters, each sub-divided into numbered Sections which are further
sub-divided into paragraphs. Cross-references to other paragraphs
within this part are in a standard form quoting in each case the
Chapter, Section and paragraph number (thus e.g., III, 6.5 means
paragraph 6.5 in Section 6 of Chapter III).
2.2
Marginal references indicate the relevant Sections of the IPO-code or
the relevant Rules of the IRR, which provide authority to what is
stated. It is believed that such references avoid the need for
extensive quotation from the IP-code and the IRR themselves.
2.3 In this part of the Manual, the term “examiner” is used to mean the Examiner entrusted with substantive examination.
2.4
In this part also, an attempt has been made to deal with the
requirements of the application in earlier Chapters and to concentrate
matters of procedure in Chapter VI. However, it has not always proved
practicable to draw a hard and fast line between these aspects of the
work.
3. Work at the Bureau of Patents
3.1
It is important that the various departments of the Office and various
staff in the same department should not attempt to duplicate one
another’s efforts. For example, the substantive examiner should.
not attempt to check the formalities work performed by his colleague
in the formality division. One of the purposes of the Manual is to make clear where the demarcations of the responsibility lie.
3.2
The attitude of the examiner is very important. He should always try to
be constructive and be helpful. While it would of course be quite wrong
for an examiner to over look any major deficiency in an application, he
should have a sense of proportion and not to pursue unimportant
objections. He should bear in mind that, subject to the requirements of
the IP-code and the IRR, the drafting of the descriptions and claims of
an application is the responsibility of the applicant or his
representative.
3.3
It should hardly need stating that all patent applications, regardless
of their country of origin should receive equal treatment.
|
CHAPTER II:
CONTENT OF THE APPLICATION (OTHER THAN CLAIMS)
Sec.
37
Rule
411 |
1. General
The
requirements of the Philippinepatent
application are set out in Section 32.1 and Rule 400. The application
must contain:
(a)
a request for the grant of a Philippinepatent;
(b)
a description of the invention;
(c)
drawings necessary for the understanding of the invention;
(d)
one or more claims;
(e)
an abstract.
This
chapter deals with all these requirements, in so far as they are the
concern of the examiner carrying out substantive examination, with the
exception of item (d) which is the subject of Chapter III. Item (e) is
dealt with first. |
Sec.
37
Rule
411 |
2. Abstract
2.1
The purpose of the abstract is to give brief technical information about
the disclosure as contained in the description, claims and drawings. It
useful as a searching tool for the examiner. Therefore, it should give
sufficient information to make it possible to judge whether there is a
need to consult the description claims and drawings. It must be drafted
in a way which allows the clear understanding of the technical problem,
the gist of the solution of that problem through the invention, and the
principal use of the invention.
2.2
The abstract relates to the application as filed and published and its
final form is settled before publication of the application. It is
therefore not necessary to bring it into conformity with the content of
the published patent even if this should differ in substance from that
of the application. The examiner should therefore not seek any amendment
of the abstract after publication of the application. He should,
however, note that the abstract "shall merely serve for technical
information". It should also provide guidance to reader in order to
obtain additional information from the description, claims and drawings.
It has no legal effect on the application containing it; for instance,
it cannot be used to interpret the scope of protection or to justify the
addition to the description of new subject-matter.
2.3 More particularly, the abstract should
(a)
commence with the title of
the invention,
(b) indicate
the technical field to which the invention relates,
(c)
preferably
not contain more than one hundred fifty words,
(d) if necessary, contain the chemical formula which, among
those contained in the application, best characterizes the invention,
(e) not contain statements on the value of the invention or on
itsspeculative application,
(f) be accompanied by a figure, if appropriate, and
(g)
comprise reference signs between parenthesis following each maintechnical feature mentioned in the abstract and illustrated
by drawing. |
Sec.
34
Rule 403
Rule
404
Rule
410
|
3.
Request for grant and title
3.1
The items making up this request are dealt with in Section 34, Rules 403
and 404.
3.2
The request shall be made on a form drawn up by the Office (Rule 403).
For the convenience of applicants, the Office shall draw up and
make available a standard application form which may be reproduced at
will by applicants and other persons at their own cost.
3.3
The request shall contain the following:
(a)
Petition for the grant of a patent;
(b)
Applicant’s name and address;
(c)
Title of the invention;
(d)
Inventor’s name;
(e)
If with claim for convention priority
it shall contain the file number, country of origin and the date of filing in the said country
where the application was first filed;
(f) name and address of the resident
agent/representative (if any);
and
(g)
Signature of the applicant or resident agent/representative.
The
requirements are checked during formality examination
3.4
The title should be "as short and specific as possible". It
should also be indicated on the first page of the specification.
The
title shouldclearly and
concisely state the technical designation of the invention and should
exclude all fancy nameswhich
do not define the technical subject with which the invention is
concerned. Very long titles and vague titles such as “chemical
process” or “electric circuit” are objectionable. They do not give
an adequate indication of the technical designation of the invention.
Examples of fancy names: “wonderful new product" or
"improved machine" The examiner should bear in mind that the
title is also used for search and documentation purposes. |
|
4. Description
|
Sec.35.1
R.405 |
4.1
The application must "disclose the invention in a manner sufficiently
clear and complete for it to be carried out by a person skilled in the
art". The meaning of "person skilled in the art" is
discussed in IV, 9.6. |
R.406 |
The
test for enabling disclosure is whether the persons to whom it is
addressed could, by following the directions therein, put the invention
into practice.
The
sufficiency of the disclosure is to be assessed on the basis of the
application as a whole, including the information given in the claims,
description and drawings, if any. |
R.407(1) |
The
provisions relating to the content of the description are set out in Rule
407(1). In particular, the description shall:
(a)
specify the technical field to which the invention relates;
(b)
indicate the background art which, as far as known to the applicant, can be regarded as useful for
understanding the invention, for drawing up the search report and for the
examination, and, preferably, cite the documents reflecting such art;
(c) disclose the invention, as claimed, in such terms that the
technical problem (even if not expressly stated as such) and its solution
can be understood, and state any advantageous effects of the invention
with reference to the background art;
(d)
briefly describe the figures in the drawings, if any;
(e) when there are drawings, there shall be a brief description of the
several views of the drawings and the detailed description of the
invention shall refer to its different parts, as shown in the views, by
use of reference letters or numerals (preferably the latter);
(f) describe in
detail at least one way of carrying out the invention claimed using
examples where appropriate and referring to the drawings, if any; and
(g) indicate explicitly,
when it is not obvious from the description or nature of the invention,
the way in which the invention is capable of exploitation in industry. |
R.407(2) |
The
description shall be presented in the manner and order specified here
above, unless because of the nature of the invention, a different manner
or a different order would afford a better understanding and a more
economic presentation.
The
purpose of the provisions of Sec.35.1 and Rule 407 is:
(i)
to ensure that the application contains sufficient technical information
to enable a skilled person to put the invention as claimed into practice;
and
(ii)
to enable the reader to understand the contribution to the art which the
invention as claimed has made.
|
R.410
R.407(1)(a) |
4.2
The title of the invention should appear as a heading on the first page of
the description (R.410). The invention should then be placed in its
setting by specifying the technical field to which it relates. |
R.407(1)(b)
R.416(b)
Sec.49
Sec.35.1 |
4.3 The description should also mention any
background art of which the applicant is aware, and which can be regarded
as useful for understanding the invention and its relationship to the
prior art; identification of documents reflecting such art, especially
patent specifications, should preferably be included. This applies in
particular to the background art corresponding to the first or "prior
art" portion of the independent claim or claims (see III, 2.2). The
insertion into the statement of prior art of references to documents
identified subsequently, for example by the search report, may be
required, where necessary, to put the invention into proper perspective.
For instance while the originally filed description of prior art may give
the impression that the inventor has developed the invention from a
certain point, the cited documents may show that certain stages in, or
aspects of, this alleged development were already known. In such a case
the examiner may require a reference to these documents and a brief
summary of the relevant contents. The subsequent inclusion of such a
summary in the description does not contravene the proviso of Sec.49. The
latter merely lays down that, if the application is amended, for example
by limiting it in the light of additional information on the background
art, its subject-matter must not extend beyond the content of the
application as filed. But the subject-matter of the Philippinepatent application within the meaning of Section 49is to be understood – starting off from the prior art – as
comprising those features which, in the framework of the disclosure
required by Sec.35.1, relate to the invention (see also VI, 5.3).
References to the prior art introduced after filing must be purely
factual. Any alleged advantages of the invention must be adjusted if
necessary in the light of the prior art. New statements of advantage are
permissible provided that they do not introduce into the description
matter which could not have been deduced from the application as
originally filed (see VI, 5.4). |
Sec.24.2 R.204(b) |
If
the relevant prior art consists of another published Philippinepatent application falling within the terms of Sec.24.2, the fact that this document falls under Section 24.2 (see alsoRule 204(b))may be
explicitly acknowledged, thus making clear to the public that the document
is not relevant to the question of inventive step (see IV, 9.2).
4.4
Since the reader is presumed to have the general background technical
knowledge appropriate to the art, the examiner should not require the
applicant to insert anything in the nature of a treatise or research
report or explanatory matter which is obtainable from textbooks or is
otherwise well known. Likewise the examiner should not require a detailed
description of the content of cited prior documents. It is sufficient that
the reason for the inclusion of the reference is indicated, unless in a
particular case a more detailed description is necessary for a full
understanding of the invention of the application (see also II, 4.18
below). Lists of several reference documents relating to the same feature
or aspect of the prior art are not required; only the most appropriate
need be referred to. On the other hand the examiner should not insist upon
the excision of any such unnecessary matter, except when it is very
extensive (see II. 7.3 below). |
R.407(1)(c)
R.412(a)(ii) |
4.5
The invention as claimed should be disclosed in such a way that the
technical problem, or problems, with which it deals can be appreciated and
the solution can be understood. To meet this requirement, only such
details should be included as are necessary for elucidating the invention.
In cases where the subject matter of a dependent claim can be understood
either by the wording of the claim itself or by the description of a way
of performing the invention, no additional explanation of this subject
matter will be necessary. A mention in the description that a particular
embodiment of the invention is set out in the dependent claim will then be
sufficient.
Where
the invention lies in realizing what the problem is, this should be
apparent, and, where the means of solving the problem (once realized) are
obvious, the details given of its solution may, in practice, be minimal.
When there is doubt, however, as to whether certain details are necessary,
the examiner should not insist on their excision. It is not necessary,
moreover, that the invention be presented explicitly in problem and
solution form. Any advantageous effects which the applicant considers the
invention to have in relation to the prior art should be stated, but this
should not be done in such a way as to disparage any particular prior
product or process. Furthermore, neither the prior art nor the applicant's
invention should be referred to in a manner likely to mislead. This might
be done, e.g. by an ambiguous presentation which gives the impression that
the prior art had solved less of the problem than was actually the case.
Fair comment as referred to in II, 7.2 below is, however, permitted.
Regarding amendment to, or addition of, a statement of problem (VI, 5.7c). |
R.407(1)(c) |
4.6
If it is decided that an independent claim defines a patentable invention,
it must be possible to derive a technical problem from the application. In
this case the requirement of Rule 407(1) (c) is fulfilled.
|
R.407(1)(d)
R.407(1)(e) |
4.7
If drawings are included they should first be briefly described, in a
manner such as: "Figure 1 is a plan view of the transformer housing;
Figure 2 is a side elevation of the housing; Figure 3 is an end elevation
looking in the direction of the arrow `X' of Figure 2; Figure 4 is a
cross-section taken through AA of Figure 1." When it is necessary to
refer in the description to elements of the drawings, the name of the
element should be referred to as well as its number, i.e. the reference
should not be in the form:"3 is connected to 5 via 4" but,
"resistor 3 is connected to capacitor 5 via switch 4". |
R.414.13 |
4.8
The description and drawings should be consistent with one another,
especially in the matter of reference numbers and other signs, and each
number or sign must be explained. However, where as a result of amendments
to the description whole passages are deleted, it may be tedious to delete
all superfluous references from the drawings and in such a case the
examiner should not pursue an objection under Rule 414.13, as to
consistency, too rigorously. The reverse situation should never occur,
i.e. all reference numbers or signs used in the description or claims must
also appear on the drawings. |
R.407(1)(f)Sec.
35.1 |
4.9
A detailed description of at least one way of carrying out the invention
must be given. Since the application is addressed to the person skilled in
the art it is neither necessary nor desirable that details of well-known
ancillary features should be given, but the description 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 into
practice. In many cases a single example or single embodiment will
suffice, but where the claims cover a broad field the description should
not usually be regarded as satisfying the requirements of Sec.35.1unless it gives a number of examples or describes alternative
embodiments or variations extending over the area protected by the claims.
However, regard must be had to the facts of the particular case. There are
some instances where even a very broad field is sufficiently exemplified
by a limited number of examples or even one example (see also III, 6.3).
In these latter cases the application must contain, in addition to the
examples, sufficient information to allow the person skilled in the art,
using his common general knowledge, to perform the invention over the
whole area claimed without undue burden and without needing inventive
skill. If the examiner is able to make out a reasoned case that the
application lacks sufficient disclosure, the onus of establishing that the
invention may be performed and repeated over substantially the whole of
the claimed range lies with the applicant (see VI, 2.4). |
Sec.35.1 |
4.9a
In order that the requirements of Sec.35.1and Rule 407(1) (c) and |
R.407(1)(c)
R.407(1)(f)
|
(f)
may be fully satisfied it is necessary that the invention is described not
only in terms of its structure but also in terms of its function, unless
the functions of the various parts are immediately apparent. Indeed in
some technical fields (e.g. computers), a clear description of function
may be much more appropriate than an over-detailed description of
structure. |
Sec.35.1
Sec.49 |
4.10
It is the responsibility of the applicant to ensure that he supplies, when
he first files his application, a sufficient disclosure, i.e. one that
meets the requirements of Sec. 35.1in respect of the invention as claimed in all of the claims. If the
claims define the invention, or a feature thereof, in terms of parameters
(see III, 4.7a), the application as first filed must include a clear
description of the methods used to determine the parameter values, unless
a person skilled in the art would know what method to use or unless all
methods would yield the same result (see III, 4.10, 2nd
paragraph). If the disclosure is seriously insufficient, such a deficiency
cannot be cured subsequently by adding further examples or features
without offending against the proviso of Sec. 49, which requires that the
subject-matter content of the application must not be extended (see VI,
5.3 to 5.8b). Therefore in such circumstances the application must
normally be refused. If however the deficiency arises only in respect of
some embodiments of the invention and not others, it could be remedied by
restricting the claims to correspond to the sufficiently described
embodiments only, the description of the remaining embodiments being
deleted. |
Sec.35.1
Sec.21
Sec.27 Sec.35.1 |
4.11
Occasionally applications are filed in which there is a fundamental
insufficiency in the invention in the sense that it cannot be carried out
by a person skilled in the art; there is then a failure to satisfy the
requirements of Sec. 35.1which
is essentially irreparable. Two instances thereof deserve special mention.
The
first is where the successful performance of the invention is dependent on
chance. That is to say, the skilled person, in following the instructions
for carrying out the invention, finds either that the alleged results of
the invention are unrepeatable or that success in obtaining these results
is achieved in a totally unreliable way. An example where this may arise
is a microbiological process involving mutations. Such a case should be
distinguished from one where repeated success is assured even though
accompanied by a proportion of failures - as can arise, e.g. in the
manufacture of small magnetic cores or electronic components; in this
latter case, provided the satisfactory parts can be readily sorted by a
non-destructive testing procedure, no objection arises under Sec. 35.1.
The
second instance is where successful performance of the invention is
inherently impossible because it would be contrary to well-established
physical laws – this applies e.g. to a perpetual motion machine. If the
claims for such a machine are directed to its function, and not merely to
its structure, an objection arises not only under Sec. 35but also under Sec. 21 and Sec.27that the invention is not susceptible of industrial application (see
also IV, 4.1). |
R.407(1)(g)
Sec.
21 |
4.12
The description should indicate explicitly the way in which the invention
is “industrially applicable”, if this is not obvious from the
description or from the nature of the invention. The expression
“industrially applicable” (Sec.21 and Sec.27) means the same as
"capable of exploitation in industry” (Rule 407(1)(g)). In view of
the broad meaning |
Sec.
27 |
given
to the expression by Sec. 27 (see IV, 4.1), it is to be expected that, in
most cases, the way in which the invention can be exploited in industry
will be self-evident, so that no more explicit description on this point
will be required; but there may be a few instances, e.g. in relation to
methods of testing, where the manner of industrial exploitation is not
apparent and must be made so. |
R.407(2) |
4.13
The manner and order of presentation of the description should be that
specified in Rule 407(1), i.e. as set out above, "unless, because of
the nature of the invention, a different manner or a different order would
afford a better understanding and a more economic presentation".
Since the responsibility for clearly and completely describing the
invention lies with the applicant, the examiner should not object to the
presentation unless satisfied that such an objection would be a proper
exercise of his discretion. Some departure from the requirements of Rule
407(2) is acceptable, provided the description is clear and orderly and
all the requisite information is present. For example, the requirements of
Rule 407(1)(c)may not be
applicable where the invention is based on a fortuitous discovery, the
practical application of which is recognized as being useful, or where the
invention breaks entirely new ground. Also, certain technically simple
inventions may be fully comprehensible with the minimum of description and
but slight reference to prior art.
4.14Although the description should be clear and straightforward with
avoidance of unnecessary technical jargon, the use of recognized terms of
art is acceptable, and will often be desirable. Little known or especially
formulated technical terms may be allowed provided that they are
adequately defined and that there is no generally recognized equivalent.
This discretion may be extended to foreign terms when there is no
equivalent in the language of the proceedings. Terms already having an
established meaning should not be allowed to be used to mean something
different if this is likely to cause confusion. There may, however, be
circumstances where a term may legitimately be borrowed from an analogous
art. Terminology and signs must be consistent throughout the application.
4.14a
In the particular case of inventions in the computer field (see IV, 2.3),
program listings in programming languages cannot be relied on as the sole
disclosure of the invention. The description, as in other technical
fields, should be written substantially in normal language, possibly
accompanied by flow diagrams or other aids to understanding, so that the
invention may be understood by those skilled in the art who are deemed not
to be programming specialists.
Short excerpts from programs writtenin
commonly used programming languages can be accepted if they serve to
illustrate an embodiment of the invention.
4.15
When the properties of a material are referred to, the relevant units
should be specified if quantitative considerations are involved. If this
is done by reference to a published Standard (e.g. a Standard of sieve
sizes), and such Standard is referred to by a set of initials or similar
abbreviation, it should be adequately identified in the description. |
R.418(e) |
Physical
values must be expressed in the units recognized in international
practice, wherever appropriate in terms of the metric system using system
international (SI) units. Any values not meeting this requirement must
also be expressed in the units recognized in international practice.
As
Rule 418(e) indicates, for mathematical formula the symbols in general use
must be employed. For chemical formula, the symbols, atomic weights and
molecular formula in general use shall be employed.
In
general, use should be made of the technical terms, signs and symbols
generally accepted in the field in question.
4.16
The use of proper names, trademarks 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. If such a word is
used, then where it is necessary in order to satisfy the requirements of
Sec.35.1, the product must be sufficiently identified, without reliance
upon the word, to enable the invention to be carried out by the skilled
person. However, where such words have become internationally accepted as
standard descriptive terms and have acquired a precise meaning (e.g.
"Bowden" cable, "Belleville" washer, "Panhard"
rod) they may be allowed without further identification of the product to
which they relate.
4.17
If the examiner has reason to suspect that a word used in the description
is a registered trade mark, he should ask the applicant either to
acknowledge the word as such or to state that, so far as he is aware, the
word is not a registered trade mark. If, on the other hand, an applicant
states that a word is a registered trade mark and the examiner happens to
know that this statement is incorrect, he should ask the applicant to
amend accordingly.
4.18
References in Philippinepatent
applications to other documents may relate either to the background art or
to part of the disclosure of the invention.
Where
the reference relates to the background art, it may be in the application
as originally filed or introduced at a later date (see II, 4.3 and 4.4
here above).
Where
the reference relates directly to the disclosure of the invention (e.g.
details of one of the components of a claimed apparatus) then theexaminer
should first consider whether knowing what is in the document is in fact
essential for carrying out the invention as meant by Sec. 35.1.If not, the usually used expression "which is hereby incorporated
by reference", or any expression of the same kind should be deleted
from the description. If matter in the document referred to is indeed
essential to satisfy the requirements of Sec. 35.1, the examiner should
require the relevant passage to be expressly incorporated into the
description, because the patent specification should, regarding the
essential featuresof
the invention, be self-contained, i.e. capable of being understood without
reference to any other document. Such
incorporation is, however, subject to the following restrictions:
(a)
it must not contravene the proviso of Sec. 49
(b) documents not available to the public on the date of filing of the
application can only be considered when:
(i) a copy of the document was furnished to the Office on or
before the date of filing of the application; and
(ii) the document was made available to the public no later
than on the date of publication of the application under Sec.44.1(e.g. by being present in the application file at the IPO and
therefore made public under Sec.44.2.)
If,
for the disclosure of the invention, another document is referred to in
the application as originally filed, the relevant content of the other
document is to be considered as forming part of the content of the
application for the purpose of citing the application under Sec. 24.2against later applications. For documents not available to the public
before the filing date of the application this applies only if conditions
(i) and (ii) above are fulfilled. |
Sec.24.2 |
Because
of this effect under Sec.24.2it
is very important that, where a reference is directed only to a particular
part of the document referred to, that part should be clearly identified
in the reference. |
R.413
R.414
R.414.16
R.923
R.919
Sec.49 |
5. Drawings
5.1
The requirements relating to the form and content of drawings are set out
in Rules 413 and 414.1 to 414.16. Most of these are formal but the
substantive examiner may sometimes need to consider some of them, e.g. the
requirements of Rule 414.13 (consistency in the use of reference signs).
5.2
In case of amendments or replacement of drawings (Rules 414.16 and 923),
if the quality of the drawing is insufficient for photolithographic
reproduction, then the examiner must request the applicant to present the
drawings of sufficient quality, before the application will be allowed
(Rule 414.16). Thus, objection should e.g. be raised where the drawings
are notmade
upon paper which is flexible, strong, white, smooth, non-shiny and
durable.
5.3
After the application has been accorded a filing date, submission of
drawings of corrected or amended form or contents is not admissible and
has to be refused in case of broadening of the disclosure or addition of
new matter (see proviso of Sec.49 and Rule 919). |
Sec.22.4
R.408 R.409
|
6. Inventions relating to micro-organisms and biological material
6.1
According to Section 22.4, “plant varieties and animal breeds or
essentially biological process the production of plants and animals” are
excluded from patentability. This provision does not apply to
“microorganisms and non-biological and microbiological processes”.
For
other biological materials not falling under the matter excluded from
patentability as referred to in section 22.4 the same provisions apply as
for inventions implying microorganisms, where recognized depository
institutions for such other biological material exist. This has particular
importance for plant seeds and cell lines deposited with recognized
depositories.
The
term "biological material" can be considered to mean any
material containing genetic information and capable of self-reproducing or
of being reproduced in a biological system. It includes both
micro-organisms and seeds.
6.2
Applications relating to micro-organisms are subject to the special
provisions set out in Rules 408 and 409.If an invention concerns a microbiological process or the product
thereof and involves or relates to the use of a micro-organism or other
biological material which is not available to the public and which cannot
be described in the patent application in such a manner as to enable the
invention to be carried out by a person skilled in the art, then the
disclosure is not considered to have satisfied the requirements of
sufficiency (Sec.35.1)unless
the requirements of Rules 408 and 409 have been met.
In
particular:
(a)
a culture of the biological material must have been deposited with a
international depositary institution recognized by the IPO, such as the
ones recognized by the Budapest Treaty on the International
Recognition of the Deposit of Biological material for the Purposes of
Patent Protection of 28 April 1977, not later than the date of filing of
the application,
(b)
the depositary institution and the file number of the culture deposit are
stated in the application,
(c)
the deposited culture is made available upon request to any person from
the date of publication of the patent application.
A
list of recognized depository institutions is available at the Bureau of
Patents.
6.3
The examiner must form an opinion as to whether or not the biological
material is available to the public. Alternatively the biological material
may be known to be readily available to those skilled in the art, e.g. a
biological material such as baker's yeast or Bacillus natto which is
commercially available; or it may be a standard preserved strain, or other
biological material which the examiner knows to have been preserved in a
recognized depository and to be available to the public. Alternatively the
applicant may have given in the description sufficient information as to
the identifying characteristics of the biological material and as to the
prior availability in a depositary institution recognized by the IPO. In
any of these cases no further action is called for. If however the
applicant has given no information, or insufficient information, on public
availability, and the microorganism or other biological material is a
particular one not falling within the known categories such as those
already mentioned, then the examiner must assume that the microorganism or
biological material is not available to the public.
He
must also examine whether the micro-organism or other biological material
could be described in the patent application in such a manner as to enable
the invention to be carried out by a person skilled in the art (see II,
4.11 here above and IV, 3.5.
6.4
If the biological material is not available to the public and if it could
not be described in the application in such a manner as to enable the
invention to be carried out by a person skilled in the art, the examiner
must check:
(i)
whether the application as filed gives such relevant information as is
available to the applicant on the characteristics of the biological
material. The relevant information under this provision concerns the
classification of the biological material and significant differences from
known biological material. For this purpose, the applicant must, to the
extent available to him, indicate morphological and biochemical
characteristics and the proposed taxonomic description. The annexed list
(see Annex 1 to the present Chapter II) contains in this respect
indications for certain types of biological material to guide the
applicant in the normal case.
The
information on the microorganism or other biological material in question
which is generally known to the skilled person on the date of filing is as
a rule presumed to be available to the applicant and must therefore be
provided by him. If necessary it has to be provided through experiments in
accordance with the relevant standard literature.
For
characterizing bacteria, for example, the relevant standard work would be
R.E. Buchanan, N.E. Gibbons: Bergey's Manual of Determinative
Bacteriology.
Against
this background, information should then be given on every further
specific morphological or physiological characteristic relevant for
recognition and propagation of the microorganism or other biological
material, e.g. suitable media (composition of ingredients), in particular
where the latter are modified.
Abbreviations
for biological material or media are often less well known than the
applicant assumes and should therefore be avoided or written in full at
least once.
If
biological material is deposited that cannot replicate itself but must be
replicated in a biological system (e.g. viruses, bacteriophages, plasmids,
vectors or free DNA or RNA), the above-mentioned information is also
required for such biological system. If, for example, other biological
material is required, such as host cells or helper viruses, that cannot be
sufficiently described or is not available to the public, this material
must also be deposited and characterized accordingly. In addition, the
process for producing the biological material within this biological
system must be indicated.
In
many cases the above required information will already have been given to
the depositary institution (see Rule 6.1(a)(iii) and 6.1(b) Budapest
Treaty) and need only be incorporated into the application.
(ii)
whether the name of the depositary institution and the accession number of
the deposit have been supplied at the date of filing. If the name of the
depositary institution and the accession number of the deposit have been
submitted later it should be checked whether they have been filed within
the relevant period. If that is the case it should then further be checked
whether on the filing date any reference has been supplied which allows to
relate the deposit with the later filed accession number. Normally the
identification reference which the depositor himself gave to his deposit
is used in the application documents. The relevant document for later
filing the missing data could be a letter containing the name of the
depositary institution, the accession number and the above mentioned
identification reference or alternatively the deposit receipt, which
contains all these data.
In
addition, the depositary institution named must be an international
institution recognized by the IPO.
(iii)
whether the deposit was made by a person other than the applicant and, if
so, whether the name and the address of the depositor are stated in the
application or have been supplied within the relevant period. In such a
case the examiner must also check whether the depositor gave his
unreserved and irrevocable consent to the deposited material being
available to the public. A document will be required confirming that the
depositor has authorized the applicant to refer to the deposited
biological material in the application and has given his unreserved and
irrevocable consent to the deposited material being made available to the
public.
(iv)
The examiner, in addition to the checks referred to under (i) to (iii)
above, may ask for the deposit receipt issued by the depositary
institution (see Rule 7.1 Budapest Treaty) or for equivalent proof of the
deposit of a biological material if such proof has not been filed before
(see (ii) above). This is to provide evidence for the indications
concerning the depositary institution and the accession number made
earlier by the applicant.
If
any of these requirements (i) – (iv) is not satisfied the application
should be refused (Sec.51) for lack of sufficient disclosure of the
invention
(Sec.35.1),
since the biological material in question cannot be considered as having
been disclosed pursuant to Sec.35.1 by way of reference to the deposit.
Concerning
inventions relating to micro-organisms and biological material, reference
is also made to the examples comprised in VII, 5.7. |
R.412(a)
R.412(b) |
7.
Prohibited matter
7.1
There are three categories of specifically prohibited matter identified in
R.412(a):
-
statements or other matter contrary to “public order” or
morality;
-
statements disparaging the products or processes of any particular
person other than the applicant, or the merits or validity of
applications or patents of any such person., with mere comparison with the
prior art not being considered as disparaging per se; and
-any statement or other matter obviously irrelevant or unnecessary
under the circumstances.
If
an application contains prohibited matter within the meaning of this Rule,
the Bureau shall omit it when publishing the application, indicating the
place and number of words or drawing omitted (R.412(b).
The
omission, from the publication of the application, of the first category
is the most important one. Examples of the kind of matter coming within
this category are: incitement to riot or to acts of disorder; incitement
to criminal acts; racial, religious or similar discriminatory propaganda;
and grossly obscene matter.
7.2
It is necessary to discriminate in the second category between libellous
or similarly disparaging statements, which are not allowed, and fair
comment, e.g. in relation to obvious or generally recognized
disadvantages, or disadvantages stated to have been found and
substantiated by the applicant, which, if relevant, is permitted.
7.3
The third category is irrelevant matter. It should be noted however thatsuch
matter is specifically prohibited under the (R.412(b) iii)) only if it is
"obviously irrelevant or unnecessary", for instance, if it has
no bearing on the subject-matter of the invention or its background of
relevant prior art. The matter to be removed may already be obviously
irrelevant or unnecessary in the original description. It may, however, be
matter which has become obviously irrelevant or unnecessary only in the
course of the examination proceedings, e.g. owing to a limitation of the
claims of the patent to one of originally several alternatives.
7.4
When matter is removed from the description, it must not be incorporated
into the patent specification by reference to thecorresponding
matter in the published application or in any other document.
7.5
Generally, matter falling under the first category will be dealt with
during formality examination, as well as matter obviously falling within
the second category. Although this is not explicitly mentioned in R.412,
if any such matter has not been so recognized and has, therefore, not been
omitted from the publication of the application, it should be removed
during substantive examination of the application, i.e. before publication
of the granted patent, together with any other prohibited matter. |
CHAPTER III:
THE CLAIMS
(See ANNEX to CHAPTER III, 7)
Sec.32.1 (d) |
1.General
1.1
The application must contain "one or more claims". |
R.400
Sec.36.1 |
1.2 These must:
(i) "define the matter for which protection is
sought";
(ii) "be clear and concise";
(iii) "be supported by the description". |
Sec. 75 |
1.3 Since the terms of the
claims determine the extent of the protection conferred by a Philippine
patent or application, clarity of claim is of the utmost importance.
The claims do not, however, stand in isolation and are not to be
interpreted in a strictly literal sense. For a full understanding of how
claims should be interpreted it is necessary to refer to Sec.75 (see
also III, 4.1 – 4.3 here below), which specifies |
Sec.75.1 |
- that the extent of
protection conferred by the patent shall be determined by the claims,
which are to be interpreted in the light of the description and drawings, and |
Sec.75.2 |
- that, for the purpose of determining the extent of protection conferred
by the patent, due account shall be taken of elements which are equivalent
to the elements expressed in the claims, so that a claim shall be
considered to cover not only all the elements as expressed therein, but
also equivalents.
A generally accepted
approach is to interpret the claims having regard to the description and
any drawings in such a way that fair protection to the patentee for his
contribution to the art is combined with a reasonable degree of certainty
for third parties. Thus the area of protection should not, in one extreme
be interpreted as that defined by the strict literal meaning of the
wording of the claims with the description and drawings being used only to
resolve any ambiguity in the claims, nor in the other extreme, as what
might be deduced from the description and drawings by a person skilled in
the art, with the claims serving only as guide. |
|
2.Form and content of claims
|
R.416(a) |
2.1 The claims must be drafted in terms of the
"technical features of the invention". This means that claims
should not contain any statements relating, for example, to commercial
advantages or other non-technical matters, but statements of purpose
should be allowed if they assist indefining
the invention. It is not necessary that every feature should be expressed
in terms of a structural limitation. Functional limitations may be included
provided that a person skilled in the art
would have no difficulty in providing some means of performing this
function without exercising inventive skill. Claims to the use of the
invention in the sense of the technical application thereof are allowable. |
R.416(a)(b) |
2.2
Rule 416 (a) and (b) defines
the two-part form which a claim should adopt “wherever appropriate”.
The first part or preamble should contain a statement indicating "the
designation of the subject-matter of the invention" i.e. the category
or general technical class of apparatus, product, process, use etc., to
which the invention relates, followed by a statement of
"those technical features which are necessary for the
definition of the claimed subject-matter but which, in combination, are
part of the prior art". This statement of prior art features is
applicable only to independent claims and not to dependent claims (see
III, 3.5 here below). It is clear from the wording of R.416 that it is
necessary only to refer to those prior art features which are relevant to
the invention. For example, if the invention relates to a photographic
camera but the inventive step relates entirely to the shutter, it would be
sufficient for the first part of the claim to read: "A photographic
camera including a focal plane shutter" and there is no need to refer
also to the other known features of a camera such as the lens and view-finder. The second part or "characterizing
portion" should state the "technical features which, in
combination with the features stated in sub-paragraph (a) (the first
part), it is desired to protect" i.e. the features which the
invention adds to the prior art. If a single document in the state of the
art according to Sec. 24.1, e.g. cited in the search report, reveals that
one or more features in the second part of the claim were already known in
combination with all the features in the first part of the claim and in
that combination have the same effect as they have in the full combination
according to the invention, the examiner should require that such feature
or features be transferred to the first part. Where however a claim
relates to a novel combination, and where the division of the features of
the claim between the prior art part and the characterizing part could be
made in more than one way without inaccuracy, the applicant should not be
pressed, unless there are very substantial reasons, to adopt a different
division of the features from that which he has chosen, if his version is
not incorrect.
2.3
Subject to what is stated in paragraph 2.3b here below, final
sentence, the applicant should be required to follow the above two-part
formulation in his independent claim or claims, where, for example, it is
clear that his invention resides in a distinct improvement of an old
combination of parts or steps. However as is indicated by R.416, this form
need be used only in “appropriate” cases. The nature of the invention
may be such that this form of claim is unsuitable, e.g. because it would
give a distorted or misleading picture of the invention or the prior art.
Examples of the kind of invention which may require a different
presentation are:
(i) the combination of known integers of equal status, the inventivestep lying solely in the combination;
(ii) the modification of, as distinct from addition to, a known chemical
process e.g. by omitting one substance or substituting one substance for
another; and
(iii) a complex system of functionally interrelated parts, the inventive
step concerning changes in several of these or in their
inter-relationships.
In
examples (i) and (ii) the two-part R.416 form of claim may be artificial
and inappropriate, whilst in example (iii) it might lead to an
inordinately lengthy and involved claim. Another example in which the
two-part R.416 form of claim may be inappropriate is where the invention
is a new chemical compound or group of compounds. It is likely also that
other cases will arise in which the applicant is able to adduce convincing
reasons for formulating the claim in a different form. |
Sec.24.2 |
2.3a
There is also another special instance in which the two-part R.416 form of claim should be avoided. This is when the only
relevant prior art is another Philippine
patent application falling within the terms of Sec. 24.2. Such prior
art should however be clearly acknowledged in the description (see II,
4.3). |
Sec.
24.2
R.407.1(b) |
2.3b
When determining whether or not a claim is to be put in the form provided by R.416,
second sentence, it is important to assess whether this form is
"appropriate". In this respect, it should be borne in mind that
the purpose of the two-part form of claim is to allow the reader to see
clearly which features necessary for the definition of the claimed subject
matter are, in combination, part of the closest
prior art. If this is sufficiently clear from the indication of prior
art made in the description, to meet the requirement of R.407.1(b), the
two-part form of claim should not be insisted upon (see II, 4.3). |
R.418(d) |
The
claims, as well as the description, "may contain chemical or
mathematical formulas" but not drawings. "The claims may contain
tables" but "only if their subject-matter makes the use of
tables desirable". In view of the use of the word
"desirable" in R.418(d), the examiner performing substantive
examination should not object to the use of tables in claims where this
form is convenient. |
R.418(e) |
Physical
values shall be expressed in the units recognized in international
practice, wherever appropriate in terms of the metric system using system
international (SI) units. Any data not meeting this requirement must also
be expressed in the units recognized in international practice. For
mathematical formula, the symbols in general use shall be employed. For
chemical formula the symbols, atomic weights and molecular formula in
general use shall be employed. In general,
use should be made of the technical terms, signs and symbols generally
accepted in the field in question. |
|
3.
Kinds of claim – Categories
|
|
Categories |
Sec.21
R.201 |
3.1
Sec.21 of the IP-code defines a patentable invention as “any
technical solution of a problem in any field of human activity which is
new, involves an inventive step and is industrially applicable”. It may
be, or may relate to, a product, or process, or an improvement of any of
the foregoing. The IRR classify inventions according to the following
types (“statutory classes of inventions”, R.201):
a)
a useful machine;
b)
a product;
c)
or process or an improvement of any of the foregoing;
d)
microorganism; and
e)
non-biological and microbiological processes. |
R.415(b) |
Inventions
may be claimed using different "categories" of claims, i.e.
"products, process, apparatus or use" claims. For many
inventions, claims in more than one category are needed for full
protection. In fact, there are only two basic kinds of claim, viz, claims
to a physical entity (product, apparatus) and claims to an activity
(process, use). The first basic kind of claim ("product claim")
includes a substance or compositions (e.g. chemical compound or a mixture
of compounds) as well as any physical entity (e.g. object, article,
apparatus, machine, or system of co-operating apparatus) which is produced
by man's technical skill. Examples are: "a steering mechanism
incorporating an automatic feed-back circuit...” "a woven garment
comprising...” "an insecticide consisting of X, Y, Z"; or
"a communication system comprising a plurality of transmitting and
receiving stations". The second basic kind of claim ("process
claim") is applicable to all kinds of activities in which the use of
some material product for effecting the process is implied; the activity
may be exercised upon material products, upon energy, upon other processes
(as in control processes) or upon living things (see however IV, 3.4 and
4.3).
3.2
In addition an applicant may sometimes wish to have claims which,
although worded differently, really fall within the same category and
apparently have effectively the same scope. The examiner should bear in
mind that the presence of such different claims might assist an applicant
in obtaining full protection for his invention. Consequently, while an
examiner should not allow an unnecessary proliferation of independent
claims (see III, 5 concerning conciseness here below), he should not adopt
an over-academic or rigid approach to the presence of a number of claims
which are differently worded but apparently of similar effect.
3.3 Subject to the conditions for unity
of invention being satisfied (see III, 7 here below), R.415(b) states that
an application may contain more than one independent claims in the same
category "where it is not appropriate, having regard to the
subject-matter of the application, to cover this subject-matter by a
single claim”. This means that the examiner may allow two or more
independent claims in the same category in appropriate cases
provided that there is a unifying inventive concept (Sec.38) and
that the claims as a whole satisfy the requirement of Sec. 36
that they should be concise (see III, 5.1 here below). In applying
this principle the examiner should have regard to the remarks made in III,
3.2 here above concerning claims of apparently similar scope. However,
there are other circumstances where it may not be appropriate to cover the
subject-matter of an invention by a single independent claim in a
particular category, for example, where the invention relates to an
improvement in two separate but inter-related articles which may be sold
separately, but each carry out the same inventive idea, such as an
electric plug and socket or transmitter and receiver. As another example,
for an invention concerned with electrical bridge-rectifier circuits it
might be necessary to include separate independent claims to a
single-phase and poly-phase arrangements incorporating such circuits since
the number of circuits needed per phase is different in the two
arrangements. Justification for two independent claims in the
product-category may also be present in the case of an invention residing
in a part of a more complex apparatus where the various parts thereof are
separately manufactured, and the part and the whole apparatus may be sold
separately (e.g. an incandescent body for a lamp, and the lamp provided
with such a body). Further examples are where the invention resides in a
group of new chemical compounds and there are a number of processes for
the manufacture of such compounds.
|
|
Independent
and dependent claims |
R415(b)(c) |
3.4All applications will contain one or more
"independent" claims directed to the essential features
of the invention. Any such claim may be followed by one or more claims
concerning "particular embodiments" of that invention. It is
evident that any claim relating to a particular embodiment must
effectively include also the essential features of the invention, and
hence must include all the features of at least one independent claim.
The
term "particular embodiment" should be construed broadly as
meaning any more specific disclosure of the invention than that set out in
the main claim or claims. |
R.415(c) |
3.5
Any claim which includes all the features of any other claim is
termed a "dependent” claim. Such a claim must contain, if possible
at the beginning, a reference to the other claim, all of whose features it
includes (See, however, III, 3.7a here below for claims in different
categories).
Since
a dependent claim does not by itself define all the characterizing
features of the subject matter which it claims, expressions such as "characterized
in that" or "characterized by" are not necessary in such a
claim
but are nevertheless
permissible. A claim defining further particulars of an invention may
include all the features of another dependent claim and should then refer
back to that claim. Also, in some cases a dependent claim may define a
particular feature or features which may appropriately be added to more
than one previous claim (independent or dependent). It follows that there
are several possibilities: a dependent claim may refer back to one or more
independent claims, to one or more dependent claims, or to both
independent and dependent claims.
3.5a
According to R.415(c), any dependent claim which refers to more
than one other claim (“multiple dependent claim”) shall refer to such
other claims in the alternative only.
A multiple dependent claim shall not serve as a basis for any other
multiple dependent claim. Claims
in dependent form shall be construed to include all the limitations of the
claims incorporated by reference into the dependent claim.
A multiple dependent claim shall be construed to incorporate by
reference all the limitations of each of the particular claims in relation
to which it is being considered.
3.6
All dependent claims, however referred back, must be grouped
together to the extent and in the most appropriate way possible. The
arrangement must therefore be one
which enables the association of related claims to be readily determined
and their meaning in association to be readily construed. The examiner
should object if the arrangement of claims is such as to create obscurity
(Sec.36.1) in the definition of the subject-matter
to be protected. In general, however, when the corresponding
independent claim is allowable, the examiner should not concern himself
unduly with the subject-matter of dependent claims, provided he is
satisfied that they are truly dependent and thus in no way extend the
scope of protection of the invention defined in the corresponding
independent claim (See III, 3.7a here below). |
R.416(a)(b) |
3.6a If the two-part form is used for the independent claim(s),
dependent claims may relate to further details of features not only of the
characterizing portion but also of the preamble.
3.7
A claim, whether independent or dependent, can refer to
alternatives provided those alternatives are of a similar nature and can
fairly be substituted one for another and provided also that the number
and presentation of alternatives in a single claim does not
make the claim obscure or difficult to construe (See also III, 7.4
here below).
3.7a
A claim may also contain a reference to another claim even if it is
not a dependent claim as defined in R.415(c). One example of this is a
claim referring to a claim of different category (e.g. "Apparatus for
carrying
out the process of claim 1", or "Process for the manufacture
of the product of claim 1"). Similarly, in a situation like the
plug and socket example of III, 3.3 here above, a claim to the one part
referring to the other co-operating part (e.g. "plug for cooperation
with the socket of claim 1") is not a dependent claim.
References
from one claim to another may also occur where alternative features which
may be substituted for one another are claimed in separate claims. Thus
there may be a first independent claim 1 for a machine including, inter
alia, a feature X followed by further claims for alternatives such as
"A machine according to claim 1 modified in that feature X is
replaced by feature Y". In all these examples, the examiner should
carefully consider the extent to which the claim containing the reference
necessarily involves the features of the claim referred to and the extent
to which it does not. In the case of a claim for a process which results
in the product of a product claim or a claim for the use of that product,
if the product claim is patentable then no separate examination for the
obviousness of the process or use claim is necessary (See IV, 9.5a). In
all other instances, the patentability of the claim referred to does not
necessarily imply the patentability of the independent claim containing
the reference. |
|
4.
Clarity and interpretation of claims |
Sec.36.1 |
4.1 The
requirement that each claim shall be clear applies to individual claims
and also to the claims as a whole. The clarity of the claims is of the
utmost importance in view of their function in defining the matter for
which protection is sought. In view of the differences in the scope of
protection (Sec.75) which may be attached to the various categories of
claims, the examiner should ensure that the wording of a claim leaves no
doubt as to its category
(process, apparatus, product, use).
4.2 Each
claim should be read giving the words the meaning and scope which they
normally have in the relevant art, unless in particular cases the
description gives the words a special meaning, by explicit definition or
otherwise. Moreover, if such a special meaning applies, the examiner
should, so far as possible, require the claim to be amended whereby the
meaning is clear from the wording of the claim alone. The claim should
also be read with an attempt to make technical sense out of it. Such a
reading may involve a departure from the strict literal meaning of the
wording of the claims. |
R.418(f) |
The terminologies used in the claims and the
description have to be consistent with each other. |
Sec.75 Sec.36.1 R.415(d) R.918 |
4.3 Any
inconsistency between the description and the claims should be avoided if
having regard to Sec. 75, it may throw doubt on the extent of protection
and therefore render the
claim unclear (Sec.36.1). Such inconsistency can be of the following
kinds:
(i) Simple verbal inconsistency.
For example, there is a
statement in the description which suggests that the invention is limited
to a particular feature but the claims are not so limited; also, the
description places no particular emphasis on this feature and there is no
reason for believing that the feature is essential for the performance of
the invention. In such a case the inconsistency can be removed either by
broadening the description or by limiting the claims. Similarly, if the
claims are more limited than the description, the claims may be broadened
or the description may be limited.
(ii) Inconsistency regarding apparently essential features.
For example, it may appear, either from general technical
knowledge or from what is stated or implied in the description, that a
certain described technical feature not mentioned in an independent claim
is essential to the performance of the invention, or in other words is
necessary for the solution of the problem to which the invention relates.
In such a case the claim is unclear (Sec. 36.1), because an independent
claim must not only be comprehensible from a technical point of view but
it must also define clearly the object of the invention, that is to say
indicate all the essential features thereof. If, in response to this
objection, the applicant shows convincingly, e.g. by means of additional
documents or other evidence, that the feature is not in fact essential, he
may be allowed to retain the unamended claim and, where necessary, to
amend the description instead. The opposite situation in which an
independent claim includes features which do not Seem essential for the
performance of the invention is not objectionable. This is a matter of the
applicant 's choice. The examiner should therefore not suggest that a
claim be broadened by the omission of apparently inessential features.
(iii) Part of the subject-matter of the description and/or
drawings is not covered by the claims.
For example, the claims all specify an electric circuit
employing semi-conductor devices but one of the embodiments in the
description and drawings employs electronic tubes instead. In such a case,
the inconsistency can normally be removed either by broadening the claims
(assuming that the description and drawings as a whole provide adequate
support for such broadening) or by removing the "excess"
subject-matter from the description and
drawings. However if examples in the description and/or drawings
which are not covered by the claims, are presented, not as embodiments of
the invention, but as background art or examples which are useful for
understanding the invention, the retention of these examples may be
allowed.
4.3a General
statements in the description which imply that the extent of protection
may be expanded in some vague and not precisely defined way should be
objected to. In particular, objection
should be raised toany statement which refers
to the extent of protection being expanded to cover the "spirit"
of the invention; objection should likewise be raised, in the case where
the claims are directed to a combination of features, to any statement
which Seems to imply that protection is nevertheless sought not only for
the combination as a whole but also for individual features or
sub-combinations thereof. |
R.415(a)(b) R.416(a) |
4.4
An independent claim should specify clearly all of the essential
features needed to define the invention except in so far as such features
are implied by the generic terms used, e.g. a claim to a
"bicycle" does not need to mention the presence of wheels. If a
claim is to a process for producing the product of the invention,
then the process as claimed should be one which, when carried out in a
manner which would Seem reasonable to a person skilled in the art,
necessarily has as its end result that particular product;
otherwise there is an internal inconsistency and therefore lack of
clarity in the claim. In the case of a product claim, if the product is of
a well-known kind and the invention lies in modifying it in certain
respects, it is sufficient if the claim clearly identifies the product
and specifies what is modified and in what way. Similar
considerations apply to claims for apparatus.
Where patentability depends
on a technical effect, the claim must be so drafted as to include all the
technical features of the invention which are necessary for obtaining this
technical effect and therefore essential.
4.5 Relative or similar term such as
"thin", "wide" or "strong" in a claim may
render the scope of the claim vague and uncertain and should not in
general be used. However, if the term has a well-recognized meaning in the
particular art, e.g. "high-frequency" in relation to an
amplifier, and this is the meaning intended
its use is permissible. Where the term has no well-recognized meaning
it should be replaced by a more precise wording found elsewhere in the
original disclosure. Where there is no basis in the disclosure for a clear
definition, and the term is not essential having regard to the
invention, it should normally be retained in the claim, because to
excise it would generally lead to an extension of the subject-matter
beyond the content of the application as filed - in contravention of the
proviso in Sec. 49. However an unclear term cannot be allowed in a claim
if the term is essential
having regard to the invention. Equally, an unclear term cannot be used by
the applicant to distinguish his invention from the prior art.
4.5a Particular attention is required whenever the word
"about" or similar terms such as "approximately" are
used. Such a word may be applied, for example, to a particular value (e.g.
"about 200°C") or to a range (e.g. "about x to about
y"). In each case, the examiner should use his judgment as to
whether the meaning is sufficiently clear in the context of the
application read as a whole. However, the word can only be permitted if
its presence does not prevent the invention from being unambiguously
distinguished from the prior art with respect to novelty and inventive
step.
4.5b The use of trade marks,
trade names, proper names and
similar expressions in claims should not be allowed unless their use is
unavoidable; they may be allowed exceptionally if they are generally
recognized as having a
precise meaning (See also II, 4.16 and 4.17). They may be used
exceptionally if their use is unavoidable and they are generally
recognized as having a precise meaning.
4.6 Expressions, like "preferably", "for
example", "such as" or "more particularly" should
be looked at carefully to ensure that they do not introduce ambiguity.
Expressions of this kind have no limiting effect on the scope of a claim;
that is to say, the feature following any such expression is to be
regarded as entirely optional.
4.7
The monopoly 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, in particular if they only amount to claiming the underlying
technical problem. However,
they may be allowed if the invention either can only be defined in such
terms or cannot otherwise 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 or known to the person skilled in the art and which do not require
undue experimentation. For example, the invention may relate to an ashtray
in which a smouldering cigarette end will be automatically extinguished
due to the shape and relative dimensions of the ashtray. The latter may
vary considerably in a manner difficult to define whilst still providing
the desired effect (for functional features See III, 2.1 and 6.5). So long
as the claim specifies the construction and shape of the ashtray as
clearly as possible, it may define the relative dimensions by reference to
the result to be achieved, provided that the specification includes
adequate directions to enable the reader to determine the required
dimensions by routine test procedures not involving ingenuity. However
claims of this kind are generally undesirable and should be allowed only
when the invention does 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.
4.7a Where the invention relates to a product, e.g. a chemical
compound, it may be defined
in a claim in various ways, viz., by its chemical formula, as a product of
a process (if no clearer definition is possible) or exceptionally by its
parameters.
Parameters are
characteristic values, which may be values of directly measurable
properties (e.g. the melting point of a substance, the flexural strength
of a steel, the resistance of an electrical conductor) or may be defined
as more or less complicated mathematical combinations of several variables
in the form of formulae.
Characterisation of a
product, i.e. a chemical compound, solely by its parameters should, as a
general rule, not be allowed. It may however be allowable in those cases
where the invention cannot be adequately defined in any other way, i.e.
independently of the result to be achieved,
provided that those parameters are usual in the art and can be
clearly and reliably determined either by indications in the description
or by objective procedures which are usual in the art. This can arise, e
g. in the case of macromolecular chains. The same applies to a process
related feature which is defined by parameters.
Whether the methods of and
the means for measuring the parameters need also to be in the claims is
treated in III, 4.10 here below.
Cases in which unusual
parameters or a non-accessible apparatus
for measuring the parameter(s) are employed should be closely examined, as
they might disguise lack of novelty (See IV, 7.5).
4.7b Claims for products defined in terms of a process of
manufacture are admissible only if the products as such fulfil the
requirements for patentability, i.e. inter alia that they are new and
inventive. A product is not rendered novel merely by the fact that it is
produced by means of a new process. A claim defining a product in terms of
a process is to be construed as a claim to the product as such and the
claim should preferably take the form "Product X obtainable by
process Y", or any wording equivalent thereto, rather than
"Product X obtained by process Y". |
Sec.78 |
Concerning the protection
afforded by process claims See Sec.78.
4.8 If a claim commences with such words as:
"Apparatus for carrying out the process etc" this must be
construed as meaning merely apparatus suitable for carrying out the
process. 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 as anticipating the claim. Similar considerations
apply to a claim for a product for a particular use. For example, if a
claim refers to a "mould for molten steel", this implies certain
limitations for the mould. Therefore a plastic ice cube tray with a
melting point much lower than that of steel would not come within the
claim. Or for example if a claim refers to "A hook for a construction
site crane" this implies e.g. particular dimensions and strength in
the hook. Therefore a “fish-hook for catching small fish” 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. Similarly, a claim to a substance or composition for a
particular use should be construed
as meaning a substance or composition which is in fact suitable for the
stated use; a known product which prima facie is the same as the substance
or composition defined in the claim, but which is in a form which wouldrender 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. |
Sec.22.3 |
An exception to this
general principle of interpretation is provided by Sec. 22.3 which allows
a claim to a known product (substance) or composition where the claim is
to a known product (substance) or composition for use in a surgical,
therapeutic or diagnostic method, provided that its use in any such method
is not comprised in or rendered obvious by the prior art.
4.8a Where a claim in respect of a physical
entity (product, apparatus) Seeks to define the invention by reference to
features relating to the entity's use, a lack of clarity can result. This
is particularly the case where the claim not only defines the entity
itself but also specifies its relationship to a second entity which is not
part of the claimed entity (for example, a cylinder head for an engine,
where the former is defined by features of its location in the latter).
Before considering a restriction to the combination of the two entities,
it should always be remembered that the applicant is normally entitled to
independent protection of the first entity per se, even if it was
initially defined by its relationship to the second entity. Since the
first entity can often be produced and marketed independently of the
second entity, it will usually be possible to obtain independent
protection by wording the claims appropriately (for example, by
substituting "connectable" for "connected"). If it is
not possible to give a clear definition of the first entity per se, then
the claim should be directed to a combination of the first and second
entities (for example, "engine with a cylinder head" or
"engine comprising a cylinder head").
It may also be allowable to
define the dimensions and/or shape of a first entity in an independent
claim by general reference to the dimensions and/or corresponding shape of
a second entity which is not part of the claimed first entity but is
related to it through use. This particularly applies where the size of the
second entity is in some way standardised (for example, in the case of a
mounting bracket for a vehicle number-plate, where the bracket frame and
fixing elements are defined in relation to the outer shape of the
number-plate). However, references to second entities which cannot be Seen
as subject to standardisation may also be sufficiently clear in cases
where the skilled person would have little difficulty in inferring the
resultant restriction of the scope of protection for the first entity (for
example, in the case of a covering sheet for an agricultural round bale,
where the length and breadth of the covering sheet and how it is folded
are defined by reference to the bale's circumference, width and diameter).
It is neither necessary for such claims to contain the exact dimensions of
the second entity, nor do they have to refer to a combination of the first
and second entities. Specifying the length, width and/or height of the
first entity without reference to the second would lead to an unwarranted
restriction of the scope of protection.
4.8b
To avoid ambiguity, particular care should be exercised when
assessing claims which employ the word "in" to define a
relationship between different physical entities (product, apparatus), or
between entities and activities (process, use), or between different
activities. Examples of claims worded in this way include the following:
(i)
cylinder head in a four-stroke engine
(ii) In a telephone apparatus with an automatic dialer, dial tone detector and
feature controller, the dial tone detector comprising
(iii) In a process using an electrode feeding means of an arc-welding
apparatus, a method for controlling the arc welding current and voltage
comprising the following steps:
(iv) In
a process/system/apparatus the improvement consists of:
In examples (i) to (iii)
the emphasis is on the fully functioning sub-units (cylinder head, dial
tone detector, method for controlling the arc welding current and voltage)
rather than the complete unit within which the sub-unit is contained
(four-stroke engine, telephone, process). This can make it unclear whether
the protection sought is limited to the sub-unit per se, or whether the
unit as a whole is to be protected. For the sake of clarity, claims of
this kind should be directed either to "a unit with (or comprising) a
sub-unit" (e.g., "four-stroke engine with a cylinder
head"), or to the sub-unit per se, specifying its purpose (for
example, "cylinder head for a four-stroke engine"). The latter
course may be followed only at the applicant's express wish and only if
there is a basis for it in the application as filed, in accordance with
the proviso of Sec.49.
With claims of the type
indicated by example (iv), the use of the word "in" sometimes
makes it unclear whether protection is sought for the improvement only or
for all the features defined in the claim. Here, too, it is essential to
ensure that the wording is clear.
However, claims such as
"use of a substance as an anticorrosive ingredient in a paint or
lacquer composition" are acceptable on the basis of second
non-medical use (See IV, 7.6, second paragraph). |
R.415(b) |
4.9 For the purposes of examination, a
"use" claim of a form such as "the use of substance X as an
insecticide" should be regarded as equivalent to a
"process" claim of the form "a process of killing insects
using substance X". Thus a claim of the form indicated should not be
interpreted as directed to the substance X recognisable (e.g. by further
additives) as intended for use of an insecticide. Similarly, a claim for
"the use of a transistor in an amplifying circuit" would be
equivalent to a process claim for the process of amplifying using a
circuit containing the transistor and should not be interpreted as being
directed to "an amplifying circuit in which the transistor is
used", nor to "the process of using the transistor in building
such a circuit".
4.9a
A
claim to an apparatus or substance “when used in” a particular process
should be construed as a claim confined to the use of the apparatus or
substance in such a process, and its novelty is therefore destroyed
only by a disclosure to such use. Preferably, the claims wording should
be amended to read “Use of the apparatus/substance for/in (process
features)”. If the apparatus or substance per se is known to be old,
this fact should be acknowledged in the description in order to ensure
that the nature of the invention in its proper perspective. |
R.415(d) |
4.10
The claims must not, in respect of the technical features of the
invention, rely on references to the description or drawings "except
where absolutely necessary". In particular they must not normally
rely on such references as "as described in
part of the description", or "as illustrated in Figure
2 of the drawings", or substantially as described and illustrated in
the accompanying drawings”. A claim containing the latter phrase is
known as an omnibus claim. The emphatic wording of the excepting clause
precluding such references should be noted. The onus is upon the applicant
to show that it is "absolutely necessary" to rely on reference
to the description or drawings in appropriate cases. An example of an
allowable exception would be that in which the invention involved some
peculiar shape, illustrated in the drawings, but which could not be
readily defined either in words or by a simple mathematical formula.
Another special case is that in which the invention relates to chemical
products some of whose features can be defined only by means of graphs or
diagrams.
A further special case is
where the invention is characterized by parameters. Provided that the
conditions for defining the invention in this way are met (See III, 4.7a
here above), then the definition of the invention should appear completely
in the claim itself whenever this is reasonably practicable. In principle
the method of measurement is necessary for the unambiguous definition of
the parameter. The method of and means for measurement of the parameter
values need not be in the claims when:
(a)
the description of the method is so long that its inclusion would
make the claim unclear through lack of conciseness or difficult to
understand; in that case the claim should include a reference to the
description, in accordance with R.415(d),
(b)
a person skilled in the art would know which method to employ, e.g.
because there is only one method, or because a particular method is
commonly used, or
(c)
all known methods yield the same result (within the limits of
measurement accuracy).]
In all other cases the
method of and means for measurement should beincluded in the claims as
the claims shall define the matter for which protection is sought Sec.
36.1 |
R.416(c)
R.413(b) R.414.13 |
4.11 The use of references in the claims to features of the
drawings is not prohibited. On the contrary, if there are drawings, and
the technical features of the claims would be rendered more intelligible
by relating these features to the corresponding features of the drawings
(e.g. where a complete machine has been illustrated), then this should
preferably be done by placing the appropriate reference signs in
parentheses after the features
in the claims. This should be done in both parts of claims having the
two-part form specified in
R.416(a)(b). These reference signs are not, normally construed as limiting
the scope of a claim, but merely act as aids to an easier understanding of
the claimed invention.
However, the use of
reference signs is however not always necessary in order to meet the
requirements of Sec. 36. If the absence of reference signs makes it very
difficult to relate a claim to the particular description, it is often
possible to amend the wording of the claim as an alternative to
inserting reference signs therein. Another acceptable alternative
is to put the reference signs in a corresponding statement of invention in
the description.
If text is added to reference signs in parentheses in the
claims, lack of clarity can arise Sec. 36.1. Expressions such as
"securing means (screw 13, nail 14)" or "valve assembly
(valve seat 23, valve element 27, valve seat 28)" are not reference
signs in the sense of R.416(c) but are special features, to which the last
sentence of R.416(c) is not applicable. Consequently it is unclear whether
the features added to the reference signs are limiting or not.
Accordingly, such bracketed features are generally not permissible.
However, additional references to those figures where particular reference
signs are to be found, such as "(13 - Figure 3; 14 - Figure 4)",
are unobjectionable. |
R.416(c) |
A lack of clarity can also
arise with bracketed expressions that do not include reference signs, e.g.
"(concrete) moulded brick". In contrast, bracketed expressions
with a generally accepted meaning are admissible, e.g. "(meth)acrylate"
which is known as an abbreviation for "acrylate and methacrylate".
The use of brackets in chemical or mathematical formulae is also
unobjectionable.
4.12 Generally, the subject-matter of a claim is
defined by means of positive features. However, the extent of a claim may
be limited by means of a "disclaimer"; in other words, an
element clearly defined by technical features may be expressly excluded
from the protection claimed, for example in order to meet the requirement
of novelty (over a document belonging to a different technical field), or
to exclude technically impossible or insufficiently disclosed
subject-matterA disclaimer may be used only when the claim's remaining
subject-matter cannot be defined more clearly and concisely by means of
positive features. A disclaimer is generally a way of trying to preserve
the patentability of a generic claim by excluding from its scope one or
more particular examples in the
prior art. There is no standard wording or phrase in the description or
claims for a disclaimer. A specific prior art may be excluded by a
disclaimer even in the absence of support for the excluded matter in the
original application documents. However, care should be taken that the
wording of the disclaimer does not infringe the proviso of Sec. 49. For
example, a disclaimer should not be accepted in case that the disclosure
of a document belonging to the same technical field as the invention is to
be excluded, and the inventive step for the remaining subject-matter is
argued on the basis of an exclusion not originally disclosed in the
application under examination.
4.13 "Comprising" vs.
"consisting"
While
in everyday language the word "comprise" may have both the
meaning "include", "contain" or "comprehend"
and "consist of", in drafting patent claims legal certainty
normally requires it to be interpreted by the broader meaning
"include", "contain" or "comprehend". On the
other hand, if a claim for a chemical compound refers to it as
"consisting of components A, B and C" by their proportions
expressed in percentages, the presence of any additional component is
excluded and therefore the percentages should add up to 100%. |
Sec.36.1 |
5. Conciseness, number of claims
5.1 The
requirement that “each claim shall be concise” refers to the claims in
their 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. Undue repetition of wording, e.g. between one
claim and another, should be avoided by the use of the dependent form.
Regarding independent claims in the same category See III, 3.3 here above.
As for dependent claims, while there is no objection to a reasonable
number of such claims directed to particular preferred features of the
invention, the examiner should object to a multiplicity of claims of a
trivial nature. |
Sec.36.1 |
6. Support in description
6.1
Each claim must be supported by the description. This means that
there must be a basis in the description for the subject-matter of every
claim and that the scope of the claims must not be broader than is
justified by the extent of the description and drawings.
6.2
Most claims are generalisations from one or more particular
examples. The extent of generalisation permissible is a matter which the
examiner must judge 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; after the date of filing, however, he should
be allowed to do so only if this does not introduce subject-matter which
goes beyond the disclosure of the initial application, i.e.
does not contravene the proviso of Sec. 49. 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. |
Sec.35.1
Sec.36.1 |
6.3
However, claims are sometimes speculative, in that their scope
extends beyond the description to embrace possibilities not yet explored
by the applicant, the effects of which cannot be readily predetermined or
assessed 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. In this case the examiner may object that the
invention in this respect is not sufficiently disclosed (Sec.35.1) and
that, consequently such claims are not supported by description
(Sec.36.1).
For instance, a claim in
generic form, i.e. relating to a whole class e.g. of products or machines,
may be acceptable even if of broad scope, if there is a 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 insufficient to enable the person with ordinary
skill in the art 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 examiner should require the
applicant to satisfy him 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.
As a general rule, a claim
should be regarded as supported by the description unless exceptionally
there are well-founded reasons for believing that the skilled person would
be unable, on the basis of the information given in the application as
filed, to extend the particular
teaching of the description to the whole of the field claimed by using
routine methods of experimentation or analysis. Support must however be of
a technical character; vague statements or assertions having no technical
content provide no basis.
The examiner should raise
an objection, or require further evidence, only if he has strong,
well-founded reasons for believing that the description as filed provides
inadequate support for that claim. It follows that in other cases the
applicant should be given the benefit of the doubt. Where
objection is raised, the
reasons should preferably be supported specifically by a published
document.
6.4 The question of support is illustrated by
the following examples:
(a)
A broad claim for “a process for influencing substances by
high-frequency electrical energy” may not be adequately supported by the
disclosure of a single example of such an influence (e. g. removing dust
from a gas) nor of influences on a single substance.
(b)
A claim relates to a process for treating all kinds of "plant Seedlings" by subjecting them to a controlled cold shock of such
duration and intensity that the specified results would follow, whereas
the description discloses the process applied to one kind of plant only.
Since it is well known that plants vary widely in their properties, there
are well-founded reasons for believing that the process is not applicable
to all plant Seedlings. Unless the applicant can provide convincing
evidence that the process is nevertheless generally applicable, he must
restrict his claim to the particular kind of plant referred to in the
description. A mere assertion that the process is applicable to all plant Seedlings is not sufficient.
Such a claim might thus
only be permissible if it clearly emanates from the description that the
conditions set forth in relation to that plant applied to other plants
generally; but otherwise the claim would not be adequately supported
unless the description gave a sufficient range of examples, relating to
different kind of plants, to enable a horticulturist to deduce how the
process should be applied to virtually any plant.
(c)
A claim relates to a specified method of treating "synthetic
resin mouldings" to obtain certain changes in physical
characteristics. All the examples described relate to thermoplastic resins
and the method is such as to appear inappropriate to thermosetting resins.
Unless the applicant can
provide evidence that the method is nevertheless applicable to
thermosetting resins, he must restrict his claim to thermoplastic resins.
It should be noted that,
although an objection of lack of support is an objection under Sec.36.1,
it can often, as in the above examples, also be considered as an objection
of insufficient disclosure of the invention under Sec.35, the objection
being that the disclosure is insufficient to enable the skilled person to
carry out the "invention" over the whole of the broad field
claimed (although sufficient in respect of a narrow
"invention"). Whether the objection is raised as lack of support
or as insufficiency is unimportant in examination proceedings; but it is
important in cancellation proceedings since there only the latter ground
is available (-> Sec.61.1).
6.5 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 (See also
III, 2.1 here above). 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 e.g. 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.
6.6 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 permissible to amend the description so that it
includes this subject-matter. Where the claim is dependent, it may suffice
if it is mentioned in the description that the claim sets out a particular
embodiment of the invention (See II, 4.5)]. |
|
7.
Unity of invention
Independent
claims |
Sec. 38.1
R.604(a) |
7.1 The Philippine application must
"relate to one invention only, or to a group of inventions forming
a single general inventive concept". The second of these
alternatives, i.e. the single-concept linked group, may give rise to a
plurality of independent claims in the same category (as in the examples
given in III, 3.3 here above), but the more usual case is a plurality of
independent claims in different categories.
The following guidelines,
and in particular R.605, are consistent with internationally harmonised
unity of invention practices of many patent offices.
Concerning examples for the
assessment of unity, reference is made to III, Annex 1 and to VII, 4. |
R.605(a)
R.605(b) |
7.2 R.605(a) indicates how
one determines whether or not the requirement of Sec. 38.1 is fulfilled
when more than one invention appears to be present. The link or “single
general inventive concept” between the inventions required by Sec.38.1
must be a technical relationship which finds expression in the claims in
terms of the same or corresponding special technical features. The
expression "special technical features" means, in any one claim,
the particular technical feature or features that define a contribution
that the claimed invention.considered as a whole makes
over the prior art. Once the special technical features of each invention
have been identified, one must determine whether or not there is a
technical relationship between the inventions and, furthermore, whether or
not this relationship involves these special technical features. Moreover,
it is not necessary that the special technical features in each invention
be the same. R.605(a) makes it clear that the required relationship may be
found between corresponding technical features. An example of this
correspondence might be the following: In one claim the special technical
feature which provides resilience might be a metal spring, whereas in
another claim the special technical feature which provides resilience
might be a block of rubber. |
R.605(c) |
A plurality of independent
claims in different categories may constitute a group of inventions so
linked as to form a single general inventive concept. |
R.605(d)
R.415(b) |
In particular, the
inclusion of any one of the following combinations of claims of different
categories in the same application is permissible:
(1) in addition to an independent claim for a given product, an
independent claim for a process specially adapted for the manufacture of
the said product, and an independent claim for a use of the said product,
or
(2) in addition to an independent claim for a given process, an
independent claim for an apparatus or means specifically designed for
carrying out the said process, or
(3) in addition to an independent claim for a given product, an
independent claim for a process specially adapted for the manufacture of
the said product and an independent claim for an apparatus or means
specifically designed for carrying out the said process.
It should be noted that a
"product" need not be a substance or composition but can be any
physical thing resulting from man's technical skill. It can be, for
example, a device, a machine or an assembly or a system.
Example (a):
1. Flame-retarding agent X,
2. Method of preparation of X
3. Use of X to treat a textile fabric.
Example (b)
1. Method of making a cable by twisting the cores together in a
particular way.
2. Apparatus particularly designed to twist the cores in the
particular way (of claim 1).
Sub-combinations of these
groups of claims are also possible such as, for example, product and
process, product and use and process and apparatus. Evidently these may be
admitted within the framework of unity of invention.
However, while a single set
of independent claims according to any one of the combinations (1), (2) or
(3) above is always permissible, an examiner is not obliged to accept a
plurality of such sets which could arise by additionally applying the
provisions of R.415(b). The proliferation of claims arising out of a
combined effect of this kind should be allowed only exceptionally.
7.3 It is essential that a single general inventive
concept link the claims in the various categories. The presence in each
claim of expressions such as "specially adapted" or
"specifically designed" does not necessarily imply that a single
general inventive concept is present.
The requirement that the
process be specially adapted for the manufacture of the product is
fulfilled if the claimed process inherently results in the claimed
product. The expression "specially adapted" does not imply that
the product could not also be manufactured by a different process. It also
does not imply that a similar process of manufacture could not also be
used for the manufacture of other products.
The requirement that the
apparatus or means be specifically designed for carrying out the process
is fulfilled if the apparatus or means is suitable for carrying out the
process and if there is a technical relationship as defined in R.605(a)
between the claimed apparatus or means and the claimed process. It is not
sufficient for unity that the apparatus or means is merely capable of
being used in carrying out the process. However, the expression
"specifically designed" does not exclude that the apparatus or
means could also be used for carrying out another process, or that the
process could also be carried out using an alternative apparatus or means.
7.3a Unity of invention should be considered to be present
in the context of intermediate and final products where:
(i) the intermediate and final products have the same essential structural
element, i.e. their basic chemical structures are the same or, their
chemical structures are technically closely interrelated, the intermediate
incorporating an essential structural element into the final product, and
(ii) the intermediate and final products are technically interrelated, this
meaning that the final product is manufactured directly
(iii) from the intermediate or is separated from it by a small
number of intermediates
all containing the same essential
structural element.
Unity of invention may also
be present between intermediate and final products of which the structures
are not known - for example, as between an intermediate having a known
structure and a final product with unknown structure or as between an
intermediate of unknown structure and a final product of unknown
structure. In such cases, there should be sufficient evidence to lead one
to conclude that the intermediate and final products are technically
closely interrelated as, for example, when the intermediate contains the
same essential element as the final product or incorporates an essential
element into the final product.
Different intermediate
products used in different processes for the preparation of the final
product may be claimed provided that they have the same essential
structural element. The intermediate and final products should not be
separated, in the process leading from one to the other, by an
intermediate which is not new. Where different intermediates for different
structural parts of the final product are claimed, unity should not be
regarded as being present between the intermediates. If the intermediate
and final products are families of compounds, each intermediate compound
should correspond to a compound claimed in the family of the final
products. However, some of the final products may have no corresponding
compound in the family of the intermediate products so that the two
families need not be absolutely congruent.
The mere fact that, besides
the ability to be used to produce final products, the intermediates also
exhibit other possible effects or activities should not prejudice unity of
invention. |
R.605(b) |
7.4 Alternative forms of an invention may be claimed
either in a plurality of independent claims (as indicated in III, 7.1 here
above) or in a single claim (but See III, 3.7 here above). In the latter
case the presence of the two alternatives as independent forms may not be
immediately apparent. In either case, however, the same criteria should be
applied in deciding whether or not there is unity of invention, and lack
of unity of invention may then also exist within a single claim.
7.4a Where a single claim
defines (chemical or non-chemical) alternatives, i.e. a so-called "Markush
grouping", unity of invention should be considered to be present when
the alternatives are of a similar nature (See III, 3.7 here above).
A "Markush claim"
can be considered as a shortened formulation of a claim which claims
"A compound selected from the group of compounds consisting of.", wherein a very large number of compounds would then be
specified. It is a generic formulation of chemical compounds each having a
common basic structure plus variable substituents, the substituents having
a common property or activity.
An example of such a
Markush claim is:
A
composition comprising a copper compound and a dimerised thiourea
derivative of Formula:
wherein
the two substituents R, which may be the same or different, are each
independently selected from a substituted or unsubstituted alkyl group
having 1 to 18 carbon atoms, a substituted or unsubstituted cycloalkyl
group having 3 to 18 carbon atoms, a substituted or unsubstituted aralkyl
group having 7 to 30 carbon atoms, a substituted or unsubstituted aryl
group having 6 to 30 carbon atoms, a substituted or unsubstituted acyl
group having 2 to 20 carbon atoms, a substituted or unsubstituted alkenyl
group having 2 to 20 carbon atoms, and a substituted or unsubstituted
alkoxycarbonyl group having 2 to 20 carbon atoms; and B denotes
substituted or unsubstituted benzene ring, a naphthalene ring, or a
biphenyl ring; the molar ratio of dimerised thiourea derivative to copper
compound being from 8:2 to 1:2.
When the Markush grouping
is for alternatives of chemical compounds, they should be regarded as
being of a similar nature where:
(i) all alternatives have a common property or activity, and
(ii) a common structure is present, i.e. a significant structural element is
shared by all of the alternatives, or all alternatives belong to a
recognized class of chemical compounds in the art to which the invention
pertains.
A "significant structural element is shared by all of the
alternatives" where the compounds share a common chemical structure
which occupies a large portion of their structures, or in case the
compounds have in common only a small portion of their structures, the
commonly shared structure constitutes a structurally distinctive portion
in view of existing prior art. The structural element may be a single
component or a combination of individual components linked together. The
alternatives belong to a "recognized class of chemical
compounds" if there is an expectation from the knowledge in the art
that members of the class
will behave in the same way in the context of the claimed invention, i.e.
that each member could be substituted one for the other, with the
expectation that the same intended result would be achieved. If it can be
shown that at least one Markush alternative is not novel, unity of
invention should be reconsidered.
7.5
Objection of lack of unity does not normally arise because a claim
contains a number of individual features whether presenting a technical
interrelationship (combination) or not (juxtaposition)
7.6
Lack of unity may be directly evident a priori, i.e. before
considering the claims in relation to the prior art or may only become
apparent a posteriori, i.e. after taking the prior art into consideration
- e.g. a document within the state of the art as defined in Sec. 24.1
shows that there is lack of novelty or inventive step in a main claim thus
leaving two or more
independent claims without a common inventive concept. |
Sec.38.3 |
7.7 Although lack of unity may arise a posteriori as
well as a priori, it should be remembered that lack of unity is not a
ground of cancellation in later proceedings. Therefore, although the
objection should certainly be made and amendment insisted upon in clear
cases, it should neither be raised nor persisted in on the basis of a
narrow, literal or academic approach. This is particularly so where the
possible lack of unity does not necessitate a further search. There should
be a broad, practical consideration of the degree of
interdependence of the alternatives presented, in relation to the
state of the art as revealed by the search report. If the common matter of
the independent claims is well-known, and the remaining subject-matter of
each claim differs from that of the others without there being any
unifying novel concept common to all, then clearly there is lack of unity.
If, on the other hand, there is a common concept or principle which is
novel and inventive then objection of lack of unity does not arise. For
determining what is allowable between these two extremes, rigid rules
cannot be given and each case should be considered on its merits, the
benefit of any doubt being given to the applicant. For the particular case
of claims for a known
substance for a number of distinct medical uses, See IV, 4.2.
Dependent claims
7.8 No objection on account of lack of unity a priori
is justified in respect of a dependent claim and the claim from which it
depends only because the general concept they have in common is the
subject-matter of the independent claim, which is also contained in the
dependent claim.
For example, suppose claim
1 claims a turbine rotor blade shaped in a specified inventive manner,
while claim 2 is for a "turbine rotor blade as claimed in claim 1 and
produced from alloy Z". The common general concept linking the
dependent with the independent claim is "turbine rotor blade shaped
in a specified manner", irrespective of whether the alloy Z is novel
and inventive or not.
As another example, suppose
that a main claim defines a process for the preparation of a Product A
starting from a product B and the second claim reads: Process according to
claim 1 characterized by producing B by a reaction using the
product C. In this case, too, no objection arises
under Sec.38.1, whether or
not the process for preparation of B from C is novel and inventive, since
claim 2 contains all the features of claim 1. The subject matter of claim
2 therefore falls within claim 1.
Hence, there is no question
of plurality of invention when one claim is within the scope of another,
even though the additional matter in the narrower claim would have been
capable of being claimed as further invention.
Where, however, a claim is
presented as dependent on another, but in fact states that one or more
features of the other claim are omitted or are replaced by other features,
there is the possibility of lack of unity of invention. Likewise when
alternatives are specified in a single claim, the claim should be
notionally rewritten as a series of independent claims which then can be
assessed for unity of invention in the usual way.
If the independent claim
appears to be not patentable, then the question whether there is still an
inventive link between all the claims dependent on that claim needs to be
carefully considered (See III, 7.7 here above, non-unity "a
posteriori"). It may be that the "special technical
features" of one claim dependent on this non-patentable independent
claim are not present in the same or corresponding form in an other claim
dependent on that claim.
7.9 Concerning the procedure to be followed in
case of lacking unity, reference is made to Sec.38.2 and R.606 to 611.
7.10 The Bureau may raise objections under Sec.38 during the
stage preceding publication (e.g. upon search) or during the subsequent
substantive examination. |
R.417 |
8. Calculation of claims fees
The claims incurring fees
are calculated in accordance with R.417. |
CHAPTER
IV: PATENTABILITY
(See ANNEX 1 to CHAPTER IV, 9
Guidance for the assessment of inventive step )
(See ANNEX 2 to CHAPTER IV, 9
(CONCERNING INVENTIVE STEP))
|
1. General
|
Sec.21
R.200 |
1.1
There are four basic requirements for patentability:
(i)
There must
be an "invention" that can be considered as a “technical solution of a problem in any field of human activity”.
(ii)
The
invention must be "industrially applicable".
(iii)
The
invention must be "new".
(iv)
The
invention must involve an "inventive step".
These
requirements will be dealt with in turn in the following sections
IV, 2 and 3, 4, 5 to 8, and 9, respectively.
1.2
In addition to these four basic requirements, the examiner should
be aware of the following two requirements that are implicitly contained
in the IP-code and the Implementing Rules and Regulations: |
Sec.35.1
R.909(c)
R.407(1)(a)
R.407(1)(c) R.416 |
(i) The
invention must be such that it can be carried out by a person skilled in
the art (after proper instruction by the application); this follows from
Sec.35.1. Instances where the invention fails to satisfy this requirement
are given in C-II, 4.11.
(ii)
The
invention must be a “technical solution to a problem”, hence of a
"technical” character", to the extent that it must relate to a
technical field (R.407(1)(a)), must be concerned with a technical problem
(R.407(1)(c)), and must have technical features in terms of which the
matter for which protection is sought can be defined in the claim
(R.416(a)(b)), See also C-III, 2.1).
1.3
Sec. 21 of the IP-Code Convention does not require explicitly or
implicitly that an invention to be patentable must entail some technical
progress or even any useful effect. Nevertheless, advantageous effects, if
any, with respect to the prior art should be stated in the description
(R.407(1)(c)), and any such effects are often important in determining
"inventive step" (See IV, 9 here below). |
Sec.21
Sec.22 |
2. Inventions
2.1
Sec.21 gives a definition of what is meant by "invention", but
Sec.22 contains a non-exhaustive list of things which shall not be
regarded as patentable inventions. It will be noted that the exclusions in
Sec.22.1 and
Sec.22.2
are abstract (e.g. discoveries, scientific theories etc.) and the
exclusions in Sec.2.5 are non-technical (e.g. aesthetic creations). In
contrast to this, an "invention" within the meaning of Sec.21
must be of both a concrete and a technical character (See IV, 1.2 (ii)
here above).
The
exclusions under Sec.22.1, 22.2 and 22.5 are dealt with under IV, 2.2 and
2.3 here below. The exclusions under Sec.22.4 (inventions in the
biological field) and 22.6 (public order and morality) are dealt with
under IV, 3 here below. The exclusions under Sec.22.3 (inventions in the
medical field) and under Sec.27 (industrial applicability) are dealt with
under IV, 4 here below. |
Sec.21
R.201 R.415 |
2.1a
Examples of what an invention may be are given in Sec.21, R.201 and
R.415, i.e.
a)
a useful
machine;
b)
a product;
c)
or process
or an improvement of any of the foregoing;
d)
microorganism;
and
e)
non-biological
and microbiological processes, or the use of an item in a specific process
and/or for a specific purpose.
2.2
In considering whether the subject-matter of an application is an
invention within the meaning of Sec.21, there are two general points the
examiner must bear in mind.
Firstly,
any exclusion from patentability under Sec.22.1 or Sec.22.2 will in
general apply only to the extent to which the application relates to the
excluded subject-matter as such. Secondly, the examiner should disregard
the form or kind of claim and concentrate on its content in order to
identify the real contribution which the subject-matter claimed,
considered as a whole, adds to the known art. If this contribution is not
of a technical character, there is no invention within the meaning of
Sec.21. Thus, for example, if the claim is for a known manufactured
article having a painted design or certain written information on its
surface, the contribution to the art is as a general rule merely an
aesthetic creation or presentation of information. Similarly, if a
computer program is claimed in the form of a physical record, e.g. on a
conventional tape or disc, the contribution to the art is still no more
than a computer program. In these instances the claim relates to excluded
subject-matter as such and is therefore not allowable. If, on the other
hand, a computer program in combination with a computer causes the
computer to operate in a different way from a technical point of view, the
combination might be patentable.
It
must also be borne in mind that the basic test of whether there is an
invention within the meaning of Sec.22, is separate and distinct from the
questions whether the subject-matter is susceptible of industrial
application, is new and involves an inventive step.
2.3
The items of
Sec.22.1, 22.2 and 22.5 will now be dealt with in turn,and
further examples will be given in order better to clarify the distinction
between what is patentable and what is not. |
Sec.22.1 R.202(a) |
Discoveries
If
a person finds out a new property of a known material or article, that is
a mere discovery and therefore not patentable. If however a person puts
that property to practical use, an invention has been made which may be
patentable. For example, the discovery that a particular known material is
able to withstand mechanical shock would not be patentable, but a railway
sleeper made from that material could well be patentable. To find a
substance freely occurring in nature is also mere discovery and therefore
not patentable. However, if a substance found in nature has first to be
isolated from its surroundings and a process for obtaining it is
developed, that process is patentable. Moreover, if the substance can be
properly characterized either by its structure, by the process by which it
is obtained or by other parameters (See III, 4.7a) and it is
"new" in the absolute sense of having no previously recognized
existence, then the substance per se may be patentable (See also IV, 7.3
here below). An example of such a case is that of a new substance which is
discovered as being produced by a micro-organism. |
Sec.22.1 R.202(a) |
Scientific theories
These
are a more generalised form of discoveries, and the same principle
applies. For example, the physical theory of semiconductivity would not be
patentable. However, new semiconductor devices and processes for
manufacturing these may be patentable. |
Sec.22.1 R.202(a) |
Mathematical methods
These
are a particular example of the principle that purely abstract or
intellectual methods are not patentable. For example, a shortcut method of
division would not be patentable but a calculating machine constructed to
operate accordingly may well be patentable. A mathematical method for
designing electrical filters is not patentable; nevertheless filters
designed according to this method could be patentable provided they have a
novel technical feature to which a product claim can be directed. |
Sec.22.2 R.202(b) |
Schemes, rules and
methods for performing mental acts, playing games or doing business
These
are further examples of items of an abstract or intellectual character. In
particular, a scheme for learning a language, a method of solving
cross-word puzzles, a game (as an abstract entity defined by its rules) or
a scheme for organising a commercial operation would not be patentable.
However, novel apparatus for playing a game or carrying out a scheme might
be patentable. |
Sec.22.2
R.202(b) |
Programs for computers
The
basic patentability considerations here are exactly the same as for the
other exclusions listed in Sec.22. However a data-processing operation can
be implemented either by means of a computer program or by means of
special circuits, and the choice may have nothing to do with the inventive
concept but be determined purely by factors of economy or practicality.
With this point in mind, examination in this area should be guided by the
following approach:
A
computer program claimed by itself or as a record on a carrier, is not
patentable irrespective of its content. The situation is not normally
changed when the computer program is loaded into a known computer. If
however the subject-matter as claimed makes a technical contribution to
the known art, patentability should not be denied merely on the ground
that a computer program is involved in its implementation. This means, for
example, that program-controlled machines and program-controlled
manufacturing and control processes should normally be regarded as
patentable subject-matter. It follows also that, where the claimed
subject-matter is concerned only with the program-controlled internal
working of a known computer, the subject-matter could be patentable if it
provides a technical effect. As an example consider the case of a known
data-processing system with a small fast working memory and a larger but
slower further memory. Suppose that the two memories are organised under
program control, in such a way that a process which needs more address
space than the capacity of the fast working memory can be executed at
substantially the same speed as if the process data were loaded entirely
in that fast memory.
The
effect of the program in virtually extending the working memory is of a
technical character and might therefore support patentability. |
Sec.22.5 R.202(e) |
Aesthetic creations
An
aesthetic creation relates to an article (e.g. a painting or sculpture)
having aspects which are other than technical and the appreciation of
which is essentially subjective. If, however, the article happens also to
have technical features, it might be patentable, a tyre tread being an
example of this. The aesthetic effect itself is not patentable, neither in
a product nor in a process claim. For example a book characterized by the
aesthetic or artistic effect of its information contents, of its layout or
of its letterfont, would not be patentable, and neither would a painting
characterized by the aesthetic effect of its subject or by the arrangement
of colours, or by the artistic (e.g. Impressionist) style. Nevertheless,
if an aesthetic effect is obtained by a technical structure or other
technical means, although the aesthetic effect itself is not patentable,
the means of obtaining it may be. 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 structure mightbe
patentable. Similarly, a book characterized by a technical feature of the
binding or pasting of the back, may be patentable, even though the effect
thereof is solely aesthetic, similarly also a painting characterized by
the kind of cloth, or by the dyes or binders used. Also a process of
producing an aesthetic creation may comprise a technical innovation and
thus be patentable. For example, a diamond may have a particularly
beautiful shape (not of itself patentable) produced by a new technical
process. In this case, the process may be patentable. Similarly, a new
printing technique for a book resulting in a particular layout with
aesthetic effect, may well be patentable, together with the book as a
product of that process. Again a substance or composition characterized by
technical features serving to produce a special effect with regard to
scent or flavour, e.g. to maintain a scent or flavour for a prolonged
period or to accentuate it, may well be patentable.
Presentations of
information
Although
there is no corresponding, explicit provision in the IP-code and the IRR,
mere representation of information characterized solely by the content of the information will not usually be
patentable since it cannot be considered as a technical solution to a problem. This applies whether the claim is
directed to the presentation of the information per se (e.g. by acoustical
signals, spoken words, visual displays), to information recorded on a
carrier (e.g. books characterized by their subject), gramophone records
characterized by the musical piece recorded, traffic signs characterized
by the warning thereon, magnetic computer tapes characterized by the data
or programs recorded), or to processes and apparatus for presenting
information (e.g. indicators or recorders characterized solely by the
information indicated or recorded). If, however, the presentation of
information has new technical features there could be patentable
subject-matter in the information carrier or in the process or apparatus
for presenting the information. The arrangement or manner of
representation, as distinguished from the information content, may well
constitute a patentable technical feature. Examples in which such a
technical feature may be
present are: a telegraph apparatus or communication system characterized
by the use of a particular code to represent the characters (e.g. pulse
code modulation); a measuring instrument designed to produce a particular
form of graph for representing the measured information; a gramophone
record characterized by a particular groove form to allow stereo
recordings; or a diapositive with a soundtrack arranged at the side of it.
2.4
Under certain circumstances, protection for non-patentable items
may be sought for by means of a utility model application or an industrial
design application (aesthetic aspects of an article of manufacture) or by
means of the law relating to copyright (computer software as such).
Reference
is made to the corresponding provisions in the IP-code and the IRR. |
Sec.22.6 |
3. Further exclusions
from patent protection – Sec.22.6 and 22.4
3.1
Any invention, the publication or exploitation of which would be
contrary to "public order or morality” is specifically excluded
from patentability. The purpose of this is to exclude from protection
inventions likely to induce riot or public disorder, or to lead to
criminal or other generally offensive behaviour (See also II, 7.1); one
obvious example of subject-matter which should be excluded under this
provision is a letter-bomb. This provision is likely to be invoked only in
rare and extreme cases. A fair test to apply is to consider whether it is
probable that the public in general would regard the invention as so
abhorrent that the grant of patent rights would be inconceivable. If it is
clear that this is the case, objection should be raised under Sec.22.6;
otherwise not. |
R.412 |
3.2
Exploitation is not to be deemed to be contrary to "public
order" or morality merely because it is prohibited by law or
regulation in the Philippines. For example, a product could still be
manufactured under a Philippine patent for export to states in which its
use is not prohibited.
3.3
In some cases refusal of a patent may not be necessary. This may
result when the invention has both an offensive and a non-offensive use:
e.g. a process for breaking open locked safes, the use by a burglar being
offensive but the use by a locksmith in the case of emergency inoffensive.
In such a case no objection arises under Sec.22.6, but if the application
contains an explicit reference to a use which is contrary to "public
order or morality”, deletion of this reference should be required under
the terms of R.412. |
Sec.22.4 |
3.4
Also excluded from patentability are "plant or animal breeds
varieties or essentially biological processes for the production of plants
or animals". One reason for this exclusion is that, at least for
plant varieties, other means of obtaining legal protection are available
in most countries. The question whether a process is "essentially
biological" or “non-biological” (Sec.22.4, 2nd
sentence) is one of degree depending on the extent to which there is
technical intervention by man in the process; if such intervention plays a
significant part in determining or controlling the result it is desired to
achieve, the process would not be excluded. To take some examples, a
method of crossing, inter-breeding, or selectively breeding, say, horses
involving merely selecting for breeding and bringing together those
animals having certain characteristics would be essentially biological and
therefore not patentable. On the other hand, a process of treating a plant
or animal to improve its properties or yield or to promote or suppress its
growth e.g. a method of pruning a tree, would not be essentially
biological since although a biological process is involved, the essence of
the invention is technical; the same could apply to a method of treating a
plant characterized by the application of a growth-stimulating substance
or radiation. The treatment of soil by technical means to suppress or
promote the growth of plants is also not excluded from patentability (See
also IV, 4.3). |
Sec.22.4
2nd sentence
Sec.27 R.208 |
3.5
As expressly stated in Sec.22.4, 2nd sentence, the
exclusion from patentability referred to in the preceding paragraph does
not apply to microorganisms and non-biological and microbiological
processes. The term "microbiological process" is to be
interpreted as covering not only industrial processes using
micro-organisms but also processes for producing new micro-organisms, e.g.
by genetic engineering. The product of a microbiological process may also
be patentable per se (product claim). A micro-organism can also be
protected per se (Sec.22.4, 2nd sentence). The term
micro-organism in general includes not only bacteria and yeasts, but also
fungi, algae, protozoa and human, and possibly animal and plant cells,
i.e. all generally unicellular organisms with dimensions beneath the
limits of vision which can be propagated and manipulated in a laboratory,
including plasmids and viruses.
3.6
In the case of microbiological processes, particular regard should
be had to the requirement of repeatability referred to in II, 4.11. As for
biological material to be deposited under the terms of R.408 and R.409,
repeatability is assured by the possibility of taking samples, and there
is thus no need to indicate another process for the production of the
biological material.
4. Industrial
application Sec.27 - Medical inventions Sec.22.3
4.1
An invention shall be considered “industrially applicable” if
it can be produced and used in any kind of industry. Agriculture is in
general considered as an industry as well. "Industry" should be
understood in its broad sense as including any physical activity of
"technical character" (See IV, 1.2 here above), i.e. an activity
which belongs to the useful or practical arts as distinct from the
aesthetic arts; it does not necessarily imply the use of a machine or the
manufacture of an article and could cover e.g. a process for dispersing
fog, or a process for converting energy from one form to another. Thus,
Sec.27 excludes from patentability very few "inventions" which
are not already excluded by the list in Sec.22 (See IV, 2.1 here above).
One further class of "invention" which would be excluded,
however, would be articles or processes alleged to operate in a manner
clearly contrary to well-established physical laws, e.g. a perpetual
motion machine. Objection could arise under Sec.27 only in so far as the
claim specifies the intended function or purpose of the invention, but if,
say, a perpetual motion machine is claimed merely as an article having a
particular specified construction then objection should be made under
Sec.35.1 (See II, 4.11). |
Sec.22.3 |
4.2
"Methods for treatment of the human or animal body by surgery
or therapy and diagnostic methods practised on the human or animal body”
are excluded from patent protection. Moreover, they will not in general be
regarded as inventions which are industrially applicable.
“Products and composition for use in any of these methods” are not
excluded from patent protection.
Patents
may, however, also be obtained for surgical, therapeutic or diagnostic
instruments or apparatus for use in such methods. Also the manufacture of
prostheses or artificial limbs, as well as taking measurements therefor on
the human body, would be patentable, so that a method of manufacturing a
prosthetic tooth which involves making a model of a patient's teeth in the
mouth would not be excluded from patentability either, provided the
prosthetic tooth is fabricated outside of the body.
Patents
may also be obtained for new products for use in these methods of
treatment or diagnosis, particularly substances or compositions. However
in the case of a known substance or composition, this may only be patented
for use in these methods if the known substance or composition was not
previously disclosed for use in surgery, therapy or diagnostic methods
practised on the human or animal body ("first medical use"). The
same substance or composition cannot subsequently be patented for any
other use of that kind. 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", " as an antibacterial agent " or "
for curing disease Y". In contrast to what is stated in III, 4.8
these types of claims will be regarded as restricted to the substance or
composition when presented or packaged for the specified use. This
constitutes an exception from the general principle that product claims
can only be obtained for (absolutely) novel products. However this does
not mean that product claims for the first medical use need not fulfil all
other requirements of patentability, especially that of inventive step. A
claim in the form "Use of substance or composition X for the
treatment of disease Y" will be regarded as relating to a method
for treatment explicitly excluded from patentability by Sec.22.3 and
therefore will not be accepted.
If
an application discloses for the first time a number of distinct surgical,
therapeutic or diagnostic uses for a known substance or composition,
normally in the one application independent claims each directed to the
substance or composition for one of the various uses may be allowed; i.e.
objection should not, as a general rule, be raised that there is lack of
unity of invention.
A
claim in the form "Use of a substance or composition X for the
manufacture of a medicament for therapeutic application Z" is
allowable for either a first or "subsequent" (second or further)
such application, if this application is new and inventive. The same
applies to claims in the form "Method for manufacturing a medicament
intended for therapeutic application Z, characterized in that the
substance X is used" or the substantive equivalents thereof. In cases
where an applicant simultaneously discloses more than one
"subsequent" therapeutic use, claims of the above type directed
to these different uses are allowable in the one application, but only if
they form a single general inventive concept (Sec.38).
4.3
It should be noted that Sec.22.3 excludes only methods of treatment
by surgery or therapy and diagnostic methods. It follows that other
methods of treatment of live human beings or animals (e.g. treatment of a
sheep in order to promote growth, to improve the quality of mutton or to
increase the yield of wool) or other methods of measuring or recording
characteristics of the human or animal body are patentable provided that
(as would probably be the case) such methods are of a technical, and not
essentially biological character (See IV, 3.4 here above) and provided
that the methods are industrially applicable. The latter proviso is
particularly important in the case of human beings.
For
example an application with a claim for a method of contraception, which
is to be applied in the private and personal sphere of a human being, may
not be considered “industrial applicable”. However, an application
containing claims directed to the purely cosmetic treatment of a human by
administration of a chemical product could be considered as
“industrially applicable”. A cosmetic treatment involving surgery or
therapy would not however be patentable (See below).
A
treatment or diagnostic method, to be excluded, would generally have to be
carried out on the living human or animal body. A treatment of or
diagnostic method practised on a dead human or animal body would therefore
not be excluded from patentability by virtue of Sec.. Treatment of body
tissues or fluids after they have been removed from the human or animal
body, or diagnostic methods applied thereon, are not excluded from
patentability in so far as these tissues or fluids are not returned to the
same body. Thus the treatment of blood for storage in a blood bank or
diagnostic testing of blood samples is not excluded, whereas a treatment
of blood by dialysis with the blood being returned to the same body would
be excluded.
Regarding
methods which are carried out on, or in relation to, the living human or
animal body, it should be borne in mind that the intention of Sec.22.3 is
to free from restraint non-commercial and non-industrial medical and
veterinary activities. Interpretation of the provision should avoid the
exclusions from going beyond their proper limits.
However,
in contrast to the subject-matter referred to e.g. Sec.22.1 and Sec.22.2,
which are in general only excluded from patentability if claimed as such,
a claim is not allowable under Sec.22.3 if it includes at least one
feature defining a physical activity or action that constitutes a method
step for treatment of the human or animal body by surgery or therapy or a
diagnostic method step to be exercised on the human or animal body. In
that case, whether or not the claim includes or consists of features
directed to a technical operation performed on a technical object is
legally irrelevant.
Taking
the three exclusions in turn:
Surgery defines the nature of the treatment rather than
its purpose. Thus, e.g. a method of treatment by surgery for cosmetic
purposes is excluded, as well as surgical treatment for therapeutic
purposes.
Therapy implies the curing of a disease or malfunction of
the body and covers prophylactic treatment, e.g. immunisation against a
certain disease or the removal of plaque.
Diagnostic methods likewise do not cover all methods related to
diagnosis. Methods for obtaining information only (data, physical
quantities) from the living human or animal body may not necessarily
excluded by Sec.22.3, if the information obtained merely provides
intermediate results which on their own do not enable a decision to be
made on the treatment necessary. Examples of such methods include X-ray
investigations, NMR studies, and blood pressure measurements.
4.4
Methods of testing
generally should be regarded as inventions susceptible of industrial
application and therefore patentable if the test is applicable to the
improvement or control of a product, apparatus or process which is itself
susceptible of industrial application. In particular, the utilisation of
test animals for test purposes in industry, e.g. for testing industrial
products (for example for ascertaining the absence of pyrogenetic or
allergic effects) or phenomena (for example for determining water or air
pollution) would be patentable.
4.5
It should be noted that "susceptibility of industrial
application" is not a requirement that overrides the restriction of
Sec.22, e.g. an administrative method of stock control is not patentable,
having regard to Sec.22.2 , even though it could be applied to the store
of spare parts of a factory. On the other hand, although an invention must
be industrially applicable and the description must indicate, where this
is not obvious, the way in which the invention is so industrially
applicable (See II, 4.12), the claims need not necessarily be restricted
to the indicated industrial application(s). |
Sec.21 Sec.23
Sec.24.1 |
5. Novelty; prior art
5.1
Sec.21 requires an invention to be new in order to be patentable.
Sec.23 gives a negative definition of novelty, i.e. that “an invention
shall not be considered new if it forms part of a prior art”. The
"prior art" is defined in Sec.24.1 as
consisting of "everything which has been made available to the public
anywhere in the world, before the filing date or the priority date of the
Philippine application claiming the invention”.
|
R.204(a), 1st
sentence
R.204(a), 2nd
sentence
R.204(a), 2nd
sentence
|
The
width of this definition should be noted. R.204(a), 1st
sentence indicates that there are no restrictions whatever as to the
geographicallocation
where, or the language or manner (e.g. by means of a written or oral
description, by use, or in any other way) in which the relevant
information was made available to the public; also no age limit is
stipulated for the documents or other sources of the information. There
are however certain specific exclusions (See IV, 8 here below). A prior
use in a foreign country must however by disclosed in printed documents or
in a tangible form. However, since the "prior art" available to
the examiner will mainly consist of the documents listed in the search
report, the following section IV, 5.2 deals with the question of public
availability only in relation to written description (either alone or in
combination with an earlier oral description or use). Other kinds of prior
art are discussed in section IV, 5.4 here below.
5.2
A written description, i.e. a document, should be regarded as made
available to the public if, at the relevant date, it was possible for
members of the public to gain knowledge of the content of the document and
there was no bar of confidentiality restricting the use or dissemination
of such knowledge. For instance, German utility models ("Gebrauchsmuster")
are already publicly available as of their date of entry in the Register
of utility models ("Eintragungstag"), which precedes the date of
announcement in the Patent Bulletin ("Bekanntmachung im Patentblatt").
The search report also may cite documents in which doubts with regard to
the fact of public availability and doubts concerning the precise date of
publication of a document have not, or not fully, been removed.
If the applicant contests the public availability or assumed date
of publication of the document the examiner should consider whether to
investigate the matter further. If the applicant shows sound reasons for
doubting whether the document forms part of the "prior art" in
relation to his application and any further investigation does not produce
evidence sufficient to remove that doubt the examiner should not pursue
the matter further. The only other problem likely to arise for the
examiner is where:
(i)
a document
reproduces an oral description (e.g. a public lecture) or gives an account
of a prior use (e.g. display at a public exhibition); and
(ii)
only the
oral description or lecture was publicly available before the "date
of filing" of the European application, the document itself being
published on or after this date.
In
such cases, the examiner should start with the assumption that the
document gives a true account of the earlier lecture, display or other
event and should therefore regard the earlier event as forming part of the
"prior art". If, however, the applicant gives sound reasons for
contesting the truth of the account given in the document then again the
examiner should not pursue the matter further.
5.3
It should be noted that the relevant date for establishing whether
a piece of prior art belongs to the state of the art is the date of
filing, or where a priority date has been validly claimed, the priority
date (Sec.24). If a
priority date has not been validly claimed (subject-matter claimed not
disclosed in priority document), the filing date will become the relevant
date for this purpose. For details, See V.
It
should be remembered that different claims, or different alternatives
claimed in one claim, may have different relevant dates, depending on the
validity of the priority for the subject-matter concernedThe question
of novelty must be considered against each claim (or part of a claim where
a claim specifies a number of alternatives) and the prior art in relation
to one claim or one part of a claim may include matter which cannot be
cited against another claim or part of a claim because the latter has an
earlier relevant date.
Of
course if all the matter in the prior art was made available to the public
before the date of the earliest priority document, the examiner need not
(and should not) concern himself with the allocation of priority dates.
5.4
In determining whether other kinds of prior art (which could be
introduced into the proceedings e.g. by a third party under Sec.47) have
been made available to the public, the following issues will need to be
considered, depending on the circumstances and the type of prior art:
Prior
use which is not present in the Philippines, even if widespread in a
foreign country, cannot form part of the prior art if such prior use is
not disclosed in printed documents or in any tangible form.
5.4a
Prior art made available to the public by use or in any other way
Types
of use and instances of prior art made available in any other way
Use
may be constituted by producing, offering, marketing or otherwise
exploiting a product, or by offering or marketing a process or its
application or by applying the process. Marketing may be effected, for
example, by sale or exchange. The prior art may also be made available to
the public in other ways, as for example by demonstrating an object or
process in specialist training courses or on television. Availability to
the public in any other way also includes all possibilities which
technological progress may subsequently offer of making available the
aspect of the prior art concerned.
Matters
to be determined as regards use:
When
dealing with an allegation that an object or process has been used in such
a way that it is comprised in the prior art, the following details will
need to be checked:
Is
the alleged use relevant at all?
The
date on which the alleged use occurred, i.e. whether there was any
instance of use before the relevant date (prior use).
What
has been used, in order to determine the degree of similarity between the
object used and the subject-matter claimed.
All
the circumstances relating to the use, in order to determine whether and
to what extent it was made available to the public, as for example the
place of use and the form of use. These factors are important in that, for
example, the details of a demonstration of a manufacturing process in a
factory or of the delivery and sale of a product may well provide
information as regards the possibility of the subject-matter having become
available to the public.
5.4b
Ways in which subject-matter may be made available
General
principles
Subject-matter
should be regarded as made available to the public by use or in any other
way if, at the relevant date, it was possible for members of the public to
gain knowledge of the subject-matter and there was no bar of
confidentiality restricting the use or dissemination of such knowledge
(See also IV, 5.2 with reference to written descriptions). This may, for
example, arise if an object is unconditionally sold to a member of the
public, since the buyer thereby acquires unlimited possession of any
knowledge which may be obtained from the object. Even where in such cases
the specific features of the object may not be ascertained from an
external examination, but only by further analysis, those features may
nevertheless to be considered as having been made available to the public.
If,
on the other hand, an object could be Seen in a given place (a factory,
for example) to which members of the public not bound to secrecy,
including persons with sufficient technical knowledge to ascertain the
specific features of the object, had access, all knowledge which an expert
was able to gain from a purely external examination is to be regarded as
having been made available to the public. In such cases, however, all
concealed features which could be ascertained only by dismantling or
destroying the object will not be deemed to have been made available to
the public.
Agreement
on secrecy
The
basic principle to be adopted is that subject-matter has not been made
available to the public by use or in any other way if there is an express
or tacit agreement on secrecy which has not been broken (concerning the
particular case of a non-prejudicial disclosure arising from an evident
abuse in relation to the applicant, See IV, 8 below), or if the
circumstances of the case are such that such secrecy derives from a
relationship of good faith or trust. Good faith or trust are factors which
may occur in contractual or commercial relationships.
Use
on non-public property
As
a general rule, use on non-public property, for example in factories and
barracks, is not considered as use made available to the public, because
company employees and soldiers are usually bound to secrecy, save in cases
where the objects or processes used are exhibited, explained or shown to
the public in such places, or where specialists not bound to secrecy are
able to recognize their essential features from the outside. Clearly the
above-mentioned "non-public property" does not refer to the
premises of a third party to whom the object in question was
unconditionally sold or the place where the public could See the object in
question or ascertain features of it.
Example
of the accessibility of objects used
A
press for producing light building (hard fibre) boards was installed in a
factory shed. Although the door bore the notice "Unauthorised persons
not admitted", customers (in particular dealers in building materials
and clients who were interested in purchasing light building boards), were
given the opportunity of Seeing the press although no form of
demonstration or explanation was given. An obligation to secrecy was not
imposed as, according to witnesses, the company did not consider such
visitors as a possible source of competition. These visitors were not
genuine specialists, i.e. they did not manufacture such boards or presses,
but were not entirely laymen either. In view of the simple construction of
the press, the essential features of the invention concerned were bound to
be evident to anyone observing it. There was therefore a possibility that
these customers, and in particular the dealers in building materials,
would recognize these essential features of the press and, as they were
not bound to secrecy, they would be free to communicate this information
to others.
Example
of the inaccessibility of a process
The
subject of the patent concerns a process for the manufacture of a product.
As proof that this process had been made available to the public by use, a
similar already known product was asserted to have been produced by the
process claimed. However, it could not be clearly ascertained, even after
an exhaustive examination, by which process it had been produced.
5.4c
Prior art made available by means of oral description
Cases
of oral description
The
prior art is made available to the public by oral description when facts
are unconditionally brought to the knowledge of members of the public in
the course of a conversation, a lecture, a conference, or by means of
radio, television or sound reproduction equipment (tapes and records).
Non-prejudicial
oral description
The
prior art will not be affected by oral descriptions under the
circumstances referred to in Sec.25 and in IV, 8 here below.
Matters
to be determined in cases of oral description
Once
again, in such cases the following details will have to be determined:
When
the oral description took place, what was described orally, whether the
oral description was made available to the public ; this will also depend
on the type of oral description (conversation, lecture) and on the place
at which the description was given (public meeting, factory hall.
5.4d Prior art made available to the public in writing
or by any othermeans
For
this prior art, the details such as those referred to above might have to
be determined, if they are not clear from the written or otherwise made
available disclosure itself. |
Sec.24.2 |
6. Conflict with other
Philippine applications
6.1
The prior art in addition comprises the whole content of other
applications for a patent, utility model or industrial design published
under Republic Act No. 8293 (Sec.44 for patents), filed or effective in
the Philippines, with a filing date or a validly claimed priority date
that is earlier than the filing or priority date of the application under
examination, even if the earlier patent, utility model or industrial
design publication is published on or after the date of filing or the
priority date of the application being examined. This does not apply when
the applicant or the inventor identified in both applications is one and
the same. Concerning this case, See however IV, 6.4 here below. |
R.204(b), 2nd
sentence
|
Hence,
where two or more applications are independently filed with respect to the
same invention, and the later applications are filed before the first
application or earlier application is published, the whole contents of the
first or earliest filed application published
in accordance with Sec. 44 on or after the filing date or priority date of
the later filed application shall be
novelty destroying with respect to the later filed application.
Whether
a piece of prior art has to be taken into consideration or not may depend
on whether the priority dates of the application under examination and of
the earlier application have been validly claimed (See Chapter V). |
R.206(b) |
According
to R.206(b) such earlier applications are part of the prior art only when
considering novelty and not when considering inventive step.
By
the whole content of a Philippines application is meant the whole
disclosure,
i.e. the description, drawings and claims, including:
(i)
any matter
explicitly disclaimed (with the exception of disclaimers for unworkable
embodiments),
(ii) any matter
for which an allowable reference (See II, 4.18, penultimate paragraph) to
other documents is made or
(iii) prior art
insofar as explicitly described.
However,
the "content" does not include any priority document (the
purpose of such document being merely to determine to what extent the
priority date is valid for the disclosure of the Philippines application
(See V, 1.2)) nor, in view of Sec.37,
last sentence, the abstract.
6.1a
Whether a published Philippine application can be a conflicting
application under Sec.24.2 is determined firstly by its filing date and
the date of its publication, which have to be before, respectively on or
after the filing date of the application under examination. If such an
application validly claims priority (See first proviso in Sec.24.2) , the
priority date replaces the filing date for that subject-matter in the
application which corresponds to the priority application. If a priority
claim was abandoned or otherwise lost with effect from a date prior to the
publication, the filing date and not the priority date of such an
application is relevant, irrespective of whether or not the priority claim
might have conferred a valid priority right.
Further
it is required that the conflicting application was still pending at its
publication date. If the application has been withdrawn or otherwise lost
before the date of publication, but published because the Office could not
stop its publication, the publication has no effect under Sec.24.2
pursuant to Sec.25(b)(a).
6.2
Earlier application(s) not yet published
In
cases where the application under examination is ready for grant before
the search for conflicting applications could be finalised (e.g. because
some of the potentially interferring applications have not yet been
published), See C-VI, 8.4. |
Sec.24.2
R.204(b)
2nd
proviso |
6.3 The
second proviso in Sec.24.2 specifies that an application otherwise meeting
the definitions given in Sec.24.2 does not
belong to the prior art to be taken into consideration if in this
application and in the application under examination one and the same.
Further, the IP-code does not deal explicitly with the case of co-pending
Philippines applications of the same effective date. |
R.915 |
However,
it is an accepted principle in most patent systems that two patents shall
not be granted to the same applicant for one invention. This principle is
e.g. reflected in R.915. It is permissible to allow an applicant to proceed
with two applications having the same description where the claims are
quite distinct in scope and directed to different inventions. However, in
the rare case in which there are two or more Philippines applications of
the type referred to here above, from the same applicant, and the claims
of those applications relate to the same invention (the claims conflicting
in the manner explained in VI, 9.6), the applicant should be told that he
must either amend one or more of the applications in such a manner that
they no longer claim the same invention, or choose which one of those
applications he wishes to proceed to grant. |
R.304(b), 2nd
paragraph
|
6.4
Concerning applications of the same effective date and received
from two different applicants, See R.304, 2nd paragraph.
7. Test for Novelty
7.1
It should be noted that in considering novelty (as distinct from
inventive step), it is not permissible to combine separate items of prior
art together (See IV, 9.7). However, if a document (the
"primary" document) refers explicitly to another document as
providing more detailed information on certain features, the teaching of
the latter may be regarded as incorporated into the document containing
the reference, if the document referred to was available to the public on
the publication date of the document containing the reference. For
conflicting applications, See III,
6.1 here above and II, 4.18.
The
same principle applies to any matter explicitly disclaimed (except
disclaimers which exclude unworkable embodiments) and to prior art insofar
as explicitly described. It is further permissible to use a dictionary or
similar document of reference in order to interpret a special term used in
the primary document. The effective date for novelty purposes (See IV, 7.3
here below) is always the date of the primary document.
7.2
A document takes away the novelty of any claimed subject-matter
derivable directly and unambiguously from that document including any
features implicit to a person skilled in the art in what is expressly
mentioned in the document, e.g. a disclosure of the use of rubber in
circumstances where clearly its elastic properties are used even if this
is not explicitly stated takes away the novelty of the use of an elastic
material. The limitation to subject-matter "derivable directly and
unambiguously" from the document is important.
Thus,
when considering novelty, it is not correct to interpret the teaching of a
document as embracing well-known equivalents which are not disclosed in
the documents; this is a matter of obviousness.
7.3
In determining novelty a prior document should be read as it would
have been read by a person skilled in the art on the effective date of the
document. By "effective" date is meant the publication date in
the case of a
previously published document and the date of filing (or priority date,
where appropriate) in the case of a document according to Sec.24.2.
However,
it should be noted that a chemical compound, the name or formula of which
was mentioned in a document, is not considered as known unless the
information in the document, together, where appropriate, with knowledge
generally available on the effective date of the document, enable it to be
prepared and separated or, for instance in the case of a product of
nature, only to be separated.
7.4
In considering novelty it should be borne in mind that a generic
disclosure does not usually take away the novelty of any specific example
falling within the terms of that disclosure, but that a specific
disclosure does take away the novelty of a generic claim embracing that
disclosure, e.g. a disclosure of copper takes away the novelty of metal as
a generic concept, but not the novelty of any metal other than copper, and
one of rivets takes away the novelty of fastening means as a generic
concept, but not the novelty of any fastening other than rivets.
7.5
In the case of a prior document, the lack of novelty may be
apparent from what is explicitly stated in the document itself.
Alternatively, it may be implicit in the sense that, in carrying out the
teaching of the prior document, the skilled person would inevitably arrive
at a result falling within the terms of the claim. An objection of lack of
novelty of this kind should be raised by the examiner only where there can
be no reasonable doubt as to the practical effect of the prior teaching
(for a second non-medical use, however, See IV, 7.6 here below).
Situations of this kind may also occur when the claims define the
invention, or a feature thereof, by parameters (See III, 4.7a). It may
happen that in the relevant prior art a different parameter, or no
parameter at all, is mentioned. If the known and the claimed products are
identical in all other respects (which is to be expected if, for example,
the starting products and the manufacturing processes are identical), then
in the first place an objection of lack of novelty arises. If the
applicant is able to show, e.g. by appropriate comparison tests, that
differences do exist with respect to the parameters, it is questionable
whether the application discloses all the features essential to
manufacture products having the parameters specified in the claims
(Sec.35.1).
7.6
In determining novelty of the subject-matter of claims the examiner
should have regard to the guidance given in III, 4.4 to 4.13. He should
remember that, particularly for claims directed to a physical entity,
non-distinctive characteristics of a particular intended use, should be
disregarded (See III, 4.8 to 4.9). For example, a claim to a substance X
for use as a catalyst would not be considered to be novel over the same
substance known as a dye, unless the use referred to implies a particular
form of the substance (e.g. the presence of certain additives) which
distinguishes it from the known form of the substance. That is to say,
characteristics not explicitly stated, but implied by the particular use,should
be taken into account (See the example of a "mold for molten
steel" in III, 4.8).
It
should further be borne in mind that a claim to the use of a known
compound for a particular purpose (second non-medical use), which is based
on a technical effect, should be interpreted as including that technical
effect as a functional technical feature, and is accordingly not open to
objection under Sec.23 and 24.1, provided that such technical feature has
not previously been made available to the public. For claims to a second
or further medical use, See IV, 4.2, here above. |
Sec.25.1 |
8. Non-prejudicial
disclosures
8.1
There are three specified instances in which a prior disclosure of
the information contained in the application during the twelve months
preceding the filing date or the priority date of the application shall
not prejudice the applicant on the ground of lack of novelty, viz. if such
disclosure was made by: |
Sec.25.1(a)
Sec.25.1(b)
Sec.25.1(c)
Sec.25.2 Sec.28
Sec.67 |
(a)
The inventor;
(b)
A foreign patent office, the Bureau or the Office, and the
information was contained (a) in another application filed by the inventor
and should not have been disclosed by the office, or (b) in an application
filed without the knowledge or consent of the inventor by a third party
which obtained the information directly or indirectly from the inventor;
or
(c)
A third party which obtained the information directly or indirectly
from the inventor.
For
the purposes of Sec.25.1, “inventor”
also means any person who, at the filing date of application, had the
right to the patent according to Sec.28.
(i)
an evident abuse in relation to the applicant or his legal
predecessor - e.g. the invention was derived from the applicant and
disclosed against his wish; or
8.2
An essential condition in all instances is that the disclosure in
point must have taken place not earlier than twelve months preceding the
filing date or the priority date of the application.
8.3 Regarding
the cases addressed in Sec.25.1(a) and (c) , the disclosure might be
made in a published document or at a conference or in any other way.
8.4 Regarding
the cases addressed in Sec.25.1(b), they might occur whenever a
patent office publishes an application by mistake (e.g. after the
application has been explicitly been withdrawn, or publication before the
date foreSeen by the law), or for example,
when a person B who has been told of A's invention in confidence, applies
for a patent for this invention. If so, the disclosure resulting from the
publication of B's application will not prejudice A's rights provided that
A has already made an application, or applies within six months of such
publication. In any event, having regard to Sec.67, B may not be entitled
to proceed with his application (See VI, 9.7 to 9.11).
|
Sec.26
Sec.24 R.204(a)(b) R.206(b)
Sec.24 2nd
Sentence
Sec.21 1st
Sentence |
9. Inventive step
9.1
"An invention involves an inventive step if, having regard to
the prior art, it is not obvious to a person skilled in the art at the
time of the filing date or priority date of the application claiming the
invention”. Novelty and inventive step are different criteria. Novelty
exists if there is any difference between the claimed invention and the
known art. The question - Is there inventive step? - only arises if there
is novelty.
9.2
The "prior art" for the purposes of considering inventive
step is as defined in Sec.24.1 (See IV, 5 here above);
it does not include later published Philippine patent, utility model or
industrial design applications as referred to in Sec.24.2.
9.3
Thus the question to consider, in relation to any claim defining
the invention, is whether at the priority date of that claim, having
regard to the art known at the time, it would have been obvious to the
person skilled in the art to arrive at something falling within the terms
of the claim. If so, the claim is bad for lack of inventive step. The term
"obvious" means that which does not go beyond the normal
progress of technology but merely follows plainly or logically from the
prior art, i.e. something which does not involve the exercise of any skill
or ability beyond that to be expected of the person skilled in the art. In
considering inventive step, as distinct from novelty (See IV, 7.3 here
above), it is fair to construe any published document in the light of
subsequent knowledge and to have regard to all the knowledge generally
available to the person skilled in the art at the filing or priority date
of the claim.
9.3a
The invention claimed must normally be considered as a whole. Thus
it is not correct as a general rule, in the case of a combination claim,
to argue that the separate features of the combination taken by themselves
are known or obvious and that "therefore" the whole
subject-matter claimed is obvious. The only exception to this rule is
where there is no functional relationship between the features of the
combination i.e.
where
the claim is merely for a juxtaposition of features and not a true
combination (See the example at 2.1 of the Annex 1 to this Chapter).
9.4
While the claim should in each case be directed to technical
features (and not, for example, merely to an idea), in order to assess
whether an inventive step is present it is important for the examiner to
bear in mind that there are various ways in which the skilled person may
arrive at an invention. An invention may, for example, be based on the
following:
(i) The
formulation of an idea or of a problem to be solved (the solutionbeing obvious once the problem is
clearly stated).
Example: the problem of indicating to the driver of a
motor vehicle at night the line of the road ahead by using the light from
the vehicle itself. As soon as the problem is stated in this form the
technical solution, viz. the provision of reflective markings along the
road surface, appears simple and obvious.
(ii) The devising
of a solution to a known problem.
Example: the problem of permanently marking farm animals
such as cows without causing pain to the animals or damage to the hide has
existed since farming began. The solution ("freeze-branding")
consists in applying the discovery that the hide can be permanently
de-pigmented by freezing.
(iii) The arrival
at an insight into the cause of an observed phenomenon (the practical use
of this phenomenon then being obvious).
Example: the agreeable flavour of butter is found to be
caused by minute quantities of a particular compound. As soon as this
insight has been arrived at, the technical application comprising adding
this compound to margarine is immediately obvious.
Many
inventions are of course based on a combination of the above possibilities
- e.g. the arrival at an insight and the technical application of that
insight may both involve the use of the inventive faculty.
9.5
In identifying the contribution any particular invention makes to
the art in order to determine whether there is an inventive step, account
should be taken first of what the applicant himself acknowledges in his
description and claims to be known. Any such acknowledgment of known art
should be regarded by the examiner as being correct unless the applicant
states he has made a mistake. However, the further prior art contained in
the search report may put the invention in an entirely different
perspective from that apparent from reading the applicant's specification
by itself (and indeed this cited prior art may cause the applicant
voluntarilyto
amend his claims to redefine his invention before his application comes up
for examination). In order to reach a final conclusion as to whether the
subject-matter of any claim includes an inventive step it is necessary to
determine the difference between the subject-matter of that claim and the
prior art and, in considering this matter, the examiner should not proceed
solely from the point of view suggested by the form of claim (prior art
plus characterising portion - See III, 2).
Considering
the definition of an invention as given in Sec.21, when assessing
inventive step the examiner will normally apply the following “problem and solution approach”:
In
the problem and solution approach there are three main stages:
1.
determining
the closest prior art,
2.
establishing
the technical problem to be solved, and
3. considering
whether or not the claimed invention, starting from the closest prior art
and the technical problem, would have been obvious to the skilled person.
In
the first stage, the closest
prior art must be determined. The closest prior art is that combination of
features derivable from one single reference that provides the best basis
for considering the question of obviousness. The closest prior art may be,
for example:
(i)
a known
combination in the technical field concerned that discloses technical
effects, purpose or intended use, most similar to the claimed invention or
(ii)
that
combination which has the greatest number of technical features in common
with the invention and capable of performing the function of the
invention.
In
the second stage, one
establishes in an objective way the technical problem to be solved. To do
this, one studies the application (or the patent), the closest prior art
and the difference in terms of technical features (either structural or
functional) between the claimed invention and the closest prior art and
then formulates the technical problem. In this context
the technical problem means the aim and task of modifying or
adapting the closest prior art to provide the technical effects that the
invention provides over the closest prior art.
The
technical problem derived in this way may not be what the application
presents as "the problem". The latter may require to be
reformulated, since the objective technical problem is based on
objectively established facts,
in particular appearing in the prior art revealed in the course of the
proceedings, which may be different from the prior art of which the
applicant was actually aware at the time the application was filed.
The
extent to which such reformulation of the technical problem is possible
has to be assessed on the merits of each particular case. For instance,
any effect provided by the invention may be used as a basis for the
reformulation of the technical problem, as long as said effect is
derivable from the application as filed. It may also be possible to rely
on new effects submitted subsequently during the proceedings by the
applicant, provided that the skilled person would recognize these effects
as implied by or related to the technical problem initially suggested.
The
expression “technical problem” should be interpreted broadly; it does
not necessarily imply that the solution is a technical improvement over
the prior art. Thus the problem could be simply to Seek an alternative to
a known device or process providing the same or similar effects or which
is more cost-effective.
Sometimes
the technical features of a claim provide more than one technical effect,
so one can speak of the technical problem as having more than one part or
aspect, each corresponding to one of the technical effects. In such cases,
each part or aspect generally has to be considered in turn.
In
the third stage, the question
to be answered is whether there is any teaching in the prior art as a
whole that would (not simply could, but would) prompt the skilled person,
faced with the technical problem, to modify or adapt the closest prior art
while taking account of that teaching, thus arriving at something falling
within the terms of the claims, and thus achieving what the invention
achieves (See IV, 9.3 here above).
9.5a
If an independent claim is new and non-obvious, there is no need to
investigate the obviousness or non-obviousness of any claims dependent
thereon, except in situations where the priority claim for the
subject-matter of the dependent claim has to be checked because of
intermediate documents (See e.g. V, 2.6.3). Similarly, if a claim to a
product is new and non-obvious there is no need to investigate the
obviousness of any claims for a process which inevitably results in the
manufacture of that product or any claims for a use of that product. In
particular, analogy processes are patentable insofar as they provide a
novel and inventive product.
9.6
The “person skilled in the art” should be presumed to be an
ordinary practitioner aware of what was common general knowledge in the
art at the relevant date. He should also be presumed to have had access to
everything belonging to the "prior art", in particular the
documents cited in the search report, and to have had at his disposal the
normal means and capacity for routine work and experimentation.
If
the problem prompts the person skilled in the art to Seek its solution in
another technical field, the specialist in that field is the person
qualified to solve the problem. The assessment of whether the solution
involves an inventive step should therefore
be based on that specialist's knowledge and ability. There may be
instances where it is more appropriate to think in terms of a group of
persons, e.g. a research or production team, than a single person. This
may apply e.g. in certain advanced technologies such as computers or
telephone systems and in highly specialised processes such as the
commercial production of integrated circuits or of complex chemical
substances.
9.7
In considering whether there is inventive step (as distinct from
novelty (See IV, 7 here above), it is permissible to combine together the
disclosures of two or more documents or parts of documents, different
parts of the same document or other pieces of prior art, but only where
such combination would have been obvious to the person skilled in the art
at the filing or priority date of the claim under examination. In
determining whether it would be obvious to combine two or more distinct
disclosures, the examiner should have regard to the following:
(i)
Whether the
content of the documents is such as to make it likely or unlikely that the
person skilled in the art, when concerned with the problem solved by the
invention, would combine them – for example, if two disclosures
considered as a whole could not in practice be readily combined because of
inherent incompatibility in disclosed features essential to the invention,
the combining of these disclosures should not normally be regarded as
obvious.
(ii) Whether the
documents come from similar, neighbouring or remote technical fields.
(iii) The
combining of two or more parts of the same document would be obvious if
there is a reasonable basis for the skilled person to associate these
parts with one another. It would normally be obvious to combine with a
prior art document a well-known textbook or standard dictionary; this is
only a special case of the general proposition that it is obvious to
combine the teaching of one or more documents with the common general
knowledge in the art. It would, generally speaking, also be obvious to
combine two documents one of which contains a clear and unmistakable
reference to the other (for references which are considered an integral
part of the disclosure, See 6.1
and 7.1 here above. In determining whether it is permissible to combine a
document with an item of prior art made public in some other way, e.g. by
use, similar considerations apply.
9.8 To this chapter ("Guidance for the assessment of
inventive step"), as well as Chapter VII (parts VII, 1 and VII, 5.4)
give examples of circumstances where an invention should be regarded as
obvious or where it involves an inventive step. It is to be stressed that
these examples are only guides and that the applicable principle in each
case is "was it obvious to a person skilled in the art?"
Examiners should avoid attempts to fit a particular case into one of these
examples where the latter is not clearly applicable. Also, the list is not
exhaustive.
9.9
It should be remembered that an invention which at first sight
appears obvious might in fact involve an inventive step. Once a new idea
has been formulated it can often be shown theoretically how it might be
arrived at, starting from something known, by a series of apparently easy
steps. The examiner should be wary of “ex post facto” analysis of this
kind. He should always bear in mind that the documents produced in the
search have, of necessity, been obtained with foreknowledge of what matter
constitutes the alleged invention. In all cases he should attempt to
visualise the overall prior art confronting the skilled man before the
applicant's contribution and he should Seek to make a "real
life" assessment of this and other relevant factors. He should take
into account all that is known concerning the background of the invention
and give fair weight to relevant arguments
or evidence submitted by the applicant. If, for example, an invention is
shown to be of considerable technical value, and particularly if it
provides a technical advantage which is new and surprising, and this can
convincingly be related to one or more of the features included in the
claim defining the invention, the examiner should be hesitant in pursuing
an objection that such a claim lacks inventive step. The same applies
where the invention solves a technical problem which workers in the art
have been attempting to solve for a long time, or otherwise fulfils a
long-felt need. Commercial success alone is not to be regarded as
indicative of inventive step, but evidence of immediate commercial success
when coupled with evidence of a long-felt want is of relevance provided
the examiner is satisfied that the success derives from the technical
features of the invention and not from other influences (e.g. selling
techniques or advertising).
9.10
The relevant arguments and evidence to be considered by the
examiner for assessing inventive step may be taken either from the
originally filed patent application, or be submitted by the applicant
during the subsequent substantive examination proceedings (See IV-9.5 here
above and VI, 5.7, 5.7a, 5.7c and 5.7d.
Care
must be taken, however, whenever new effects in support of inventive step
are referred to. Such new effects may only be taken into account if they
are implied by or at least related to the technical problem initially
suggested in the originally filed application. Otherwise they have to be
considered as corresponding to another invention that was not originally
disclosed.
Example
of such a new effect:
The
invention as filed relates to a pharmaceutical composition having a
specific activity. At first sight, having regard to the relevant prior
art, it would appear that there is a lack of inventive step. Subsequently
the applicant submits new evidence which shows that the claimed
composition exhibits an unexpected advantage in terms of low toxicity. In
this case it is allowable to reformulate the technical problem by
including the aspect of toxicity, since pharmaceutical activity and
toxicity are related in the sense that the skilled person would always
contemplate the two aspects together.
The
reformulation of the technical problem may or may not give rise to an
amendment, and subsequent insertion, of the statement of the technical
problem in the description. Any such amendment is only allowable if it
satisfies the conditions listed in VI, 5.7c. In the above example of a
pharmaceutical composition, neither the reformulated problem nor the
information on toxicity could be introduced into the description without
infringing the proviso of Sec.49. |
CHAPTER V: PRIORITY
Art.4,
4bis Paris
Convention |
The Philippines being a signatory state of the Paris
Convention, Art.4 and
Art.4b thereof do also apply in the Philippines |
Sec.40 |
1. The Right to Priority
1.1
A Philippine patent application is accorded as its date of filing
the date on which it satisfies the requirements of Sec.40 and Rule 600.
This date remains unchanged except in the special circumstances referred
to in Sec.41 and Rules 600.1 to 602.
|
Sec.29 |
The
date of filing may be the only effective date of the application. It will
be of importance for fixing the expiry of certain time limits, for
determining the state of the art relevant to the novelty or obviousness of
the subject-matter of the application, and for determining, in accordance
with Sec.29 and R.304, which of two or more Philippine applications from
independent persons for the same invention is to proceed to grant.
|
Sec.31 R.305 |
1.2
However, in many cases, a Philippine application will claim the
right of priority of the date of filing of an earlier application. In such
cases, it is the priority date (i.e. the date of filing of the earlier
application) which becomes the effective date for the purposes mentioned
in the preceding paragraph, except for the fixing of certain time limits.
|
Sec.31 R.305 |
1.3
For a valid
claim to priority, the earlier application whose priority has been claimed
must have been made by the applicant, it must have been made in (or for)
another country which by treaty, convention or law affords similar
privileges to Filipino citizens (e.g. a signatory state of the Paris
Convention),
and
the following conditions must also be satisfied:
(a)
the local
application must expressly claim priority,
(b)
it must be
filed within twelve (12) months from the date the earliest foreign
application was filed, and
(c)
a certified
copy of the foreign application together with an English translation must
be filed within six (6) months from the date of filing in the Philippines.
Pursuant
to Rule 305, the six months period may be extended by the Director for a
maximum of six months upon showing of good cause or in compliance with
treaties to which the Philippines are or may become a member.
The
words "in (or for) another country which…“ mean that priority may
be claimed
of an earlier national regional or international application. The earlier
application may be for a patent or for the registration of a utility model
or for a utility certificate or for an inventor's certificate. As long as
the contents of the earlier application were sufficient to establish a
regular filing date, it can be used to create a priority date, no matter
what the outcome of the application may later be; for example, it may
subsequently be abandoned or refused.
|
Art.4C(2) Paris
Convention |
1.4
Normally (except as explained in V, 1.4a here below) the filing
date of the "first application" must be claimed as a priority,
i.e. the application disclosing for the first time any or all of the
subject-matter of the Philippines application. If it is found that the
application to which the priority claim is directed is in fact not the
first application in the above sense, but some or all of the
subject-matter was disclosed in a still earlier application in or for the
same country and originating from the same inventor, the priority claim is
invalid as far as the subject-matter was already disclosed in the still
earlier application.
|
Sec.24.1
Sec.24.2 |
To
the extent the priority claim is invalid, the effective filing date of the
local application under examination is the date of its filing in the
Philippines. The previously disclosed subject-matter of the local
application is not novel, if the still earlier application referred to
above was published prior to the effective filing date of the local
application (Sec.24.1) or if the still earlier application is also a
Philippines application which was published on or after the effective
filing date of the local application in question (Sec.24.2), provided the
inventor or applicant identified in both the applications are not one and
the same.
|
Art.4C(4) Paris
Convention |
1.4a
A subsequent application for the same subject-matter and filed in
or for the same state shall be considered as the first application for
priority purposes if, at the date this subsequent application was filed,
the first application had been withdrawn, abandoned or refused, without
being open to public inspection and without leaving any rights
outstanding, and had not served as a basis for claiming priority. The
Office will not consider this question unless there is evidence of the
existence of an earlier application as, for example, in the case of a
United States continuation-in-part application. Where it is clear that an
earlier application for the same subject-matter exists, and where the
priority right is important because of intervening prior art (See V, 2.1
here below), the applicant should be required to establish by evidence
from an appropriate authority (normally a national patent office) that
there were no rights outstanding of the in the earlier application in
respect of the subject-matter of the application being examined. If the
earlier application has been published, or it has been used for priority
purposes in another application, there are clearly rights outstanding.
|
R.306.1 R.306.2 |
1.5
Multiple priorities from different countries may be claimed - i.e.
a Philippines application may claim rights of priority based on more than
one earlier application. The earlier application may have been filed in or
for the same
or different states, but in all cases the earliest application must have
been filed not more than 12 months before the date of filing of the
Philippines application.
If
more than one priority is claimed, time limits will be computed from the
priority date will be based on the earliest priority date.
|
R.306.3 |
An
element of a Philippines application will be accorded the priority date of
the earliest priority application which discloses it. If, for instance,
the Philippines application describes and claims two embodiments (A and B)
of an invention, A being disclosed in a French application and B in a
German application, both filed within the preceding 12 months, the
priority dates of both the French and German applications may be claimed
for the appropriate parts of the Philippines application; embodiment A
will have the French priority date, and embodiment B the German priority
date, as effective filing dates. If embodiments A and B are claimed as
alternatives in one claim, these alternatives will likewise have the
different priority dates as effective dates. If, on the other hand, a
Philippines application is based on one earlier application disclosing a
feature C and a second earlier application disclosing a feature D, neither
disclosing the combination of C and D, a claim to that combination will be
entitled only to the date of filing of the Philippine application under
examination itself. In other words, it is not permitted to mosaic priority
documents. An exception might arise where one priority document contains a
reference to the other and explicitly states that features from the two
documents can be combined in a particular manner.
2. Determining priority
dates
2.1
As a general rule, the examiner should not make any investigation
as to the validity of a right to priority. However, the priority right
assumes importance if prior art has to be taken into account, which has
been made available to the public within the meaning of Sec.24.1, on or
after the priority date claimed and before the date of the local filing (e.g.
an intermediate document, See IV, 5.3, or if the content of the Philippine
patent application is totally or partially identical with the content of
another Philippine application from a different applicant or inventor
within the meaning of Sec.24.2, such other application claiming a priority
date within that period. In such cases, (i.e. cases where the art in
question would be relevant if of earlier date) the examiner must
investigate whether the priority date(s) claimed may be accorded to the
appropriate parts of the application he is examining and should inform the
applicant of the outcome and whether, in consequence, the particular prior
art under consideration, e.g. the intermediate document, or the other
Philippine application forms part of the state of the art within the
meaning of Sec.24.
Also,
in the case of possible conflict with another Philippine application under
Sec.24.2, it may be necessary in addition to allocate priority dates to
the appropriate parts of that other application and to communicate this to the
applicant analogously. In the
case of conflicting local applications, the examiner can only take action
once the earlier local application has been published.
|
R.306.3 |
2.2
When the examiner needs to consider the question of priority date,
he should bear in mind all the matters which are mentioned in V, 1.3 to
1.5 above. He should also remember that, to establish a priority date, it
is not necessary that the elements of the invention for which priority is
claimed should be found among any claims in the previous application. It
is sufficient that the documents of the previous application taken as a
whole "specifically disclose" such elements. The description and
any claims or drawings of the previous application should, therefore, be
considered as a whole in deciding this question, except that account
should not be taken of subject-matter found solely in that part of the
description referring to prior art, or in an explicit disclaimer.
2.3
The requirement that the disclosure must be specific means that it
is not sufficient if the elements in question are merely referred to in
broad and general terms. A claim to a detailed embodiment of a certain
feature would not be entitled to priority on the basis of a mere general
reference to that feature in a priority document. Exact correspondence is
not required, however. It is enough that, on a reasonable assessment,
there is in substance a disclosure of all the elements of the claim.
2.4
The basic test to determine whether a claim is entitled to the date
of a priority document is the same as the test of whether an amendment to
an application satisfies the requirement of the proviso in Sec.49 (See
also VI, 5.4). That is to say for the priority date to be allowed, the
subject-matter of the claim must be derivable directly and unambiguously
from the disclosure of the invention in the priority document, when
account is taken of any features implicit to a person skilled in the art
in what is expressly mentioned in the document.
As
an example of an implicit disclosure, a claim to apparatus including
"releasable fastening means" would be entitled to the priority
date of a disclosure of that apparatus in which the relevant fastening
element was, say, a nut and bolt, or a spring catch or a toggle-operated
latch, provided the general concept of "releasable" is implicit
in the disclosure of such element.
2.5
If the tests set out in V, 2.2 to 2.4 here above are not satisfied
in relation to a particular earlier application, then the effective date
of the claim (or one of the embodiments claimed) will either be the filing
date of the earliest application which does provide the required
disclosure and of which the priority is validly claimed or, in the absence
of such, will be the date of filing of the Philippine application itself
(or the new date of filing if the application has been re-dated under
Sec.41).
2.6
Some examples of determining priority dates
Note:
the dates used are merely illustrative; they do not take account of the
fact that filing may not be possible on weekends and public holidays.
2.6.1
Intermediate publication of the contents of the priority
application:
P
is the application from which priority is claimed by the PH application, D
is the disclosure of the subject-matter of P.
01.01.90
01.05.90
01.06.90
filing
publication filing
P
D PH
D
is state of the art under Sec.24.1 when the priority claim of P is not
valid.
2.6.2
Intermediate publication of another Philippine application:
P1
is the application from which priority is claimed by PH1, P2 the one from
which PH2 claims priority. PH1 and PH2 are filed by different applicants.
01.02.89
01.01.90
01.02.90 01.08.90
01.01.91
filing
filing filing
publication
filing
P1
P2 PH1 PH1
PH2
A
+ B
A + B A
+ B
A + B
A + B
PH1
is state of the art for PH2 under Sec.24.2 when the respective priority
claims of P1 and P2 are valid. This does not change if the publication of
PH1 takes place after the filing date of PH2.
The
publication of PH1 is state of the art under Sec.24.1 if the priority
claim of P2 is not valid.
2.6.3
Multiple priorities claimed for different inventions in the
application, with an intermediate publication of one of the inventions.
PH
claims priority of P1 and P2, D is the disclosure of A+B.
01.01.90
01.2.90
01.03.90
01.06.90
filing
publication filing
filing
P1
D
P2
PH
A
+ B
A + B
A + B + C
Claim 1: A + B
Claim 2: A + B + C
Claim
1 has a valid priority of P1 for its subject-matter, thus publication D is
not state of the art under Sec.24.1 against this claim. Claim 2 cannot
benefit from the priority of P1, as it does not concern the same subject-
matter.
Thus publication D is state of the art under Sec.24.1 for this claim. It
is immaterial whether claim 2 is in the form of a dependent or an
independent claim.
2.6.4
A situation in which it has to be checked whether the application
from which priority is actually claimed is the "first
application" in the sense of Art.4 C. (1) and (4) of the Paris
Convention:
P1
is the earliest application of the same applicant containing the
invention. PH claims the priority of the later US-application P2, which is
a “continuation-in-part" of P1. D is a public disclosure of A+B.
01.07.89 01.01.90
01.06.90 01.12.90
filing
filing
publication
filing
P1
P2 (cip)
D
PH
A
+ B A
+ B
A + B
claim 1: A + B
A + B + C claim
2: A + B + C
The
priority claim of P2 for claim 1 is not valid as P2 is not the "first
application" for this subject-matter in the sense of Art.4 C. (1) and
(4) of the Paris Convention, but P1, which has "left rights
outstanding" in that P2 is a "continuation-in-part"
thereof. Therefore Art.4 C. (4) of the Paris Convention does not apply and
this is not altered by an abandonment, withdrawal, refusal or
non-publication of P1.
D
is prior art pursuant to Sec.24.1 against claim 1, but not against claim
2, as the latter claim has the earlier priority of P2.
|
Sec.31 R.305
R.307 |
3. Claiming priority
3.1
An applicant who wishes to claim priority must file a declaration
of priority giving particulars of the previous filing, as specified in
Sec.31 and Rules 305 and 307, together with a certified copy of the
previous application, and if necessary a translation of it into English.
|
Sec.31 R.305 R.603(b)
|
3.2
At least the date and state of any filing from which priority is
claimed must be stated at the time of filing the local application and the
file number of the priority application must be indicated during formality
examination. The certified copy of the priority document, together with a
translation into English, if necessary, must be filed within 6 months of
the priority date, which period may be extended for a maximum of 6 months
under special circumstances.
Where
the earlier application is an international application, the name of the
state(s) for which it was filed must be stated.
3.3
If the required translation or declaration is not filed within the time
limit, the right of priority is lost for the Philippine patent
application. |
CHAPTER VI: SUBSTANTIVE EXAMINATION PROCEDURE
|
This Chapter sets out the general procedure for substantive
examination, together with guidance on particular matters where necessary.
It does not provide detailed instructions on matters of internal
administration.
|
|
1.
The start of the substantive examination
|
Sec.48.1
Sec.44
R.803 |
1.1 In order that
substantive examination of a patent application can begin, the applicant
is required to file a written request for examination according to
Sec.48.1 within six months from the publication of the application
(Sec.44) and to pay the required fees.
If
the request is not filed and/or the fees are not paid within the six
months following publication, the application is deemed withdrawn.
|
Sec.48.2,
R.803.1 |
1.2 A withdrawal of
the request for examination is irrevocable. Although the examination will
be not be carried out any further, the fees will not be refunded.
|
Sec.42Sec.43 |
1.3 Formality
examination (Sec.42), classification and search (Sec.43) and substantive
examination will not always be carried out by the same examiner. After the
request for substantive examination has been received, the file relating
to the application is passed to the examining division competent for the
substantive examination of the application.
|
R.906 |
1.4 The file will
normally be assigned to the examiner responsible for the examination of
applications in the technical field in which the particular application
has been classified (R.906). Irrespective of the classification, it may
sometimes be more efficient to assign applications having different
classifications to the same examiner. For instance, closely related
applications, or parent and divisional applications could be allocated to
the same examiner. The applications will be taken up for examination in
the order in which they have been filed, or in which the applicant’s
responses have been filed.
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1.5 The substantive
examiner is entrusted to carry out all the work up to the point of a
decision to grant a patent or refuse the application, under the
supervision of his superior. This means that this examiner is entrusted to
act on behalf of the Office in all communications with the applicant up to
that point, but he will in general confer informally with his supervisors
at any time if a special point of doubt or difficulty arises (See VI, 7.1
here below). Where reference is made in this part of the guidelines to the
"examiner", this normally means the examiner entrusted with the work in
this way, and it should be understood that this examiner is always acting
in the name of the Office.
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2.
Examination procedure in general
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2.1 The purpose of
the examination is to ensure that the application and the invention to
which it relates, meet the requirements set out in the relevant Sections
of the IP-Code and in the IRR so that a patent can be granted. The prime
task of the examiner is to deal with the substantive requirements; the
criteria by which an examiner shall judge whether they have been met, are
dealt with in detail, in so far as appears necessary, in the other
chapters of this part of the guidelines. Some of the formal requirements
may be dealt with by administrative staff, such as recording, monitoring
time limits and payment of fees etc.
|
R.907(a) |
2.2 The examiner's
first step is to study the description, drawings (if any) and the claims
of the application. In carrying out his task, the examiner will have in
the file the documents making up the application and a history of the
proceedings up to the start of the substantive examination. In particular, this examination
file will include the request for examination, description, drawings (if
any) and the claims as originally filed; any amendments proposed to date;
the search report with the applicant's comments (if any), and references
to or copies of any cited documents; formality examination reports,
priority documents together with any translations etc.
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It
is usually a good practice to read the claims first, since unclear
passages stand out more clearly if the claims are read without first
reading the description. The next step is to understand the invention by
studying the description, the drawings (if any) and the claims (at least
once again) of the application. While reading the application, the
examiner should identify unclear, inconsistent, and wrong statements. Then
the claims should be read again to check that they are consistent with the
description and not too broad in scope (i.e. properly supported by the
description). After that the
prior art should be read and the claims examined for patent ability.
|
Sec.24.2 |
2.3 When the
examiner has studied and understood the claims (including any amended
claims), he should also make a search for any additional conflicting
Philippine applications falling within the area defined by Sec.24.2 (See
VI, 8.4 here below).
|
R.910 |
Applications
cited as prior art under Sec.24.1 must have been published. Unpublished,
withdrawn or forfeited applications may not be cited.
|
Sec.39R.612 |
2.3a In the
case of foreign applications, the applicant will be requested, as often as
appropriate, to provide information on the status of any foreign
application relating to the same invention within a specified period.
Copies of the documents cited in foreign search reports may be requested.
In the case of relevant citations in other languages than English, the
examiner may request the submission of a corresponding patent (family
member) in English.
|
R.612.2 |
Non-compliance
with such requests has the effect that the application will be considered
withdrawn.
|
R.907(b)
R.908 R.909 R.912 |
2.4 Taking into
account the documents (if any) cited in the search report and any further
documents found as the result of the search referred to in VI, 2.3 here
above, and taking account also of any amendments that may have been
proposed, or comments made, by the applicant, the examiner should identify
any requirements of the IP code and IRR which, in his opinion, the
application does not satisfy. He will then write to the applicant giving
reasons for any objections he raises and inviting the applicant within a
specified period to file his observations or submit amendments. When the
applicant has replied with or without amendment, the examiner will
re-examine the application.
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2.4a The examiner may base
his objections on documents cited in the foreign search reports and on the
contents in foreign examination reports or decisions. If such foreign
examination reports or decisions are negative and also apply to the claims
as filed in the Philippines, the examiner may raise prima facie objection
referring to these reports/decisions. Provided certain claims (in English)
have been granted after substantive examination in a foreign country, the
examiner can save time by checking these for their compliance with the
IP-code and the IRR, and – if positive – suggest to the applicant to amend
his Philippine patent application accordingly.
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Sec.51
R.912 R.913(a)R.913(b) |
2.5 At the
re-examination stage, the examiner should be guided by the over-riding
principle that a final position (grant or refusal) should be reached in as
few actions as possible, and he should control the procedure with this
always in mind. The process of communicating with the applicant described
in VI, 2.4 here above shall be repeated as often as necessary.
Nevertheless, if it is clear that the applicant is not making any real
effort to deal with the examiner's objections, either by amendments or by
counter-arguments, then even at the re-examination stage the examiner
should bring the application before his supervisor, who may approve the
refusal of the application. In any event, at some stage, the examiner will
make a short written recommendation to his supervisor either that the
application should be refused or that a patent should be granted thereon.
If the application is to be refused (final rejection, Sec.51), a written
reasoned decision will be prepared by the examiner entrusted with the
examination of the application. In preparing the decision, the examiner
must take care to abide by the general principle that the decision must be
based on grounds or evidence on which the applicant has had the
opportunity to comment (R.913(b)).
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R.909
R.913 R.1302 R.917R.1305 |
However,
according to R.909, R.913, R.1302, a second adverse action by the examiner
on the same grounds may already be considered as final by the applicant
for the purpose of appeal.
The
applicant may appeal against a final rejection or decision of refusal.If the
examiner considers in the light of the applicant's statement, that the
appeal is admissible and well-founded, or if the rejected claims have been
cancelled (R.913), or if any
other objected deficiencies have been removed (R.917), he should rectify
its decision accordingly after receipt of the restricted claims or the
appellant’s brief according to R.1305.
|
R.1307
-R.1311 |
Otherwise,
the appeal will be considered by the Director of patents and possibly
higher instances as foreSeen in R.1307 to 1311. If a decision to refuse a
patent is reversed on appeal, the application may be referred back to the
examiner for further examination. In such a case, the further examination
will normally be entrusted to the examiner who performed the original
examination. The examiner is bound by the decision of the Director or any
higher instance.
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2.6 If the examiner
considers that a patent should be granted, he will first inform the
applicant, by the means of a Notice of Allowability, of the claims which
are allowed. Prosecution on the merits is closed with the issuance of this
Notice. Further fees (inter alia the publication fee) will have to be paid
by the applicant within a specified time period. Once the requirements
referred to in this Notice are fulfilled, a Philippine patent is granted.
For further details of the granting procedure, See VI, 15 here
below.
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2.7 Reference is
made to the Part 9 of the IRR, where the rules relating to substantive
examination are set out. The stages of this procedure are considered in
more detail in the following sections.
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3. The first stage of examination
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3.1 Following the
publication of the application and prior to the substantive examiner's
first communication with the applicant, the latter may file comments on
the search report and amendments to the description, claims or drawings.
These amendments may be submitted to avoid possible objections of lack of
novelty or lack of inventive step in view of the citations listed in the
search report; or to meet any objections that might have lead to a partial
or incomplete search report
(i.e. at least some claims did not permit of a meaningful search),
or they may be suggested for some other reason, e.g. to remedy some
obscurity which the applicant himself has noted in the original
documents.
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These
amendments will of course only be considered provided a request for
substantive examination has been filed according to Sec.48.1.
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3.2 Such amendments
being voluntarily made by the applicant, the applicant is not restricted
to amendment necessary to remedy a defect in his application. It does not,
however, mean that the applicant is free to amend in any way he chooses.
Any amendment must satisfy the following conditions:
(i) It
must not add subject-matter to the content of the application as filed
(See VI, 5.3 to 5.8b here below); and
(ii)
It must not itself cause the application as amended to be objectionable
under the IP-code, e.g. the amendment must not introduce obscurity
(Sec.36.1).
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If
the amendments do not meet these conditions, the applicant should be told
that the amended application cannot be allowed. Apart from the amendments
referred to above, which are allowed under Sec.49, the applicant may
correct obvious errors (See VI, 5.9 here below).
|
R.907
R.908 |
3.3 The examiner's
first substantive examination action should, as a general rule, cover all
objections to the application (but See VI, 3.6 here below). These
objections may relate to formal matters (e.g. failure to comply with one
or more of the requirements specified in R.407, 415 or 416), to
substantive matters (e.g. the subject-matter of the application is not
patentable), or to both.
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Substantive
matters should normally be set out first. The letter should be drafted in
such a manner as to facilitate re-examination of the amended application
and, in particular, to avoid the need for extensive re-reading (See VI,
4.2 here below).
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The
question of unity of invention (Sec.38) should be addressed as early as
possible. Concerning the assessment of unity and the procedure to follow
in case of lacking unity, reference is made to Sec.38.2, to R.604 to R.611
and to III, 7.
|
R.909(b) |
3.4
For each objection the letter should indicate the part of the application
which is deficient and the requirement of the IP code or the IRR which is
not met, either by referring to specific Sections or Rules, or by other
clear indication; it should also give the reason for any objection where
this is not immediately apparent. For example, where prior art is cited
and only part of a cited document is relevant, the particular passage
relied upon should be identified. If the cited prior art is such as to
demonstrate lack of novelty or inventive step in the independent claim or
claims, and if consequently there is lack of unity between dependent
claims, the applicant should be warned of this situation (See VI, 5.2(i)
here below).
|
R.907(b)
R911 R.929 |
3.5 The letter
should include an invitation to the applicant to file his observations, to
correct any deficiencies and, if necessary, to submit amendments to the
description, claims and drawings. It must also state the period within
which the applicant must reply. Failure to replyin due time will cause the application
to be deemed withdrawn.
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3.6 It is emphasised
that the first sentence of VI, 3.3 here above only sets out the general
rule. There may be cases in which the application is generally deficient.
In these cases the examiner should not carry out adetailed
examination (R.908), but should send a letter to the applicant informing
him of this fact, mentioning the major deficiencies and saying that
further examination is deferred until these have been removed by
amendment; the letter should specify a period within which the
deficiencies must be removed. There may be other cases in which, although
a meaningful examination is possible, a fundamental objection arises, e.g.
it is clear that certain claims lack novelty and that the statement of
claim will have to be drastically recast, or there are substantial
amendments which are not allowable for one of the reasons stated in VI,
3.2 here above. In such cases it may be more appropriate to deal with this
objection before making a detailed examination; if, e.g. the claims need
re-casting, it may be pointless to raise objections to the clarity of some
dependent claims as a consequence. However, if there are other major
objections these should be dealt with. Generally the examiner should at
the first examination stage Seek to make the maximum impact with the broad
aim of bringing matters to a conclusion (grant or refusal, as the case may
be), without any undue delay (R.908).
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3.7 When making the
full examination, the examiner should concentrate on trying to understand
what contribution the invention as defined in the claims adds to the known
art. This should normally be sufficiently clear from the application as
filed (R.407(1)c)). If it is not, the applicant should be required to
elucidate the matter (See II, 4.5); but the examiner should not raise an
objection of this kind unless he is convinced it is necessary, since to do
so might result in the applicant introducing additional subject-matter and
thus offending against the proviso of Sec.49 (See VI, 5.3 to 5.8b here
below).
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3.8 Although the
examiner must bear in mind all the requirements of the IP-code and the
IRR, the requirements which are most likely to require attention in the
majority of cases are sufficiency of disclosure (See II, 4); clarity,
especially of the independent claims (See III, 4); novelty (See IV, 5);
and inventive step (See IV, 9).
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3.9 The examiner
should not require or suggest amendments merely because he thinks they
will improve the wording of the claims. A pedantic approach is
undesirable; what is important is that the meaning of the claims should be
clear.
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3.10 It must be emphasised
that it is not part of the duty of an examiner to require the applicant to
amend the application in a particular way to meet an objection, since the
drafting of the application is the applicant's responsibility and he
should be free to amend in any way he chooses provided that the amendment
removes the deficiency and otherwise satisfies the requirements of the
IP-code and the IRR. However, it may sometimes be useful if the examiner
suggests at least in general terms an acceptable form of amendment, but if
he does so he should make it clear that the suggestion is merely for the
assistance of the applicant and that other forms of amendment will be
considered.
|
R.911 |
3.11 After the action
of the examiner, if the same be adverse in any respect, the applicant, if
he persists in his application for a patent, must reply thereto and may
request re-examination or reconsideration, with or without
amendment.
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In
order to be entitled to re-examination or reconsideration, the applicant
must make a request therefore in writing, and he must distinctly and
specifically point out the supposed errors in the examiner’s action. The
applicant must respond to every ground of objection and rejection in the
prior examiner’s action (except that request may be made that objections
or requirements as to form, not necessary to further consideration of the
claims, be held in abeyance until a claim is allowed), and the applicant’s
action must appear throughout to be a bona fide attempt to advance the
case to grant. The mere allegation that the examiner has erred will not be
received as a proper reason for such re-examination or
reconsideration.In
amending an application in response to a rejection, the applicant must
clearly point out the patentable inventiveness and novelty which he thinks
the claims present, in view of the state of the art disclosed by the
references cited or the objections made. He must also show how the
amendments avoid such references or objections. To avoid objections under
the proviso of Sec.49, he
should indicate and upon which passages of the application as filed the
amendments are based.
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4.
Further stages of examination
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General
procedure
|
R.912 |
4.1 Following the
examiner's first letter and the applicant's reply, the examiner
re-examines the application taking into account observations or amendments
made by the applicant.
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4.2 The examiner
should apply the same standard of examination in relation to matters of
substance at all stages in the processing of an application. However,
after the first examination stage, he will not normally need to completely
re-read the amended application if he has drafted his first letter in a
comprehensive way (See VI, 3.4 here above), but should concentrate on the
amendments themselves and any related passages, and on the deficiencies
noted in the letter.
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4.3 In most cases,
the applicant will have made a bona fide attempt (SeeR.911(b)) to deal with the
examiner's objections. There are then two possibilities to consider. The
first is that the examiner, having taken account of the observations of
the applicant, considers that there is little prospect of progress towards
grant and that the application should be refused (Sec.51). In such a case,
the examiner should not as a rule refuse immediately but should warn the
applicant, e.g. by a short further written action, that the application
will be refused unless he can produce further more convincing arguments or
makes appropriate amendments within aspecified
time limit. The second and more usual possibility, however, is that the
re-examination shows that there is good prospect of bringing the procedure
to a positive conclusion in the form of a grant. In these latter cases, if
there are still objections that require to be met, the examiner will issue
a further written action pointing out the remaining deficiencies of the
application.
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If
this re-examination, however, shows that the applicant has not made any
real effort to deal with these objections, the examiner should consider
recommending the application be refused immediately. However, this would
be an exceptional case.
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4.4 If the matters
are such that the applicant is likely to require time to consider them, it
will probably be preferable to deal with them by means of a written
action. If, however, there Seems to be confusion about points in dispute,
e.g. if the applicant Seems to have misunderstood the examiner's argument,
or if the applicant's own argument is not clear, then it may expedite
matters if the examiner proposes an interview (to be requested by the
applicant, See VI, 6 here below). On the other hand, if the matters to be
resolved are minor, or can quickly and easily be explained and dealt with,
then they might be settled more expeditiously by a short written
action.
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Discussion
with the applicant or his representative at an interview is more fully
considered in VI, 6.
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4.5 Similar
considerations apply to later stages of re-examination except that, having
regard to the principle stated in VI, 2.5 here above, the greater the
number of actions which have already taken place, the greater is the
likelihood that the most appropriate action is a final rejection or
refusal under Sec.51.
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4.5a Where the final
decision is to refuse the application, care should be taken that the
decision does not offend against R.913(b), 2nd
sentence.
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Examination
of amendments
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4.6 Any amendment
must satisfy the conditions listed in VI, 3.2 here above. When it was
effected must also be established. After publication of the search report
and before receipt of the first communication from the substantive
examiner, the applicant may, of his own volition, amend the description,
claims and drawings, provided a valid request for substantive examination
has already been made.
|
R.911(c) |
4.7 After receipt of
the first communication from the examiner, the applicant may amend the
description, claims and drawings provided that the amendment is filed at
the same time as his reply.
|
R.912(b) |
With
his reply to the second communication from the substantive
examinerthe
applicant may amend again, but any amendment will ordinarily need to be
restricted to overcoming the objections raised by the examiner. Other
types of amendments will require the consent of the examiner. Giving the
examiner this discretion is intended to ensure that the examination
procedure is brought to a conclusion in as few actions as possible (See
VI, 2.5 here above).
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If
an amendment is allowed, subsequent proceedings are based on
theDescription,
claims and drawings as amended. Consent to an amendment does not
necessarily imply that the application as amended is free from any
objection under the IP-code and/or IRR. Distinctions should be drawn
between different types of amendments:cralaw:red
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Amendments
remedying a deficiency in response to the preceding communication must
always be allowed, provided they do not give rise to some new deficiency.
Amendments limiting a claim already considered allowable should normally
be allowed, as too should those improving the clarity of the description
or claims in a manner clearly desirable.
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A
further factor is the amount of alteration to the application documents
involved. Extensive reworking of the description or claims may be a proper
response to highly relevant further prior art of which the applicant has
only just become aware (e.g. either through further citation by the
examiner or through knowledge obtained from another source). Regarding
less extensive amendments, the examiner should adopt a reasonable
approach, trying to balance fairness to the applicant against the need to
avoid unnecessary delay and excessive and unjustified additional work for
the Office.
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Any
subsequent request to withdraw an amendment is itself a request for
further amendment; thus, if this subsequent request occurs after the
second communication from the examiner, it will be allowed only if the
examiner consents. In exercising his discretion, the examiner should bear
in mind the length of the proceedings to date and whether the applicant
has already had sufficient opportunity for amendments. He should refuse in
particular amendments reintroducing deficiencies previously pointed out to
and removed by the applicant.
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In
deleting subject-matter from an application the applicant should avoid any
statement which could be interpreted as abandonment of that
subject-matter. Otherwise this subject-matter cannot be
reinstated.
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4.8 Any request by
an applicant to replace the text of the application on whose basis a
patent could be granted, with one that has been extensively revised should
be refused, unless the applicant gives good reasons for proposing the
changes only at this stage in the proceedings. This applies particularly
in cases where the examiner has indicated that a version of the claims
proposed by the applicant is grantable and that the applicant has only to
bring the description into line with that version.
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4.9 The Notice of
Allowability closes the prosecution on the merits and does not constitute
an opportunity for the applicant to call into question the outcome of the
earlier procedure (See VI, 15 here below for procedure upon grant). At
this stage of the proceedings the substantive examination has already been
completed and the applicant has had the opportunity to amend the
application and therefore normally only minor amendments which do not
appreciably delay the preparations for grant of the patent will be
allowed.
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4.10 Once the
decision to grant has been taken, further amendments or corrections to the
granted patent, can only be requested on the basis of Sec.57, 58 or
59.
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4.11 Paragraph 4.9
above do not prevent the examiner from resuming the proceedings of his own
motion where he becomes aware of circumstances which are such as to render
non-patentable the subject-matter claimed. Such circumstances may be
brought to the examiner’s attention by the applicant or following
observations by third parties under Sec.47 and can be considered up to the
moment the final decision to grant is taken. In the resumed proceedings,
substantive amendments to resolve this problem are possible.
|
R.912(b)R.927 |
4.12 If a request for
amendment is to be refused under R.912(b), the applicant must first be
sent a communication giving the reasons for refusing the amendment. The
applicant may then make a petition according to R.927. In the case of a
situation as described in e.g. VI, 4.9,the applicant should be invited
at the same time to request grant of the patent on the basis of the
preceding acceptable version of the documents. If the applicant maintains
his request for the amendment, the application must be refused under
Sec.51 since, in these circumstances, there is no text of the application
which has been agreed by the applicant and allowed by the
examiner.
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4.13 Reference is
made to the IRR, R.911,912,916-927 concerning the provisions relating to
amendments of the application documents.
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5.chanrobles virtual law libraryAmendments
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Making
the amendments
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Sec.49,
ProvisoR.916,
R.919 |
5.1
An applicant may amend the patent application during examination, provided
that such an amendment does not include new matter outside of the scope of
the disclosure contained in the application as filed. |
R.918 |
The
description, claims and drawings must be amended and revised when
required, to correct inaccuracies of description and definition or
unnecessary prolixity, and to secure correspondence between the claims,
the description and the drawings.
|
R.920
to R.926 |
The
formal considerations relating to the technique of making amendments are
set out in R.920 to 926.
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Allowability
of amendments
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5.2 Amendments can
consist of addition,
replacement or deletion of features originally present in the claims, the
drawings or the description. Legally,
the question of allowability of amendments is a question of whether the
application as so amended is allowable. An amended application must of
course satisfy all the requirements of the IP Code and the IRR including,
in particular, inventive step and the other matters listed in VI, 3.8 here
above (See also VI, 3.2 here above). Also, however, especially when the
claims have been substantially limited, the examiner should bear in mind
that the following questions may require special consideration at the
amendment stage:cralaw:red
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(i) Unity
of invention:
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Do
the amended claims still satisfy the requirements of Sec.38.1? If the
documents cited in the search report Seem to reveal lack of novelty or
inventive step in the concept common to all the claims as filed, but the
amended claims do not necessitate further search, the examiner should
consider carefully whether objection to lack of unity is justified at this
stage of the proceedings (See III, 7). If, however, the amended claims
lack a common inventive concept and a further search is necessary,
objection should be raised.
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(ii)
Changing
to unsearched subject-matter:cralaw:red
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If
amended claims are directed to subject-matter which has not been searched
(e.g. because it only appeared in the description and the examiner did not
find it appropriate to extend the main search to this subject-matter), and
which does not combine with the originally claimed and searched invention
or group of inventions to form a single general inventive concept, such
amendments are not admissible. This applies particularly when this
unsearched subject-matter alone is now claimed.
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Applicants
should bear in mind that the examining procedure should be brought to a
conclusion in as few actions as possible, thus the examiner may not allow
further amendments (R.912, 2nd sentence, R.927). See also VI, 4.7 here
above).
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It
is important also to ensure that no amendment adds to the content of the
application as filed and thus offends against the proviso in Sec.49 as
explained in the following paragraphs.
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Additional
subject-matter
|
Sec.49,
proviso R.916
R.919 |
5.3 There is
normally no objection to an applicant introducing, by amendment, further
information regarding prior art which is relevant; indeed this may be
required by the examiner (See II, 4.4 and 4.18). Nor will the
straight-forward clarification of an obscurity, or the resolution of an
inconsistency, be objected to (e.g. under Sec.36.1, clarity or under
R.918). When, however, the applicant Seeks to amend the description (other
than references to the prior art), the drawings, or the claims in such a
way that subject-matter which extends beyond the content of the
application as filed is thereby introduced, the application as so amended
cannot be allowed.
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5.4 An amendment
should be regarded as introducing subject-matter which extends beyond the
content of the application as filed, and therefore unallowable, if the
overall change in the content of the application (whether by way of
addition, alteration or excision) results in the skilled person being
presented with information which is not directly and unambiguously
derivable from that previously presented by the application, even when
account is taken of matter which is implicit to a person skilled in the
art. At least where the amendment is by way of addition, the test
corresponds to the test for novelty given in IV, 7.2.
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Under
Sec.49 and R.919 it does not appear to be permissible to add to an
application matter present only in the priority document for that
application. For correction of errors See VI, 5.9 here below.
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5.5 For example, if
an application related to a rubber composition comprising several
ingredients and the applicant Seeks to introduce the information that a
further ingredient might be added, then this amendment should normally be
objected to as offending against
the proviso in Sec.49. Likewise, in an application which described
and claimed apparatus "mounted on resilient supports", without disclosing
any particular kind of resilient support, objection should be raised if
the applicant Seeks to add the specific information that the supports are,
or could be, e.g. helical springs (See, however, VI, 5.6 here
below).
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5.6 If, however, the
applicant can show convincingly that the subject-matter in question would,
in the context of the invention, be so well-known to the person skilled in
the art that its introduction could be regarded as an obvious
clarification, the amendment may be permitted. For example, in the matter
of the rubber composition referred to in VI, 5.5 here above, if the
applicant were able to show that the further ingredient which he sought to
introduce was, say, a well-known additive normally used in rubber
compositions of that kind as an aid to mixing and that its omission would
generally be questioned, then its mention would be allowable on the
grounds that it merely clarified the description and introduced nothing
not already known to the skilled person; however, if the introduction of
this additive brought about some special effects not originally disclosed,
an amendment mentioning this should not be allowed. Similarly in the
above-mentioned
case of the resilient supports, if the applicant were able to demonstrate
that the drawings, as interpreted by the skilled person, showed helical
springs, or that the skilled person would only consider helical springs
for the mounting in question, the specific mention of helical springs
would be allowable.
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5.6a Where a
technical feature was clearly disclosed in the original application but
its effect was not mentioned or not mentioned fully, yet it can be deduced
without difficulty by a person skilled in the art from the application as
filed, subsequent clarification of that effect in the description does not
contravene the proviso of Sec.49.
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5.7 Amendment by the
introduction of further examples should always be looked at very carefully
in the light of the general considerations outlined in paragraphs VI, 5.3
to 5.6a here above, and will not, in general, be admissible. The same
applies to the introduction of statements of new (i.e. previously not
mentioned) effects of the invention such as new technical advantages: for
example, if the invention as originally presented related to a process for
cleaning woollen clothing consisting of treating the clothing with a
particular fluid, the applicant should not be allowed to introduce later
into the description a statement that the process also has the advantage
of protecting the clothing against moth damage.
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5.7a Under certain
circumstances, however, later filed examples or new effects, even if not
allowed into the application, may nevertheless be taken into account by
the examiner as evidence in support of the patentability of the claimed
invention. For instance, an additional example may be accepted as evidence
that the invention can be readily applied, on the basis of the information
given in the originally filed application, over the whole field claimed
(See III, 6.4). Similarly a new effect (e.g. the one mentioned in VI, 5.7
here above) may be considered as evidence in support of inventive step,
provided that this new effect is implied by or at least related to an
effect disclosed in the originally filed application (See IV,
9.10).
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5.7b Any supplementary
technical information submitted after the filing date of the application
which cannot be incorporated in the application documents as such will be
added to the part of the file which is open to public inspection under
Sec.44.2. From the date at which the information is added to the open part
of the file, it forms part of the state of the art within the meaning of
Sec.24.1.
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5.7c Care must also be
taken to ensure that any amendment to, or subsequent insertion of, a
statement of the technical problem solved by the invention meets the
proviso of Sec.49. For example it may happen that following restriction of
the claims to meet an objection of lack of inventive step, it is desired
to revise the stated problem (R.407(c)) mentioned in the description to
emphasise an effect attainable by the thus restricted invention but not by
the prior art. It must be remembered that such revisionis
only permissible if the effect emphasised is one deducible by a person
skilled in the art without difficulty from the application as filed (See
VI, 5.6a and 5.7 here above).
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5.7d Features which are not
disclosed in the description of the invention as originally filed but
which are only described in a cross-referenced document which is
identified in such description are prima facie not within the content of
the application as filed for the purpose of the proviso of Sec.49. It is
only under particular conditions that such features can be introduced by
way of amendment into the claims of an application.For,
example such an amendment would not contravene Sec.49 if the description
of the invention as filed leaves no doubt to a skilled reader that
protection is or may be sought for such features, that such features
contribute to solving the technical problem underlying the invention, that
such features at least implicitly clearly belong to the description of the
invention contained in the application as filed and thus to the content of
the application as filed, and that such features are precisely defined and
identifiable within the disclosure of the reference
document.
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5.8 Alteration or excision
of the text, as well as the addition of further text, may introduce fresh
subject-matter. For instance, suppose an invention related to a
multi-layer laminated panel, and the description included several examples
of different layered arrangements, one of these having an outer layer of
polyethylene; amendment of this example either to alter the outer layer to
polypropylene, or to omit this layer altogether would not normally be
allowable. In each case the specific panel disclosed by the amendment
example would be quite different from that originally disclosed and hence
the amendment would introduce fresh subject-matter and therefore be
unallowable.
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5.8a The replacement or
removal of a feature from a claim may, for example, not contravene the
proviso of Sec.49 provided the skilled person would directly and
unambiguously recognize that the feature was not explained as essential in
the disclosure, it is not, as such, indispensable for the function of the
invention in the light of the technical problem it serves to solve, and
the replacement or removal requires no real modification of other features
to compensate for the change. In case of replacement by another feature:
the replacing feature must of course find support in the original
application documents, so as not to contravene the proviso of
Sec.49.
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5.8b However, when the
extent of a claim is to be limited because of a coincidental overlap
between the prior art and the claimed subject-matter, and the claim's
remaining subject-matter cannot be defined more clearly and concisely by
positive features, this specific prior art may be excluded by means of a
disclaimer.
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Correction
of errors
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5.9 Correction of errors
in the application documents is a special case involving an amendment,
therefore the requirements of the proviso of Sec.49 apply
likewise.
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Where
the mistake is in the description, claims or drawings, the correction must
be obvious in the sense that it is immediately evident (at least once
attention is directed to the matter):cralaw:red
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(i)
that
an error has occurred; and
(ii)
what
the correction should be.
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Regarding
(i), the incorrect information must be objectively recognisable for a
skilled person using common general knowledge from the originally filed
application documents (description, claims and drawings) taken by
themselves.
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Regarding
(ii), the correction should be within the limits of what a skilled person
would derive directly and unambiguously, using common general knowledge,
and Seen objectively and relative to the date of filing, from the
originally filed application documents. Evidence of what was common
general knowledge on the date of filing may be furnished in any suitable
form.
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Such
a correction is of a strictly declaratory nature and establishes what a
skilled person, using common general knowledge, would already derive on
the date of filing from the parts of a patent application, Seen as a
whole, relating to the disclosure.
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Requests
for correction can only be considered until the decision to grant a patent
or to refuse the application has been taken. Concerning correction of
errors in a granted patent, reference is made to Sec.57 and
Sec.58.
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6. Discussion with the
applicant
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6.1
In this section the term "applicant" is intended to mean
"representative" where he has appointed one. Where the applicant
has appointed a representative, the communication should be with that
representative.
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6.2
According to the IRR, Final Provisions, Sections 1(a)(b), all
business with the Office shall be transacted in writing. Actions will be
based exclusively on the written record, and no attention will be paid to
any alleged oral promise, stipulation or understanding.Unless
otherwise provided, the personal attendance of applicants and other
persons at the Office is unnecessary. Their business can be transacted by
correspondence.
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R.905
R.928 |
6.3
As regards information on any specific technical or scientific
matter pending final action by the Bureau, the applicant may, upon request
and upon the payment of a fee, request in writing a conference with the
examiner, specifying the query he would want to propound to the examiner.
The examiner has the discretion to grant the request or to choose to reply
to the query in writing. Interviews for the discussion of pending
applications shall not be held prior to the first written official action
thereon.
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6.4
The circumstances in which it may be appropriate for the examiner
accept the request for an interview rather than send a further written
action are considered in VI, 4.4 here above. If the applicant requests an
interview the request should be granted unless the examiner believes that
no useful purpose would be served by such a discussion.
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R.928 |
6.5
When an interview is requested, the matters for discussion should
be clearly stated. When granting the request and making the necessary
arrangements, the examiner should record the particulars and briefly
indicate the matters to be discussed. The interview shall take place within the premises of the
Bureau during regular working hours as specified by the examiner.
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6.6
Solely the examiner dealing with the application will normally
conduct the interview. It should always be made clear to the applicant
that any agreement reached must ultimately be subject to the approval of
the examiner’s superior.
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R.928 |
6.7
The interview is not a procedure as formal as a hearing before the
legal division; it shall nevertheless always be reduced to writing and
signed by both the examiner and the applicant immediately after the
interview. Such writing shall form part of the records of the Bureau.
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6.8
The recording of the interview depends upon the nature of the
matters under discussion. Where the interview is concerned with the
clarification of obscurities, the resolution of uncertainties, or putting
the application in order by clearing up a number of minor points it will
usually be sufficient if the examiner makes a note on the file of the
matters discussed and the conclusions reached, or amendments agreed. If,
however, the interview is concerned with resolving weightier matters, such
as questions of novelty, inventive step, or whether the amendment
introduces fresh subject-matter, then a fuller note of the matters
discussed should be made in the file.
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6.9
The records of interviews should always indicate whether the next
action is due to come from the applicant or the examiner. Pending time
limits may be extended.
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6.10
If a fresh objection of substance is raised at an interview and no
amendment to meet it is agreed at the time, the objection must be
confirmed by a letter giving the applicant a fresh period within which he
may reply if he so wishes. Otherwise time limits may not be altered as a
result of an interview.
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7. Work within the
examining divisions
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7.1
As stated in VI, 1.4 here above, the examiner may Seek the advice
of other members of the examining division, such as his assistant division
chief or division chief, if necessary, at any stage in the examination.
Any action processed by the examiner will be checked by his superior(s). With ongoing examination, a point will be reached when it
becomes appropriate for the examiner to refer the case formally to his
superior. This will arise if he considers that a final action is
appropriate, i.e. if it the application is in order to proceed to grant;
or, at the other extreme, if there Seems no possibility of amendment which
would overcome his objections, or if the applicant has made no serious
attempt to meet these objections and it therefore appears that the
application must be refused. Between these extremes there are other
circumstances in which reference to the superiors is appropriate, e.g. an
interview may be requested by the applicant because an impasse has been
reached.
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7.2
If the examiner considers that the application satisfies the
requirements of the IP code and the IRR, and is thus in order to proceed
to grant he should usually make a brief written report. As a general rule,
it will be appropriate in this report for the examiner to give the reasons
why, in his opinion, the subject-matter as claimed in the application is
not obvious having regard to the state of the art. He should normally
comment on the document reflecting the nearest prior art and the features
of the claimed invention which make it patentable, although there may be
exceptional circumstances where this is not necessary, e.g. where
patentability is based on a surprising effect. He should also indicate how
any apparently obscure but important points have ultimately been
clarified, and if there are any borderline questions which the examiner
has resolved in favor of the applicant, he should draw attention
specifically to these.
The report may be made very brief by including references pointing to the
relevant file contents, e.g. applicant’s reply etc.
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7.3
When referring to his superioran application which is not in order for grant of a patent, the
examiner should make a written report which sets out the points at issue,
summarises the case history to the extent necessary to enable his superior
to obtain a quick grasp of the essential facts, and recommends the action
to be taken, e.g. refusal, or grant conditional upon certain further
amendments. As the superiors will require to study such cases themselves,
there is no need for a detailed exposition. It will be useful however to
draw attention to any unusual features or to points not readily apparent
from the documents themselves. If the reportrecommends refusal and the issue Seems clear cut, the
examiner may include with his report a draft reasoned decision for issue
by the Office (See VI, 2.5 here above); if the issue is not clear cut, the
drafting of the reasoned decision should be deferred until the superiorhas studied the case.
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7.4
When an application is referred to the superior, he will first
consider the case and will indicate his opinion on the course of action to
be taken. When further action is needed, the substantive examiner will be
entrusted with the work.
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7.5
The superior should bear in mind that his function generally is not
to make a complete re-examination of the application. If, following
a discussion, the conclusions
of the examiner entrusted with the examination are generally considered to
be reasonable, they should be accepted.
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7.6
If, in the opinion of the superior, the possibility exists of
amending the application to bring it into a form which meets the
requirements of the IP code and the IRR, then the examiner should be
entrusted with the task of communicating to the applicant that the
application should be refused on certain grounds unless satisfactory
amendments are submitted within a stated period. If, within the time
limit, satisfactory amendments are made, the examiner will then report
back to his superiorrecommending
that the application should proceed to grant. If not, he should report
back recommending refusal.
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Sec.51.2
R.913
IRR
Part 13 |
7.7 If,
on the other hand, the examiner and his division chief are satisfied that
the applicant has had sufficient opportunity to amend and that all the
requirements are still not met, the examiner should issue a final
rejection or a decision to refuse the application under Sec.51.1; this
decision will normally be drafted by the examiner. The grounds of refusal
must be stated and full reasons must be given; refusal may be based only
on grounds on which the applicant has had an opportunity to put forward
comments. In addition, the applicant's attention must be directed to the
provisions for appeal laid down in Sec.51.2, R.913(a)(b), and in Part 13
of the IRR.
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7.8
Any decision is issued by the examining division is signed by the
examiner and his superior(s).
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8. Searching and the
search report
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The search report
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Sec.44.1 R.800, R.701.1 |
8.1
The search report is prepared before the publication of the
application and published together with the application. The
search report normally is in the form prescribed by R.701.1.
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In cases where the application lacks unity, the search
report may relate to more than one invention. In some exceptional cases
provided only a incomplete search report will be available. Due to
obscurities in the application as filed.
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8.2
Assuming that a search has been made and documents cited, there are
two special problems that may arise occasionally in respect of such
documents. The first is the date of publication of the material in the
document; this is dealt with in IV, 5.2 the other problem concerns
documents in a foreign language (e.g. Japanese, German or French).
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8.3
The search examiner will cite a document in a foreign language only
if he knows or has strong evidence leading him to suspect (e.g. from
drawings, from an abstract, or a corresponding patent in English or
Filipino), or from a translation produced by himself or some other person
familiar with the language of the document) that the document is relevant.
The substantive examiner, in his first action, may cite the document on
the basis of similar evidence; an abstract or corresponding document in
English, if supplied by the search examiner, will also be cited. If,
however, the applicant disputes the relevance of the document and gives
specific reasons, the examiner should consider whether, in the light of
these reasons and of the other prior art available to him, he is justified
in pursuing the matter. If so, he may try to obtain from the applicant a
translation of the document (or merely the relevant part of it, if that
can be easily identified), or at least statements concerning specific
questions relating to the disclosure comprised in the document.
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Search for conflicting
Philippine applications
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Sec.24.2 |
8.4
As stated in VI, 2.3 here above,
the examiner will need to make a so-called "topping-up" search
for conflicting Philippine applications falling within the area defined by
Sec.24.2. This is because the searchable collection of the Philippine
applications may not be complete in respect of such material at the time
the main search is made. Since priority dates claimed (if any) may not be
accorded to all or part of the application but may be accorded to the
appropriate part of a conflicting application (See V, 2.1), this search
should be extended so as to cover all published Philippine applications
filed up to one year or more after the filing of the application under
consideration. If the examiner is unable to complete this
"topping-up" search at the first examination stage he should
ensure that such search is completed before the application is reported to
be in order for the grant of a patent.
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In the cases in which an application is found to be in
order before this search can be completed (because of publication delays
concerning older, potentially conflicting Philippine applications), the
grant of a patent should not be substantially delayed for this reason
unless the examiner has knowledge of such a conflicting application which
would have to be citedagainst novelty. In this case, publication of the
relevant application, should, if possible, be accelerated and the granting
of the application in question should be delayed.
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Other additional
searches during examination
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8.5
An additional search will sometimes be required either at the first
stage of amendment or subsequently. This may arise for a number of
reasons. First, an additional search may be necessary where only an
incomplete search report (e.g. because of obscure claims) has been issued
after the main search, and subsequently the deficiencies which rendered a
meaningful or complete search impossible have been corrected by amendment,
or successfully refuted by the applicant. An additional search may also be
necessary where the claims have been so amended that their scope is no
longer covered by the original search. Exceptionally,
an additional search may be required if the applicant refuses an
acknowledgment of prior art (See IV, 9.5), or if the examiner believes
that material relevant to obviousness might be found in technical fields
not taken into account during the main search.
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8.6
The substantive examiner is not barred from looking for a relevant
document whose existence he knows of or has reason to suspect, if he can
retrieve that document in a short time from material available at the
Office.
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Sec.39 R.612 R.612.1 |
8.7
In the case of foreign applications, pursuant to Sec.39 and R.612
and 612.1, the applicant will generally be requested to provide copies of
relevant documents relating to that foreign application, e.g. search
reports, examination reports, and citations. Such requests may be issued
during the whole procedure up to grant, depending on the circumstances of
the case. See also VI, 2.3a and 2.4a here above.
|
R.805 |
8.9
Concerning the formats to be used in citing relevant documents,
reference is made to R.805. The
references cited should be clearly identified, the relevant passages
thereof should be identified as precisely as possible.
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9. Special
applications
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Divisional
applications
|
Paris
ConventionArt.4
G |
The
Philippines are a signatory state of the Paris Convention. Art.4 G of the
Paris Convention reads:“G. – (1) If
the examination reveals that an application for a patent contains more
than one invention, the applicant may divide the application into a
certain number of divisional applications and preserve as the date of each
the date of the initial application and the benefit of the right of
priority, if any.
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"(2) The applicant may
also, on his own initiative, divide a patent application and preserve as
the date of each divisional application the date of the initial
application and the benefit of the right of priority, if any. Each country
of the Union shall have the right to determine the conditions under which
such division shall be authorized.”
|
Sec.38.2 R.604(b)
R.606- R.610 |
Sec.38.2 and R.604(b), R.606 to R.610 relate to the
first case (requirement for restriction, following a lack of unity
objection) and R.611 to the second case (division on own initiative).
|
R.611 |
9.1
Subsequent to the filing of a patent application, a divisional
application may be filed. The divisional application is accorded the same
filing date as the parent application, and has the benefit of any right of
priority of the parent application in respect of the subject-matter
contained in the divisional application. A Philippine application may give
rise to more than one divisional application. A divisional application may
itself give rise to one or more divisional applications.
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9.2
The applicant may file a divisional application of his own volition
(voluntary division). The most common reason, however, for filing a
divisional application is to meet an objection under Sec.38.1 of lack of
unity of invention (mandatory restriction). If the examiner objects to
lack of unity, the applicant is allowed a period in which to limit his
application to a single invention. Concerning details of the procedure in
case of lack of unity objection, reference is made to the provisions of
Sec.38.2 and R.604 to 610 and to III, 7.
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9.3
Divisional applications may be filed on a pending application
before the parent application is withdrawn, abandoned or patented. This
means that the mere deletion of subject-matter in an application is not
prejudicial to the later filing of a divisional application up to the
events mentioned above. When deleting subject-matter the applicant should,
however, avoid any statements which could be interpreted as abandonment.
The applicant may thus file a divisional application for the
subject-matter deleted in the parent application if he wishes to obtain
protection for this subject-matter.
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9.4
The substantive examination of a divisional application should in
principle be carried out as for any other application but the following
special points need to be considered.
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The
examination of a divisional examination should normally be carried out as
soon as possible by the examiner of the parent application.The
claims of a divisional application need not be limited to subject-matter
already claimed in claims of the parent application; however the
subject-matter may not extend beyond the content of the parent application
as filed (See proviso in Sec.38.2). If a divisional application contains
subject-matter additional to that contained in the parent application as
filed and the applicant is unwilling to remedy this defect by removal of
that additional subject-matter, the divisional application must be
refused. It cannot be converted into an independent application taking its
own filing date. Moreover a further divisional application for this
additional subject-matter will also be refused.
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If the divisional application's subject-matter is
restricted to only a part of the subject-matter as claimed in the parent
application, this subject-matter must be directly and unambiguously
derivable as such a separate entity, which could be used outside the
context of the invention of the parent application.
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9.5
The description and drawings of the parent application and the or
each divisional application should in principle be confined to matter
which is relevant to the invention claimed in that application. However,
the repetition in the description of a divisional application of matter in
the parent application need not be objected to unless it is clearly
unrelated to or inconsistent with the invention claimed in the divisional
application.
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Sec.111 R.915 |
9.6
The parent and divisional applications may not claim the same
subject-matter (See IV, 6.4and
e.g.Sec.111 and R.915). This
means not only that they must not contain claims of substantially
identical scope, but also that one application must not claim the
subject-matter claimed in the other, even in different words. The
difference between the claimed subject-matter of the two applications must
be clearly distinguishable. As a general rule, however, one application
may claim its own subject-matter in combination with that of the other
application. In other words, if the parent and divisional applications
claim separate and distinct elements A and B respectively which function
in combination, one of the two applications may also include a claim for A
plus B. In such a case, both applications should contain appropriate
cross-references which clearly set out the position.
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Applications resulting
from a court order or decision under Sec.67
|
Sec.67 |
9.7
In certain circumstances, before a patent has been granted on a
particular application, it may be adjudged as a result of a final court
order or decision that a person other than the applicant is entitled to
the grant of a patent thereon. In this event this person may either (Sec.67.1):
(a)
prosecute
the application as his own application in place of the applicant,
(b)
file a new
patent application in respect of the same invention, or
(c)
request that
the application be refused.
(See
also IV, 8).
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9.8
If the other person adopts the first of these alternatives he
becomes the applicant in place of the former applicant and the prosecution
of the application is continued from the position at which it was
interrupted.
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9.9
If however the other person files a new application under
Sec.67.1(b), the provisions of Sec.38.2 apply to this new application
mutatis mutandis. This means that the new application is treated as though
it were a divisional application i.e. it takes the date of filing and the
benefit of any priority right of the original application. The examiner
must therefore ensure that the subject-matter content of the new
application does not extend beyond the content of the original application
as filed.
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9.10
The IP code and the IRR are silent about cases where the original
application has been withdrawn or refused or was deemed to be withdrawn
and is thus no longer pending. Sec.67.1(b) does not appear to exclude the
filing of a new patent
application in respect of the same invention in such a case.
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9.11
The IP code and the IRR are silent about cases where, by a final
court order or decision, it is adjudged that a third party is entitled to
the grant of a patent in respect of only part of the matter disclosed in
the patent application.
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It would
appear that in such a case, the foregoing considerations apply only to
such part of the matter and
thatthe option
of Sec.67.1(a) is not open to the third party and,
- regarding
the option of Sec.67.1(b), the new application must beconfined
to that part of the original subject-matter to which he has become
entitled; similarly the original application must be confined to the
subject-matter to which the original applicant remains entitled. The new
application and the amended original application will stand in a
relationship to each other similar to that appertaining between two
divisional applications, and they will each stand in a relationship to the
original application similar to that in which divisional applications
stand in relation to the application from which they are divided. The
guidance set out in VI, 9.4, 9.5 and 9.6 here above therefore applicable
to this situation.
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10. Time limits for
response to communications from the examiner, requirements on reply.
|
R.929 R.930 |
10.1
The general considerations relating to such time limits are set out
in R.929 and R.930. The time limit for response to a letter from the
examiner should in general be between two months.
|
R.929(a) |
If an applicant fails to prosecute his application
within the required time as provided in the IRR, the application shall be
deemed withdrawn (R.929(a)).
|
R.929(b) |
10.2 The
time limit for reply may be extended only for good and sufficient cause,
and for a reasonable time specified. Any such request must be filed on or
before the day on which the action by the applicant is due.
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The examiner may grant a maximum of two extensions,
provided that the aggregate period granted including the initial period
allowed to file the response, shall not exceed six months from the mailing
date of the official action requiring such response (R.929(b)).
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An extension of the time limit may e.g. be appropriate,
for instance, if the applicant resides a long way from his representative
and the language of the proceedings (i.e. English, Filipino) is not one to
which the applicant is accustomed; or if the subject-matter of the
application or the objections raised are exceptionally complicated.
|
R.929(c) |
10.3
Prosecution of an application to save it from the deemed withdrawal
must include such complete and proper action as the condition of the case
may require. Any reply not responsive to the last official action shall
not save the application from being deemed withdrawn (R.929(c)).
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R.929(d)R.911(b) |
10.4
Such a reply must be a bona fide attempt to deal with all the
objections raised by the examiner. When the reply is a bona fide attempt
to advance the case, and is a substantially complete response to the
examiner’s action, but consideration of some matter or compliance with
some requirements has been inadvertently been omitted, opportunity to
explain and supply the omission may be given.However,
if a serious objection raised in the examiner’s action has not been
dealt with at all and is still applying , the examiner may refuse the
application under Sec.51.1 and R.913.
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11. Examination of
observations by third parties
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Sec.47R.802 |
Following the publication of the patent application,
any person may present observations concerning the patentability of the
invention. Such observations must be filed in writing and must include a
statement of the grounds on which they are based. That person shall not be
a party to the proceedings before the Bureau of Patents. The statement of
grounds must be presented in English or Filipino language.
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In the context of substantive examination, such
observations are only taken into account if a request for examination has
been filed.
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The observations are communicated to the applicant who
may comment on them. The Office will acknowledge the receipt of such
observation to the third party. The Office will not inform the third party
of any further action taken by the Office in response to his observations.
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If, in whole or in part, they call into question the
patentability of the invention, they must be taken into account by the
examiner until the end of the examination proceedings.
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If the
observations relate to alleged prior art available other than from a
document, e.g. from use, this should be taken into account only if the
alleged facts are either not disputed by the applicant or proprietor or
established beyond reasonable doubt. Observations
by third parties received after the conclusion of proceedings will not be
taken into account and will simply be added to the file.
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Since opposition proceedings before the Bureau of
Patens are not foreSeen by the Code, observations by third parties may be
considered as an low-cost way of attacking a potential patent.
Petitions to cancel a patent (post grant) are handled by the Bureau
of Legal Affairs, Sec.61-66
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12. Oral proceedings
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R.905
R.928 |
Formal oral
hearings before the examiner are not foreSeen in the IP code or IRR.Informal
interviews/conferences with the examiner are addressed in VI,6 here above.
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13. Taking of evidence
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13.1
This section deals only with the kind of evidence most likely to
arise in pre-grant proceedings, i.e. written evidence.
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13.2 An
examiner would not, as a general rule, require evidence to be produced.
The primary function of the examiner in proceedings before grant is to
point to the applicant any ways in which the application does not meet the
requirements of the IP-Code. If the applicant does not accept the view of
the examiner, then it is for the applicant to decide whether he wishes to
produce evidence in support of his case and, if so, what form that
evidence should take. The examiner should afford the applicant a
reasonable opportunity of producing any evidence which is likely to be
relevant. However, this opportunity would not be given where the examiner
is convinced that no useful purpose would be served by it, or that undue
delay would result.
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13.3
Written evidence could include the supply of information, or the
production of a document or of a sworn statement. To take some examples:cralaw:red
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To rebut an allegation by the examiner of lack of
inventive step, the applicant might, in support of his case, supply
information as to the technical advantages of the invention. Again he
might produce a sworn |
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statement, either from himself or from an independent
witness, purporting to show
that workers in the art have been trying for a long time unsuccessfully to
solve the problem with which the invention is concerned, or that the
invention is a completely new departure in the relevant art.
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R.419 toR.419.4 |
13.4
Concerning models, reference Is made to the provisions of R.419 to
419.4.
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14. Grant and
publication of patent
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Sec.50R.1000 |
14.1
If the application meets the requirements of the IP code and the
IRR, the Office shall grant the patent.
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14.2If the examiner considers that the application satisfies the
requirements of the IP code and the IRR and is thus in order to proceed to
grant he should make a brief written internal report recommending grant.
This report may be called a votum. As a general rule, it will be
appropriate in this report for the examiner to give the reasons why, in
his opinion, the subject-matter as claimed in the application is not
obvious having regard to the state of the art. He should normally comment
on the document reflecting the nearest prior art, the technical problem
solved, and the features of the claimed invention which solve the problem
and thus make it patentable. He should also indicate how any major
objections have been met, or if they have been withdrawn the reason for
this, for example the applicant provided good counter arguments to show
that the objection was wrong. If there are any borderline questions which
the examiner has resolved in favour of the applicant, he should draw
attention to these.
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Sec.51.1 |
The internal report may be made very brief by including
references pointing to the relevant file contents, e.g. applicant’s
reply, etc.
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Sec.50.1
Rule
1000 |
14.3
When
an application which is not in order for grant of a patent, despite one or
more letters to the applicant and failure by him to meet the objections
raised, the application should be refused. The examiner should make a
written report which sets out the points at issue, summarises the case
history to the extent necessary to enable someone else to obtain a quick
grasp of the essential facts, and recommends refusal. It will be useful to
draw attention to any unusual features or to points not readily apparent
from the documents themselves.
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Sec.52.1R.1002 |
14.4 An
application may only proceed to grant provided that all fees are paid on
time. If the required fees for grant and printing are not paid in due
time, the application shall be deemed withdrawn.
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Sec.52.2Rule
1003 |
14.5 The
grant of the patent together with other information shall be published in
the IPO Gazette within six (6) months.
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14.6 Any
interested party may then inspect the complete description, claims and
drawings of the patent on file with the Office. |
CHAPTER VII: EXAMPLES
1. The Problem and Solution approach
Example 1 (Electrical)
1. This Application: The stated problem is to stop ionizing radiation
from affecting transistors in an integrated circuit. Claim 1 reads: an
integrated circuit encapsulated in epoxy resin, characterized in that
said resin includes lead oxide powder.
invention
A
B chanroblesvirtualawlibrary
2. Prior Art A: uses aluminium powder or any other inert powder of good
thermal conductivity in the epoxy resin of an integrated circuit
encapsulation to improve conduction of heat out of the circuit. It says
encapsulation is less than 2 mm thick.
3. Prior Art B: uses a lead box to screen an electrical circuit board
including integrated circuits from ionizing radiation; it says box may
instead be painted with lead oxide.
4.
Prior Art C: shows lead oxide to be inert and to have a better thermal
conductivity than that of aluminium powder.
Using the problem and solution approach the following logical chain of argument results:cralaw:red
1. The Closest Prior Art: Note that although document A has more
features of claim 1 than does document B, document B is chosen as the
closest prior art since it relates to the same problem as the applicant
sets out to solve (the subjective problem).
2. The Distinguishing Features: The difference between claim 1 and document B is that chanroblesvirtualawlibrary
the IC of the claim is encapsulated in epoxy resin including PbO, whereas the IC in document B is enclosed in a box.
3. The Problem: The effect of the epoxy encapsulation compared with the
box is to provide a more compact device, which is also easier to
manufacture. These effects are not stated in either the application nor
in document B, but are readily deduced by comparing I them. Therefore,
the objective problem, derived from the above effect, is to provide a
more compact IC Including a radiation shield.
4. The Solution: Document A discloses how an agent (in this case a
thermal one) may be provided in an lC in a compact manner, i.e. by
incorporating it in an epoxy encapsulation of the IC.
5. Conclusion: Therefore, the skilled person, looking for the problem
stated by the applicant (the subjective problem), would read document B
for a solution, and adopt this as a first step. He would then realize
that the resulting device is rather bulky, and would Seek a solution to
the second problem (the objective problem), and find its solution in
Document A. Since both problems and solutions are disclosed in the
prior art, no inventive step is involved in the IC of claim 1 of the
application.
The same result is obtained by using another approach, as follows:cralaw:red
A skilled person, using the IC of document A, would realize that he
could make it more efficient by replacing the aluminium powder by PbO,
according to the teaching of document C. He would thus make the IC of
claim 1 of the application. By chance, however, he would achieve an
extra and unexpected effect, that of blocking ionizing radiation.
However, this is a bonus effect, not able to support inventive
activity, since the prior art suggests a combination of documents A and
C. A one-way street situation is present since only solution to
improving the thermal conductivity is suggested in the prior art.
Example 2 (Mechanical)
1. Application: This concerns a dining table. The description describes
a prior art table having four legs. The problem with this table is that
it wobbles on an uneven surface. The problem is set out as follows:
"The object of the invention is to provide a dining table that does not
wobble on an uneven surface".
Claim 1 reads: Dining table having a top surface supported by only
three legs so that the center of gravity of the table is located
between the three legs.
2. Prior Art 1: This shows a dining table having four legs, it does not
mention the wobbling problem, but is concerned with heat resistance of
the top surface, to prevent damage by hot pots, etc.
3. Prior Art 2: This shows a dining table having four legs, it does
mention the wobbling problem, and the solution disclosed is to make one
leg telescopic.
4. Prior Art 3: This shows a stool for milking cows, having three legs. It does not mention a wobbling problem.
Using the problem and solution approach the following logical chain of argument results:cralaw:red
1. The Closest Prior Art: This is document 2 which concerns the same
subject-matter as the application and also the same problem, wobbling.
Note that the problem stated by the applicant is the subjective
problem, the wobbling problem in a dinning table having already been
solved (in document 2).
2. The Distinguishing Features: The difference between claim 1 and document 2 is that the table of claim 1 has three legs.
3. The Problem: The effect of the three legs of the invention is that
it is a simpler solution to the solution of a telescopic leg.
Therefore, the objective problem, derived from the above effect, is to
provide a simpler solution to the wobbling problem.
4. The Solution: Document 3 shows that this simple solution was known
in the prior art and is not inventive. Although this document does not
mention anything about wobbling, the skilled person knows that milking
stools are for use on uneven surfaces, and the use of three legs is to
counter wobbling, so this document implicitly discloses the present
solution to the present objective problem.
5. Conclusion: Therefore, the skilled person, looking for the problem
stated by the applicant (the subjective problem), would read document 2
for a solution, and adopt this as a first step. He would then realise
that the resulting device is complicated, and would Seek a solution to
the second problem (the objective problem), and find its solution in
Document 3. Since both problems and solutions are disclosed in the
prior art, no inventive step is involved in the table of claim 1 of the
application.
Example 3 (Chemical)
1. The Application: Claim 1 relates to a reactor for manufacturing urea
in which the reactor walls are made of plates of a corrosion-resistant,
hardened alloy of lead and antimony, wherein the hardened alloy is
prepared by quenching a molten homogeneous mixture of the alloy metals
directly after casting, and rolling the alloy after quenching, the
joints between the plates being made of unhardened alloy of the same
composition.
The problem was to produce urea which is not contaminated by corrosion products.
2. Prior Art Document 1: relates to the preparation of lead antimony
alloys having a lead content of at least 80% by weight and which are
prepared by mixing the molten metals and allowing the cast alloy
mixture to solidify, followed by further processing to form plates.
3. Prior Art Document 2: discloses lead antimony alloys obtained by the method disclosed in claim 1 of the application.
4. Prior Art document 3: discloses the preparation of a pure urea in a
corrosion-resistant reactor wherein the reactor walls are made of
rolled plate of a homogeneous lead antimony alloy. The joints between
the plates are made of pure lead.
Using the pproblem and solution approach the following logical chain of argument results:cralaw:red
1. The closest prior art is document 3 since it deals with the same
problem as the application, namely the production of the corrosive
chemical urea. The solution found is the same as in the application.
2. The difference is that the joints between the plates are filled with lead instead of the same alloy composition.
3. The objective problem was to produce a reactor having a still further improved corrosion resistance.
4. The solution was to use the alloy plates of document 2 and to use the same alloy for the joints.
5. Conclusion: It could be argued that the skilled worker would look to
document 2 to find out how to form an alloy plate suitable for use
according to document 3. However, neither of these documents addresses
the particular problem of avoiding the problem of contact corrosion at
the point of contact between the alloy plates and joints. The advantage
of lack of corrosion is found in the higher purity urea which is
produced. Therefore, the problem was NOT solved in an obvious way and
the application involves an inventive step.
2. Patentability and industrial applicability chanroblesvirtualawlibrary
2.1 Examples of medical claims chanroblesvirtualawlibrary
Example 1
The Claim Reads: Mammography apparatus adapted to receive signals
representing tissue parameters and having a computer, characterized in
that the computer evaluates the radiation dose (D) according to the
formula chanroblesvirtualawlibrary
D= d x l x T x k
where d is the thickness of the tissue, I is the tube current, T is the exposure time, and k is a calibration factor. chanroblesvirtualawlibrary
This claim is allowable since it is not a diagnostic method or a
treatment. Nor is it a purely mathematical method since the numbers
involved in the formula are not abstract numbers, they clearly
represent physical values. Also, the formula calculates the radiation
dose for a patient, i.e. it serves a technical purpose. chanroblesvirtualawlibrary
Even if the only inventive step is in the mathematical evaluation of D,
the apparatus as a whole is technical. Here, a distinction should made
between the "idea underlying the invention", which in the above case is
a mathematical method, and the "contribution that the invention makes
to the art", which is a better dosing of the radiation, and is clearly
technical.
Example 2
The claim reads "A method of measuring blood flow in animal tissue,
comprising injecting radioactive micro spheres into the blood of the
animal, sacrificing the animal, and counting the number of micro
spheres in a given sample of tissue." chanroblesvirtualawlibrary
The above claim includes the step of injecting micro spheres into the
body, and killing the animal, so that "blood is spilt" (See the
definition of surgery in Chapter IV, 4.3).
Nevertheless, the above claim is allowable since the purpose of the
claim is not to heal the animal, there is the opposite step of killing
the animal. This method is for experimental purposes and not concerned
with the health of the animal.
Example 3
The claim reads "A method of making an X-ray image of a living body,
comprising placing the body between source providing a fan-shaped X-ray
beam and a detector consisting of a two-dimensional array of detector
elements, characterized in that a slit scans across the fan-shaped
X-ray beam and corresponding detector elements are simultaneously
energized." chanroblesvirtualawlibrary
This claim is allowable since it does not result by itself in the
diagnosis, even though it serves to provide interim results. For such a
method to be excluded as a diagnostic method all three of the following
conditions must be satisfied: chanroblesvirtualawlibrary
i) The result must immediately provide a diagnosis and not merely interim results.
ii) The method can only be used by a medical practitioner. In the
above case the method can be used by a laboratory technician, a doctor
is not necessary.
iii) Both the examination and the establishing of symptoms must
be carried out on the living body. In this case only the examination is
carried out (by a laboratory technician) on the living body, the actual
diagnosis is done remotely by the doctor. chanroblesvirtualawlibrary
Moreover, the object of the invention is to provide a sharper X-ray
image so the technical problem in the application is clearly technical,
as is the solution. chanroblesvirtualawlibrary
Example 4
The claim reads "A method of improving bodily appearance of a mammal
which comprises orally administering naltrexone in a dosage effective
to reduce appetite, and repeating the dosage until a cosmetically
beneficial loss of weight has occurred." chanroblesvirtualawlibrary
The wording of the claim clearly directs the method to a cosmetic
treatment ("improving bodily appearance", "cosmetically beneficial loss
of weight"). Moreover, a loss of weight is not inevitably linked to an
increase of health, so this claim is allowable. chanroblesvirtualawlibrary
Example 5
The claim reads "A method of cleaning plaque from human teeth by
applying thereto a non-oxidizing aqueous composition consisting of
lanthanum in the form of a water-soluble salt."
Although the removal of plaque from teeth improves their appearance and
is cosmetic, there inevitably follows improved health since plaque
causes tooth decay, so a prophylactic treatment is implicit in this
method, and it is not allowable. chanroblesvirtualawlibrary
Further examples are given in VII Examples, Part 5: "Chemical Problems". chanroblesvirtualawlibrary
2.2 Examples of computer-related inventions chanroblesvirtualawlibrary
Example 1
See example 1 above in examples of medical claims.
Example 2
Claim 1 reads "A data processing system having a plurality of
interconnected data processors in a network, and a plurality of nodes
containing input-output means, means at each node to process a
transaction request and executing a transaction associated with the
request, characterized by means for determining if a transaction
requires another processor, and generating a further transaction
request and transmitting it to the other processor for execution".
Remarks: This claim looks like a business transaction since it is basically a system in
which, for example, a customer inputs a request into a keyboard for
drawing money out of a cash machine. However, the system is technical
subject-matter since it relates to how computer operation is affected,
i.e. two or more computers may be connected together to complete the
transaction. Therefore, this system is patentable.
Example 3
Claim 1 reads "X-ray apparatus having several X-ray tubes,
characterized by a computer which stores tube rating data and uses this
to set exposure parameters for each tube, such that optimum exposure is
obtained for each tube without overloading of anyone of them". chanroblesvirtualawlibrary
Remarks: The apparatus includes the known combination of an X-ray
apparatus and a computer which stores tube data and software for
operating X-ray tubes. However, the new feature is the program that
supervises the operation of the X-ray tubes so as to optimize
performance of each tube as it ages. This is a technical result so the
claim is patentable.
Example 4
Claim 1 reads "A system for automatically abstracting documents and
storing the result, comprising a dictionary memory for storing commonly
used words, means for reading the document and comparing the words in
it with the commonly used words stored, and selecting only those words
not commonly used, and storing the selected words", chanroblesvirtualawlibrary
Remarks: There is no technical result produced here, only a list of
selected words, which is in the nature of intellectual activity only,
so this claim is not patentable. chanroblesvirtualawlibrary
In all the above examples the only difference from the prior art lay in
the computer programs. If the overall result is technical then the
claim is considered allowable. chanroblesvirtualawlibrary
2.3 Other examples chanroblesvirtualawlibrary
Example 1
Claim 1 reads "An electrical signal for application to the deflection
plates of a particle analyzer, comprising a pulse having a plurality of
exponentially falling portions of decreasing exponential function
joined together to form a smooth overall shape. chanroblesvirtualawlibrary
Firstly, it is noted that the claim is a device claim but it relates to
an intangible entity, i.e. an electrical signal. Secondly, it is a
transient entity, since the signal is a pulse, i.e. it is generated
only at the instance it is needed. However, both the above points are
not a bar to patentability, since the signal has a technical character,
it enables the separation of charged particles in a particular manner,
and the claim is allowable.
Example 2
A claim reads "Device for healing living bodies by improving cosmic
harmony with the ("environment, the device comprising a plastics base
and circular wires of different noble metals arranged concentrically on
the plastics base". chanroblesvirtualawlibrary
In such a case an objection should be raised that there is a doubt that
there is a direct relationship between the technical problem and Its
solution. The stated technical problem is that bodies should be healed
"by improving cosmic harmony", but there is a serious doubt that the
stated construction can cause any healing, i.e. that it really is a
technical solution. The applicant should be requested to submit his
invention to a neutral authority or government agency to carry out
tests proving that the device has healing effects. It is not sufficient
that the applicant submits affidavits from private people or doctors or
clinics. Only if these tests prove that the device works as stated by
the applicant can a patent be granted. chanroblesvirtualawlibrary
Example 3
The claim reads: "A method of selecting the correct dosage of a drug
for a patient, comprising measuring the length of the patient's body
from head to foot using a tape having markings along its length, the
markings having indications of the correct drug dosage, and using the
indication appropriate to a given patient to regulate the dosage."
In this case the indications on the tape is a presentation of
information, i.e. excluded from patentability. Thus, the claim contains
a mixture of technical and non-technical features. In order to decide
whether the invention as a whole provides a technical contribution to
the prior art, the prior art must first be considered. This is a tape
having markings along its length, the markings having indications of
the amount of food to be given to a child.
To argue, at this stage, that the only difference between the known
tape and the claimed tape is the information that the markings give (in
one case the drug dosage and in the other case the amount of food), so
the invention is merely a presentation of information, would be wrong,
since the argument does not adequately evaluate the relationship
between the markings and the tape the carries the markings. In other
words it does not take the teaching of the claim as a whole. chanroblesvirtualawlibrary
The new markings make the tape into a new gauge for directly measuring
dosage. It is like a pressure gauge in which the markings of pressure
are replaced by markings that make the gauge suitable for use as an
altimeter. The claim is, therefore, patentable.
Further examples are given below in VII Examples, Part 5 "Chemical Problems".
3. Clarity
Example 1
The claim reads "A device for draining fluids from the stomach,
comprising an inert plastics tube having a smooth outer wall and a
rounded leading end having an aperture, and electrodes embedded in the
outer wall along its length, characterized in that the length of the
tube is such that when it is inserted into the mouth and down into the
esophagus, it reaches the stomach".
Comments: The characterizing feature is indeterminate and the scope of
the claim isunclear. The distance between the mouth and the stomach
depends on the age, sex,racial type, etc. of a person, so it is not
well defined. Moreover, the claim does not limit the device for use
with humans, it could be used with giraffes, in which case the possible
range of lengths is enormous and the claim becomes even more unclear.
Example 2
The claim reads "Apparatus for receiving a credit card and reading it,
comprising a housing for insertion in a recess in a wall and having a
front opening having a size for receiving the card, the front wall of
the housing also including a keyboard for keying in passwords, numbers,
etc., and the inside of the housing including a microprocessor
…….”chanroblesvirtualawlibrary
Comments: The claim is directed to apparatus for reading credit cards,
and does notinclude the card itself. However, one feature of the claim
(size of the front opening) is defined with respect to the card. This
is allowable since credit cards have standard sizes. The situation
might be different if the opening were to be defined with respect to a
coin, for example, since coins have different shapes and sizes.
Example 3
The claim reads "A bracket for hanging a picture, comprising a hook
having two projections, wherein the bracket is secured in an opening in
a wall by rotating it through a given angle, inserting one projection
into the opening, rotating it back to the original orientation, and
lowering it".
Comments: The claim attempts to define the constructional features by
reference tomanner in which the bracket is secured to the opening in
the wall, and is not clear.
Example 4
The Claim reads "Apparatus for recording on or reproducing from a laser
disk, wherein a semiconductor laser beam intensity is varied between a
high value for recording and a low value for reproducing, characterized
in that the laser wavelength is kept constant as the intensity is
varied".
Comments: The claim is unclear since it sets out the desired result
rather than technical features that cause the result. It would be
necessary to define those parts of the apparatus that detect wavelength
variations and a feedback loop for maintaining the wavelength constant.
Example 5
The Claim reads "Apparatus for recording on or reproducing from a laser
disk, wherein a semiconductor laser beam intensity is varied between a
high value for recording and a low value for reproducing, characterized
in that the laser wavelength is kept constant as the intensity is
varied, or the variation from high to low value is performed by a high
speed switch, or the laser temperature is kept constant as the
intensity changes".
Comments: The different options in the claim are not fairly exchangeable and lead to confusion as to the scope of the claim.
Example 6
The Claim reads "Apparatus for pacing the heart comprising a pulse
generator, wherein natural heart beats are detected, and if one or more
natural heartbeats is missing, a detector measures blood pressure and
if this is below a given threshold a stimulating pulse is issued".
Comments: This claim not only defines the desired result instead of
technical features that give the result, but is further objectionable
since it relates to apparatus but sets out method steps. so its
category is also unclear.
4. Unity of Invention
The following examples illustrate how to apply the principle of unity of invention in particular cases.
4.1 Claims in different categories
Example 1
Claims:cralaw:red
1. A process for manufacturing chemical substance X.
2. Substance X.
3. The use of substance X as an insecticide.
Prior art:cralaw:red
(i) Situation 1: Substance X is novel and inventive.
(ii) Situation 2: The search has revealed that the substance X lacks novelty with regard to the state of the art.
Comments:cralaw:red
(i) Situation 1: The feature common to all of claims 1 to 3 is the
substance X. This common feature is a special technical feature, since
it makes a contribution over the prior art. Thus, there is a special
technical feature common to all the claims. Consequently unity exists
between the inventions defined in claims 1, 2 and 3.
(ii) Situation 2: Claim 2 fails for lack of novelty and must be
deleted. The feature common to the remaining claims 1 and 3 is the
substance X. However, the substance X is not a special technical
feature, because it makes no contribution over the prior art. Thus,
there is no special technical feature common to claims 1 and 3.
Consequently there is lack of unity "a posteriori" between claims 1 and
3.
Example 2
Claims:cralaw:red
1. A process of manufacture comprising steps A and B.
2. Apparatus specifically designed for carrying out step A.
3. Apparatus specifically designed for carrying out step B.
Prior Art:cralaw:red
The search has revealed no relevant prior art document related to the process of claim 1.
Comments: Steps A and B respectively are two special technical features
which define contributions over the prior art. Unity exists between
claims 1 and 2, or between claims 1 and 3. There is no unity, however,
between claims 2 and 3, since neither the same nor a corresponding
special technical feature is common to both claims 2 and 3, and one of
these claims must be cancelled.
Example 3
Claims:cralaw:red
1. A process for painting an article in which the paint contains a rust
inhibiting substance X, said process including the steps of atomizing
the paint using compressed air, electrostatically charging the atomized
paint using an electrode arrangement A, and directing the paint onto
the article.
2. A paint containing substance X.
3. A paint spraying apparatus including electrode arrangement A.
Prior Art:cralaw:red
The paint containing substance X is new and inventive. The electrode
arrangement A is also new and inventive. However, it is known to paint
an article by atomizing the paint using compressed air, and
electrostatically charging the atomized paint, and directing the paint
onto the article.
Comments: The special technical features of claim 1 are (i) to use a
paint containing substance X, and (ii) to use the electrode arrangement
A. Special technical feature (i) is to be found in claim 2, such that
there is a technical relationship between the inventions of, and thus
unity between, claims 1 and 2. Special technical feature (ii) is to be
found in claim 3, such that there is a technical relationship between
the inventions of, and thus unity between, claims 1 and 3. The special
technical feature (i) of claim 2 is neither the same nor corresponding
to the special technical feature (ii) of claim 3. Thus, there is lack
of unity between claims 2 and 3 and one of these claims must be
cancelled. chanroblesvirtualawlibrary
Example 4
Claims:cralaw:red
1. Use of a family of compounds represented by the general formula X as insecticides.
2. Compound X1 belonging to family X.
Prior Art:cralaw:red
Compound X1 is novel and inventive. Certain other members of the family
of compounds X are, however, comprised in the prior art. There is no
disclosure of an insecticidal activity for these known compounds.
Comments: The special technical feature in claim 1 is the insecticidal
use of the structure. Provided that X1 has an insecticidal activity
unity is present. chanroblesvirtualawlibrary
Example 5
Claims:cralaw:red
1. A process for treating textiles comprising spraying the material
with a particular coating composition under special conditions (e.g.,
as to temperature, irradiation).
2. A textile material coated according to the process of claim 1.
3. A spraying machine for use in the process of claim 1 and
characterized by a new nozzle arrangement providing a better
distribution of the composition being sprayed.
Prior Art:cralaw:red
A prior art document discloses a process for treating textiles with a coating. The process according to claim 1 is novel.
Comments: In. respect of the prior art, the textile material of claim 2
exhibits unexpected properties. In claim 1 the use of special process
conditions corresponding to what is made necessary by the choice of the
particular coating is the special technical feature which makes the
contribution over the prior art. This special technical feature
corresponds to the limitation of the textile product with its
unexpected properties according to claim 2. Thus, unity exists between
claims 1 and 2. The spraying machine in claim 3 does not involve any
feature corresponding to the above identified special technical
feature. Therefore unity does not exist between claims 1 and 3, nor
between claims 2 and 3, so Claim 3 should be cancelled.
Example 6
Claims:cralaw:red
1. A chair (A), coated with layer X.
2. A chair according to claim 1, made of wood.
3. A process for distributing the layer X.
Prior art:cralaw:red
A prior art document discloses chair (A); a further document discloses
layer X, but not in the field of furniture. The application of layer X
to a chair (A) provides a special effect, e.g. protective qualities,
for wooden furniture, not produced for other objects.
Comments: The combination of the features A and X in claim 1 is not
obvious, since a special effect is achieved. Thus said combination is a
special technical feature making a contribution over the prior art. The
same special technical feature IS automatically contained in the
dependent claim 2. Therefore unity exists between claims 1 and 2. There
is no unity, however, between claims 1 and 3, since claim 3 does not
include said special technical feature, i.e. the combination of the
features A and X.
Example 7
Claims:cralaw:red
1. A fuel burner with tangential fuel inlets into a mixing chamber.
2. A process for making a fuel burner including the step of forming tangential fuel inlets into a mixing chamber.
3. A process for making a fuel burner, including a casting step.
4. An apparatus for carrying out a process for making a fuel burner,
including feature X resulting in the formation of tangential fuel
inlets.
5. An apparatus for carrying out a process for making a fuel burner, including a protective housing.
6. A process of manufacturing carbon black, including the step of
tangentially introducing fuel into a mixing chamber of a fuel burner.
Prior Art:cralaw:red
A prior art document discloses a fuel burner with non-tangential fuel
inlets and a mixing chamber. Tangential fuel inlets are neither known
nor obvious from the relevant prior art.
Comments: The feature of the tangential fuel inlets in claim I is the
special technical feature which makes the contribution over the prior
art. This special technical feature is common to claims 1, 2, 4 and 6.
Thus, unity exists between these claims. Claims 3 and 5 do not include
the same or a corresponding special technical feature, so that they
lack unity with claims 1, 2, 4 and 6, and with one another.
Example 8
Claims:cralaw:red
1. A high corrosion resistant and high strength ferritic stainless
steel strip consisting of, in percent by weight: Ni = 2 -5; Cr = 15
-19; Mo = 1 -2; and the balance Fe, having a thickness of between 0.5
and 2.0 mm and a 0.2% yield strength in excess of 50 kg/mm2.
2. A method of producing a high corrosion resistant and high strength
ferritic stainless r~ steel strip consisting of, in percent by weight:
Ni = 2 -5; Cr = 15 -19; Mo = 1 -2; and the balance Fe, comprising the
steps of: hot rolling to a thickness between 2.0 and 5.0 mm; annealing
the hot rolled strip at 800-1000oC under non.-oxidizing conditions;
cold rolling the strip to a thickness of between 0.5 and 2.0 mm; and
final annealing the cold rolled strip at :' between 1120 and 1200oC for
a period of 2 -5 minutes.
Prior Art:cralaw:red
Stainless steel strips having a 0.2 % yield strength in excess of 50 kg/mm2 are novel and inventive.
Comments: The special technical feature in the product claim is the
0.2% yield strength in excess of 50 kg/mm2. The process steps in claim
2 inherently produce a ferritic stainless steel with a 0.2% yield
strength in excess of 50 kg/mm2. Even if this feature is not mentioned
in claim 2, it is an inevitable result of carrying out the process of
claim 2, and this fact is clearly disclosed in the description.
Therefore said process steps are the special technical feature which
correspond to the limitation in the product claim directed to the same
ferritic stainless steel with the claimed strength characteristics.
Therefore unity is present between claims 1 and 2.
4.2 Claims in the same category
4.2.1 General examples
Example 9
Claims:cralaw:red
1. Electrical plug having a plurality of pins, characterized in that said pins are of hexagonal cross-section of diameter d.
2. Electrical socket having a plurality of elongate bores defining
female contact members, characterized in that said bores are of
hexagonal cross-section of diameter d.
Prior Art:cralaw:red
A prior art document discloses an electrical plug having round pins, and an electrical socket having round bores.
Comments: The special technical feature in claim 1 is the pins of
hexagonal cross-section. Claim 2 involves a corresponding feature to
the special technical feature in claim 1, since the sockets are of
complementary hexagonal form and equal diameter to the pins. Thus, a
technical relationship between the two inventions exists. Consequently
unity of invention is present.
Example 10
Claims:cralaw:red
1. Electrical plug having at least four pins of oval cross-section,
characterized in that said pins are split pins, the joined ends of
which are mounted in the plug body.
2. Electrical socket having at least four socket bores of oval
cross-section defining female contact members, characterized in that
said contact members are held in the socket body by adhesive.
Prior Art:cralaw:red
A prior art document discloses an electrical plug having two pins of
oval cross-section, and a corresponding socket device. A second prior
art document discloses a plug having four pins and a socket with four
socket bores.
Comments: The special technical features of claim 1 are the split pins,
the joined ends of which are mounted within the plug body (i.e. the
only inventive contribution as compared with the prior art as
represented by the teachings of the two prior art documents. None of
the special technical features of claim 1, or features corresponding
thereto, can be found in claim 2, such that there is no technical
relationship between the two inventions. Therefore, unity is lacking
between claims 1 and 2.
Note: In this example, an incorrect approach would consist in using only one prior art
document to determine the special technical feature of claim 1. If, for
example, only the first document was considered, then the following
situation would arise: The special technical features of claim 1 are:
at least four pins, which are split pins, the joined ends of which are
mounted within the plug body. The special technical feature of the four
pins of claim 1 corresponds to the four socket bores of claim 2. This
would lead to the (wrong) conclusion that a technical relationship and,
thus, unity of invention exists between claims 1 and 2.
Example 11
Claims:cralaw:red
1. Transmitter provided with time axis expander for video signals.
2. Receiver provided with time axis compressor for video signals received.
3. Transmission equipment for video signals comprising a transmitter
provided with time axis expander for video signals and a receiver
provided with time axis compressor for video signals received.
Prior art: There is no disclosure or hint in the prior art of the use of time axis expansion/compression in this field.
Comments: The special technical feature in claim 1 is the time axis
expander. The special technical feature in claim 2 is the time axis
compressor, which is a corresponding technical feature to that of claim
1. Claim 3 has both these special technical features. Thus all three
claims are unitary.
Example 12
Claims:cralaw:red
1. Conveyor belt X with feature A.
2. Conveyor belt Y with feature B.
3. Conveyor belt Z with features A + B.
Prior Art:cralaw:red
In the prior art conveyor belts X, Y and Z without features A or B are disclosed.
Comments: Feature A in claim 1 is the special technical feature which
defines the contribution over the prior art. This feature is not
related with the feature B in claim 2. Unity of invention exists
between claims 1 and 3, but not between claims 1 and 2. Also there is
unity between claims 2 and 3.
Example 13
Claims:cralaw:red
1. Control circuit for a d.c. motor, said circuit having feature A.
2. Control circuit for a d.c. motor, said circuit having feature B.
3. A vehicle including a d.c. motor with a control circuit having feature A.
4. A vehicle including a d.c. motor with a control circuit having feature B.
Prior Art:cralaw:red
Control circuits for d.c. motors are well-known, but features A and B
are individually new and inventive. However, features A and B are
completely unrelated.
Comments: The special technical feature in claim I is feature A, which
is present in claim 3, such that unity exists with claim 3, but not
with claims 2 and 4. The special technical feature in claim 2 is
feature B. which is present in claim 4, such that unity exists with
claim 4, but not with claims 1 and 3.
Example 14
Claims:cralaw:red
1. A display comprising a two-dimensional array of groups (A) of white
light sources, each group (A) of sources being associated with a
respective set (B) of differently coloured filters.
2. A display according to claim I in which the filters in each set (B)
are red, blue and green of particular transmission wavelengths (C).
3. A display according to claim 1 in which the light sources are filament lamps (0).
Prior Art:cralaw:red
(i) Situation 1: A prior art document discloses a display comprising a two-dimensional
array of white light sources. Claim 1 is novel and inventive in the light of said prior art
document.
(ii) Situation 2: A prior art document discloses a display comprising a
two-dimensional array of white light sources. A second prior art
document discloses a linear array of groups of white light sources,
each group of sources being associated with a respective set of
differently coloured filters.
Claim 1 is not inventive in the light of said two prior teachings.
Comments:cralaw:red
(i) Situation 1: Claims 2 and 3 are properly drafted dependent claims
defining detail features of the subject-matter of claim 1. Therefore
there is automatically unity of invention between claims 1, 2 and 3.
(ii) Situation 2: Claim 1 must be deleted for lack of inventive step.
The remaining claims 2 and 3 must now be treated as independent claims
to determine whether or not there is unity of invention. The special
technical feature (c) in claim 2 is that the filters in each group of
light sources are red, blue and green of particular transmission
wavelengths. This special technical feature, or features corresponding
thereto, is not to be found in claim 3.
Therefore, unity is lacking a posterior between claims 2 and 3.
Example 15
Claims:cralaw:red
1. A filament for an electric lamp, said filament having a special construction A.
2. An electric lamp B comprising a filament having a special construction A.
3. A searchlight comprising a lamp B having a filament having a special
construction A, said lamp being mounted by a swivel arrangement C.
Prior Art:cralaw:red
A prior art document discloses a filament for a lamp, there being no disclosure or hint of the special construction A.
Comments: The special technical feature in claim 1 is the special
construction A for the filament, which is present in all three claims,
thereby providing a special technical feature needed to fulfil the
requirements of unity of invention. chanroblesvirtualawlibrary
Example 16
Claims:cralaw:red
1. A marking device for marking animals, comprising a disc-shaped
element with a stem extending normally therefrom, the tip of which is
designed to be driven through a body portion of the animal to be
marked, and a securing disc element to be fastened to the protruding
tip of the stem on the other side of the body portion.
2. An apparatus for applying the marking device of claim 1, constructed
as a pneumatically actuated gun for driving the stem of the disc-shaped
element through the skin, and provided with a supporting surface
adapted for taking up a securing disc element, to be placed at the
other side of the body portion in question of the animal to be marked.
Prior Art:cralaw:red
A prior art document discloses a marking device for animals. However,
no disc-shaped element with a stem and a securing disc element is
disclosed or hinted at in the prior art.
Comments: The special technical feature in claim 1 which makes the
contribution over the prior art is the disc-shaped element with a stem
and a securing disc element to be fastened to the tip of the stem. The
corresponding special technical feature in claim 2 is the pneumatically
actuated gun for driving the marking device through the body part, and
the supporting surface for the securing disc element. Hence unity
exists between claims 1 and 2.
Example 17
Claims:cralaw:red
1. Compound A.
2. An insecticide composition comprising compound A and a carrier.
Prior Art
In the light of the prior art compound A is novel and inventive.
Comments: Unity exists between claims 1 and 2. The special technical feature common to both claims is compound A.
Example 18
Claims:cralaw:red
1. An insecticide composition comprising a compound of the general formula A and a
carrier. [Formula A comprises various Compounds a1, a2, ]
2. Compound a1.
Prior Art:cralaw:red
Certain specific compounds covered by the general formula A are known, but not as
insecticides. The compound a1 is novel and inventive.
Comments: All compounds of general formula A are not claimed in claim 2 as, for
example, some of them lack novelty. Nevertheless there is still unity
between the subject-matter of claims 1 and 2, provided a1 possesses
insecticidal activity which is the special technical feature for the
compounds of general formula A in claim 1.
Example 19
Claims:cralaw:red
1. Protein X.
2. DNA sequence encoding protein X.
Prior Art:cralaw:red
In the light of the prior art protein X is novel and inventive.
Comments: Expression of the DNA sequence in a host results in the
production of a protein which is determined by the DNA sequence. The
protein and the DNA sequence exhibit corresponding special technical
features. Unity exists between claims 1 and 2.
4.2.2 Examples concerning intermediate and final products
Example 20
Claims:cralaw:red
1. Amorphous polymer A.
2. Crystalline polymer A.
Prior Art:cralaw:red
The polymer A is novel.
Comments: In this example a film of the amorphous polymer A is
stretched to make it crystalline. Here unity exists because there is an
intermediate/final product relation in that amorphous polymer A is used
as a starting product to prepare crystalline polymer A. For purposes of
further illustration, assume that the polymer A in this example is a
specific polyisoprene. Here the intermediate, amorphous polyisoprene,
and the final product, crystalline polyisoprene, have the same chemical
structure.
Example 21
Claims:cralaw:red
1. Novel compound having structure A. [Intermediate]
2. Product prepared by reacting A with a substance X.
[Final product with unknown structure]
Prior Art:cralaw:red
No relevant prior art document was found in the search.
Comments: In this example the structure of the product of claim 2 (the
final product) is not known. Unity exists if there is evidence which
would lead one to conclude that the , characteristic of the final
product which is the inventive feature in this case is due to the
intermediate. For example, the purpose of using the intermediate is to
modify certain properties of the final product. The evidence may be in
the form of test data in the specification showing the effect of the
intermediate on the final product. If no such .evidence exists then
there is no unity on the basis of an intermediate-final product
relationship.
Example 22
Claims:cralaw:red
1. Reaction product of A and B. (Intermediate with unknown structure).
2. Product prepared by reacting the reaction product of A and B with
substances X and Y. (Final product with unknown structure).
Prior art:cralaw:red
No relevant prior art document was found in the search.
Comments: In this example the structures of the products of claim 1
(the intermediate) and claim 2 (the final product) are unknown. Unity
exists if there is evidence which would lead one to conclude that the
characteristic of the final product which is the special technical
feature in the case is due to the intermediate. The evidence may be in
the form of test data in the specification showing the effect of the
intermediate on the final product. If no such evidence exists then
there is no unity on the basis of an intermediate-final product
relationship. chanroblesvirtualawlibrary
4.3 Alternatives in a single claim I Markush practice
Example 23 -Common Structure Claim
1. Pharmaceutical compounds for enhancing the capacity of the blood to absorb oxygen, of the formula
wherein R1 is selected from the ~roup consisting of phenol, pyridyl,
thiazolyl, triazinyl, alkylthio, alkoxy and methyl; R2 -R are methyl,
benzyl or phenyl.
Prior Art:cralaw:red
For the purpose of this example it is assumed that the search reveals
that no indolyl derivatives are known which possess CI pharmaceutical
activity and, in particular, the property of enhancing the capacity of
the blood to absorb oxygen. The claimed compounds are novel and
Inventive.
Comments: Claim 1 defines various alternatives of individual chemical
compounds. The indolyl moiety is the significant structural element
which is shared by all of these alternatives. Since all the claimed
compounds are alleged to exhibit the same pharmaceutical activity (i.e.
enhancing the capacity of the blood to absorb oxygen), the indolyl
moiety is the special technical feature. This special technical feature
is common to all alternatives covered by claim 1. Thus, claim 1 is
unitary.
5 Chemical Problems
The following text is designed to help substantive examiners in dealing
with problems that arise when considering chemical applications. The
examples cover different types of subjects such as patentability,
medical methods, novelty, inventive step, etc., their common theme
being that they are in the chemical area.
The following definitions apply:cralaw:red
Compound -a single chemical substance.
Composition -a mixture of compounds (N.B. usually containing one or
more active compounds, which do not react chemically with one another).
Product -a compound, a composition or a reaction mixture (N.B. such
products may be obtained by chemical or physical process or by
extraction).
Index of examples
5.1 Patentable Inventions
1. Compounds and compositions having a special scent or flavour
2. Unstable compounds
3. "Intermediate products"
5.2 Inventions relating to surgery. therapy or diagnostic methods
4. Allowable claims
5. Known physiological effect
6. Known pharmaceutical use
7. Second medical indication
8. Allowable "second medical indication" claims
9. Synergistic effects (kit of parts)
10. Prevention or treatment of parasitic infestations
5.3 Novelty
11. Limitation of a claim concerning a family of chemical compounds lacking novelty
12. Novelty in connection with composition ranges
13. Novelty of chemical compounds
14. Novelty of stereoisomers
15. Novelty destroying effect of non-repeatable prior art
16. Novelty of naturally-occurring products
5.4 Inventive step
17. Inventive step in chemical compounds
18. Comparison of properties. The need to call for comparative tests to establish an Inventive step
19. Inventive selection
20. Inventive step in claims for "intermediate chemical products"
21. Inventive step of a product based on the process for its production
5.5 Disclosure of invention
22. Chemical compounds -statements of use or effect
23. Amendment of the disclosure after the filing date
24. Claims to compounds which cannot be prepared
5.6 The claims
25. Claims containing functional features
26. Definition in claims by parameters
27. Analogy processes
28. Independent claims of the same scope
29. Claims containing general expressions
5.7 Microbiological Processes. genetic manipulation and Products obtained by such Procedures.
30. Novelty of naturally-occurring polymers
31. Novelty-destroying effect of micro-organisms mentioned in the prior art
32. Patentability of claimed DNA sequences
33. Claims to recombinant vectors
34. Hybridomas and monoclonal antibodies
35. Claims to biological material per se
36. Microbiological inventions
37. Generalization in the field of microbiological inventions
38. Terminology in claims for biological material
39. Novelty of biological material
40. Inventive step for biological material
41. Biological material -availability to the public
42. Characterization of deposited biological material
43. Priority provisions for microbial inventions.
5.1 Patentable inventions
Example 1 Compounds and compositions having a special scent or flavor
(1) Should new chemical compounds or compositions, which exhibit a
special scent or flavor (making them useful, for instance, in the
perfumery or food industry) be refused as being aesthetic creations?
Answer: No. Such a compound or composition should be judged like any
other chemical compound or composition whose properties are not merely
aesthetic.
(2) Should new compositions possessing only the aggregate known scent
or flavour of its ingredients, or processes for producing such a
composition by mere admixture, be refused as lacking inventive step?
Answer: Yes. However, should the composition exhibit an unexpected
effect such as an intensification of scent or flavor, additional
stability, or prolonged persistence of scent or flavor, then the
composition should be regarded as inventive.
Example 2 Unstable Compounds chanroblesvirtualawlibrary
Can an unstable compound be protected by a patent? chanroblesvirtualawlibrary
Answer: Yes, if its instability does not prevent it being industrially
applied i.e. made or used in any kind of industry, including
agriculture. The unstable compound must be defined unambiguously in the
application (i.e. separated* and identified). The fact that its life
may be very short is no bar to patentability so long as the above
requirements are satisfied.
*If the unstable compound cannot be separated, then it cannot be
protected by a patent but e.g. a solution containing it could be
patentable. chanroblesvirtualawlibrary
Example 3 Intermediate Products chanroblesvirtualawlibrary
Sometimes reference is made to chemical "intermediate products ". For
the purposes of this example, chemical intermediate products are
defined as compounds which do not necessarily have any useful direct
application but which serve as starting substances for producing other
chemical substances ("end products") by a chemical reaction. In some
cases, intermediate products are formed in the course of a claimed
process. These intermediates may sometimes be separated but are
sometimes so short-lived that they cannot be separated (they may be
identified spectroscopically, for instance) or are only hypothetical.
For the patentability of chemical intermediates, the normal criteria of
novelty, industrial applicability and inventive step have to be
satisfied.
Are new chemical intermediates patentable in the following cases if : chanroblesvirtualawlibrary
(1) the chemical intermediate can be separated? chanroblesvirtualawlibrary
(2) The chemical intermediate exists as ions, which cannot be
separated, or as hypothetical stages in a reaction mechanism? chanroblesvirtualawlibrary
Answers: chanroblesvirtualawlibrary
(1) Yes:cralaw:red
Examples of this type are diazonium salts Ar-N+=NX- which are not
isolated from the reaction mixture obtained on their preparation. The
reaction mixture as such is used for further chemical reactions for the
preparation of an end product. e.g. azo-dyes. chanroblesvirtualawlibrary
ArNH2
+ NaNO2
+ 2HCI --- > (ArN
N)+CI
-
+ NaCI + 2H20
I
intermediate
diazonium-salt solution
I
I
ArN=NR
+ HCI
(2)
No:
Examples
of this type could be carbenium ions which form intermediate stages in a
reaction
and are incapable of isolation.
(CH3)3C-CH=CH2
+ HCI ---->
[(CH3)3C-CH-CH+
-CH3]
+ CI
-
/
\
/ carbenium ion I \
/
\
(CH3)3C-CHCI-CH3
[
(CH3)2C+
-CH(CH3)2]
CI
-
I
3,3-dimethyl-2-chlorobutane
rearrangement to carbenium ion II
I
I
2.
3-dimethyl-2-chlorobutane
5.2 Inventions relating to surgery. therapy. or diagnostic methods
Example 4 Allowable Claims chanroblesvirtualawlibrary
In the case where:cralaw:red
(1) the compound X is new, chanroblesvirtualawlibrary
(2)
the compound X is not new and the state of the art does not comprise
its use in surgery, therapy, or diagnostic methods, chanroblesvirtualawlibrary
(3) the compound X is not new and the state of the art comprises its
use in surgery, therapy, or diagnostic methods, are the following
forms of claim allowable? chanroblesvirtualawlibrary
(a) compound X for use as a medicament chanroblesvirtualawlibrary
(b) compound X for use as an analgesic chanroblesvirtualawlibrary
(c) compound X for use in curing disease Y chanroblesvirtualawlibrary
(d) composition A containing X for use in curing disease Y (composition A may be generally defined) chanroblesvirtualawlibrary
(e) medicament containing the compound X chanroblesvirtualawlibrary
(f) use of X in a composition A for the curing of disease Y chanroblesvirtualawlibrary
(g) use of X as a medicament for the curif1g of disease Y chanroblesvirtualawlibrary
(h) use of X for the curing of disease Y chanroblesvirtualawlibrary
(i) use of X for preparing a medicament chanroblesvirtualawlibrary
(j) use of X for the manufacture of a medicament for curing disease Y chanroblesvirtualawlibrary
Answers: A summary of the following explanation is to be found at the end of the example. chanroblesvirtualawlibrary
1) X is new: chanroblesvirtualawlibrary
(a),(e),(i),(j) Yes chanroblesvirtualawlibrary
(b),(c),(d) Yes, more than one such claim is allowable in the same application chanroblesvirtualawlibrary
(f) No, since the scope of the cl1im is not clear and this type of
claim could be interpreted as a method claim which is excluded from
patent protection. chanroblesvirtualawlibrary
(g),(h) No, claims of the above form are method claims which are excluded from patent protection. chanroblesvirtualawlibrary
2) X is known, but has not been described a having pharmaceutical properties: chanroblesvirtualawlibrary
(a),(b),(c),(d),(e): Yes, providing a specific first medical use is
disclosed, then a general claim such as (a) or (e), to the use of
compound X as a medicament is allowable. Where there are claims to
specific first medical uses as exemplified by (b),(c) and (d), then
more than one such claim is allowable in one application.
(f),(g),(h), No, as under 1) above
chanroblesvirtualawlibrary
(j)
Yes. chanroblesvirtualawlibrary
3) X is known and has been described as having pharmaceutical properties: chanroblesvirtualawlibrary
(a),(b),(c),(e) No, in view of lack of novelty chanroblesvirtualawlibrary
(d) No, if the composition A itself was known as a medicament
Yes, if the composition A itself was not known, or not known as a medicament.
(f),(g),(h) No, as under 1) above.
(i) No, as a medicament has also been prepared using X
(j) Yes.
N.B.: In the case of a first medical indication, the instructions (a)
to (j) apply to claims with equivalent wording. The examiner must
however ensure that the wording of the claim under consideration has
the same sense as examples (a) to (j) given above. In the case of a
second medical indication the examiner is advised to allow only the
wording set out in a). chanroblesvirtualawlibrary
Example 5 Known physiological effect chanroblesvirtualawlibrary
Does the prior disclosure of a physiological effect of a product
constitute use in an area excluded from patent protection render a
claim to a product for use in such method non-" patentable for lack of
novelty?
Answer: It depends upon the manner in which the physiological effect
has been disclosed. If the disclosure implies that the product has been
previously medicinally administered or the physiological effect is
reported in an investigation aiming at development of medicines, the
answer is yes. The existence of a physiological effect does not
necessarily imply that an excluded method has been previously effected.
For example, a compound may affect the biological working of the body
yet no medical or therapeutic effect may have been foreSeen.
Example 6 Known pharmaceutical use chanroblesvirtualawlibrary
(a) Is a general statement of pharmaceutical application for a
known product in the prior art considered to constitute an excluded
method? chanroblesvirtualawlibrary
Answer: No unless it is obvious from the type or structure of the
product previously disclosed that a certain pharmaceutical use was
intended (for instance in the case of penicillins). chanroblesvirtualawlibrary
(b) Will a specified pharmaceutical application for a known product having no
experimental support or other information in a prior art document be considered to constitute an excluded method. chanroblesvirtualawlibrary
Answer: Yes, except if the examiner is convinced that the statement in
the prior art document is incorrect, e.g. in view of evidence from the
applicant that this statement is incorrect.
Example 7 Second medical indication chanroblesvirtualawlibrary
When a second medical property has been discovered for a known active
compound X can a product claim directed to a composition containing the
compound X; be allowed? chanroblesvirtualawlibrary
Answer: Yes, provided the requirements of novelty and inventive step are met. chanroblesvirtualawlibrary
Novelty -when the composition is defined broadly as X + diluent (not
specified), then this composition would generally not be novel.
Limitation of the claim to X + a specified diluent (or other specified
additive), possibly in specific proportions, may be necessary for
establishing novelty.
Inventive step -could be accorded on the basis of the medical effect or
other advantages, for example either an unexpected medical effect due
to the compound itself, or a synergistic action from the combination of
X with other ingredients.
Example 8 Allowable second medical indication claims chanroblesvirtualawlibrary
Is the following claim acceptable? chanroblesvirtualawlibrary
"Compound X for use in curing carcinoma". chanroblesvirtualawlibrary
Where compound X is known as a component in a medicinal composition
only in combination with 1 or more active compounds for use in curing
anorexia and where compound X is not disclosed as having, in itself, a
therapeutic effect in said composition? chanroblesvirtualawlibrary
Answer. YES, from the point of view of novelty. chanroblesvirtualawlibrary
The application constitutes the first recognition that the compound X
by itself has medicinal properties and thus the first use of compound X
for these medicinal properties. chanroblesvirtualawlibrary
Example 9 Synergistic effects (kit of parts) chanroblesvirtualawlibrary
In the state of the art compounds X and Yare known and the use of each
of them in therapy has been described. The administration of X and Y in
association is now found to lead an unexpected, new synergistic effect
in the treatment of carcinoma. In these circumstances is the following
claim allowable?
"Pharmaceutical products for use in carcinoma, consisting of an
association of compound X and compound Y, in which the two active
compounds are adjacent but separate." chanroblesvirtualawlibrary
Answer: Yes. Patentability is acknowledged for a "kit-of-parts" in which the active
compounds are physically separated, provided that the use of both
compounds, either simultaneously, separately or sequentially, gives a
new and unexpected therapeutical effect. chanroblesvirtualawlibrary
Example 10 Prevention and treatment of parasitic infections chanroblesvirtualawlibrary
Is a method of treatment of parasites found on or within the human or animal body excluded from patentability? chanroblesvirtualawlibrary
Answer: (i) Yes, if it is concerned with a human or animal internal
parasite, or with the prevention or treatment of infestation by an
external parasite, when this is considered as a treatment of an illness
of which it is the vector or cause.
(ii) No, in all other cases. chanroblesvirtualawlibrary
Commentary: The method of treatment is excluded from patentability when
it is concerned with a surgical or medical treatment of the human or
animal body. The response to this question will vary according to
whether the prevention or treatment is therapy (or surgery) or not. The
notion of therapeutic treatment is connected with the notion of a human
or animal illness. However, the presence in itself of certain external
parasites on the human or animal body should not always be considered
as an illness. chanroblesvirtualawlibrary
Examples: 1. The treatment of the human body to remove tape worms will be a therapeutic treatment.
2. The treatment or prevention of itch mites in the case of the
treatment of scabies which they provoke will be a therapeutic
treatment. chanroblesvirtualawlibrary
3. An external treatment of fleas in the absence of an illness will not be a therapeutic treatment.
5.3 Novelty
Example 11 Limitation of a claim concerning a family of chemical compounds lacking novelty
A patent application claims chemical compounds of general formula:cralaw:red
'N'--- X,
wherein 'N' is an organic nucleus and X may be an alkyl group. In the
original application three particular compounds are mentioned wherein:cralaw:red
X = methyl (C1) X = propyl (C3) and isopropyl (C3)
In the case in which a prior publication discloses decyl(C10) what limitation of the claim may be accepted?
Answer: In order not to be unallowable as new subject-matter, the
limitation must be explicitly or implicitly derivable from the content
of the original application or must be in the form of a disclaimer.
(a) Content of the original application.
It is Seen that, in the original application, are disclosed in addition to the general formula
'N'---- X
-the particular compounds C1 and C3 (explicit)
-the group of compounds C1 to C3 (implicit)
(b) Novelty.
In this case it is considered that the general formula is no longer novel, but what remain novel are
-the compounds C1 and C3
-and the general formula 'N'--- X in which X may be an alkyl group other than C10'
From the point of view of novelty and the original disclosure, one is
led to accept, formulated in any way, the following limitation:cralaw:red
(a) -C1
(b) –C3
(c) –C1 and C3
(d) -C1 to C3
(e) -X = Cn (n =/= 10).
The limitations (a) to (d) are narrow and sufficiently removed from the
example of the prior document (C10). The examiner must ensure, however,
that the compounds are not selected arbitrarily but with a particular
purpose,
The limitations (c) to (e) should only be accepted if the examiner is
sure that he is dealing with a unitary group of compounds.
N.B.1: "X = C1 to C9 and C11 and above" should not be accepted since
C9 and C11 are not part of the original disclosure. Accept only the
disclaiming definition X = Cn (n = 10 excepted). chanroblesvirtualawlibrary
Inyentive Step.
If the prior publication describing the C10 compound was published
before the priority date of the claim, then it is necessary to
establish whether the limited claim is inventive. chanroblesvirtualawlibrary
N.B.2: When during examination, a very broad main claim has been
restricted to render the claim novel (e.g. by the incorporation of
matter which appeared from the original application to be of only minor
importance) the substantive examiner should consider whether or not a
further search is required.
Example 12 Novelty in connection with composition ranges
Question 1 :cralaw:red
When compositions are defined by a range, what criteria are to be employed in determining novelty?
Answer:cralaw:red
1. Exemplified specific values are novelty-destroying if they lie within a claimed range.
2. The end-values of a published composition range are
novelty-destroying if they automatically lead to a specific
composition.
This is generally the case with binary compositions. For example, the
publication of the composition range 40 to 70% A, 60 to 30% B is
novelty-destroying for the following specific compositions:cralaw:red
(1) 40% A, 60% B, and (2) 70% A, 30% B
An application that claims for example, the overlapping range 65 to 85%
A; 35 to 15% B has to include a disclaimer to the composition 70% A:
30% B in order to be novel.
In composition ranges for compositions having more than two components
the end-values do not normally lead to a specific composition (assuming
that no further information is given in the publication). The
composition ranges: A: 10 -30%, B: 25 -40%, C: 40 -60% do not lead
directly to any specific composition.
In contrast to the above, the composition ranges: A': 10 -30% B': 25
-40% C': 30 -65% have clear specific limiting compositions, namely (1)
30% A', 40% B', 30% C' and (2) 10% A', 25% B', 65% C'- which are to be
regarded as explicit disclosures.
The general rule is: If the limiting value of a component in a
published composition range leads automatically to distinct values for
the other components (possibly by means of information in the
publication), then the respective composition is to be regarded as
explicitly disclosed.
3. Where a prior publication discloses a broader or overlapping range the following principles are to be applied:cralaw:red
N.B.: Inventiveness: For those areas which are common to both
application and the citation the known requirements for inventiveness
of selections are, of course, to be employed.
Question 2 =
When a disclaimer is employed to establish novelty with respect to an
overlapping range disclosed in a prior art document, what format should
the disclaimer have and which disclosure may be used as a basis for the
wording of the disclaimer?
e.g. Range claimed in application x = 600 to 10,000.
Range disclosed in prior art x = 240 to 1,500
Answer: The disclaimer should form part of the claims and not only the
description. The wording of the disclaimer should be based either upon
the original disclosure (e.g. a value originally disclosed in the
description or an example) or on the content of the prior art document.
In the above case the range, x = above 1,500 to 10,000 is acceptable
whereas x = 1,500 to 10,000 is not as the value 1,500 was not disclosed
in the original application.
Example 13 Novelty of chemical compounds
Question 1
What criteria are to be used in determining whether or not a chemical
compound, a composition, an alloy etc. is novel with respect to a prior
document?
Answer
i) Normally a chemical product (compound, a composition, an alloy
etc.), is considered to be known if the product has been mentioned in a
prior art document and the information in and the teaching of the prior
art document together, where appropriate, with common general knowledge
at the effective date of the document, would enable the man skilled in
the art to make and separate the product, or in the case of a product
of nature, only to separate the product. The term "mentioned" is to be
understood as referring to a precise definition of the product either
by (a) its name, (b) its formula, (c) its parameters or (d) as the
product of a process.
Thus in cases (a) and (b) the mere name or chemical formula will be
novelty-destroying to a later application, provided that the name or
chemical formula is sufficient to define the product with a degree of
precision equal to or greater than that used in the later application.
In case (d) if the prior art document discloses starting materials in
combination with the process in such a manner that their use in the
process inevitably results in the claimed product, then the prior art
document is novelty-destroying.
ii) If, in response to an objection of lack of novelty, the applicant
produces evidence proving that it would not have been possible for a
man skilled in the art, to prepare and to separate the compounds under
the conditions set out in the cited document, the cited document is not
novelty-destroying.
iii) It should also be noted that a general formula does not destroy
the novelty of a single member or a sub-group within the large group
corresponding to the general formula.
Examples: "Halogen" does not destroy the novelty of chlorine. "Lower alkyl" does not destroy the novelty of C2H5.
On the other hand, a list of mentioned chemical compounds destroys the
novelty of every member of the list, provided it can be prepared and
separated, as stated in the first paragraph.
Example: A list containing the members:cralaw:red
Ø-CH3
,Ø-C2H5 ,Ø-i-C3H7 ,Ø-n-C3H7, Ø-n-C4H9
destroys the novelty of: Ø-C2H5.
However, a reference to C1-C4 compounds destroys the novelty of the C1
and C4 compounds, i.e. the explicit ends of the range. On the other
hand, if the C4 compound has several isomeric forms, the novelty of
each individual isomer is not necessarily destroyed by a reference to
the C1-C4 compounds. In this case the name or the formula may be
insufficient to precisely define the product. The examiner must
determine whether the product of the prior art document is identical
with the product of the application, for example by comparison of the
physical, chemical or other properties of the two products under
consideration.
Question 2
Are physico-chemical data, medical data or other verifying data for
chemical compounds in a publication or in a prior patent application,
required for an opinion that the compound in question is known?
Answer: No,
but they might be used to refute an argument of lack of novelty.
Example 14 Novelty of stereo isomers
A racemic mixture is an optically inactive mixture of equal parts of a
dextro- and a laevo-compound. If a racemic mixture is known will the
two optically active constituents also be considered to be known,
(a) if the constituent has not previously been mentioned express is verbis?
(b) if the constituent has been mentioned previously?
(c) if it is merely said in a prior art document that racemic mixtures may be resolved into their constituents?
Answers:cralaw:red
(a) No, but exceptionally, if in a prior art document, a
particular stereoisomer is not explicitly mentioned but there is
adequately described a process for reacting a starting compound such
that, upon carrying out the process on the starting compound, the
particular stereoisomer would inevitably be produced, then the prior
art is novelty-destroying.
(b) Yes, provided the information in, and teaching of the prior art
document, as well as general knowledge at the effective date of the
document, would enable the skilled man in the art to carry out the
separation and isolation. It should be noted, that the separation and
isolation have not necessarily to have been carried out to destroy
novelty.
(c) No.
N.B. The inventive step of the optically active constituent has also
to be considered. This could be established by comparing an effect
(e.g. therapeutic) of the stereoisomer with the state of the art.
Example 15 Novelty destroying effect of non-repeatable prior art
In an earlier publication a specified chemical compound is described by
a formula and a characteristic property. e.g. its melting point.
Possibly also the method for its manufacture is given in the same
article or alternatively in some other publication.
An application is later filed claiming the same compound. The applicant
states that it was not possible to make the compound using any of the
known methods. He himself has invented a new method by which he
succeeded in manufacturing the compound.
Should the compound be considered to be novel in spite of the fact that
it has been apparently been prepared earlier in some way and also
characterized, although its preparation later proved to be impossible
applying the known methods?
Answer: A chemical product is considered to be known if the product has
been mentioned in a prior art document and the information in and the
teaching of the prior art document together, where appropriate, with
the general knowledge at the effective date of the document, would
enable the skilled man to make and separate the product.
The examiner should ask the applicant for convincing evidence that
preparation of the compound according to the earlier publication is
impossible. If then, the examiner is convinced that no method was
available at the date of the earlier publication for the manufacture of
the specific chemical compound, the compound is novel in spite of the
fact that the characteristics given for the prior art compound are
correct.
The novelty of the compound could also be based on the fact that this
compound, although designated by the same name, exhibits different
characteristics from the previously designated compound.
Example 16 Novelty of naturally occurring products
A naturally-occurring product referred to as a hereafter as Product A
is claimed in an application. Is the product novel in the following
circumstances?
Case 1. The prior art discloses a product having the same activity but
does not indicate its formula nor any physico-chemical characteristic
or parameter, or its way of manufacture that enables the examiner to
establish whether the prior art product is the same as or differs from
Product A.
Answer. Since the activity alone is insufficient to unambiguously define the product of the prior art, Product A is new.
Case 2. Product A is claimed as having a specific activity and is
described in terms of physico-chemical characteristics. The prior art
discloses a product having the same activity and certain other
physico-chemical characteristics.
Answer. To establish whether Product A and the prior art product are
the same the examiner can only employ characteristics which
unambiguously identify a product. A tentative objection of lacking
novelty must be raised in specific circumstances. The examiner must
ensure that Product A which is identified by certain parameters is not
a mere re-writing of a product that is already known and which is
identified by other parameters.
Case 3. The prior art discloses a product in the form of a mixture with
an impurity B in an amount of up to X%. The application claims a purer
form in which B is in a smaller amount x%.
Answer. The criteria for selection inventions are to be employed in
determining whether or not the purer product is novel. The prior art is
considered to relate to a composition of the Product A and the impurity
whereas the purer product is a selection within this composition
containing a smaller amount of impurity. The degree of impurity of the
claimed product must be substantially below that encountered in the
prior art and the claimed purer product must achieve a specific purpose
or specific technical effect which differs from that of the prior art
(purposive selection). If these criteria are fulfilled then the purer
claimed product is novel.
Case 4. Product A is known in a form which has been purified but the
formula was not disclosed. The applicant now says that he has been able
to identify the formula of Product A and claims it.
Answer. A claim directed to the formula of a known product lacks novelty.
5.4 Inventive step
Example 17 Inventive step in chemical compounds
What is required to accord inventive step to a novel chemical compound?
a) if the compound is not structurally close to known compounds?
Answer: In these rare cases the examiner should decide that there is
inventive step in the structure and no use or effect has to be
considered.
b) if the compound is structurally close to known compounds?
Answer: To accord an inventive step the novel compound must exhibit a
use or an effect which is unexpected. Fulfilment of this condition is
sufficient for inventive step. This un-expected use or effect may be
entirely different from the known uses or known effects of the known
compounds. Alternatively, it may be a substantial improvement in an
effect of the same kind as is exhibited by the known compounds. Further
a use or effect is to be considered as unexpected when no use or effect
at all has been explicitly described in the prior art or is derivable
from general knowledge.
The indication of an unexpected use or effect which supports the
patentability of a new compound may be filed later than the original
filing date of the application. However, this is new subject-matter so
this effect generally cannot be introduced into the description or the
claims. chanroblesvirtualawlibrary
Note 1: To support an objection of lack of inventive step it is
sufficient that the skilled person would have regarded the applicant's
novel compound as something he could make or use. It is not necessary
that the citation incites the skilled person to make or use the novel
compound. Nevertheless it is necessary, in order to support the
objection, to give some reasons why these properties are expected and
not simply to write that the novel compound is structurally close to
the known compounds. chanroblesvirtualawlibrary
Note 2: The fact, that the documents cited in the search report are
not sufficient by themselves to raise such an objection does not
prevent the examiner from C raising it if he thinks that these
documents combined with general knowledge in the field concerned will
allow him to object. This may happen, for example, when the objection
of lack of inventive step is based on only one document, combined with
general knowledge not contained in a document cited in the search
report. In such a case the examiner may, if necessary, do a quick
search in reference books in order to prove his assertion concerning
common general knowledge. He should nevertheless object, whatever the
result of this search may be. If the applicant contests the objection
there are three possibilities: chanroblesvirtualawlibrary
- the examiner waives the objection because he is convinced by the applicant's arguments
- the examiner maintains the objection because he is satisfied that
even without a document the objection is soundly based chanroblesvirtualawlibrary
- the examiner does an additional search and acts according to the result of this search. chanroblesvirtualawlibrary
Note 3: In some cases inventive step could be based upon the
inventiveness f the process by which the novel compound is obtained. chanroblesvirtualawlibrary
Note 4: In order to establish inventive step of a claim which relates
(i) to a known compound for a specific pharmaceutical use in surgery
or treatment or (ii) to compositions containing known active substances
for a specific pharmaceutical use in surgery or treatment, the examiner
will generally have to ensure that sufficient details of
pharmacological effects are available. It may be necessary for the
examiner to request details of qualitative effects or quantitative
data, exceptionally in the form of comparative tests, from the
applicant.
Example 18 Comparison of properties. The need for comparative tests chanroblesvirtualawlibrary
Is it necessary, in order to establish an inventive step, to make a
comparison between a specific effect (e.g. analgesic) of the new
compound (e.g. Z-C2Hs) and the effect of a structurally-related
compound (e.g. Z-CH3) in the case of:cralaw:red
(a) no effect being mentioned in the prior art document, or chanroblesvirtualawlibrary
(b) a different effect (e.g. as plasticiser) being mentioned in the prior art document, or chanroblesvirtualawlibrary
(c) the same effect being mentioned in the prior art document, or ,. chanroblesvirtualawlibrary
(d) a related effect (e.g. anaesthetic) being mentioned in the prior art document? chanroblesvirtualawlibrary
Answer:cralaw:red
(a) No.
(b) No.
(c) Yes, when the applicant does not provide any evidence
that would render the existence of an inventive step plausible, a
comparison is necessary to demonstrate any new and surprising technical
advantage that may be present, particularly in the case of a claimed
range of values where one of the limits of the range is close to a
value disclosed in a prior art document.
(d) Only if it is obvious that a man skilled in the art could expect
that the known compound would also have an analgesic effect.
chanroblesvirtualawlibrary
Note: Applicants are reluctant to make comparative tests on the grounds
of the expense and time involved and they should be called for only
when absolutely necessary. The examiner should rather ask for any kind
of proof of the presence of a new and surprising technical advantage,
than explicitly for comparative tests. Comparative tests may be needed
when the compound falls within the area of a known general formula or
is just outside such a formula or is structurally closely related to a
known compound. Whenever a comparative test is made, the comparison
must be with the technically closest prior art, in a comparable type of
use. For a claimed organic compound, the compound which must be used
for the comparative test, is that prior art compound with the closest
possible similarity from the point of view of both structure and
effect. In principle the compound used for the comparative test should
be a known compound. In exceptional cases a fictive compound may be
used. chanroblesvirtualawlibrary
Example 19 Inventive selection chanroblesvirtualawlibrary
Suppose that a prior art document discloses a group of chemical
compounds expressed by the general formula A-R, in which A is the major
part of a molecule and R is an alkyl group, having 1-20 carbon atoms.
An applicant now claims a narrow group of these compounds, with 3-5
carbon atoms in the alkyl group whereby the new narrow group lies
within the earlier group.
Suppose that no chemical compounds within this narrow group are
mentioned explicitly in the prior art document, i.e. either by name or
by formula, nor by physico-chemical data, the narrow group itself has
not been mentioned explicitly, and the examples in the prior art
document are remote from the narrow group (e.g. C16,C17) Furthermore,
the compounds of the narrow group all exhibit a technical effect or
property which is not disclosed in the prior art document. chanroblesvirtualawlibrary
Will the compounds of the narrow group according to the later
application be judged to show inventive selection and represent a
patentable invention? chanroblesvirtualawlibrary
Answer:cralaw:red
Novelty: From what is said above, and having regard to the conditions
enumerated in example 23 above, the small group of compounds is novel. chanroblesvirtualawlibrary
Inventive Step : If the above-mentioned technical effect or property
is' unexpected, an inventive step is present. The invention would
therefore be patentable. chanroblesvirtualawlibrary
Processes: Similarly a process can be considered inventive where the
selection of narrow group of starting compounds from a larger group of
known starting compounds leads to an unexpected effect, such as an
unexpected increase in yield when compounds of the narrow group are
reacted.
Example 20 Inventive step in claims for intermediate chemical products chanroblesvirtualawlibrary
Preliminary remark: The intermediate chemical products considered here
are those for which no direct activity can be used to establish
inventive step. They are used to prepare inventive "subsequent
products" or are intermediates in an inventive process. chanroblesvirtualawlibrary
Question: Which criteria apply when considering inventive step? chanroblesvirtualawlibrary
Answer: In the case of an intermediate used in an inventive process,
the inventiveness may be derived from its contribution to the inventive
process. In the case of an intermediate taking part in an analogy
process (standard process) for the preparation of a patentable
"subsequent product", in order to be inventive the intermediate should
make a structural contribution to the subsequent product and the
structural contribution provided by the intermediate should display ill
least one of those features which differentiate the subsequent product
from known compounds in the prior art. chanroblesvirtualawlibrary
Example 21 Inventive step of a product based on the process for its production chanroblesvirtualawlibrary
Can the inventive step for a chemical product reside in a process for its preparation?
Answer : Only in the case where a technical prejudice to its production
or insurmountable difficulties in its production were believed to
exist. An example is alumina having a high specific surface area (SSA),
used as a catalyst. It would clearly be advantageous to increase the
SSA (increased catalytic activity) but in the state of the art a limit
has been reached. An alumina having a still higher SSA obtained
unexpectedly by a new process is considered to involve an inventive
step. In the claim this alumina must be characterized by its parameters
or as the product of a process.
5.5 Disclosure of invention
Example 22 Chemical compounds-statement of use or effect chanroblesvirtualawlibrary
Has a specific use or effect to be mentioned in an application for a
chemical compound (unless it is obvious for the man skilled in the art
what the use or effect of the compound is)?
Answer: No a specific use or effect for a new chemical compound need
not be stated in order to meet the requirement of industrial
applicability.
N.B.: If compounds having closely related chemical structures are
known, the question arises of how inventive step is established.
Normally, inventive step is considered to be present, if a new chemical
compound has unexpected special properties in comparison with the known
closely structurally-related compounds. If inventive step is considered
with regard only to a structure as a consequence of no reference to use
or effect being present then the requirement of inventive step will
seldom be met. chanroblesvirtualawlibrary
Example 23 Amendment of the disclosure after the filing date chanroblesvirtualawlibrary
May the disclosure of the invention be amended after the filing date of the application by the addition of : chanroblesvirtualawlibrary
(1) an advantage of the invention in relation to the state of the art chanroblesvirtualawlibrary
(2) a property (e.g. melting point, surface tension or
herbicidal properties) of an originally disclosed compound chanroblesvirtualawlibrary
(3) details of the structure of an originally disclosed compound or a corrected formula chanroblesvirtualawlibrary
(4) examples or other technical information? chanroblesvirtualawlibrary
Answer: If it can be shown that the new matter is derived directly and
unambiguously from what is originally disclosed including any features
implicit to a person skilled in the art in what is explicitly contained
in the originally filed application, it may be admitted. Matter which
is derivable directly and unambiguously from the prior art may also be
admitted. If the new matter is not of these two kinds its admission
into the application itself should be refused.
N.B.: Usually subject-matter of the categories (1) to (4) will not be
implicit in the original disclosure and cannot be introduced into the
application. However such subject-matter may be taken into the file and
used as evidence to show inventive step. chanroblesvirtualawlibrary
Example 24 Disclaimers to compounds which cannot be prepared chanroblesvirtualawlibrary
What limitations can be accepted to a claim to compounds of the general
formula N-X (where N is an organic nucleus and X an alkyl group) after
the examiner has objected that certain compounds falling within the
general formula (e.g. the heptyl derivative N-C7 H15) cannot be
prepared? chanroblesvirtualawlibrary
Answer: In order not to be unallowable as new subject-matter, the
limitation must be explicitly or implicitly derivable from the original
application or in the form of a disclaimer. Consequently the limitation
X=Cn (n=7 and above) is acceptable when the examiner is reasonably sure
that the C7 and above compounds cannot be prepared. If C6 is not part
of the original disclosure then the limitation C1 to C6 cannot be
accepted. If, for example, C9 to C12 cannot be prepared then the
limitation would have to be X= Cn (n= 9,10,11,12). However the examiner
should not accept such a limited claim unless he is reasonably sure
that it is concerned with a unitary group of compounds.
5.6 The claims chanroblesvirtualawlibrary
Example 25 Claims containing functional features chanroblesvirtualawlibrary
Is a composition claim allowable if the quantities of substances
forming the composition are defined by a functional feature? For
example, the claim may read as follows, whereby the functional feature,
i.e. the desired result is underlined.
“A selective weed-killing composition comprising herbicidal compound H
1 and herbicidal compound H2 characterized in that the compounds H1 and
H2 are present in quantities that generate a synergistic herbicidal
effect". chanroblesvirtualawlibrary
Answer: chanroblesvirtualawlibrary
A) Claims can be characterized by such a functional feature (i.e. the
obtention of a desired result) only if no other more precise manner of
defining the claimed matter exists. In particular, the result must be
verifiable directly and positively by tests which are adequately
specified in the description. Thus in the above case, if the obtention
of the herbicidal synergistic effect could be adequately and precisely
described by specific ( quantity ratios for the substances H1 and H2,
the above form of claim would not be allowable. chanroblesvirtualawlibrary
B) On the other hand, if there is no more precise manner of defining
the claimed matter and such a functional feature is necessary to ensure
that the applicant obtains adequate protection, the above type of claim
can be allowed provided the conditions of clarity are satisfied. These
conditions are that the skilled man must not only be able to understand
the technical features implied by the wording of the claim but also the
claim must disclose a technical teaching that the skilled man can
perform without unreasonable difficulty. In particular, this means that
those tests which are specified in the description for determining
whether or not the desired result has been achieved must be of a
routine technical nature. chanroblesvirtualawlibrary
Example 26 Definition in claims by parameters chanroblesvirtualawlibrary
Only parameters usual in the art should be employed. This provision
prevents misuse of unusual parameters to disguise lack of novelty.
Definitions using unusual parameters will also make the identification
of products in later search and examination procedure more difficult.
What action should be taken when parameters are used to identify a
chemical product in a claim?
Answer:cralaw:red
A) If the parameters are usual and clear and they are used in such a
way that a comparison with the cited prior art can be made, then normal
examination for novelty is made. chanroblesvirtualawlibrary
B) If the parameters are obscure then the examiner should ask for an explanation of them.
There are then three possibilities: chanroblesvirtualawlibrary
(1) a straightforward explanation possibly with an amendment (e.g. a
simple table of comparisons with usual parameters) is filed which
includes no new subject-matter. This is acceptable. chanroblesvirtualawlibrary
(2) an explanation is filed and/or an amendment is filed which adds new matter that is not allowable. chanroblesvirtualawlibrary
(3) no explanation is filed. chanroblesvirtualawlibrary
In cases (2) and (3), the Examiner should consider refusing the application. chanroblesvirtualawlibrary
C) If the parameters are usual and clear but they are used in such a
way that a comparison with the state of the art is not conclusive, it
might not be feasible to make an objection of lack of clarity since the
application is clear in itself. Where the examiner is of the opinion
that the claimed product is not novel, he should make a tentative
novelty objection asking the applicant to explain what differences
exist between the claimed and prior art products. The examiner can also
ask for a discussion of the prior art. chanroblesvirtualawlibrary
Note: The use of new parameters may, in some cases, be necessary for
the definition of a chemical product and for this reason should not be
prohibited, if convincing arguments are presented. New parameters may
also improve the manner of definition especially if they are used in
addition to usual parameters. chanroblesvirtualawlibrary
Example 27 Analogy processes chanroblesvirtualawlibrary
(1) May several independent analogy process* claims for the
manufacture of a new chemical compound be allowed in the same
application?
Answer: Yes. A combination of analogy process and per se product claims is also allowable.
(2) May several independent analogy process* claims for the manufacture
of a family of new chemical compounds be allowed in the same
application? chanroblesvirtualawlibrary
Answer: Yes, provided the family of chemical compounds is unitary. It
is also possible to allow several analogy process claims, whereby
performance of a claimed process leads to the manufacture of only some
of the compounds of the unitary family, i.e. providing the family of
chemical compounds is unitary the independent analogy process claims
need not have exactly the same scope. chanroblesvirtualawlibrary
(3) Is the following analogy process claim acceptable? chanroblesvirtualawlibrary
"Process for the preparation of compounds according to claim 1,
characterized in that the compounds are prepared by known methods for
the preparation of analogous compounds". chanroblesvirtualawlibrary
Answer: No, the claim must specify, the known methods used in the
claimed process on the basis of information given in the description.
In the absence of such specific indications, the rejection of the claim
would be based upon lack of clarity. chanroblesvirtualawlibrary
* An "analogy" process is a chemical process for the production of a
new chemical compound by which, either (1) the starting materials are
different but of similar constitution to the starting compounds
previously used in the known processes, are reacted together following
the same procedure, to give, as expected new compounds of a similar
constitution to the products obtained by the known processes or (2) the
~ starting materials as used in the known processes are employed in a
similar procedure, to give, as expected new compounds of similar
constitution to the products obtained by the known processes.
Example 28 Independent claims of the same scope chanroblesvirtualawlibrary
May, in an application, several independent claims for the same product
characterized in different ways, using a chemical formula, different
parameters or a product-by-process be allowed?
Answer: Yes, claims defining a product by a chemical formula and
product-by-process claims for the same product are allowable in the
same application. Claims for products defined only by parameters are
also admissible in the same application as other independent product
claims. A product claim is also admissible if it uses a combination of
structural characteristics, process steps and parameters. chanroblesvirtualawlibrary
Example 29 Claims containing generic expressions chanroblesvirtualawlibrary
1. Is the employment of a general expression, such as "alkyl or aryl",
covering a large number of possible substituents, in the following
claim allowable?
chanroblesvirtualawlibrary
" The compound
chanroblesvirtualawlibrary
wherein X is selected from hydrogen, halogen, cyano, aryl and alkyl." chanroblesvirtualawlibrary
Answer: Although these expressions are broad they are not necessarily
unclear and their allowability will depend on the circumstances of the
case being examined. There are circumstances when these expressions are
not permissible and objection should be raised. In deciding these
circumstances, the examiner should take into account the teaching of
the prior art and the general knowledge in the art. For example:cralaw:red
(1) The objection can arise that an effect which renders the claimed
compound inventive is not exhibited by all of the claimed compounds. An
objection of lack of inventive step would be appropriate. chanroblesvirtualawlibrary
(2) More rarely the objection might arise that the claimed invention
cannot be carried out over the whole range of the claim. For example,
steric hindrance might render the preparation of some of the claimed
compounds impossible. An objection of lack of sufficiency of the
disclosure should be considered. chanroblesvirtualawlibrary
2. Are claims containing phrases, such as, "possibly substituted aryl
radical" or "the compounds of the above formula may be further
substituted" allowable? chanroblesvirtualawlibrary
Answer: As in case 1 above, although these expressions are broad they
are not necessarily unclear. No objection should be raised in the
following cases:cralaw:red
(1) the description gives a precise definition of the substitution,
allowing the claim to be clearly and easily interpreted. The examiner
should also consider whether it would be appropriate to include this
definition in the claim, or
(2) a clearly defined part of the structure is responsible for the
properties or activity of the compound and the description gives
sufficient indication of the kinds of substituents intended, by
mentioning either their nature or function. However, in this case as
well, the examiner should consider the appropriateness of including an
indication of the kinds of substituents in the claim. chanroblesvirtualawlibrary
In other cases the examiner must decide whether such phrases introduce
obscurity into the claim having regard to what is known from the cited
prior art. Where such a phrase blurs the distinction between the prior
art and the claimed matter it is open to a clarity objection.
5.7 Microbiological processes, genetic manipulation and products obtained by such procedures
Example 30 Novelty of naturally-occurring polymers
A naturally-occurring polymer (e.g. protein, polypeptide, nucleic acid,
polysaccharide) is claimed in an application. For the purposes of this
example, this polymer is referred to as a hypothetical "Protein X". In
the case of nucleic acids and polysaccharides "amino acid sequence"
should be replaced by "base sequence" or "saccharide sequence"
respectively, where appropriate. Is the claim novel in the following
circumstances?
Case 1) Protein X is characterized by its complete amino-acid sequence.
A product having the same amino-acid sequence is disclosed in the prior
art.
Answer: Protein X is not new.
Case 2) Protein X is characterized by its complete amino-acid sequence.
The prior art discloses a product having the same physiological
activity as protein X but does not indi-cate the amino-acid sequence of
the product nor any physico-chemical characteristic or parameter that
enables the examiner to establish whether the prior art product is the
same as or differs from protein X.
Answer: Since several proteins may exhibit similar physiological
activities, the statement of a specific physiological activity in the
prior art is insufficient to unambiguously define the prior art
product, i.e. a specific physiological activity does not imply that the
prior art product and protein A have the same chemical composition and
the same structure. Protein X is new.
Case 3) Protein X is claimed as having a specific physiological
activity and is characterized by physico-chemical characteristics. The
prior art discloses a product having the same physiological activity as
Protein X and certain other physico-chemical characteristics.
Answer: To establish whether protein X and the prior art product are
the same the examiner can only employ characteristics which
unambiguously identify a single protein. These characteristics do not
include molecular weights and isoelectric points as they are not unique
characteristics of a single protein. The instructions with regard to
characterizing products by parameters are to be followed i.e. a
tentative objection of lacking novelty must be raised in specific
circumstances. The examiner must ensure that protein X, which is
identified by certain parameters is not a mere re-writing of a product
that is already known and which is identified by other parameters.
Case 4) The prior art discloses a protein X but only in the form of an
impure mixture. The application claims a purer form of protein X.
Answer: The criteria for selection inventions are to be employed in
determining whether or not the purer product is novel. The prior art is
considered to relate to a composition of the protein X and impurities
whereas the purer product is a selection within this composition
containing a smaller amount of impurities. It follows that the degree
of impurity of the claimed product must be substantially below that
encountered in the prior art and claimed purer product must achieve a
specific purpose or specific technical effect which differs from that
of the prior art (purposive selection). If these criteria are fulfilled
then the purer claimed product is novel.
Case 5) Protein X is known in a form which is pure from other
contaminating proteins but the amino-acid sequence of protein X was not
disclosed. An applicant claims the amino acid sequence of protein X.
Answer: A claim directed to the amino-acid sequence of a known protein lacks novelty.
Case 6) Protein X is known but the applicant has obtained it for the
first time using recombinant DNA technology. The applicant claims the
protein A so obtained. Answer: Such a claim lacks novelty, as to
obtain a known protein using a different technology does not confer
novelty on the resultant product, however difficult or time- consuming
the technology might be.
Case 7) Protein X was known in a glycosylated form. It is now claimed
"unglycosylated". Answer: The unglycosylated protein is novel. Protein
X with a different glycosylation pattern than that disclosed in the
prior art would also be novel.
Example 31 Novelty-destroying effect of micro-organisms mentioned in prior art
What is the novelty-destroying effect of micro-organisms cited in the
prior art, e.g. in patents or in scientific publications. but which are
neither commercially available nor obtainable from a depository?
Answer: For the sake of defining the novelty-destroying effect of such
micro-organisms, it is assumed, unless the contrary is established,
that these micro-organisms are available as of the date of publication.
In fact many scientific periodicals request from the authors whose
articles they publish, that samples of the biological material cited in
the articles be delivered to third parties on request.
In the same way. when a patent or patent application relies upon a
previously published document for sufficiency of disclosure, if this
previously published document uses a micro-organism, it is assumed that
the micro-organism is available even in the absence of a deposit.
Example 32 Patentability of claimed DNA sequences
Question 1: Is the following claim allowable? :cralaw:red
"DNA sequence coding for Protein A" where "Protein A" meets the requirements set out in the cases indicated below?
Case 1 : "Protein A" is a novel inventive protein.
Answer: In such a case, providing the DNA sequence itself is new, the
broad claimindicated above is acceptable. The claim may cover a
specific sequence as well as all sequences coding for "Protein A" due
to the degeneracy of the genetic code.
Case 2 : "Protein A" is known, but its chemical structure is not.
Answer: If it was possible for the man skilled in the art to sequence
"Protein A" at the date of filing of the application, then there would
be no inventive step in deducing the DNA sequences which would code for
the protein. Thus the above claim would lack inventive step.
Case 3 : "Protein A" is known by its amino-acid sequence.
Answer: The skilled man can derive the DNA sequences coding for "Protein A" and therefore the above claim lacks inventive step.
Question 2:: Can a claim relating to the selection of a specific DNA sequence coding for a protein be allowed?
Answer: Yes, since an invention may reside in the choice of a specific
DNA-sequence, selected in a non-obvious way from a pool of all possible
sequences which would code for the protein such that an unexpected
result or effect could be achieved. The unexpected effect might be, for
example, the expression of the desired protein in a specific host cell,
or the use of a specific host/recombinant vector system.
Example 33 Claims to recombinant vectors
How is a recombinant vector, e.g. a plasmid, to be characterized?
Answer: A recombinant vector, being a chemical product, may be characterized:cralaw:red
(a) by its formula (DNA sequence)
(b) as the product of a process
(c) by a combination of parameters and/or properties (cleavage map, molecular weight, number of base pairs, etc. )
(d) by the composition of its sub-parts (origin, markers, promotors, replicons, etc. …)
It may also be characterized by reference to a deposit of a biological material in which the recombinant vector is present.
Applicants often use their own private and arbitrary designation to
characterize therecombinant vector in the description and claims. Such
a designation is meaningless for third parties and cannot be accepted
as clearly identifying the product.
Examcle 34 Hybridomas and monoclonal antibodies
Is the following set of claims acceptable where the prior art is defined as indicated in the cases A and B below?
1. Monoclonal antibodies against K
2. Hybridoma cell line producing monoclonal antibodies according to claim 1.
3. Process for the preparation of a hybridoma cell line according to
claim 2 characterized in that spleen cells derived from a mouse which
has been previously immunized with K are fused by conventional
techniques, with mouse myeloma cells and that subsequent selection of
the hybrid cells producing the desired antibodies takes place.
Case A -Prior Art :cralaw:red
K is known as an antigen, or it is readily derivable for the man
skilled in the art that it has immunogenic properties (e.g. K is a
protein). Monoclonal antibodies against the K antigen have not yet been
prepared.
Case A -Answer:cralaw:red
It is well-known that by use of the classical fusion technique of
Kohler and Milstein (Nature 1975, volume 256, page 495), monoclonal
antibodies against a predetermined antigen can be routinely obtained so
that claim 1 is not acceptable for lack of inventive step.
On the other hand, claims directed to specific hybridomas (which
generally must be deposited) and to monoclonal antibodies produced
thereby which display unexpected properties or effects (e.g. a low
cross-reactivity with other antigens) are considered to involve an
inventive step. In such a case the claims should be drafted in terms of
the technical features which characterize the invention, e.g.
"Hybridoma cell line having the deposit accession number ATCC TIB 148"
"Monoclonal antibodies against the K antigen obtainable from the
hybridoma cell line having the deposit accession number ATCC TIB 148"
Case B -Prior Art :cralaw:red
K is unknown or its immunogenic properties are not readily derivable for the man skilled in the art.
Case B -Answer:cralaw:red
Claims directed generically to hybridomas producing monoclonal
antibodies against the antigen, to the monoclonal antibodies per se and
to the method of preparation of the hybridoma are acceptable. No
deposition of any particular hybridoma is required, unless some
specific hybridoma are claimed, because it is considered that by use of
the classical fusion technique of Kohler and Milstein (See claim 3)
monoclonal antibodies of generic specificity can be routinely produced.
In this case the patentability of the hybridomas and of the monoclonal
antibodies is assessed at the level of the antigen, which needs to be
clearly defined in the specification so that its preparation is
reproducible. In this case, provided K is novel, a product claim
directed to the antigen K could also be acceptable.
Example 35 Claims for biological materials per se
How should a claim to a new biological material be formulated?
Answer: There are four possibilities:cralaw:red
(1) Where a strain of micro-organisms or another biological material
has been deposited with a recognized depository institution, the best
way of defining the biological material in a claim will be to use the
file number of the deposit and the name of the institution. Preferably,
the name of the genus and species, to which the strain belongs should
also be quoted, although this is not obligatory. Thus such a claim
could read:cralaw:red
"Biological material of the (genus) (species) (depositary institution) (file number of the deposit)."
(2) The biological material can be described by the process used to
obtain it from a known biological material. Only when the process used
is repeatable is it possible to use a "product-by-process" claim (See
NB.1 below).
(3) The biological material can be described by means of parameters,
in particular functional parameters, such as resistance to growth
inhibition. An example of such a claim could read:cralaw:red
"An L-histidine producing biological material belonging to the genus X
characterized by a resistance to growth inhibition by RNA polymerase
inhibitor."
-assuming that the growth of biological material of genus X is
otherwise inhibited by RNA polymerase inhibitor, the characterizing
feature of the above claim constitutes a simple routine test for
distinguishing the claimed biological material from those of the prior
art.
(4) The ability of a micro-organism to produce or transform an
organic compound can be used to characterize a micro-organism, See
above, Chapter II, 6, Annex 1, point 2.2).
Note: Processes for the isolation of biological material from natural
sources, e.g. soil samples, and for obtaining biological material by
natural mutation are not generally repeatable. Artificial mutation
processes mayor may not be repeatable whereas genetic engineering
processes are often repeatable.
Example 36 Microbiological inventions
Assuming that a deposit of a claimed biological material is necessary,
will it be necessary to deposit several members of a "group" of
biological material indicated in the claim, e.g. several mutants of a
strain? Answer: The examiner should not decide that the number of
deposits is insufficient to support a claim unless he has in his
possession a document showing this or alternatively if he is sure.
Example 37 Generalizations in the field of microbiological inventions
Can biological material be protected by product claims covering a genus
or a species when only a few strains or even a single one is/are
accessible?
Answer: Yes, this is in principle possible. It is however highly
unlikely that such a claim could be sufficiently supported by the
description in the case of generalization to a genus. In order for the
scope of claims to be clear, an acceptable generalization could be such
that all the biological material covered have a common property or
activity and the description gives sufficient taxonomic information to
identify the biological material which are covered by the claims.
Example 38 Terminology in claims for biological materials
Question 1:cralaw:red
Are the terms "mutant" and "variant" permissible in claims for biological material per se?
Answer: The use of such terms generally raises a problem of lack of
clarity. Up to now there is no internationally recognized definition of
what "variant" exactly means, so the examiner has to carefully consider
case by case on the basis of the description, whether or not the scope
of protection is clear. Since the obtention of mutants is always based
on a random process the term "mutant" may also be a source of
unclarity. Unless the description defines these terms differently, they
should be given their ordinary and customary meanings which are the
following:cralaw:red
Mutant -any organism which differs from the parent strain by
modification in the genotype as the result of one or more mutations.
Variant -a strain which differs in some (often minor) way from a particular, named organism.
A possible way to make clear the scope of protection is to introduce a
functional limitation, such as a limitation to those mutants and
variants of a specific strain which perform the same function as the
parent strain. "Xanthomonas compestris NRRL B 1459 and mutants and
variants thereof capable of producing the polysaccharide of claim x".
Question 2:cralaw:red
If a claim is directed to a parent strain of a biological material and
its mutants and the scope of protection provided by the claim is clear,
is it necessary to deposit one or more of the mutants?
Answer: No, provided that .the parent strain is available, the mutation
technique is taught and there is evidence of acceptable mutation rates
leading to stable mutants, deposits of the resultant mutants are not
required for sufficiency of disclosure.
Question 3:cralaw:red
Is a deposit needed for a claim to a specific mutant or variant?
e.g. "Mutant Y-1 of Streptococcus NRRL 234567"
Answer: Generally, yes because it is very unlikely that such a mutant
can be obtained reproducibly from the parent strain. Mutational
techniques which make use of mutagenic agents (physical or chemical
agents) are random techniques based on trial-and-error and, therefore,
it is highly unlikely that, starting from an available micro-organism,
a specific, unique mutant can be reproducibly obtained. On the other
hand, it should be borne in mind that, in the era of gene technology,
mutational techniques may be developed which allow the precise and
reproducible introduction of a specific mutation into the genome. In
such a case a specific, unique mutant would also be reproducible in the
absence of a deposit.
Example 39 Novelty of biological material
How does the examiner, establish, whether, or not biological materials,
which. at least ,Seem to be very similar to biological material
mentioned In a prior art document (which possibly may refer to a
deposition), are novel?
Answer: If the examiner cannot recognize clear, distinguishing features
he should in the case of the search examiner, cite the prior art
document In the search report and, In the case of the substantive
examiner, raise a novelty objection. The applicant will then have to
show sound reasons why the alleged identity is not present and, if he
fails to show this, the Examiner should refuse the application.
Example 40 Inventive step for biological material
A new biological material is claimed per se, the form of claim being:cralaw:red
"Streptomyces P. NRRL 123456." It is disclosed in the application that
this biological material is capable of producing a Specific compound X.
Is it possible to accord inventiveness to the biological material
automatically, bearing in mind that it was impossible to predict that
the claimed biological material would be capable of forming the new
compound X?
Answer: No, an automatic admission of inventiveness is not generally
possible. The prior art relating to the compound X must be considered.
The biological material can be considered inventive either
(A) when the compound is itself inventive, for example:cralaw:red
(i) if X exhibits unexpected effects or advantages with respect to close compounds of the prior art, or
(ii) if the compound X is structurally not close to compounds of the
prior art, so that its properties could not have been predicted.
(in both (i) and (ii) above the biological material is the means by
which the unexpected effects or advantages of compound X are obtained)
or
(B) when the biological material enables the performance of an inventive process, for example:cralaw:red
(iii) if X is structurally close to known compounds and no unexpected
effect is present, but the choice of the biological material is in
itself unexpected for the manufacture of compound X, e.g. when the
prior art is concerned with a different genus for preparing the
structurally close compound and the examined case is the first one in
which it is disclosed to use a strain of streptomyces for the
preparation of this type of compound. Lack of inventiveness of the
biological material should be objected to in the case where X is ;
structurally close to known compounds and no unexpected effect is
present (as in the case (iii) above) and furthermore, the new
biological material is a mutant of a strain known to be capable of
making compounds structurally close to X and having the same utility.
Then it can be argued that it is obvious for the skilled man to mutate
the known biological material to obtain a new strain capable of making
the new compound X.
Note: Although inventive step for a biological material can normally
be assessed with reference to a compound which it produces other
properties of, biological material can sometimes be used for the same
purpose, e.g. the ability to metabolize a noxious pollutant.
Example 41 Biological material -availability to the public
The applicant has three options if he claims a microbiological process
or the product thereof which involves the use of a biological material
not apparently available to the public. He can, in order to disclose
the invention sufficiently:cralaw:red
(i) show that it is available, or if it is not available he can,
(ii) describe it in such a manner as to enable the invention to be carried out by the person skilled in the art, or
(iii) he can deposit a culture of the biological material.
For the examiner the question is not whether the biological material
can be described, but whether it is described so that the disclosure is
sufficiently clear and complete.
Question 1:cralaw:red
Should the examiner consider a biological material to be available to the public in the following instances?
(a) The applicant alleges that the biological material is available (without further information).
Answer: No, unless the biological material is known to be readily
available or known to be deposited with a depository institution and
available from there at the date of filing.
(b) The applicant says nothing about the availability of the biological material or its deposit in a depositary institution.
Answer: No, as under (a).
Question 2:cralaw:red
What measures must the examiner take to ensure that a biological
material is available to the public when a biological material has been
identified by a deposit, so that it is certain that the skilled man can
carry out the claimed invention and the requirements of sufficiency are
met?
Answer: Where the applicant and depositor are the same and the deposit
has been made with a recognized depository, it can be assumed that the
conditions under which the deposit has been made are such that the
biological material is publicly available. If the applicant and
depositor differ then the examiner should check with the depository
"that the biological material is available to the public. Exceptionally
a subsidiary (as applicant) which is controlled by a parent company (as
depositor) can be considered as a single entity so that a check is
unnecessary in these circumstances.
Example 42 Characterization of deposited biological material
In the case of inventions concerning microbiological processes or the
products thereof and involving the use of a biological material "that
the application as filed should give relevant information as is
available to the applicant on the characteristics of the biological
material".
What consideration should the examiner give to this information?
Answer: He should assume that it is correct and sufficient, any doubts
being resolved in favor of the applicant. However requests to add to
the description further information on the characteristics of the
biological material should be refused as new subject-matter. Such
information may remain in the file and be considered by the examiner
when necessary. On the other hand, the name of the depositary
institution and the file number of the culture are to be entered into
the application within 16 months of the date of filing. The inclusion
of this information is not new subject-matter and is necessary to
fulfill the requirements of sufficiency.
Example 43 Priority provisions for microbiological inventions
(a) What particular conditions have to be fulfilled with regard to priority in microbiological inventions?
Answer: In the case of inventions referring to micro-organisms not
available to the public at the date of filing of the first application
(irrespective of whether they have become available or not at the date
of filing the application), priority should be recognized in all cases
in which the applicant can show reasonable evidence, that the
micro-organism referred to in the application is identical with the
micro-organism referred to in the first application. Such evidence can
be
- based on a deposit at the date of filing the first application,
- with a recognized culture collection (Budapest Treaty)
- with a culture collection recognized by any national office
-
with any culture collection not recognized, provided there is no
evidence against the sound basis of that collection
- or other evidence as there may be according to the case,
bearing in mind that statements of the applicant should only be doubted
for specific reasons.
(b) Should priority be accepted if the applicant has,
simultaneously with original filing, deposited the micro-organism with
a culture collection that is not recognized by the Budapest treaty and
later deposits the micro-organism with a .recognized culture collection
and files an application?
Answer: Yes, according to the provisions in the answer under (a), provided the identity of the two deposits is proved.
(c) Should priority be accepted if the applicant has filed his
original application without any deposition of the micro-organism, in a
country where deposition is not required and the micro-organism is not
available to the public and where later, the applicant deposits the
micro-organism with a recognized culture collection and files an
application?
Answer: Yes, according to the last paragraph of the answer to (a), provide the micro-
organism with which the priority application is concerned and the micro-organism which is deposited are proved to be identical.
|
ANNEX to CHAPTER III, 7
Guidance for the assessment of unity
1. General
An application should
relate to one invention only. The reason for this is that an applicant
should file a separate application for each invention, and pay
corresponding fees for each application. If he includes more than one
invention in an application he might avoid the fee payment.
2. Two approaches for examining unity of invention: chanroblesvirtualawlibrary
There are two ways of examining for unity of invention. The
first method is called the "common subject-matter approach", and is the
traditional method used, and the second method, for purpose of
explanation, is here called the "Rule 605 approach", and is relatively
new. This rule says that unity of invention exists only if there is
technical relationship between the claimed inventions and they involve
one or more of the same or corresponding special technical features."
The above two methods should give the same result, but nevertheless both are explained below.
2.1 The Rule 605 approach comprises the following steps:cralaw:red
Step 1:cralaw:red
Compare the subject-matter of the first invention (1st
independent claim) with the relevant prior art to determine which are
the "special technical feature(s)" defining the contribution the
invention, considered as a whole, makes over the prior art. This means
identify those features that make the claim novel and inventive. chanroblesvirtualawlibrary
Step 2:cralaw:red
Compare the "special technical features" of the first invention
identified in step 1 with the subject-matter of the second invention
(2nd independent claim), and determine whether or not one or more of
the same or corresponding special technical features are present, i.e.
do the two claims contain the same features that are novel and
inventive. If they do, there is a technical relationship among the two
inventions.
Step 3:cralaw:red
Conclude that there is a single general inventive concept if
such technical relationship is present. If on the other hand, no such
technical relationship exists, conclude that there is no single general
inventive concept, and, consequently, that unity of invention is
lacking. chanroblesvirtualawlibrary
Step 4:cralaw:red
Repeat the above for the remaining independent claims.
2.2 The "common subject-matter approach" chanroblesvirtualawlibrary
The "common subject-matter" of two inventions (claims) is
the technical features which are common to the two inventions (claims).
In certain cases, two apparently different technical features may have
a common technical effect, which contributes to the "common
subject-matter".
The "common subject-matter approach" involves the following steps:cralaw:red
(i) identify the common
subject-matter (CSM) of the independent claims. Thus if claim 1 has the
features a, b, c, d, e, and f, and claim 10 has the features a, b, d,
e, g, and h, the common subject-matter comprises a, b, d, and e;chanroblesvirtualawlibrary
(ii) compare this CSM with the
disclosure of the closest prior art document to determine whether or
not it is known (and, possibly, also whether or not it is obvious) and
(iii) decide that there is no single
inventive concept between the independent claims, if said CSM is known
(or obvious, and vice versa).
3. "A priori" and "a posteriori" lack of unity
A
lack of unity "a priori" is based on general knowledge of the skilled
person, whereas "a posteriori" is based on knowledge from a particular
prior art document.
To illustrate these terms in more detail, consider the following set of claims:cralaw:red
1. A telephone
2. A telephone having a cradle switch
3. A telephone having a dial
4. A telephone having a rotary dial
5. A telephone having a pushbutton dial
Suppose that an application contains all of these claims.
They are all linked by a single general concept i.e. a telephone. If
the telephone is new and involves an inventive step, then these claims
form a group of linked inventions and are free from an objection of
non-unity.
If the telephone is not new or lacks an inventive step,
Claim 1 would not be allowable, for lack of novelty. Claims 2 to 5 are
then no longer linked by a single general inventive concept.
Consequently, an objection of non-unity would arise, it being assumed
that both the cradle switch and a dial themselves are inventive. chanroblesvirtualawlibrary
If the claims had been in the form:cralaw:red
1. A telephone
2. A cradle switch
3. A dial
4. A rotary dial
5. A pushbutton dial, chanroblesvirtualawlibrary
It would have been clear from the start that there was
non-unity. The second example indicates what is meant by "a priori". In
the first example however, it was necessary to know whether the concept
of a telephone was or was not new and inventive before one could decide
as to the unity, so that here the case of "a posteriori" arose. This is
the much more common case. chanroblesvirtualawlibrary
4. Claim containing alternatives (See III, 3.7).
Non-unity can sometimes arise where there appears to be only one claim, for example:cralaw:red
A thermoplastic moulding composition which comprises a
polyphenylene etherstyrene resin composition (A); and as a conductive
material, aluminium flakes (B), a combination of aluminium flakes (B)
with carbon fibres (C) or conductive carbon black (D), or a combination
of carbon fibres (C) and conductive carbon black (D), or carbon fibres
(C), in an amount sufficient to make the composition shielding against
electromagnetic interference when moulded.
It must be first recognized that this claim should be regarded as not one but five independent claims, i.e.:cralaw:red
1. A + B
2. A + B + C
3. A + B + D
4. A + C + D
5. A + C
If the combination of A with any conductive material is
known, then at first sight (a priori) there is non-unity. It must
nevertheless be considered whether the known combination is such as to
make the composition shielding against electromagnetic interference
when moulded. It must also be considered whether, having regard to the
problem to be solved, the materials B (aluminium flakes) and C (carbon
fibres) have something in common which makes these materials
particularly suitable for use in combination with the particular resin
composition A. Finally it should also be considered whether, having
regard to the state of the art, any of the combinations involves an
inventive step. It would be wrong to raise only a non-unity objection
if some of the combinations did not involve an inventive step. chanroblesvirtualawlibrary
5. Independent claims for related articles
Having dealt with a few examples of claims which sometimes
looked alike but nevertheless exhibited non-unity, it may be
instructive to look at some claims which do not look at all alike but
which do exhibit unity. chanroblesvirtualawlibrary
1. A transmitter including
carrier-frequency-hopping generating means (16) for generating as an
output a distinct sequence of carrier frequencies (f(t)), modulating
means (12,14,18) responsive to both a message signal and the distinct
sequence of carrier frequencies for modulating the message signal to
produce as an output of the transmitter a carrier-frequency-hopped
single sideband signal, characterized in that the distinct sequence of
carrier frequencies is generated in response to an assignment code
(c(t)) received from a remote receiver and representative of the
distinct sequence of carrier frequencies. chanroblesvirtualawlibrary
2. A receiver including
carrier-frequency-hopping generating means (24) for generating as an
output a distinct sequence of carrier frequencies related to a received
carrier-frequencyhopped single sideband signal, and demodulating means
(22,26,28) responsive to both the received carrier-frequencyhopped
single sideband signal and the distinct sequence of carrier frequencies
for demodulating the received carrier-frequency-hopped single sideband
signal to produce as an output of the receiver the message signal
related thereto, and characterized by means (24) for generating for
transmission an assignment code (c(t)) representative of the distinct
sequence of carrier frequencies. chanroblesvirtualawlibrary
In this case a single general inventive concept can be
recognized in the transmission of an assignment code representative of
the distinct sequence of carrier frequencies. These claims are an
example of independent claims in the same category.
6. Claims in different categories
Independent claims
See examples a) and b) in Chapter III, 7.1 – 7.2
7. “Markush” claims
The assessment of unity in case of Markush claims is dealt with under Chapter III, 7.4a chanroblesvirtualawlibrary
8. Different medical uses of a known substance chanroblesvirtualawlibrary
If an application discloses different medical uses of a known
substance, and the uses are new, then independent claims for the
substance having the different uses may be claimed. There is no lack of
unity since the unifying concept is the first medical use of the
substance, which is novel and inventive.
9. Further examples
Further examples
concerning the assessment of unity can be found in Chapter VII, 4
(Unity of invention).
|
ANNEX 1 to CHAPTER IV, 9
Guidance for the assessment of inventive step
1. Application of known measures?
1.1 Inventions involving the
application of known measures in an obvious way and in respect of which
an inventive step is therefore to be ruled out:
(i) The teaching of a
prior document is incomplete and at least one of the possible ways of
"filling the gap" which would naturally or readily occur to the skilled
person results in the invention.
Example: The invention relates
to a building structure made from aluminium. A prior document discloses
the same structure and says that it is of light-weight material but
fails to mention the use of aluminium.
(ii) The invention
differs from the known art merely in the use of well-known equivalents
(mechanical, electrical or chemical).
Example: The invention relates
to a pump which differs from a known pump solely in that its motive
power is provided by a hydraulic motor instead of an electric motor.
(iii)
The invention consists merely in a new use of a well-known material
employing the known properties of that material.
Example: Washing composition
containing as detergent a known compound having the known property of
lowering the surface tension of water, this property being known to be
an essential one for detergents.
(iv) The invention
consists in the substitution in a known device of a recently developed
material whose properties make it plainly suitable for that use
("analogous substitution").
Example: An electric cable
comprises a polyethylene sheath bonded to a metallic shield by an
adhesive. The invention lies in the use of a particularly newly
developed adhesive known to be suitable for polymer-metal bonding.
(v)
The invention consists merely in the use of a known technique in a
closely analogous situation ("analogous use").
Example: The invention resides
in the application of a pulse control technique to the electric motor
driving the auxiliary mechanisms of an industrial truck, such as a
fork-lift truck, the use of this technique to control the electric
propulsion motor of the truck being already known.
1.2 Inventions involving the
application of known measures in a non-obvious way and in respect of
which an inventive step is therefore to be recognized:
(i)
A known working method or means when used for a different purpose
involves a new, surprising effect.
Example: It is known that high
frequency power can be used in inductive butt-welding. It should
therefore be obvious that high-frequency power could also be used in
conductive butt welding with similar effect; an inventive step would
exist in this case, however, if high-frequency power were used for the
continuous conductive butt welding of coiled strip but without removing
scale (such scale removal being on the face of it necessary in order to
avoid arcing between the welding contact and the strip). The unexpected
additional effect is that scale removal is found to be unnecessary
because at high frequency the current is supplied in a predominantly
capacitive manner via the scale which forms a dielectric.
(ii) A new use of a known
device or material involves overcoming technical difficulties not
resolvable by routine techniques.
Example: The invention relates
to a device for supporting and controlling the rise and fall of gas
holders, enabling the previously employed external guiding framework to
be dispensed with. A similar device was known for supporting floating
docks or pontoons but practical difficulties not encountered in the
known applications needed to be overcome in applying the device to a
gas holder.
2. Obvious combination of features?
2.1 Obvious and consequently non-inventive combination of features:
The invention consists merely
in the juxtaposition or association of known devices or processes
functioning in their normal way and not producing any non-obvious
working inter-relationship.
Example: Machine for producing sausages consists of a known mincing machine and a known filling machine disposed side by side.
2.2 Not obvious and consequently inventive combination of features:
The combined features mutually
support each other in their effects to such an extent that a new
technical result is achieved. It is irrelevant whether each individual
feature is fully or partly known by itself.
Example: A mixture of
medicines consists of a painkiller (analgesic) and a tranquilizer
(sedative). It was found that through the addition of the tranquilizer,
which intrinsically appeared to have no pain-killing effect, the
analgesic effect of the pain-killer was intensified in a way which
could not have been predicted from the known properties of the active
substances.
3. Obvious selection?
3.1 Obvious and consequently non-inventive selection among a number of known possibilities:
(i) The invention consists merely in choosing from a number of equally likely alternatives.
Example: The invention relates
to a known chemical process in which it is known to supply heat
electrically to the reaction mixture. There are a number of well-known
alternative ways of so supplying the heat, and the invention resides
merely in the choice of one alternative.
(ii) The invention
resides in the choice of particular dimensions, temperature ranges or
other parameters from a limited range of possibilities, and it is clear
that these parameters could be arrived at by routine trial and error or
by the application of normal design procedures.
Example: The invention relates
to a process for carrying out a known reaction and is characterized by
a specified rate of flow of an inert gas. The prescribed rates are
merely those which would necessarily be arrived at by the skilled
practitioner.
(iii)
The invention can be arrived at merely by a simple extrapolation in a
straightforward way from the known art.
Example: The invention is
characterized by the use of a specified minimum content of a substance
X in a preparation Y in order to improve its thermal stability, and
this characterising feature can be derived merely by extrapolation on
a straight line graph, obtainable from the known art, relating thermal
stability to the content of substance X.
(iv) The invention
consists merely in selecting particular chemical compounds or
compositions (including alloys) from a broad field.
Example: The prior art
includes disclosure of a chemical compound characterized by a specified
structure including a substituent group designated "R". This
substituent "R" is defined so as to embrace entire ranges of
broadly-defined radical groups such as all alkyl or aryl radicals
either unsubstituted or substituted by halogen and/or hydroxy, although
for practical reasons only a very small number of specific examples are
given. The invention consists in the selection of a particular radical
or particular group of radicals from amongst those referred to, as the
substituent "R" (the selected radical or group of radicals not being
specifically disclosed in the prior art document since the question
would then be one of lack of novelty rather than obviousness). The
resulting compounds
(a) are not described as
having, nor shown to possess, any advantageous properties not possessed
by the prior art examples; or
(b) are described as
possessing advantageous properties compared with the compounds
specifically referred to in the prior art but these properties are ones
which the person skilled in the art would expect such compounds to
possess, so that he is likely to be led to make this selection.
3.2 Not obvious and consequently inventive selection among a number of known possibilities:
(i) The invention
involves special selection in a process of particular operating
conditions (e.g. temperature and pressure) within a known range, such
selection producing unexpected effects in the operation of the process
or the properties of the resulting product.
Example: In a process where
substance A and substance B are transformed at high temperature into
substance C, it was known that there is in general a constantly
increased yield of substance C as the temperature increases in the
range between 50 and 130 C. It is now found that in the temperature
range from 63 to 65 C, which previously had not been explored, the
yield of substance C was considerably higher than expected.
(ii) The invention consists
in selecting particular chemical compounds or compositions (including
alloys) from a broad field, such compounds or compositions having
unexpected advantages.
Example: In the example of a
substituted chemical compound given at (iv) under 3.2 above, the
invention again resides in the selection of the substituent radical "R"
from the total field of possibilities defined in the prior disclosure.
In this case, however, not only does the selection embrace a particular
area of the possible field, and result in compounds that can be shown
to possess advantageous properties (See IV, 9.10 and VI, 5.7a) but
there are no indications which would lead the person skilled in the art
to this particular selection rather than any other in order to achieve
the advantageous properties.
4. Overcoming a technical prejudice?
As a general rule, there is an
inventive step if the prior art leads the person skilled in the art
away from the procedure proposed by the invention. This applies in
particular when the skilled person would not even consider carrying out
experiments to determine whether these were alternatives to the known
way of overcoming a real or imagined technical obstacle.
Example: Drinks containing
carbon dioxide are, after being sterilized, bottled while hot in
sterilized bottles. The general opinion is that immediately after
withdrawal of the bottle from the filling device the bottled drink must
be automatically shielded from the outside air so as to prevent the
bottled drink from spurting out. A process involving the same steps but
in which no precautions are taken to shield the drink from the outside
air (because none are in fact necessary) would therefore be inventive.
5. Further examples
Further examples
concerning the assessment of inventive step can be found in Chapter
VII, in particular parts VII, 1 (The problem and solution approach) and
VII, 5.4 (Chemical problems, inventive step).
ANNEX 2 to CHAPTER IV, 9
(CONCERNING INVENTIVE STEP)
1. The Problem and Solution Approach
The biggest danger in assessing inventive step is the use of
subjectivity and hindsight on the part of an examiner. The examiner
doing the search and the substantive examiner, after reading a patent
application, know the solution to a technical problem and, as everyone
knows, once you know the answer, the problem doesn't Seem that
difficult after all. It is important, therefore, not to use hindsight
(or ex-post facto analysis) in assessing an invention. It is equally
important not to use criteria such as "brilliant", "simple",
"revolutionary", etc. in evaluating an invention, since these are
subjective criteria. These dangers can be avoided by the use of the
problem and solution approach, whose use allows an objective analysis
of an invention.
In the problem and solution approach we first take a step backwards
from the invention to the closest prior art and then, on the basis of a
comparison of this prior art with the invention, a so called "objective
problem" is formulated. Finally, the prior art is searched for
indications as to whether a solution to this problem was available and
would have been used. chanroblesvirtualawlibrary
This approach avoids the risk of hindsight. Moreover, it gives results
that are consistent and transparent since it relies more on objective
criteria than subjective judgement. chanroblesvirtualawlibrary
The basis for this approach is that every invention must be based on a
technical problem and a technical solution. Before the method is
explained some concepts are clarified. chanroblesvirtualawlibrary
Technical features: Structural (concrete) or functional (performance)
elements necessary to produce the technical effects of the
invention. chanroblesvirtualawlibrary
Examples: Structural elements could be: a transistor, a chemical
compound, a vessel for liquids, the structure of a molecule. etc.
Functional elements could be: a step in a procedure, elements
identified as "amplifying means", "a solvent", "heat conducting means",
etc.
Technical effects: Set of positive or negative results produced by
technical features of an invention. Technical effects usually relate to
the purpose or intended use of the invention. chanroblesvirtualawlibrary
Examples: Faster/slower performance, lighter, stronger, more acidic, more efficient, etc. chanroblesvirtualawlibrary
Technical problem: The task or aim of modifying or adapting the closest
prior art to provide the technical effect that the invention provides.
The invention: By this we mean the combination of all the technical
features as they are represented in a claim and their associated
technical effects. chanroblesvirtualawlibrary
Prior art or State of the art: This means all the technical information
that has already been made available to the public before the applicant
applied for the patent. chanroblesvirtualawlibrary
Differences: By this we mean those technical features of a claim which are not found in a particular item of prior art.
Closest prior art: is that known combination of features that provides
the strongest basis for an obviousness objection. In practice, this
will generally be the item (usually a document) in the technical field
concerned, disclosing technical effects, purpose or intended use, most
similar to the invention. It should be noted that the closest prior art
may well be different for considering the novelty and the inventive
step of the same claim. The reason for this is that for novelty
consideration the document having the most features of a claim (call
this document D1) is most relevant, whereas for inventive step the
technical effects of the features also have to be considered. D1 may
not disclose the technical effects of the invention, in which case
another document D2 would be the closest for inventive step purposes if
it disclosed the technical effects. chanroblesvirtualawlibrary
Examples: chanroblesvirtualawlibrary
For a process invention, the closest prior art is usually a similar process.
For a method of use invention, the closest prior art is usually a
disclosure of a similar use of the same product, or the same use of a
structurally similar product. chanroblesvirtualawlibrary
For a product invention, the closest prior art is usually another
product having the same intended use or purpose. This product will
normally also have the greatest number of technical features in common
with the invention. chanroblesvirtualawlibrary
For example: Suppose that the invention is concerned with an
improvement to a table. The closest prior art will normally be another
table having a comparable use. Most likely it will be the table having
the greatest number of structural elements in common with the
invention. chanroblesvirtualawlibrary
In chemical inventions, the purpose or intended use of a product is
often less related to similarities in structure than is the case in
other technical fields. This is because the structurally closest prior
art might not provide similar effects; rather, an alteration of the
chemical structure of a compound might change the possible use of the
product entirely. Therefore, the closest prior art for a chemical
product is usually the item providing effects close to or the same as
the effects provided by the invention. chanroblesvirtualawlibrary
For example: A compound used as a herbicide, when altered, might no
longer kill plants; rather, it might kill insects instead, so it could
be used as an insecticide. The prior art selected as being the
"closest" would thus be an insecticide. The herbicide, although
structurally the closest, would not be considered as the closest prior
art; in fact, it might not even be considered as relating to the same
technical field at all.
Person skilled in the art or Skilled person: is a fictional person
taken to have available all the prior art and to be able to understand
it regardless of which language it is in, and all the common general
knowledge of the art in question, but to have no inventive ability. In
some advanced fields it may be appropriate to consider what a team of
workers would know. For example, in the field of rockets, a team
consisting of ballistic experts, computer experts, rocket fuel experts,
etc. would be "the skilled person". At the same time the skilled person
has no imagination to be able to do inventive activity (See also 9.9
above).
Common general knowledge: what the normal skilled worker in that art
would know, together with what would be found in standard
textbooks. chanroblesvirtualawlibrary
By an Indication we mean here anything that would (not simply could,
but would) prompt the skilled person to amend, adapt or modify a
product or procedure, or combine the teaching of two items of prior
art, with the expectation of a desired result. As noted earlier, the
skilled person's general knowledge would sometimes provide the
incentive to do something not described specifically in a prior art
document. chanroblesvirtualawlibrary
Ex-post-facto analysis or hindsight: Once the solution to a problem is
known the problem does not appear that difficult. Thus, looking back
once the solution is known and creating a sequence of steps backward
towards the prior art is not a recommended way of examining for
inventive step. A proper way is to start from the prior art and to See
which way the skilled person would go, if at all.
2. The four steps used in the problem and solution approach
Step 1: Determining the closest prior art chanroblesvirtualawlibrary
Study the application until you understand the technical features of
the invention and their associated technical effects, and the overall
effect, purpose or intended use of the invention. chanroblesvirtualawlibrary
Now consider each item of prior art individually. chanroblesvirtualawlibrary
For each item of prior art, identify the technical features and
technical effects that are common to the
invention. chanroblesvirtualawlibrary
Identify the differences between the invention and each item of prior
art, and any technical effects that the differences achieve. chanroblesvirtualawlibrary
Decide which item represents the closest prior art. chanroblesvirtualawlibrary
After this sequence of steps you will have two documents, one (the
application) setting out the invention, and the other the prior art
that most closely resembles the invention. In the next stage of the
procedure, you will compare the invention with the closest prior art
and determine the technical problem in an objective manner.
If, occasionally, you find it difficult to decide which of two
documents represents the closest prior art, you should carry out the
following procedure for each of these documents.
Step 2: Evaluating the difference between the closest prior art and
The next step is to determine the difference between the claimed
invention and the closest prior art. The difference will be that
structural or functional feature or features or method steps that are
in the claim but not in the closest prior art, and is called the
distinguishing feature.
Step 3: Formulating the technical problem
Based on this difference, a problem is formulated. This in turn is
based on the technical effect that the distinguishing feature(s)
provides. Usually, the effect of this feature is given in the
application itself, or it may be obvious from its description. For
example, a heat conducting body adjacent an electronic component has
the effect of conducting heat away from the component. The
corresponding problem may be formulated as "cooling the electronic
component".
In the description, the applicant often identifies the problem he faced
when he made the invention or when he drafted the application. However,
the applicant might not have had access to all the prior art,
particularly the closest prior art, or it might not have been correctly
appreciated. So the problem he faced might have been completely or
partly solved already, unknown to him, and what he presents as the
problem he solved might well have been solved already in the documents
found in the search report. Hence there is the need to evaluate the
actual technical problem solved by the applicant. As a matter of
terminology, the problem originally identified by the applicant has
sometimes been called "the subjective problem". After the analysis and,
where necessary, the reformulation of the problem as set out above, the
technical problem that emerges is sometimes called "the objective
problem". chanroblesvirtualawlibrary
The correct formulation of the technical problem lies at the heart of
the problem/solution approach. If it is not correctly formulated,
difficulties will arise in attempting to arrive at the correct
evaluation of the inventive step. If the technical problem is
formulated too specifically, it could include elements of the solution,
and the invention might, unjustifiably, appear to be obvious. If, on
the other hand, the technical problem is formulated too broadly, it
could be that you will find a whole range of alternative solutions in
the prior art. This might require extensive checking of each
alternative.
Step 4: Is the invention obvious? chanroblesvirtualawlibrary
Given the objective technical problem and the prior art, the next step
is to determine whether there are any indications in the prior art that
would lead the skilled person to combine prior art documents to achieve
the technical effect that the invention achieves, or to put it
differently, to solve the same problem. chanroblesvirtualawlibrary
Example i): The statement "this numerical keypad could be used on any
electronic equipment where a series of numbers are to be entered
manually" would be an indication of the possibility of replacing the
traditional telephone dialling ring by that numerical keypad. chanroblesvirtualawlibrary
Example ii): Readily recognisable (technical drawbacks) often indicate
to the skilled person that certain technical effects require an
improvement, e.g. "too slow, too heavy, too complicated, not stable",
"inefficient", etc. chanroblesvirtualawlibrary
Example iii): For commercial reasons or due to technical drawbacks, the
skilled person would, in some cases, be prompted to Seek an alternative
way of providing the same effects as the closest prior art
provides. chanroblesvirtualawlibrary
If there are no indications in the prior art that would lead the
skilled person, faced with the technical problem and the prior art, to
consider combining the solution with the closest prior art to achieve
what the invention achieves, then the invention is not obvious, because
there is nothing that would lead the skilled person from the closest
prior art to the invention. chanroblesvirtualawlibrary
If there are such indications, the invention does not involve an
inventive step because the skilled person, faced with the technical
problem and the prior art, would consider combining the solution with
the closest prior art and arrive at the subject matter of the claim.
Where the claim is for a combination of technical features which are
functionally related to one another (which is usually the case), the
obviousness of the whole combination must be established. Where however
the claim is for a juxtaposition of functionally independent parts, it
is legitimate to apply the problem solution approach to each part
separately; if each part is thereby shown to be obvious, the whole
claim is
obvious.
chanroblesvirtualawlibrary
Note that the word "would" has been emphasised above. This is because
it is clear that anything in the world could be combined with anything
else, but it is unfair to the applicant to show that this is possible.
Instead, it is necessary to demonstrate that, starting from the closest
prior art, the skilled person inevitably would be led to combine it
with another prior art, in order to build up a logical chain of
reasoning to show lack of inventive step without using hindsight.
3. The sub-tests
Once the technical problem has been formulated using the problem and
solution approach, you have to evaluate whether or not the invention as
set out in the claim, is obvious. Deciding that involves answering the
question: "What would a person skilled in the art do, when faced with
that technical problem and having regard to the state of the art?". chanroblesvirtualawlibrary
It was also mentioned here above that you start from the closest prior
art and then weigh up the rest of the prior art to determine whether or
not there are any indications that would have led a skilled person from
the closest prior art to the invention. In doing this factors are used
that are referred to as secondary considerations or sub tests. Sub
tests provide indicators or pointers (also called indicia) that help
the evaluator to arrive at a decision. chanroblesvirtualawlibrary
Despite the usefulness of sub tests, a technical evaluation of the
invention remains of primary importance, particularly during the
examination procedure. Answers to some sub tests will seldom be
available at such an early stage of the procedure; the marketing of
products for example is unlikely to have started and the public
response will be unknown. chanroblesvirtualawlibrary
Generally, it will be the "negative" sub tests that will be quoted by
the examiner; applicants may reply using "positive" sub tests when
arguing against the examiner's opinion. The examiner thus needs to have
a thorough knowledge of the sub tests, as well as their uses and
limitations. chanroblesvirtualawlibrary
There are positive sub tests, i.e. those that indicate the presence of
inventive step, and negative sub tests, which point to lack of
inventive step. chanroblesvirtualawlibrary
3.1 Sub-tests that usually provide negative
pointers
chanroblesvirtualawlibrary
(a) Aggregation or collocation chanroblesvirtualawlibrary
The invention consists merely in the juxtaposition (bringing side by
side) of known devices or processes, each functioning in its normal way
without interacting with the other elements, and not producing any
unexpected technical effect. chanroblesvirtualawlibrary
Example: Machine for producing sausages consists of a known mincing machine and a known filling machine disposed side by side.
(b) Simple and straightforward extrapolation from known facts
To extrapolate from already known measures to arrive at the invention is a sign for obviousness.
Example 1: The invention is characterized by the use of a specified
minimum content of a substance X in a preparation Y in order to improve
its thermal stability, and this characterising feature can be derived
merely by extrapolation on a straight line graph, obtainable from the
known art, relating thermal stability to the content of substance X.
Example 2: Care should be taken with extrapolation however, as this
example shows. A synthetic material has been known to have very good
static load-bearing properties. The invention consists of making
railway sleepers of this material, which are subject to severe dynamic
loading. It would be unfair to say that it would be obvious to replace
known sleeper material by the new one since the dynamic load-bearing
properties are surprising. chanroblesvirtualawlibrary
(c) A change of size, form or proportion chanroblesvirtualawlibrary
The choice of a particular dimension from a limited range of
possibilities and resulting from routine trial and error or arrived at
by the application of normal design procedure points towards
obviousness. chanroblesvirtualawlibrary
Example: The invention relates to a process for carrying out a known
reaction and is characterized by a specified rate of flow of an inert
gas. The prescribed rates are merely those which would necessarily be
arrived at by the skilled practitioner.
(d) An exchange of material chanroblesvirtualawlibrary
The substitution of a newly developed material for one that had been
used in a known product, where the properties of the new material
indicate that it is likely to be suitable, is a pointer towards
obviousness.
Example 1: Washing composition containing as detergent a known compound
having the known property of lowering the surface tension of water,
this property being known to be an essential one for detergents.
Example 2: A new rubbery material which is very wear resistant comes
onto the market and someone applies for a patent for a motor tyre made
from this material. This use would be obvious considering the
properties of the new material.
(e) Application of a technique known per se chanroblesvirtualawlibrary
In such a case it has to be established whether success could
reasonably have been expected. This is usually the case when the known
technique is applied in an analogous situation. chanroblesvirtualawlibrary
Example: The invention resides in the application of a pulse control
technique to the electric motor driving the auxiliary mechanisms of an
industrial truck, such as a fork-lift truck, the use of this technique
to control the electric propulsion motor of the truck being already
known.
(f) The use of well‑known technical equivalents
One should consider whether the use of an equivalent involved
particular technical difficulties. If this is not the case, then the
test points towards obviousness.
Example: The invention relates to a pump which differs from a known
pump solely in that its motive power is provided by a hydraulic motor
instead of an electric motor.
(g) Filling a gap in the state of the art chanroblesvirtualawlibrary
When the teaching of the prior art is obviously incomplete, and
completion thereof would naturally or readily occur to the skilled
person, an inventive step has to be ruled out. chanroblesvirtualawlibrary
Example: The invention relates to a building structure made from
aluminium. A prior document discloses the same structure and says that
it is of light-weight material but fails to mention the use of
aluminium.
(h) Selection from a number of known possibilities without any unexpected technical effect chanroblesvirtualawlibrary
This comes down to merely choosing from a number of equally likely alternatives. chanroblesvirtualawlibrary
Example: The invention relates to a known chemical process in which it
is known to supply heat electrically to the reaction mixture. There are
a number of well-known alternative ways of so supplying the heat, and
the invention resides merely in the choice of one alternative.
3.2 Sub-tests that might provide positive pointers
Technical considerations chanroblesvirtualawlibrary
(i) Overcoming a technical prejudice chanroblesvirtualawlibrary
This is normally a persuasive pointer towards "non‑obviousness". If
there has been disbelief or scepticism by experts towards a particular
line of development and the prior art points away from the proposed
invention, that is taken as strong support for the existence of an
inventive step. However, the applicant must provide evidence to
demonstrate the existence of such a prejudice at the priority date of
the application. A mere allegation that technical prejudice was present
is not sufficient. It must also be shown by the applicant that the
technical prejudice was generally known to the world and not just
perceived by him only.
Example: Drinks containing carbon dioxide are, after being sterilized,
bottled while hot in sterilized bottles. The general opinion is that
immediately after withdrawal of the bottle from the filling device the
bottled drink must be automatically shielded from the outside air so as
to prevent the bottled drink from spurting out. A process involving the
same steps but in which no precautions are taken to shield the drink
from the outside air (because none are in fact necessary) would
therefore be inventive.
(j) The invention overcomes difficulties by
means of a new use of a known process, of a known device or known
material chanroblesvirtualawlibrary
This point is taken as a sign of non‑obviousness if the difficulties are not resolvable by routine techniques. chanroblesvirtualawlibrary
Example: The invention relates to a device for supporting and
controlling the rise and fall of gas holders, enabling the previously
employed external guiding framework to be dispensed with. A similar
device was known for supporting floating docks or pontoons but
practical difficulties not encountered in the known applications needed
to be overcome in applying the device to a gas holder.
(k) Unexpected technical progress or technical advance chanroblesvirtualawlibrary
This point deals with improvements over the prior art which, although a
permanent aim in industry, are not a requirement for patentability, in
particular for inventive step. However, this test may be relevant if a
long period of research or of attempts to make an improvement have
failed to find a better solution. The unexpected technical progress has
to be demonstrated in comparison with the closest prior art. Therefore
it is sometimes necessary for the applicant to support this pointer
with comparative tests. Examples of this pointer are such things as:
increase in performance, greater productivity, cheaper and more
economical production, the simplification of machines or construction
and manufacturing methods.
Example: The invention involves a special selection in a process of
particular operating conditions (e.g. temperature and pressure) within
a known range, such selection producing unexpected effects in the
operation of the process or the properties of the resulting product.
(l) Surprising technical effect chanroblesvirtualawlibrary
An example of such an effect would be when the various elements of the
invention are known individually from different sources in the prior
art, but when combined in the particular way of the invention, produce
a technical effect that goes beyond what would have been expected from
a mere juxtaposition of these known measures (This is sometimes called
synergy). This pointer is generally known as "the combination effect".
It occurs quite frequently in chemical inventions.
Example: A mixture of medicines consists of a painkiller (analgesic)
and a tranquillizer (sedative). It was found that through the addition
of the tranquillizer, which intrinsically appeared to have no
pain-killing effect, the analgesic effect of the pain-killer was
intensified in a way which could not have been predicted from the known
properties of the active substances.
Another occasion where we might speak of a surprising effect would be
when a known method or means is successfully used for an entirely
different purpose. chanroblesvirtualawlibrary
It is known that high frequency power can be used in inductive butt
welding. It should therefore be obvious that high-frequency power could
also be used in conductive butt welding with similar effect; an
inventive step would exist in this case. This would also be the case if
high-frequency power were used for the continuous conductive butt
welding of coiled strip but without removing scale (such scale removal
being on the face of it necessary in order to avoid arcing between the
welding contact and the strip). The unexpected additional effect is
that scale removal is found to be unnecessary because at high frequency
the current is supplied in a predominantly capacitive manner via the
scale which forms a dielectric.
Care must be taken to ensure that all technical effects are indeed
caused by the features of a claim. Often an applicant argues that his
invention provides some effect, but it turns out that the effect is not
provided by the features of the claim, but by some other feature. For
his arguments to be relevant, this other feature must be included in
the claim.
It might be argued that unexpected or surprising effects are subjective
tests since different people react differently to a given result.
However, insofar as the effect can be measured objectively (e.g. a
greater efficiency or yield is produced) and shown to be different from
what one would expect from the prior art, it is not subjective.
(m) Professional recognition or technical esteem chanroblesvirtualawlibrary
The opinion of experts and their admiration of the invention are
pointers towards non obviousness of the invention. Of course, if those
experts are employed by or are related commercially to the applicant,
one should be careful about their opinions. chanroblesvirtualawlibrary
Commercial considerations
(n) Commercial or economic success chanroblesvirtualawlibrary
This pointer is not necessarily based on technical differences between
the invention and the state of the art; it should therefore be treated
with caution. Commercial success can only occur after the invention has
been on the market for a while (usually after the examination of the
application has finished). Thus it cannot have influenced the design of
the invention before the filing date and so cannot normally be used as
an argument for inventive step. Commercial success might be derived
from a number of factors, e.g. first to the market, skillful
positioning, good selling techniques, effective advertising, not to
mention occasional good luck. However, if it can be proved that
commercial success is coupled with another pointer such as the
satisfaction of a long felt want and stems from technical features of
the invention, it should be accepted as being relevant. chanroblesvirtualawlibrary
(o) License acquired from the inventor chanroblesvirtualawlibrary
This pointer relates to the concept of commercial success. It suggests
an existing need for the invention and the related commercial interest.
If the rights were acquired by competitors of the inventor, they will
have carefully examined the value of the invention before entering into
any agreement. Usually they will not be distracted by selling
techniques or good advertising. It could be a sign that the competitors
are convinced that they could not win an opposition or an infringement
suit, thus pointing at non obviousness. chanroblesvirtualawlibrary
However, it might also be the cheapest and most convenient way for a
competitor to make money while avoiding trouble, since the cost of
defending an infringement case in court, even against a patent thought
to be invalid, could be greater than the cost of a license. In other
instances, licenses could also be exchanged between competitors. chanroblesvirtualawlibrary
(p) Copying or infringement of the invention by competitors chanroblesvirtualawlibrary
This pointer also relates to the concept of commercial success. The
fact that someone copies an invention, regardless of the risk of an
infringement suit and the possible payment of damages is not convincing
one way or the other. While one could argue that it supports the value
of the invention to a certain extent, one could also argue that it
indicates that the copier is convinced that the patent is not valid,
i.e. there is no inventive step.
(q) Circumvention chanroblesvirtualawlibrary
This concept can also be related to commercial success. The fact that
competitors try to produce a substitute for an invention (i.e. trying
to use the inventive idea in a legal manner) can be taken as
acknowledgment of the attractiveness of the invention and at the same
time recognition of the commercial value of the invention. chanroblesvirtualawlibrary
(r) Parallel applications abroad
Applicants sometimes say that a patent has been granted for the
invention in the US, Europe, or some other country, and imply that it
should similarly be granted in other countries. This argument should be
given some weight and, indeed, it is recommended that "young" patent
offices make use of results from experienced patent offices.
Other considerations
(s) Long existing prior art chanroblesvirtualawlibrary
This concept implies the question "If the invention is obvious, why was
it not done a long time ago?". If the elements of the invention have
been available for a long time and the particular combination that
would result in the invention has not been made, although the result
obtained by the invention is useful, this can be taken as a sign of non
obviousness. However, this pointer is usually given only limited weight
because there may have been no particular need or desire to solve that
problem during that period of time. chanroblesvirtualawlibrary
(t) Overcoming technical difficulties or solving a
technical problem which others have been working on without success
This pointer covers a series of different aspects. We are not talking
here simply about difficulties or problems the inventor himself had to
overcome to achieve his result. The difficulties or problems must have
existed in the technical field concerned and were such that the experts
in this field were not able to overcome them. The length of time during
which the difficulties or problems were known and the efforts made to
remove them are important factors in this context. chanroblesvirtualawlibrary
(u) Satisfaction of a long felt want (the time factor) chanroblesvirtualawlibrary
If a need for a solution to a technical problem existed for a long
time, and the invention immediately satisfies that need, e.g. as
evidenced by immediate commercial success, that suggests that the
solution represented by the invention was not obvious. chanroblesvirtualawlibrary
(v) Failures and unsuccessful attempts chanroblesvirtualawlibrary
This means that others have tried to solve a technical problem and
failed. There is a strong relation with the "long felt want" here in so
far as attempts are usually undertaken only if a need exists. One needs
to consider the nature of the attempts, the number of attempts, the
time span over which they were performed and the skills of those who
failed. chanroblesvirtualawlibrary
(w) Pioneer inventions
A pioneer invention can change the production methods of a whole
industry or create a totally new industry or branch of industry which
did not exist before. In the latter case, there cannot be any doubt
about non obviousness, since there would not be any close prior art
available to compare it with. However, it is often difficult to
recognize the extent of the value of such inventions at the examination
stage. Examples that could be quoted would be: the ball point pen, the
laser (actually the maser came first), xerography. chanroblesvirtualawlibrary
(x) A (large) number of (sequential) steps have
to be taken to move from the closest prior art to the invention
This is considered to be a significant indicator of the presence of
inventiveness; the larger the number of steps, the less likely it is to
be obvious. Also, the larger the number of disclosures that need to be
combined to assemble all the technical features of the claim, the less
likely it is to be obvious to do so. Note that this is a different
criteria to that in (a) above.
(y) Special choice among a multitude of possible solutions (selection inventions)
This pointer is effectively a "lucky invention" which expresses quite
clearly the extent of this concept. If an inventor found the one, or a
few, working solutions amongst a theoretically unlimited number of
unsuccessful ones, this is an indication for non obviousness. This test
for inventive step is similar to the unexpected effect test in (k)
above.
(z) Unexpected additional (bonus) effects
It sometimes happens that, in addition to expected effects, additional,
unexpected effects or advantages occur. The question then arises: can
the presence of these unexpected effects be taken as evidence of non
obviousness in cases where the expected effects are due to routine
development and, for this reason, the invention would normally be
regarded as obvious? In such cases the number of options available to
the skilled person is to be considered. Where the choice is restricted,
the lack of alternatives may create a so called "one way street"
situation, where normal development will lead almost inevitably to the
invention; the invention will then be taken to be obvious in spite of
an unexpected "bonus effect". This situation should be contrasted with
the multiple choice situation such as commonly arises e.g. in
selection. A fanciful example of a one-way-street situation is the
following: A man at a junction of several roads is looking for a bar
and Sees a bar along only one of the roads. He goes down this road and
into the bar, and finds a beautiful woman there. In this case the woman
is a bonus effect since the man did not have a choice, he was forced to
go down one road only.
Example 1
Suppose it is known from the prior art that, when one reaches a
particular compound in a series of known chemical compounds, expressed
in terms of the number of carbon atoms, there is a consistently
increasing insecticidal effect as one moves up the series. The next
higher member of the series, if it was not previously known, then lies
in a "one way street". If this member of the series, in addition to
exhibiting the expected enhanced insecticidal effect, proves also to
have the unexpected effect of being selective, i.e. of killing some
insects but not others, it nevertheless remains obvious.
Example 2
A further general case of a one way street could be the replacement of
mechanical automatic control by electronic automatic control. Suppose
the mechanical control system in an automatic gear box for a motor car
is replaced by a microprocessor controlled system, the microprocessor
being able to take account of all factors, i.e. accelerator pedal
position, engine revolutions etc., to select the most appropriate gear.
When the microprocessor system is used it is unexpectedly found that
the tyres of the car exhibit a significantly reduced wear and therefore
a longer life. This effect is a bonus effect, and the invention remains
obvious. | |
CHAPTER II:
CONTENT OF THE APPLICATION (OTHER THAN CLAIMS)
Sec.
37
Rule
411 |
1. General
The
requirements of the Philippinepatent
application are set out in Section 32.1 and Rule 400. The application
must contain:
(a)
a request for the grant of a Philippinepatent;
(b)
a description of the invention;
(c)
drawings necessary for the understanding of the invention;
(d)
one or more claims;
(e)
an abstract.
This
chapter deals with all these requirements, in so far as they are the
concern of the examiner carrying out substantive examination, with the
exception of item (d) which is the subject of Chapter III. Item (e) is
dealt with first. |
Sec.
37
Rule
411 |
2. Abstract
2.1
The purpose of the abstract is to give brief technical information about
the disclosure as contained in the description, claims and drawings. It
useful as a searching tool for the examiner. Therefore, it should give
sufficient information to make it possible to judge whether there is a
need to consult the description claims and drawings. It must be drafted
in a way which allows the clear understanding of the technical problem,
the gist of the solution of that problem through the invention, and the
principal use of the invention.
2.2
The abstract relates to the application as filed and published and its
final form is settled before publication of the application. It is
therefore not necessary to bring it into conformity with the content of
the published patent even if this should differ in substance from that
of the application. The examiner should therefore not Seek any amendment
of the abstract after publication of the application. He should,
however, note that the abstract "shall merely serve for technical
information". It should also provide guidance to reader in order to
obtain additional information from the description, claims and drawings.
It has no legal effect on the application containing it; for instance,
it cannot be used to interpret the scope of protection or to justify the
addition to the description of new subject-matter.
2.3 More particularly, the abstract should
(a)
commence with the title of
the invention,
(b) indicate
the technical field to which the invention relates,
(c)
preferably
not contain more than one hundred fifty words,
(d) if necessary, contain the chemical formula which, among
those contained in the application, best characterizes the invention,
(e) not contain statements on the value of the invention or on
itsspeculative application,
(f) be accompanied by a figure, if appropriate, and
(g)
comprise reference signs between parenthesis following each maintechnical feature mentioned in the abstract and illustrated
by drawing. |
Sec.
34
Rule 403
Rule
404
Rule
410
|
3.
Request for grant and title
3.1
The items making up this request are dealt with in Section 34, Rules 403
and 404.
3.2
The request shall be made on a form drawn up by the Office (Rule 403).
For the convenience of applicants, the Office shall draw up and
make available a standard application form which may be reproduced at
will by applicants and other persons at their own cost.
3.3
The request shall contain the following:
(a)
Petition for the grant of a patent;
(b)
Applicant’s name and address;
(c)
Title of the invention;
(d)
Inventor’s name;
(e)
If with claim for convention priority
it shall contain the file number, country of origin and the date of filing in the said country
where the application was first filed;
(f) name and address of the resident
agent/representative (if any);
and
(g)
Signature of the applicant or resident agent/representative.
The
requirements are checked during formality examination
3.4
The title should be "as short and specific as possible". It
should also be indicated on the first page of the specification.
The
title shouldclearly and
concisely state the technical designation of the invention and should
exclude all fancy nameswhich
do not define the technical subject with which the invention is
concerned. Very long titles and vague titles such as “chemical
process” or “electric circuit” are objectionable. They do not give
an adequate indication of the technical designation of the invention.
Examples of fancy names: “wonderful new product" or
"improved machine" The examiner should bear in mind that the
title is also used for search and documentation purposes. |
|
4. Description
|
Sec.35.1
R.405 |
4.1
The application must "disclose the invention in a manner sufficiently
clear and complete for it to be carried out by a person skilled in the
art". The meaning of "person skilled in the art" is
discussed in IV, 9.6. |
R.406 |
The
test for enabling disclosure is whether the persons to whom it is
addressed could, by following the directions therein, put the invention
into practice.
The
sufficiency of the disclosure is to be assessed on the basis of the
application as a whole, including the information given in the claims,
description and drawings, if any. |
R.407(1) |
The
provisions relating to the content of the description are set out in Rule
407(1). In particular, the description shall:
(a)
specify the technical field to which the invention relates;
(b)
indicate the background art which, as far as known to the applicant, can be regarded as useful for
understanding the invention, for drawing up the search report and for the
examination, and, preferably, cite the documents reflecting such art;
(c) disclose the invention, as claimed, in such terms that the
technical problem (even if not expressly stated as such) and its solution
can be understood, and state any advantageous effects of the invention
with reference to the background art;
(d)
briefly describe the figures in the drawings, if any;
(e) when there are drawings, there shall be a brief description of the
several views of the drawings and the detailed description of the
invention shall refer to its different parts, as shown in the views, by
use of reference letters or numerals (preferably the latter);
(f) describe in
detail at least one way of carrying out the invention claimed using
examples where appropriate and referring to the drawings, if any; and
(g) indicate explicitly,
when it is not obvious from the description or nature of the invention,
the way in which the invention is capable of exploitation in industry. |
R.407(2) |
The
description shall be presented in the manner and order specified here
above, unless because of the nature of the invention, a different manner
or a different order would afford a better understanding and a more
economic presentation.
The
purpose of the provisions of Sec.35.1 and Rule 407 is:
(i)
to ensure that the application contains sufficient technical information
to enable a skilled person to put the invention as claimed into practice;
and
(ii)
to enable the reader to understand the contribution to the art which the
invention as claimed has made.
|
R.410
R.407(1)(a) |
4.2
The title of the invention should appear as a heading on the first page of
the description (R.410). The invention should then be placed in its
setting by specifying the technical field to which it relates. |
R.407(1)(b)
R.416(b)
Sec.49
Sec.35.1 |
4.3 The description should also mention any
background art of which the applicant is aware, and which can be regarded
as useful for understanding the invention and its relationship to the
prior art; identification of documents reflecting such art, especially
patent specifications, should preferably be included. This applies in
particular to the background art corresponding to the first or "prior
art" portion of the independent claim or claims (See III, 2.2). The
insertion into the statement of prior art of references to documents
identified subsequently, for example by the search report, may be
required, where necessary, to put the invention into proper perspective.
For instance while the originally filed description of prior art may give
the impression that the inventor has developed the invention from a
certain point, the cited documents may show that certain stages in, or
aspects of, this alleged development were already known. In such a case
the examiner may require a reference to these documents and a brief
summary of the relevant contents. The subsequent inclusion of such a
summary in the description does not contravene the proviso of Sec.49. The
latter merely lays down that, if the application is amended, for example
by limiting it in the light of additional information on the background
art, its subject-matter must not extend beyond the content of the
application as filed. But the subject-matter of the Philippinepatent application within the meaning of Section 49is to be understood – starting off from the prior art – as
comprising those features which, in the framework of the disclosure
required by Sec.35.1, relate to the invention (See also VI, 5.3).
References to the prior art introduced after filing must be purely
factual. Any alleged advantages of the invention must be adjusted if
necessary in the light of the prior art. New statements of advantage are
permissible provided that they do not introduce into the description
matter which could not have been deduced from the application as
originally filed (See VI, 5.4). |
Sec.24.2 R.204(b) |
If
the relevant prior art consists of another published Philippinepatent application falling within the terms of Sec.24.2, the fact that this document falls under Section 24.2 (See alsoRule 204(b))may be
explicitly acknowledged, thus making clear to the public that the document
is not relevant to the question of inventive step (See IV, 9.2).
4.4
Since the reader is presumed to have the general background technical
knowledge appropriate to the art, the examiner should not require the
applicant to insert anything in the nature of a treatise or research
report or explanatory matter which is obtainable from textbooks or is
otherwise well known. Likewise the examiner should not require a detailed
description of the content of cited prior documents. It is sufficient that
the reason for the inclusion of the reference is indicated, unless in a
particular case a more detailed description is necessary for a full
understanding of the invention of the application (See also II, 4.18
below). Lists of several reference documents relating to the same feature
or aspect of the prior art are not required; only the most appropriate
need be referred to. On the other hand the examiner should not insist upon
the excision of any such unnecessary matter, except when it is very
extensive (See II. 7.3 below). |
R.407(1)(c)
R.412(a)(ii) |
4.5
The invention as claimed should be disclosed in such a way that the
technical problem, or problems, with which it deals can be appreciated and
the solution can be understood. To meet this requirement, only such
details should be included as are necessary for elucidating the invention.
In cases where the subject matter of a dependent claim can be understood
either by the wording of the claim itself or by the description of a way
of performing the invention, no additional explanation of this subject
matter will be necessary. A mention in the description that a particular
embodiment of the invention is set out in the dependent claim will then be
sufficient.
Where
the invention lies in realizing what the problem is, this should be
apparent, and, where the means of solving the problem (once realized) are
obvious, the details given of its solution may, in practice, be minimal.
When there is doubt, however, as to whether certain details are necessary,
the examiner should not insist on their excision. It is not necessary,
moreover, that the invention be presented explicitly in problem and
solution form. Any advantageous effects which the applicant considers the
invention to have in relation to the prior art should be stated, but this
should not be done in such a way as to disparage any particular prior
product or process. Furthermore, neither the prior art nor the applicant's
invention should be referred to in a manner likely to mislead. This might
be done, e.g. by an ambiguous presentation which gives the impression that
the prior art had solved less of the problem than was actually the case.
Fair comment as referred to in II, 7.2 below is, however, permitted.
Regarding amendment to, or addition of, a statement of problem (VI, 5.7c). |
R.407(1)(c) |
4.6
If it is decided that an independent claim defines a patentable invention,
it must be possible to derive a technical problem from the application. In
this case the requirement of Rule 407(1) (c) is fulfilled. |
R.407(1)(d)
R.407(1)(e) |
4.7
If drawings are included they should first be briefly described, in a
manner such as: "Figure 1 is a plan view of the transformer housing;
Figure 2 is a side elevation of the housing; Figure 3 is an end elevation
looking in the direction of the arrow `X' of Figure 2; Figure 4 is a
cross-section taken through AA of Figure 1." When it is necessary to
refer in the description to elements of the drawings, the name of the
element should be referred to as well as its number, i.e. the reference
should not be in the form:"3 is connected to 5 via 4" but,
"resistor 3 is connected to capacitor 5 via switch 4". |
R.414.13 |
4.8
The description and drawings should be consistent with one another,
especially in the matter of reference numbers and other signs, and each
number or sign must be explained. However, where as a result of amendments
to the description whole passages are deleted, it may be tedious to delete
all superfluous references from the drawings and in such a case the
examiner should not pursue an objection under Rule 414.13, as to
consistency, too rigorously. The reverse situation should never occur,
i.e. all reference numbers or signs used in the description or claims must
also appear on the drawings. |
R.407(1)(f)Sec.
35.1 |
4.9
A detailed description of at least one way of carrying out the invention
must be given. Since the application is addressed to the person skilled in
the art it is neither necessary nor desirable that details of well-known
ancillary features should be given, but the description 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 into
practice. In many cases a single example or single embodiment will
suffice, but where the claims cover a broad field the description should
not usually be regarded as satisfying the requirements of Sec.35.1unless it gives a number of examples or describes alternative
embodiments or variations extending over the area protected by the claims.
However, regard must be had to the facts of the particular case. There are
some instances where even a very broad field is sufficiently exemplified
by a limited number of examples or even one example (See also III, 6.3).
In these latter cases the application must contain, in addition to the
examples, sufficient information to allow the person skilled in the art,
using his common general knowledge, to perform the invention over the
whole area claimed without undue burden and without needing inventive
skill. If the examiner is able to make out a reasoned case that the
application lacks sufficient disclosure, the onus of establishing that the
invention may be performed and repeated over substantially the whole of
the claimed range lies with the applicant (See VI, 2.4). |
Sec.35.1 |
4.9a
In order that the requirements of Sec.35.1and Rule 407(1) (c) and |
R.407(1)(c)
R.407(1)(f)
|
(f)
may be fully satisfied it is necessary that the invention is described not
only in terms of its structure but also in terms of its function, unless
the functions of the various parts are immediately apparent. Indeed in
some technical fields (e.g. computers), a clear description of function
may be much more appropriate than an over-detailed description of
structure. |
Sec.35.1
Sec.49 |
4.10
It is the responsibility of the applicant to ensure that he supplies, when
he first files his application, a sufficient disclosure, i.e. one that
meets the requirements of Sec. 35.1in respect of the invention as claimed in all of the claims. If the
claims define the invention, or a feature thereof, in terms of parameters
(See III, 4.7a), the application as first filed must include a clear
description of the methods used to determine the parameter values, unless
a person skilled in the art would know what method to use or unless all
methods would yield the same result (See III, 4.10, 2nd
paragraph). If the disclosure is seriously insufficient, such a deficiency
cannot be cured subsequently by adding further examples or features
without offending against the proviso of Sec. 49, which requires that the
subject-matter content of the application must not be extended (See VI,
5.3 to 5.8b). Therefore in such circumstances the application must
normally be refused. If however the deficiency arises only in respect of
some embodiments of the invention and not others, it could be remedied by
restricting the claims to correspond to the sufficiently described
embodiments only, the description of the remaining embodiments being
deleted. |
Sec.35.1
Sec.21
Sec.27 Sec.35.1 |
4.11
Occasionally applications are filed in which there is a fundamental
insufficiency in the invention in the sense that it cannot be carried out
by a person skilled in the art; there is then a failure to satisfy the
requirements of Sec. 35.1which
is essentially irreparable. Two instances thereof deserve special mention.
The
first is where the successful performance of the invention is dependent on
chance. That is to say, the skilled person, in following the instructions
for carrying out the invention, finds either that the alleged results of
the invention are unrepeatable or that success in obtaining these results
is achieved in a totally unreliable way. An example where this may arise
is a microbiological process involving mutations. Such a case should be
distinguished from one where repeated success is assured even though
accompanied by a proportion of failures - as can arise, e.g. in the
manufacture of small magnetic cores or electronic components; in this
latter case, provided the satisfactory parts can be readily sorted by a
non-destructive testing procedure, no objection arises under Sec. 35.1.
The
second instance is where successful performance of the invention is
inherently impossible because it would be contrary to well-established
physical laws – this applies e.g. to a perpetual motion machine. If the
claims for such a machine are directed to its function, and not merely to
its structure, an objection arises not only under Sec. 35but also under Sec. 21 and Sec.27that the invention is not susceptible of industrial application (See
also IV, 4.1). |
R.407(1)(g)
Sec.
21 |
4.12
The description should indicate explicitly the way in which the invention
is “industrially applicable”, if this is not obvious from the
description or from the nature of the invention. The expression
“industrially applicable” (Sec.21 and Sec.27) means the same as
"capable of exploitation in industry” (Rule 407(1)(g)). In view of
the broad meaning |
Sec.
27 |
given
to the expression by Sec. 27 (See IV, 4.1), it is to be expected that, in
most cases, the way in which the invention can be exploited in industry
will be self-evident, so that no more explicit description on this point
will be required; but there may be a few instances, e.g. in relation to
methods of testing, where the manner of industrial exploitation is not
apparent and must be made so. |
R.407(2) |
4.13
The manner and order of presentation of the description should be that
specified in Rule 407(1), i.e. as set out above, "unless, because of
the nature of the invention, a different manner or a different order would
afford a better understanding and a more economic presentation".
Since the responsibility for clearly and completely describing the
invention lies with the applicant, the examiner should not object to the
presentation unless satisfied that such an objection would be a proper
exercise of his discretion. Some departure from the requirements of Rule
407(2) is acceptable, provided the description is clear and orderly and
all the requisite information is present. For example, the requirements of
Rule 407(1)(c)may not be
applicable where the invention is based on a fortuitous discovery, the
practical application of which is recognized as being useful, or where the
invention breaks entirely new ground. Also, certain technically simple
inventions may be fully comprehensible with the minimum of description and
but slight reference to prior art.
4.14Although the description should be clear and straightforward with
avoidance of unnecessary technical jargon, the use of recognized terms of
art is acceptable, and will often be desirable. Little known or especially
formulated technical terms may be allowed provided that they are
adequately defined and that there is no generally recognized equivalent.
This discretion may be extended to foreign terms when there is no
equivalent in the language of the proceedings. Terms already having an
established meaning should not be allowed to be used to mean something
different if this is likely to cause confusion. There may, however, be
circumstances where a term may legitimately be borrowed from an analogous
art. Terminology and signs must be consistent throughout the application.
4.14a
In the particular case of inventions in the computer field (See IV, 2.3),
program listings in programming languages cannot be relied on as the sole
disclosure of the invention. The description, as in other technical
fields, should be written substantially in normal language, possibly
accompanied by flow diagrams or other aids to understanding, so that the
invention may be understood by those skilled in the art who are deemed not
to be programming specialists.
Short excerpts from programs written
in
commonly used programming languages can be accepted if they serve to
illustrate an embodiment of the invention.
4.15
When the properties of a material are referred to, the relevant units
should be specified if quantitative considerations are involved. If this
is done by reference to a published Standard (e.g. a Standard of sieve
sizes), and such Standard is referred to by a set of initials or similar
abbreviation, it should be adequately identified in the description. |
R.418(e) |
Physical
values must be expressed in the units recognized in international
practice, wherever appropriate in terms of the metric system using system
international (SI) units. Any values not meeting this requirement must
also be expressed in the units recognized in international practice.
As
Rule 418(e) indicates, for mathematical formula the symbols in general use
must be employed. For chemical formula, the symbols, atomic weights and
molecular formula in general use shall be employed.
In
general, use should be made of the technical terms, signs and symbols
generally accepted in the field in question.
4.16
The use of proper names, trademarks 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. If such a word is
used, then where it is necessary in order to satisfy the requirements of
Sec.35.1, the product must be sufficiently identified, without reliance
upon the word, to enable the invention to be carried out by the skilled
person. However, where such words have become internationally accepted as
standard descriptive terms and have acquired a precise meaning (e.g.
"Bowden" cable, "Belleville" washer, "Panhard"
rod) they may be allowed without further identification of the product to
which they relate.
4.17
If the examiner has reason to suspect that a word used in the description
is a registered trade mark, he should ask the applicant either to
acknowledge the word as such or to state that, so far as he is aware, the
word is not a registered trade mark. If, on the other hand, an applicant
states that a word is a registered trade mark and the examiner happens to
know that this statement is incorrect, he should ask the applicant to
amend accordingly.
4.18
References in Philippinepatent
applications to other documents may relate either to the background art or
to part of the disclosure of the invention.
Where
the reference relates to the background art, it may be in the application
as originally filed or introduced at a later date (See II, 4.3 and 4.4
here above).
Where
the reference relates directly to the disclosure of the invention (e.g.
details of one of the components of a claimed apparatus) then the
examiner
should first consider whether knowing what is in the document is in fact
essential for carrying out the invention as meant by Sec. 35.1.If not, the usually used expression "which is hereby incorporated
by reference", or any expression of the same kind should be deleted
from the description. If matter in the document referred to is indeed
essential to satisfy the requirements of Sec. 35.1, the examiner should
require the relevant passage to be expressly incorporated into the
description, because the patent specification should, regarding the
essential features
of
the invention, be self-contained, i.e. capable of being understood without
reference to any other document. Such
incorporation is, however, subject to the following restrictions:
(a)
it must not contravene the proviso of Sec. 49
(b) documents not available to the public on the date of filing of the
application can only be considered when:
(i) a copy of the document was furnished to the Office on or
before the date of filing of the application; and
(ii) the document was made available to the public no later
than on the date of publication of the application under Sec.44.1(e.g. by being present in the application file at the IPO and
therefore made public under Sec.44.2.)
If,
for the disclosure of the invention, another document is referred to in
the application as originally filed, the relevant content of the other
document is to be considered as forming part of the content of the
application for the purpose of citing the application under Sec. 24.2against later applications. For documents not available to the public
before the filing date of the application this applies only if conditions
(i) and (ii) above are fulfilled. |
Sec.24.2 |
Because
of this effect under Sec.24.2it
is very important that, where a reference is directed only to a particular
part of the document referred to, that part should be clearly identified
in the reference. |
R.413
R.414
R.414.16
R.923
R.919
Sec.49 |
5. Drawings
5.1
The requirements relating to the form and content of drawings are set out
in Rules 413 and 414.1 to 414.16. Most of these are formal but the
substantive examiner may sometimes need to consider some of them, e.g. the
requirements of Rule 414.13 (consistency in the use of reference signs).
5.2
In case of amendments or replacement of drawings (Rules 414.16 and 923),
if the quality of the drawing is insufficient for photolithographic
reproduction, then the examiner must request the applicant to present the
drawings of sufficient quality, before the application will be allowed
(Rule 414.16). Thus, objection should e.g. be raised where the drawings
are not
made
upon paper which is flexible, strong, white, smooth, non-shiny and
durable.
5.3
After the application has been accorded a filing date, submission of
drawings of corrected or amended form or contents is not admissible and
has to be refused in case of broadening of the disclosure or addition of
new matter (See proviso of Sec.49 and Rule 919). |
Sec.22.4
R.408 R.409
|
6. Inventions relating to micro-organisms and biological material
6.1
According to Section 22.4, “plant varieties and animal breeds or
essentially biological process the production of plants and animals” are
excluded from patentability. This provision does not apply to
“microorganisms and non-biological and microbiological processes”.
For
other biological materials not falling under the matter excluded from
patentability as referred to in section 22.4 the same provisions apply as
for inventions implying microorganisms, where recognized depository
institutions for such other biological material exist. This has particular
importance for plant Seeds and cell lines deposited with recognized
depositories.
The
term "biological material" can be considered to mean any
material containing genetic information and capable of self-reproducing or
of being reproduced in a biological system. It includes both
micro-organisms and Seeds.
6.2
Applications relating to micro-organisms are subject to the special
provisions set out in Rules 408 and 409.If an invention concerns a microbiological process or the product
thereof and involves or relates to the use of a micro-organism or other
biological material which is not available to the public and which cannot
be described in the patent application in such a manner as to enable the
invention to be carried out by a person skilled in the art, then the
disclosure is not considered to have satisfied the requirements of
sufficiency (Sec.35.1)unless
the requirements of Rules 408 and 409 have been met.
In
particular:
(a)
a culture of the biological material must have been deposited with a
international depositary institution recognized by the IPO, such as the
ones recognized by the Budapest Treaty on the International
Recognition of the Deposit of Biological material for the Purposes of
Patent Protection of 28 April 1977, not later than the date of filing of
the application,
(b)
the depositary institution and the file number of the culture deposit are
stated in the application,
(c)
the deposited culture is made available upon request to any person from
the date of publication of the patent application.
A
list of recognized depository institutions is available at the Bureau of
Patents.
6.3
The examiner must form an opinion as to whether or not the biological
material is available to the public. Alternatively the biological material
may be known to be readily available to those skilled in the art, e.g. a
biological material such as baker's yeast or Bacillus natto which is
commercially available; or it may be a standard preserved strain, or other
biological material which the examiner knows to have been preserved in a
recognized depository and to be available to the public. Alternatively the
applicant may have given in the description sufficient information as to
the identifying characteristics of the biological material and as to the
prior availability in a depositary institution recognized by the IPO. In
any of these cases no further action is called for. If however the
applicant has given no information, or insufficient information, on public
availability, and the microorganism or other biological material is a
particular one not falling within the known categories such as those
already mentioned, then the examiner must assume that the microorganism or
biological material is not available to the public.
He
must also examine whether the micro-organism or other biological material
could be described in the patent application in such a manner as to enable
the invention to be carried out by a person skilled in the art (See II,
4.11 here above and IV, 3.5.
6.4
If the biological material is not available to the public and if it could
not be described in the application in such a manner as to enable the
invention to be carried out by a person skilled in the art, the examiner
must check:
(i)
whether the application as filed gives such relevant information as is
available to the applicant on the characteristics of the biological
material. The relevant information under this provision concerns the
classification of the biological material and significant differences from
known biological material. For this purpose, the applicant must, to the
extent available to him, indicate morphological and biochemical
characteristics and the proposed taxonomic description. The annexed list
(See Annex 1 to the present Chapter II) contains in this respect
indications for certain types of biological material to guide the
applicant in the normal case.
The
information on the microorganism or other biological material in question
which is generally known to the skilled person on the date of filing is as
a rule presumed to be available to the applicant and must therefore be
provided by him. If necessary it has to be provided through experiments in
accordance with the relevant standard literature.
For
characterizing bacteria, for example, the relevant standard work would be
R.E. Buchanan, N.E. Gibbons: Bergey's Manual of Determinative
Bacteriology.
Against
this background, information should then be given on every further
specific morphological or physiological characteristic relevant for
recognition and propagation of the microorganism or other biological
material, e.g. suitable media (composition of ingredients), in particular
where the latter are modified.
Abbreviations
for biological material or media are often less well known than the
applicant assumes and should therefore be avoided or written in full at
least once.
If
biological material is deposited that cannot replicate itself but must be
replicated in a biological system (e.g. viruses, bacteriophages, plasmids,
vectors or free DNA or RNA), the above-mentioned information is also
required for such biological system. If, for example, other biological
material is required, such as host cells or helper viruses, that cannot be
sufficiently described or is not available to the public, this material
must also be deposited and characterized accordingly. In addition, the
process for producing the biological material within this biological
system must be indicated.
In
many cases the above required information will already have been given to
the depositary institution (See Rule 6.1(a)(iii) and 6.1(b) Budapest
Treaty) and need only be incorporated into the application.
(ii)
whether the name of the depositary institution and the accession number of
the deposit have been supplied at the date of filing. If the name of the
depositary institution and the accession number of the deposit have been
submitted later it should be checked whether they have been filed within
the relevant period. If that is the case it should then further be checked
whether on the filing date any reference has been supplied which allows to
relate the deposit with the later filed accession number. Normally the
identification reference which the depositor himself gave to his deposit
is used in the application documents. The relevant document for later
filing the missing data could be a letter containing the name of the
depositary institution, the accession number and the above mentioned
identification reference or alternatively the deposit receipt, which
contains all these data.
In
addition, the depositary institution named must be an international
institution recognized by the IPO.
(iii)
whether the deposit was made by a person other than the applicant and, if
so, whether the name and the address of the depositor are stated in the
application or have been supplied within the relevant period. In such a
case the examiner must also check whether the depositor gave his
unreserved and irrevocable consent to the deposited material being
available to the public. A document will be required confirming that the
depositor has authorized the applicant to refer to the deposited
biological material in the application and has given his unreserved and
irrevocable consent to the deposited material being made available to the
public.
(iv)
The examiner, in addition to the checks referred to under (i) to (iii)
above, may ask for the deposit receipt issued by the depositary
institution (See Rule 7.1 Budapest Treaty) or for equivalent proof of the
deposit of a biological material if such proof has not been filed before
(See (ii) above). This is to provide evidence for the indications
concerning the depositary institution and the accession number made
earlier by the applicant.
If
any of these requirements (i) – (iv) is not satisfied the application
should be refused (Sec.51) for lack of sufficient disclosure of the
invention
(Sec.35.1),
since the biological material in question cannot be considered as having
been disclosed pursuant to Sec.35.1 by way of reference to the deposit.
Concerning
inventions relating to micro-organisms and biological material, reference
is also made to the examples comprised in VII, 5.7. |
|
R.412(a)
R.412(b) |
7.
Prohibited matter
7.1
There are three categories of specifically prohibited matter identified in
R.412(a):
-
statements or other matter contrary to “public order” or
morality;
-
statements disparaging the products or processes of any particular
person other than the applicant, or the merits or validity of
applications or patents of any such person., with mere comparison with the
prior art not being considered as disparaging per se; and
-any statement or other matter obviously irrelevant or unnecessary
under the circumstances.
If
an application contains prohibited matter within the meaning of this Rule,
the Bureau shall omit it when publishing the application, indicating the
place and number of words or drawing omitted (R.412(b).
The
omission, from the publication of the application, of the first category
is the most important one. Examples of the kind of matter coming within
this category are: incitement to riot or to acts of disorder; incitement
to criminal acts; racial, religious or similar discriminatory propaganda;
and grossly obscene matter.
7.2
It is necessary to discriminate in the second category between libellous
or similarly disparaging statements, which are not allowed, and fair
comment, e.g. in relation to obvious or generally recognized
disadvantages, or disadvantages stated to have been found and
substantiated by the applicant, which, if relevant, is permitted.
7.3
The third category is irrelevant matter. It should be noted however that
such
matter is specifically prohibited under the (R.412(b) iii)) only if it is
"obviously irrelevant or unnecessary", for instance, if it has
no bearing on the subject-matter of the invention or its background of
relevant prior art. The matter to be removed may already be obviously
irrelevant or unnecessary in the original description. It may, however, be
matter which has become obviously irrelevant or unnecessary only in the
course of the examination proceedings, e.g. owing to a limitation of the
claims of the patent to one of originally several alternatives.
7.4
When matter is removed from the description, it must not be incorporated
into the patent specification by reference to thecorresponding
matter in the published application or in any other document.
7.5
Generally, matter falling under the first category will be dealt with
during formality examination, as well as matter obviously falling within
the second category. Although this is not explicitly mentioned in R.412,
if any such matter has not been so recognized and has, therefore, not been
omitted from the publication of the application, it should be removed
during substantive examination of the application, i.e. before publication
of the granted patent, together with any other prohibited matter. |
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