1.General

1.1     The application must contain "one or more claims".

1.2     These must:  

 (i) "define the matter for which protection is sought";  

 (ii) "be clear and concise";  

 (iii) "be supported by the description".

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

 -   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

-   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.

2.1     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 in defining 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.

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 inventive step 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.

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).

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).

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.

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.

Categories

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.

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.

3.4 All 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.

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).

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.

4.1    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.

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 to any 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".

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 would render it unsuitable for the stated  use, would not deprive the claim of novelty, but if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it would deprive the claim of novelty.

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).

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.

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 be included in the claims as the claims shall define the matter for which protection is sought Sec. 36.1

R.416(c)

R.413(b)

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.

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-matter . A 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(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.

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.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.

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.

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.

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.

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.

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.

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.

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.

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.

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 might be 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.

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, 2^nd 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.27
R.208

3.5     As expressly stated in Sec.22.4, 2^nd 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, 2^nd 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).

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),
1^st sentence  

R.204(a),
2^nd sentence

R.204(a),
2^nd sentence

The width of this definition should be noted. R.204(a), 1^st sentence indicates that there are no restrictions whatever as to the geographical location 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 concerned . The 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 other means  

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