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Manual for Substantive Examination Procedure

Sec. 37
Rule 411

1. General 

The requirements of the Philippinepatent application are set out in Section 32.1 and Rule 400. The application must contain:  

(a) a request for the grant of a Philippinepatent;  

(b) a description of the invention;  

(c) drawings necessary for the understanding of the invention;  

(d) one or more claims;  

(e) an abstract.  

This chapter deals with all these requirements, in so far as they are the concern of the examiner carrying out substantive examination, with the exception of item (d) which is the subject of Chapter III. Item (e) is dealt with first.

Sec. 37
Rule 411

2. Abstract
 

2.1 The purpose of the abstract is to give brief technical information about the disclosure as contained in the description, claims and drawings. It useful as a searching tool for the examiner. Therefore, it should give sufficient information to make it possible to judge whether there is a need to consult the description claims and drawings. It must be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use of the invention.

2.2 The abstract relates to the application as filed and published and its final form is settled before publication of the application. It is therefore not necessary to bring it into conformity with the content of the published patent even if this should differ in substance from that of the application. The examiner should therefore not seek any amendment of the abstract after publication of the application. He should, however, note that the abstract "shall merely serve for technical information". It should also provide guidance to reader in order to obtain additional information from the description, claims and drawings. It has no legal effect on the application containing it; for instance, it cannot be used to interpret the scope of protection or to justify the addition to the description of new subject-matter.

2.3 More particularly, the abstract should

    (a)  commence with the title of the invention,  

    (b)  indicate the technical field to which the invention relates,

    (c)  preferably not contain more than one hundred fifty words,

    (d)  if necessary, contain the chemical formula which, among those contained in the application, best characterizes the invention,

    (e)  not contain statements on the value of the invention or on itsspeculative application,

     (f)  be accompanied by a figure, if appropriate, and

    (g)  comprise reference signs between parenthesis following each maintechnical feature mentioned in the abstract and illustrated by drawing.

Sec. 34

Rule 403 

Rule 404 

Rule 410

3. Request for grant and title

3.1 The items making up this request are dealt with in Section 34, Rules 403 and 404. 

3.2 The request shall be made on a form drawn up by the Office (Rule 403).  For the convenience of applicants, the Office shall draw up and make available a standard application form which may be reproduced at will by applicants and other persons at their own cost. 

3.3 The request shall contain the following:

 (a)   Petition for the grant of a patent;

     (b)   Applicant’s name and address;

     (c)   Title of the invention;

     (d)   Inventor’s name;

    (e)   If with claim for convention priority  it shall contain the file number, country of origin and the date of filing in the said country where the application was first filed; 

   (f)   name and address of the resident agent/representative (if any);
and 

    (g)   Signature of the applicant or resident agent/representative. 

The requirements are checked during formality examination

3.4 The title should be "as short and specific as possible". It should also be indicated on the first page of the specification.

The title shouldclearly and concisely state the technical designation of the invention and should exclude all fancy nameswhich do not define the technical subject with which the invention is concerned. Very long titles and vague titles such as “chemical process” or “electric circuit” are objectionable. They do not give an adequate indication of the technical designation of the invention. Examples of fancy names: “wonderful new product" or "improved machine" The examiner should bear in mind that the title is also used for search and documentation purposes.

4.1 The application must "disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art". The meaning of "person skilled in the art" is discussed in IV, 9.6.

The test for enabling disclosure is whether the persons to whom it is addressed could, by following the directions therein, put the invention into practice.
The sufficiency of the disclosure is to be assessed on the basis of the application as a whole, including the information given in the claims, description and drawings, if any. 

The provisions relating to the content of the description are set out in Rule 407(1). In particular, the description shall:  

(a)   specify the technical field to which the invention relates; 

(b)   indicate the background art which, as far as known to the applicant, can be regarded as useful for understanding the invention, for drawing up the search report and for the examination, and, preferably, cite the documents reflecting such art; 

(c)  disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state any advantageous effects of the invention with reference to the background art; 

(d)   briefly describe the figures in the drawings, if any;  

(e)  when there are drawings, there shall be a brief description of the several views of the drawings and the detailed description of the invention shall refer to its different parts, as shown in the views, by use of reference letters or numerals (preferably the latter); 

(f)  describe in detail at least one way of carrying out the invention claimed using examples where appropriate and referring to the drawings, if any; and  

(g) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry. 

The description shall be presented in the manner and order specified here above, unless because of the nature of the invention, a different manner or a different order would afford a better understanding and a more economic presentation. 

The purpose of the provisions of Sec.35.1 and Rule 407 is: 

(i) to ensure that the application contains sufficient technical information to enable a skilled person to put the invention as claimed into practice; and  

(ii) to enable the reader to understand the contribution to the art which the invention as claimed has made. 

R.407(1)(a)

4.2 The title of the invention should appear as a heading on the first page of the description (R.410). The invention should then be placed in its setting by specifying the technical field to which it relates.

R.416(b)

Sec.49

Sec.35.1

4.3 The description should also mention any background art of which the applicant is aware, and which can be regarded as useful for understanding the invention and its relationship to the prior art; identification of documents reflecting such art, especially patent specifications, should preferably be included. This applies in particular to the background art corresponding to the first or "prior art" portion of the independent claim or claims (see III, 2.2). The insertion into the statement of prior art of references to documents identified subsequently, for example by the search report, may be required, where necessary, to put the invention into proper perspective. For instance while the originally filed description of prior art may give the impression that the inventor has developed the invention from a certain point, the cited documents may show that certain stages in, or aspects of, this alleged development were already known. In such a case the examiner may require a reference to these documents and a brief summary of the relevant contents. The subsequent inclusion of such a summary in the description does not contravene the proviso of Sec.49. The latter merely lays down that, if the application is amended, for example by limiting it in the light of additional information on the background art, its subject-matter must not extend beyond the content of the application as filed. But the subject-matter of the Philippinepatent application within the meaning of Section 49is to be understood – starting off from the prior art – as comprising those features which, in the framework of the disclosure required by Sec.35.1, relate to the invention (see also VI, 5.3). References to the prior art introduced after filing must be purely factual. Any alleged advantages of the invention must be adjusted if necessary in the light of the prior art. New statements of advantage are permissible provided that they do not introduce into the description matter which could not have been deduced from the application as originally filed (see VI, 5.4).

If the relevant prior art consists of another published Philippinepatent application falling within the terms of Sec.24.2, the fact that this document falls under Section 24.2 (see alsoRule 204(b))may be explicitly acknowledged, thus making clear to the public that the document is not relevant to the question of inventive step (see IV, 9.2).

4.4 Since the reader is presumed to have the general background technical knowledge appropriate to the art, the examiner should not require the applicant to insert anything in the nature of a treatise or research report or explanatory matter which is obtainable from textbooks or is otherwise well known. Likewise the examiner should not require a detailed description of the content of cited prior documents. It is sufficient that the reason for the inclusion of the reference is indicated, unless in a particular case a more detailed description is necessary for a full understanding of the invention of the application (see also II, 4.18 below). Lists of several reference documents relating to the same feature or aspect of the prior art are not required; only the most appropriate need be referred to. On the other hand the examiner should not insist upon the excision of any such unnecessary matter, except when it is very extensive (see II. 7.3 below).

R.412(a)(ii)

4.5 The invention as claimed should be disclosed in such a way that the technical problem, or problems, with which it deals can be appreciated and the solution can be understood. To meet this requirement, only such details should be included as are necessary for elucidating the invention. In cases where the subject matter of a dependent claim can be understood either by the wording of the claim itself or by the description of a way of performing the invention, no additional explanation of this subject matter will be necessary. A mention in the description that a particular embodiment of the invention is set out in the dependent claim will then be sufficient.

Where the invention lies in realizing what the problem is, this should be apparent, and, where the means of solving the problem (once realized) are obvious, the details given of its solution may, in practice, be minimal. When there is doubt, however, as to whether certain details are necessary, the examiner should not insist on their excision. It is not necessary, moreover, that the invention be presented explicitly in problem and solution form. Any advantageous effects which the applicant considers the invention to have in relation to the prior art should be stated, but this should not be done in such a way as to disparage any particular prior product or process. Furthermore, neither the prior art nor the applicant's invention should be referred to in a manner likely to mislead. This might be done, e.g. by an ambiguous presentation which gives the impression that the prior art had solved less of the problem than was actually the case. Fair comment as referred to in II, 7.2 below is, however, permitted. Regarding amendment to, or addition of, a statement of problem (VI, 5.7c).

4.6 If it is decided that an independent claim defines a patentable invention, it must be possible to derive a technical problem from the application. In this case the requirement of Rule 407(1) (c) is fulfilled. 

4.7 If drawings are included they should first be briefly described, in a manner such as: "Figure 1 is a plan view of the transformer housing; Figure 2 is a side elevation of the housing; Figure 3 is an end elevation looking in the direction of the arrow `X' of Figure 2; Figure 4 is a cross-section taken through AA of Figure 1." When it is necessary to refer in the description to elements of the drawings, the name of the element should be referred to as well as its number, i.e. the reference should not be in the form:"3 is connected to 5 via 4" but, "resistor 3 is connected to capacitor 5 via switch 4".

4.8 The description and drawings should be consistent with one another, especially in the matter of reference numbers and other signs, and each number or sign must be explained. However, where as a result of amendments to the description whole passages are deleted, it may be tedious to delete all superfluous references from the drawings and in such a case the examiner should not pursue an objection under Rule 414.13, as to consistency, too rigorously. The reverse situation should never occur, i.e. all reference numbers or signs used in the description or claims must also appear on the drawings.

4.9 A detailed description of at least one way of carrying out the invention must be given. Since the application is addressed to the person skilled in the art it is neither necessary nor desirable that details of well-known ancillary features should be given, but the description must disclose any feature essential for carrying out the invention in sufficient detail to render it obvious to the skilled person how to put the invention into practice. In many cases a single example or single embodiment will suffice, but where the claims cover a broad field the description should not usually be regarded as satisfying the requirements of Sec.35.1unless it gives a number of examples or describes alternative embodiments or variations extending over the area protected by the claims. However, regard must be had to the facts of the particular case. There are some instances where even a very broad field is sufficiently exemplified by a limited number of examples or even one example (see also III, 6.3). In these latter cases the application must contain, in addition to the examples, sufficient information to allow the person skilled in the art, using his common general knowledge, to perform the invention over the whole area claimed without undue burden and without needing inventive skill. If the examiner is able to make out a reasoned case that the application lacks sufficient disclosure, the onus of establishing that the invention may be performed and repeated over substantially the whole of the claimed range lies with the applicant (see VI, 2.4).

4.9a In order that the requirements of Sec.35.1and Rule 407(1) (c) and

(f) may be fully satisfied it is necessary that the invention is described not only in terms of its structure but also in terms of its function, unless the functions of the various parts are immediately apparent. Indeed in some technical fields (e.g. computers), a clear description of function may be much more appropriate than an over-detailed description of structure.

Sec.35.1

Sec.49

4.10 It is the responsibility of the applicant to ensure that he supplies, when he first files his application, a sufficient disclosure, i.e. one that meets the requirements of Sec. 35.1in respect of the invention as claimed in all of the claims. If the claims define the invention, or a feature thereof, in terms of parameters (see III, 4.7a), the application as first filed must include a clear description of the methods used to determine the parameter values, unless a person skilled in the art would know what method to use or unless all methods would yield the same result (see III, 4.10, 2^nd paragraph). If the disclosure is seriously insufficient, such a deficiency cannot be cured subsequently by adding further examples or features without offending against the proviso of Sec. 49, which requires that the subject-matter content of the application must not be extended (see VI, 5.3 to 5.8b). Therefore in such circumstances the application must normally be refused. If however the deficiency arises only in respect of some embodiments of the invention and not others, it could be remedied by restricting the claims to correspond to the sufficiently described embodiments only, the description of the remaining embodiments being deleted.

Sec.35.1

Sec.21 Sec.27
Sec.35.1

4.11 Occasionally applications are filed in which there is a fundamental insufficiency in the invention in the sense that it cannot be carried out by a person skilled in the art; there is then a failure to satisfy the requirements of Sec. 35.1which is essentially irreparable. Two instances thereof deserve special mention.

The first is where the successful performance of the invention is dependent on chance. That is to say, the skilled person, in following the instructions for carrying out the invention, finds either that the alleged results of the invention are unrepeatable or that success in obtaining these results is achieved in a totally unreliable way. An example where this may arise is a microbiological process involving mutations. Such a case should be distinguished from one where repeated success is assured even though accompanied by a proportion of failures - as can arise, e.g. in the manufacture of small magnetic cores or electronic components; in this latter case, provided the satisfactory parts can be readily sorted by a non-destructive testing procedure, no objection arises under Sec. 35.1.

The second instance is where successful performance of the invention is inherently impossible because it would be contrary to well-established physical laws – this applies e.g. to a perpetual motion machine. If the claims for such a machine are directed to its function, and not merely to its structure, an objection arises not only under Sec. 35but also under Sec. 21 and Sec.27that the invention is not susceptible of industrial application (see also IV, 4.1).

R.407(1)(g)
Sec. 21

4.12 The description should indicate explicitly the way in which the invention is “industrially applicable”, if this is not obvious from the description or from the nature of the invention. The expression “industrially applicable” (Sec.21 and Sec.27) means the same as "capable of exploitation in industry” (Rule 407(1)(g)). In view of the broad meaning

given to the expression by Sec. 27 (see IV, 4.1), it is to be expected that, in most cases, the way in which the invention can be exploited in industry will be self-evident, so that no more explicit description on this point will be required; but there may be a few instances, e.g. in relation to methods of testing, where the manner of industrial exploitation is not apparent and must be made so.

4.13 The manner and order of presentation of the description should be that specified in Rule 407(1), i.e. as set out above, "unless, because of the nature of the invention, a different manner or a different order would afford a better understanding and a more economic presentation". Since the responsibility for clearly and completely describing the invention lies with the applicant, the examiner should not object to the presentation unless satisfied that such an objection would be a proper exercise of his discretion. Some departure from the requirements of Rule 407(2) is acceptable, provided the description is clear and orderly and all the requisite information is present. For example, the requirements of Rule 407(1)(c)may not be applicable where the invention is based on a fortuitous discovery, the practical application of which is recognized as being useful, or where the invention breaks entirely new ground. Also, certain technically simple inventions may be fully comprehensible with the minimum of description and but slight reference to prior art.

4.14Although the description should be clear and straightforward with avoidance of unnecessary technical jargon, the use of recognized terms of art is acceptable, and will often be desirable. Little known or especially formulated technical terms may be allowed provided that they are adequately defined and that there is no generally recognized equivalent. This discretion may be extended to foreign terms when there is no equivalent in the language of the proceedings. Terms already having an established meaning should not be allowed to be used to mean something different if this is likely to cause confusion. There may, however, be circumstances where a term may legitimately be borrowed from an analogous art. Terminology and signs must be consistent throughout the application.

4.14a In the particular case of inventions in the computer field (see IV, 2.3), program listings in programming languages cannot be relied on as the sole disclosure of the invention. The description, as in other technical fields, should be written substantially in normal language, possibly accompanied by flow diagrams or other aids to understanding, so that the invention may be understood by those skilled in the art who are deemed not to be programming  specialists. Short excerpts from programs writtenin commonly used programming languages can be accepted if they serve to illustrate an embodiment of the invention.

4.15 When the properties of a material are referred to, the relevant units should be specified if quantitative considerations are involved. If this is done by reference to a published Standard (e.g. a Standard of sieve sizes), and such Standard is referred to by a set of initials or similar abbreviation, it should be adequately identified in the description.

Physical values must be expressed in the units recognized in international practice, wherever appropriate in terms of the metric system using system international (SI) units. Any values not meeting this requirement must also be expressed in the units recognized in international practice.

As Rule 418(e) indicates, for mathematical formula the symbols in general use must be employed. For chemical formula, the symbols, atomic weights and molecular formula in general use shall be employed.

In general, use should be made of the technical terms, signs and symbols generally accepted in the field in question.

4.16 The use of proper names, trademarks or similar words to refer to materials or articles is undesirable in so far as such words merely denote origin or where they may relate to a range of different products. If such a word is used, then where it is necessary in order to satisfy the requirements of Sec.35.1, the product must be sufficiently identified, without reliance upon the word, to enable the invention to be carried out by the skilled person. However, where such words have become internationally accepted as standard descriptive terms and have acquired a precise meaning (e.g. "Bowden" cable, "Belleville" washer, "Panhard" rod) they may be allowed without further identification of the product to which they relate.

4.17 If the examiner has reason to suspect that a word used in the description is a registered trade mark, he should ask the applicant either to acknowledge the word as such or to state that, so far as he is aware, the word is not a registered trade mark. If, on the other hand, an applicant states that a word is a registered trade mark and the examiner happens to know that this statement is incorrect, he should ask the applicant to amend accordingly.

4.18 References in Philippinepatent applications to other documents may relate either to the background art or to part of the disclosure of the invention.

Where the reference relates to the background art, it may be in the application as originally filed or introduced at a later date (see II, 4.3 and 4.4 here above).

Where the reference relates directly to the disclosure of the invention (e.g. details of one of the components of a claimed apparatus) then theexaminer should first consider whether knowing what is in the document is in fact essential for carrying out the invention as meant by Sec. 35.1.If not, the usually used expression "which is hereby incorporated by reference", or any expression of the same kind should be deleted from the description. If matter in the document referred to is indeed essential to satisfy the requirements of Sec. 35.1, the examiner should require the relevant passage to be expressly incorporated into the description, because the patent specification should, regarding the essential featuresof the invention, be self-contained, i.e. capable of being understood without reference to any other document. Such  incorporation is, however, subject to the following restrictions:

(a)   it must not contravene the proviso of Sec. 49

(b)  documents not available to the public on the date of filing of the application can only be considered when:  

 (i) a copy of the document was furnished to the Office on or before the   date of filing of the application; and

 (ii) the document was made available to the public no later than on the   date of publication of the application under Sec.44.1(e.g. by being present in the application file at the IPO and therefore made public under Sec.44.2.)

If, for the disclosure of the invention, another document is referred to in the application as originally filed, the relevant content of the other document is to be considered as forming part of the content of the application for the purpose of citing the application under Sec. 24.2against later applications. For documents not available to the public before the filing date of the application this applies only if conditions (i) and (ii) above are fulfilled.

Because of this effect under Sec.24.2it is very important that, where a reference is directed only to a particular part of the document referred to, that part should be clearly identified in the reference. 

R.413
R.414

R.414.16
R.923

R.919 Sec.49

5. Drawings 

5.1 The requirements relating to the form and content of drawings are set out in Rules 413 and 414.1 to 414.16. Most of these are formal but the substantive examiner may sometimes need to consider some of them, e.g. the requirements of Rule 414.13 (consistency in the use of reference signs). 

5.2 In case of amendments or replacement of drawings (Rules 414.16 and 923), if the quality of the drawing is insufficient for photolithographic reproduction, then the examiner must request the applicant to present the drawings of sufficient quality, before the application will be allowed (Rule 414.16). Thus, objection should e.g. be raised where the drawings are notmade upon paper which is flexible, strong, white, smooth, non-shiny and durable. 

5.3 After the application has been accorded a filing date, submission of drawings of corrected or amended form or contents is not admissible and has to be refused in case of broadening of the disclosure or addition of new matter (see proviso of Sec.49 and Rule 919).

Sec.22.4

R.408
R.409

6. Inventions relating to micro-organisms and biological material 

6.1 According to Section 22.4, “plant varieties and animal breeds or essentially biological process the production of plants and animals” are excluded from patentability. This provision does not apply to “microorganisms and non-biological and microbiological processes”.

For other biological materials not falling under the matter excluded from patentability as referred to in section 22.4 the same provisions apply as for inventions implying microorganisms, where recognized depository institutions for such other biological material exist. This has particular importance for plant seeds and cell lines deposited with recognized depositories.  

The term "biological material" can be considered to mean any material containing genetic information and capable of self-reproducing or of being reproduced in a biological system. It includes both micro-organisms and seeds.   

6.2 Applications relating to micro-organisms are subject to the special provisions set out in Rules 408 and 409.If an invention concerns a microbiological process or the product thereof and involves or relates to the use of a micro-organism or other biological material which is not available to the public and which cannot be described in the patent application in such a manner as to enable the invention to be carried out by a person skilled in the art, then the disclosure is not considered to have satisfied the requirements of sufficiency (Sec.35.1)unless the requirements of Rules 408 and 409 have been met.

In particular:

(a) a culture of the biological material must have been deposited with a international depositary institution recognized by the IPO, such as the  ones recognized by the Budapest Treaty on the International Recognition of the Deposit of Biological material for the Purposes of Patent Protection of 28 April 1977, not later than the date of filing of the application, 

(b) the depositary institution and the file number of the culture deposit are stated in the application, 

(c) the deposited culture is made available upon request to any person from the date of publication of the patent application. 

A list of recognized depository institutions is available at the Bureau of Patents. 

6.3 The examiner must form an opinion as to whether or not the biological material is available to the public. Alternatively the biological material may be known to be readily available to those skilled in the art, e.g. a biological material such as baker's yeast or Bacillus natto which is commercially available; or it may be a standard preserved strain, or other biological material which the examiner knows to have been preserved in a recognized depository and to be available to the public. Alternatively the applicant may have given in the description sufficient information as to the identifying characteristics of the biological material and as to the prior availability in a depositary institution recognized by the IPO. In any of these cases no further action is called for. If however the applicant has given no information, or insufficient information, on public availability, and the microorganism or other biological material is a particular one not falling within the known categories such as those already mentioned, then the examiner must assume that the microorganism or biological material is not available to the public. 

He must also examine whether the micro-organism or other biological material could be described in the patent application in such a manner as to enable the invention to be carried out by a person skilled in the art (see II, 4.11 here above and IV, 3.5.  

6.4 If the biological material is not available to the public and if it could not be described in the application in such a manner as to enable the invention to be carried out by a person skilled in the art, the examiner must check:  

(i) whether the application as filed gives such relevant information as is available to the applicant on the characteristics of the biological material. The relevant information under this provision concerns the classification of the biological material and significant differences from known biological material. For this purpose, the applicant must, to the extent available to him, indicate morphological and biochemical characteristics and the proposed taxonomic description. The annexed list (see Annex 1 to the present Chapter II) contains in this respect indications for certain types of biological material to guide the applicant in the normal case.  

The information on the microorganism or other biological material in question which is generally known to the skilled person on the date of filing is as a rule presumed to be available to the applicant and must therefore be provided by him. If necessary it has to be provided through experiments in accordance with the relevant standard literature.  

For characterizing bacteria, for example, the relevant standard work would be R.E. Buchanan, N.E. Gibbons: Bergey's Manual of Determinative Bacteriology.  

Against this background, information should then be given on every further specific morphological or physiological characteristic relevant for recognition and propagation of the microorganism or other biological material, e.g. suitable media (composition of ingredients), in particular where the latter are modified.

Abbreviations for biological material or media are often less well known than the applicant assumes and should therefore be avoided or written in full at least once.  

If biological material is deposited that cannot replicate itself but must be replicated in a biological system (e.g. viruses, bacteriophages, plasmids, vectors or free DNA or RNA), the above-mentioned information is also required for such biological system. If, for example, other biological material is required, such as host cells or helper viruses, that cannot be sufficiently described or is not available to the public, this material must also be deposited and characterized accordingly. In addition, the process for producing the biological material within this biological system must be indicated.  

In many cases the above required information will already have been given to the depositary institution (see Rule 6.1(a)(iii) and 6.1(b) Budapest Treaty) and need only be incorporated into the application.   

(ii) whether the name of the depositary institution and the accession number of the deposit have been supplied at the date of filing. If the name of the depositary institution and the accession number of the deposit have been submitted later it should be checked whether they have been filed within the relevant period. If that is the case it should then further be checked whether on the filing date any reference has been supplied which allows to relate the deposit with the later filed accession number. Normally the identification reference which the depositor himself gave to his deposit is used in the application documents. The relevant document for later filing the missing data could be a letter containing the name of the depositary institution, the accession number and the above mentioned identification reference or alternatively the deposit receipt, which contains all these data. 

In addition, the depositary institution named must be an international institution recognized by the IPO. 

(iii) whether the deposit was made by a person other than the applicant and, if so, whether the name and the address of the depositor are stated in the application or have been supplied within the relevant period. In such a case the examiner must also check whether the depositor gave his unreserved and irrevocable consent to the deposited material being available to the public. A document will be required confirming that the depositor has authorized the applicant to refer to the deposited biological material in the application and has given his unreserved and irrevocable consent to the deposited material being made available to the public. 

(iv) The examiner, in addition to the checks referred to under (i) to (iii) above, may ask for the deposit receipt issued by the depositary institution (see Rule 7.1 Budapest Treaty) or for equivalent proof of the deposit of a biological material if such proof has not been filed before (see (ii) above). This is to provide evidence for the indications concerning the depositary institution and the accession number made earlier by the applicant.  

If any of these requirements (i) – (iv) is not satisfied the application should be refused (Sec.51) for lack of sufficient disclosure of the invention  

(Sec.35.1), since the biological material in question cannot be considered as having been disclosed pursuant to Sec.35.1 by way of reference to the deposit.

Concerning inventions relating to micro-organisms and biological material, reference is also made to the examples comprised in VII, 5.7.

R.412(a)

R.412(b)

7. Prohibited matter 

7.1 There are three categories of specifically prohibited matter identified in R.412(a):

 -  statements or other matter contrary to “public order” or morality;

 -  statements disparaging the products or processes of any particular person other than the applicant, or the merits or validity of applications or patents of any such person., with mere comparison with the prior art not being considered as disparaging per se; and

 -any statement or other matter obviously irrelevant or unnecessary under the circumstances.

If an application contains prohibited matter within the meaning of this Rule, the Bureau shall omit it when publishing the application, indicating the place and number of words or drawing omitted (R.412(b).

The omission, from the publication of the application, of the first category is the most important one. Examples of the kind of matter coming within this category are: incitement to riot or to acts of disorder; incitement to criminal acts; racial, religious or similar discriminatory propaganda; and grossly obscene matter.

7.2 It is necessary to discriminate in the second category between libellous or similarly disparaging statements, which are not allowed, and fair comment, e.g. in relation to obvious or generally recognized disadvantages, or disadvantages stated to have been found and substantiated by the applicant, which, if relevant, is permitted.

7.3 The third category is irrelevant matter. It should be noted however thatsuch matter is specifically prohibited under the (R.412(b) iii)) only if it is "obviously irrelevant or unnecessary", for instance, if it has no bearing on the subject-matter of the invention or its background of relevant prior art. The matter to be removed may already be obviously irrelevant or unnecessary in the original description. It may, however, be matter which has become obviously irrelevant or unnecessary only in the course of the examination proceedings, e.g. owing to a limitation of the claims of the patent to one of originally several alternatives.

7.4 When matter is removed from the description, it must not be incorporated into the patent specification by reference to thecorresponding matter in the published application or in any other document.

7.5 Generally, matter falling under the first category will be dealt with during formality examination, as well as matter obviously falling within the second category. Although this is not explicitly mentioned in R.412, if any such matter has not been so recognized and has, therefore, not been omitted from the publication of the application, it should be removed during substantive examination of the application, i.e. before publication of the granted patent, together with any other prohibited matter.