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This Chapter sets out the general procedure for substantive
examination, together with guidance on particular matters where necessary.
It does not provide detailed instructions on matters of internal
administration.
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1.
The start of the substantive examination
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Sec.48.1
Sec.44
R.803 |
1.1 In order that
substantive examination of a patent application can begin, the applicant
is required to file a written request for examination according to
Sec.48.1 within six months from the publication of the application
(Sec.44) and to pay the required fees.
If
the request is not filed and/or the fees are not paid within the six
months following publication, the application is deemed withdrawn.
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| Sec.48.2,
R.803.1 |
1.2 A withdrawal of
the request for examination is irrevocable. Although the examination will
be not be carried out any further, the fees will not be refunded.
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Sec.42Sec.43 |
1.3 Formality
examination (Sec.42), classification and search (Sec.43) and substantive
examination will not always be carried out by the same examiner. After the
request for substantive examination has been received, the file relating
to the application is passed to the examining division competent for the
substantive examination of the application.
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| R.906 |
1.4 The file will
normally be assigned to the examiner responsible for the examination of
applications in the technical field in which the particular application
has been classified (R.906). Irrespective of the classification, it may
sometimes be more efficient to assign applications having different
classifications to the same examiner. For instance, closely related
applications, or parent and divisional applications could be allocated to
the same examiner. The applications will be taken up for examination in
the order in which they have been filed, or in which the applicant’s
responses have been filed.
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1.5 The substantive
examiner is entrusted to carry out all the work up to the point of a
decision to grant a patent or refuse the application, under the
supervision of his superior. This means that this examiner is entrusted to
act on behalf of the Office in all communications with the applicant up to
that point, but he will in general confer informally with his supervisors
at any time if a special point of doubt or difficulty arises (See VI, 7.1
here below). Where reference is made in this part of the guidelines to the
"examiner", this normally means the examiner entrusted with the work in
this way, and it should be understood that this examiner is always acting
in the name of the Office.
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2.
Examination procedure in general
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2.1 The purpose of
the examination is to ensure that the application and the invention to
which it relates, meet the requirements set out in the relevant Sections
of the IP-Code and in the IRR so that a patent can be granted. The prime
task of the examiner is to deal with the substantive requirements; the
criteria by which an examiner shall judge whether they have been met, are
dealt with in detail, in so far as appears necessary, in the other
chapters of this part of the guidelines. Some of the formal requirements
may be dealt with by administrative staff, such as recording, monitoring
time limits and payment of fees etc.
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| R.907(a) |
2.2 The examiner's
first step is to study the description, drawings (if any) and the claims
of the application. In carrying out his task, the examiner will have in
the file the documents making up the application and a history of the
proceedings up to the start of the substantive examination. In particular, this examination
file will include the request for examination, description, drawings (if
any) and the claims as originally filed; any amendments proposed to date;
the search report with the applicant's comments (if any), and references
to or copies of any cited documents; formality examination reports,
priority documents together with any translations etc.
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It
is usually a good practice to read the claims first, since unclear
passages stand out more clearly if the claims are read without first
reading the description. The next step is to understand the invention by
studying the description, the drawings (if any) and the claims (at least
once again) of the application. While reading the application, the
examiner should identify unclear, inconsistent, and wrong statements. Then
the claims should be read again to check that they are consistent with the
description and not too broad in scope (i.e. properly supported by the
description). After that the
prior art should be read and the claims examined for patent ability.
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| Sec.24.2 |
2.3 When the
examiner has studied and understood the claims (including any amended
claims), he should also make a search for any additional conflicting
Philippine applications falling within the area defined by Sec.24.2 (See
VI, 8.4 here below).
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| R.910 |
Applications
cited as prior art under Sec.24.1 must have been published. Unpublished,
withdrawn or forfeited applications may not be cited.
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Sec.39R.612 |
2.3a In the
case of foreign applications, the applicant will be requested, as often as
appropriate, to provide information on the status of any foreign
application relating to the same invention within a specified period.
Copies of the documents cited in foreign search reports may be requested.
In the case of relevant citations in other languages than English, the
examiner may request the submission of a corresponding patent (family
member) in English.
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| R.612.2 |
Non-compliance
with such requests has the effect that the application will be considered
withdrawn.
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R.907(b)
R.908 R.909 R.912 |
2.4 Taking into
account the documents (if any) cited in the search report and any further
documents found as the result of the search referred to in VI, 2.3 here
above, and taking account also of any amendments that may have been
proposed, or comments made, by the applicant, the examiner should identify
any requirements of the IP code and IRR which, in his opinion, the
application does not satisfy. He will then write to the applicant giving
reasons for any objections he raises and inviting the applicant within a
specified period to file his observations or submit amendments. When the
applicant has replied with or without amendment, the examiner will
re-examine the application.
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2.4a The examiner may base
his objections on documents cited in the foreign search reports and on the
contents in foreign examination reports or decisions. If such foreign
examination reports or decisions are negative and also apply to the claims
as filed in the Philippines, the examiner may raise prima facie objection
referring to these reports/decisions. Provided certain claims (in English)
have been granted after substantive examination in a foreign country, the
examiner can save time by checking these for their compliance with the
IP-code and the IRR, and – if positive – suggest to the applicant to amend
his Philippine patent application accordingly.
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Sec.51
R.912 R.913(a)R.913(b) |
2.5 At the
re-examination stage, the examiner should be guided by the over-riding
principle that a final position (grant or refusal) should be reached in as
few actions as possible, and he should control the procedure with this
always in mind. The process of communicating with the applicant described
in VI, 2.4 here above shall be repeated as often as necessary.
Nevertheless, if it is clear that the applicant is not making any real
effort to deal with the examiner's objections, either by amendments or by
counter-arguments, then even at the re-examination stage the examiner
should bring the application before his supervisor, who may approve the
refusal of the application. In any event, at some stage, the examiner will
make a short written recommendation to his supervisor either that the
application should be refused or that a patent should be granted thereon.
If the application is to be refused (final rejection, Sec.51), a written
reasoned decision will be prepared by the examiner entrusted with the
examination of the application. In preparing the decision, the examiner
must take care to abide by the general principle that the decision must be
based on grounds or evidence on which the applicant has had the
opportunity to comment (R.913(b)).
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R.909
R.913 R.1302 R.917R.1305 |
However,
according to R.909, R.913, R.1302, a second adverse action by the examiner
on the same grounds may already be considered as final by the applicant
for the purpose of appeal.
The
applicant may appeal against a final rejection or decision of refusal.If the
examiner considers in the light of the applicant's statement, that the
appeal is admissible and well-founded, or if the rejected claims have been
cancelled (R.913), or if any
other objected deficiencies have been removed (R.917), he should rectify
its decision accordingly after receipt of the restricted claims or the
appellant’s brief according to R.1305.
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R.1307
-R.1311 |
Otherwise,
the appeal will be considered by the Director of patents and possibly
higher instances as foreSeen in R.1307 to 1311. If a decision to refuse a
patent is reversed on appeal, the application may be referred back to the
examiner for further examination. In such a case, the further examination
will normally be entrusted to the examiner who performed the original
examination. The examiner is bound by the decision of the Director or any
higher instance.
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2.6 If the examiner
considers that a patent should be granted, he will first inform the
applicant, by the means of a Notice of Allowability, of the claims which
are allowed. Prosecution on the merits is closed with the issuance of this
Notice. Further fees (inter alia the publication fee) will have to be paid
by the applicant within a specified time period. Once the requirements
referred to in this Notice are fulfilled, a Philippine patent is granted.
For further details of the granting procedure, See VI, 15 here
below.
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2.7 Reference is
made to the Part 9 of the IRR, where the rules relating to substantive
examination are set out. The stages of this procedure are considered in
more detail in the following sections.
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3. The first stage of examination
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3.1 Following the
publication of the application and prior to the substantive examiner's
first communication with the applicant, the latter may file comments on
the search report and amendments to the description, claims or drawings.
These amendments may be submitted to avoid possible objections of lack of
novelty or lack of inventive step in view of the citations listed in the
search report; or to meet any objections that might have lead to a partial
or incomplete search report
(i.e. at least some claims did not permit of a meaningful search),
or they may be suggested for some other reason, e.g. to remedy some
obscurity which the applicant himself has noted in the original
documents.
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These
amendments will of course only be considered provided a request for
substantive examination has been filed according to Sec.48.1.
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3.2 Such amendments
being voluntarily made by the applicant, the applicant is not restricted
to amendment necessary to remedy a defect in his application. It does not,
however, mean that the applicant is free to amend in any way he chooses.
Any amendment must satisfy the following conditions:
(i) It
must not add subject-matter to the content of the application as filed
(See VI, 5.3 to 5.8b here below); and
(ii)
It must not itself cause the application as amended to be objectionable
under the IP-code, e.g. the amendment must not introduce obscurity
(Sec.36.1).
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If
the amendments do not meet these conditions, the applicant should be told
that the amended application cannot be allowed. Apart from the amendments
referred to above, which are allowed under Sec.49, the applicant may
correct obvious errors (See VI, 5.9 here below).
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R.907
R.908 |
3.3 The examiner's
first substantive examination action should, as a general rule, cover all
objections to the application (but See VI, 3.6 here below). These
objections may relate to formal matters (e.g. failure to comply with one
or more of the requirements specified in R.407, 415 or 416), to
substantive matters (e.g. the subject-matter of the application is not
patentable), or to both.
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Substantive
matters should normally be set out first. The letter should be drafted in
such a manner as to facilitate re-examination of the amended application
and, in particular, to avoid the need for extensive re-reading (See VI,
4.2 here below).
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The
question of unity of invention (Sec.38) should be addressed as early as
possible. Concerning the assessment of unity and the procedure to follow
in case of lacking unity, reference is made to Sec.38.2, to R.604 to R.611
and to III, 7.
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| R.909(b) |
3.4
For each objection the letter should indicate the part of the application
which is deficient and the requirement of the IP code or the IRR which is
not met, either by referring to specific Sections or Rules, or by other
clear indication; it should also give the reason for any objection where
this is not immediately apparent. For example, where prior art is cited
and only part of a cited document is relevant, the particular passage
relied upon should be identified. If the cited prior art is such as to
demonstrate lack of novelty or inventive step in the independent claim or
claims, and if consequently there is lack of unity between dependent
claims, the applicant should be warned of this situation (See VI, 5.2(i)
here below).
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R.907(b)
R911 R.929 |
3.5 The letter
should include an invitation to the applicant to file his observations, to
correct any deficiencies and, if necessary, to submit amendments to the
description, claims and drawings. It must also state the period within
which the applicant must reply. Failure to replyin due time will cause the application
to be deemed withdrawn.
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3.6 It is emphasised
that the first sentence of VI, 3.3 here above only sets out the general
rule. There may be cases in which the application is generally deficient.
In these cases the examiner should not carry out adetailed
examination (R.908), but should send a letter to the applicant informing
him of this fact, mentioning the major deficiencies and saying that
further examination is deferred until these have been removed by
amendment; the letter should specify a period within which the
deficiencies must be removed. There may be other cases in which, although
a meaningful examination is possible, a fundamental objection arises, e.g.
it is clear that certain claims lack novelty and that the statement of
claim will have to be drastically recast, or there are substantial
amendments which are not allowable for one of the reasons stated in VI,
3.2 here above. In such cases it may be more appropriate to deal with this
objection before making a detailed examination; if, e.g. the claims need
re-casting, it may be pointless to raise objections to the clarity of some
dependent claims as a consequence. However, if there are other major
objections these should be dealt with. Generally the examiner should at
the first examination stage Seek to make the maximum impact with the broad
aim of bringing matters to a conclusion (grant or refusal, as the case may
be), without any undue delay (R.908).
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3.7 When making the
full examination, the examiner should concentrate on trying to understand
what contribution the invention as defined in the claims adds to the known
art. This should normally be sufficiently clear from the application as
filed (R.407(1)c)). If it is not, the applicant should be required to
elucidate the matter (See II, 4.5); but the examiner should not raise an
objection of this kind unless he is convinced it is necessary, since to do
so might result in the applicant introducing additional subject-matter and
thus offending against the proviso of Sec.49 (See VI, 5.3 to 5.8b here
below).
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3.8 Although the
examiner must bear in mind all the requirements of the IP-code and the
IRR, the requirements which are most likely to require attention in the
majority of cases are sufficiency of disclosure (See II, 4); clarity,
especially of the independent claims (See III, 4); novelty (See IV, 5);
and inventive step (See IV, 9).
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3.9 The examiner
should not require or suggest amendments merely because he thinks they
will improve the wording of the claims. A pedantic approach is
undesirable; what is important is that the meaning of the claims should be
clear.
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3.10 It must be emphasised
that it is not part of the duty of an examiner to require the applicant to
amend the application in a particular way to meet an objection, since the
drafting of the application is the applicant's responsibility and he
should be free to amend in any way he chooses provided that the amendment
removes the deficiency and otherwise satisfies the requirements of the
IP-code and the IRR. However, it may sometimes be useful if the examiner
suggests at least in general terms an acceptable form of amendment, but if
he does so he should make it clear that the suggestion is merely for the
assistance of the applicant and that other forms of amendment will be
considered.
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| R.911 |
3.11 After the action
of the examiner, if the same be adverse in any respect, the applicant, if
he persists in his application for a patent, must reply thereto and may
request re-examination or reconsideration, with or without
amendment.
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In
order to be entitled to re-examination or reconsideration, the applicant
must make a request therefore in writing, and he must distinctly and
specifically point out the supposed errors in the examiner’s action. The
applicant must respond to every ground of objection and rejection in the
prior examiner’s action (except that request may be made that objections
or requirements as to form, not necessary to further consideration of the
claims, be held in abeyance until a claim is allowed), and the applicant’s
action must appear throughout to be a bona fide attempt to advance the
case to grant. The mere allegation that the examiner has erred will not be
received as a proper reason for such re-examination or
reconsideration.In
amending an application in response to a rejection, the applicant must
clearly point out the patentable inventiveness and novelty which he thinks
the claims present, in view of the state of the art disclosed by the
references cited or the objections made. He must also show how the
amendments avoid such references or objections. To avoid objections under
the proviso of Sec.49, he
should indicate and upon which passages of the application as filed the
amendments are based.
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4.
Further stages of examination
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General
procedure
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| R.912 |
4.1 Following the
examiner's first letter and the applicant's reply, the examiner
re-examines the application taking into account observations or amendments
made by the applicant.
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4.2 The examiner
should apply the same standard of examination in relation to matters of
substance at all stages in the processing of an application. However,
after the first examination stage, he will not normally need to completely
re-read the amended application if he has drafted his first letter in a
comprehensive way (See VI, 3.4 here above), but should concentrate on the
amendments themselves and any related passages, and on the deficiencies
noted in the letter.
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4.3 In most cases,
the applicant will have made a bona fide attempt (SeeR.911(b)) to deal with the
examiner's objections. There are then two possibilities to consider. The
first is that the examiner, having taken account of the observations of
the applicant, considers that there is little prospect of progress towards
grant and that the application should be refused (Sec.51). In such a case,
the examiner should not as a rule refuse immediately but should warn the
applicant, e.g. by a short further written action, that the application
will be refused unless he can produce further more convincing arguments or
makes appropriate amendments within aspecified
time limit. The second and more usual possibility, however, is that the
re-examination shows that there is good prospect of bringing the procedure
to a positive conclusion in the form of a grant. In these latter cases, if
there are still objections that require to be met, the examiner will issue
a further written action pointing out the remaining deficiencies of the
application.
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If
this re-examination, however, shows that the applicant has not made any
real effort to deal with these objections, the examiner should consider
recommending the application be refused immediately. However, this would
be an exceptional case.
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4.4 If the matters
are such that the applicant is likely to require time to consider them, it
will probably be preferable to deal with them by means of a written
action. If, however, there Seems to be confusion about points in dispute,
e.g. if the applicant Seems to have misunderstood the examiner's argument,
or if the applicant's own argument is not clear, then it may expedite
matters if the examiner proposes an interview (to be requested by the
applicant, See VI, 6 here below). On the other hand, if the matters to be
resolved are minor, or can quickly and easily be explained and dealt with,
then they might be settled more expeditiously by a short written
action.
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Discussion
with the applicant or his representative at an interview is more fully
considered in VI, 6.
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4.5 Similar
considerations apply to later stages of re-examination except that, having
regard to the principle stated in VI, 2.5 here above, the greater the
number of actions which have already taken place, the greater is the
likelihood that the most appropriate action is a final rejection or
refusal under Sec.51.
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4.5a Where the final
decision is to refuse the application, care should be taken that the
decision does not offend against R.913(b), 2nd
sentence.
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Examination
of amendments
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4.6 Any amendment
must satisfy the conditions listed in VI, 3.2 here above. When it was
effected must also be established. After publication of the search report
and before receipt of the first communication from the substantive
examiner, the applicant may, of his own volition, amend the description,
claims and drawings, provided a valid request for substantive examination
has already been made.
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| R.911(c) |
4.7 After receipt of
the first communication from the examiner, the applicant may amend the
description, claims and drawings provided that the amendment is filed at
the same time as his reply.
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| R.912(b) |
With
his reply to the second communication from the substantive
examinerthe
applicant may amend again, but any amendment will ordinarily need to be
restricted to overcoming the objections raised by the examiner. Other
types of amendments will require the consent of the examiner. Giving the
examiner this discretion is intended to ensure that the examination
procedure is brought to a conclusion in as few actions as possible (See
VI, 2.5 here above).
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If
an amendment is allowed, subsequent proceedings are based on
theDescription,
claims and drawings as amended. Consent to an amendment does not
necessarily imply that the application as amended is free from any
objection under the IP-code and/or IRR. Distinctions should be drawn
between different types of amendments:cralaw:red
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Amendments
remedying a deficiency in response to the preceding communication must
always be allowed, provided they do not give rise to some new deficiency.
Amendments limiting a claim already considered allowable should normally
be allowed, as too should those improving the clarity of the description
or claims in a manner clearly desirable.
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A
further factor is the amount of alteration to the application documents
involved. Extensive reworking of the description or claims may be a proper
response to highly relevant further prior art of which the applicant has
only just become aware (e.g. either through further citation by the
examiner or through knowledge obtained from another source). Regarding
less extensive amendments, the examiner should adopt a reasonable
approach, trying to balance fairness to the applicant against the need to
avoid unnecessary delay and excessive and unjustified additional work for
the Office.
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Any
subsequent request to withdraw an amendment is itself a request for
further amendment; thus, if this subsequent request occurs after the
second communication from the examiner, it will be allowed only if the
examiner consents. In exercising his discretion, the examiner should bear
in mind the length of the proceedings to date and whether the applicant
has already had sufficient opportunity for amendments. He should refuse in
particular amendments reintroducing deficiencies previously pointed out to
and removed by the applicant.
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In
deleting subject-matter from an application the applicant should avoid any
statement which could be interpreted as abandonment of that
subject-matter. Otherwise this subject-matter cannot be
reinstated.
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4.8 Any request by
an applicant to replace the text of the application on whose basis a
patent could be granted, with one that has been extensively revised should
be refused, unless the applicant gives good reasons for proposing the
changes only at this stage in the proceedings. This applies particularly
in cases where the examiner has indicated that a version of the claims
proposed by the applicant is grantable and that the applicant has only to
bring the description into line with that version.
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4.9 The Notice of
Allowability closes the prosecution on the merits and does not constitute
an opportunity for the applicant to call into question the outcome of the
earlier procedure (See VI, 15 here below for procedure upon grant). At
this stage of the proceedings the substantive examination has already been
completed and the applicant has had the opportunity to amend the
application and therefore normally only minor amendments which do not
appreciably delay the preparations for grant of the patent will be
allowed.
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4.10 Once the
decision to grant has been taken, further amendments or corrections to the
granted patent, can only be requested on the basis of Sec.57, 58 or
59.
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4.11 Paragraph 4.9
above do not prevent the examiner from resuming the proceedings of his own
motion where he becomes aware of circumstances which are such as to render
non-patentable the subject-matter claimed. Such circumstances may be
brought to the examiner’s attention by the applicant or following
observations by third parties under Sec.47 and can be considered up to the
moment the final decision to grant is taken. In the resumed proceedings,
substantive amendments to resolve this problem are possible.
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R.912(b)R.927 |
4.12 If a request for
amendment is to be refused under R.912(b), the applicant must first be
sent a communication giving the reasons for refusing the amendment. The
applicant may then make a petition according to R.927. In the case of a
situation as described in e.g. VI, 4.9,the applicant should be invited
at the same time to request grant of the patent on the basis of the
preceding acceptable version of the documents. If the applicant maintains
his request for the amendment, the application must be refused under
Sec.51 since, in these circumstances, there is no text of the application
which has been agreed by the applicant and allowed by the
examiner.
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4.13 Reference is
made to the IRR, R.911,912,916-927 concerning the provisions relating to
amendments of the application documents.
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5.chanrobles virtual law libraryAmendments
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Making
the amendments
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Sec.49,
ProvisoR.916,
R.919 |
5.1
An applicant may amend the patent application during examination, provided
that such an amendment does not include new matter outside of the scope of
the disclosure contained in the application as filed. |
| R.918 |
The
description, claims and drawings must be amended and revised when
required, to correct inaccuracies of description and definition or
unnecessary prolixity, and to secure correspondence between the claims,
the description and the drawings.
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R.920
to R.926 |
The
formal considerations relating to the technique of making amendments are
set out in R.920 to 926.
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Allowability
of amendments
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5.2 Amendments can
consist of addition,
replacement or deletion of features originally present in the claims, the
drawings or the description. Legally,
the question of allowability of amendments is a question of whether the
application as so amended is allowable. An amended application must of
course satisfy all the requirements of the IP Code and the IRR including,
in particular, inventive step and the other matters listed in VI, 3.8 here
above (See also VI, 3.2 here above). Also, however, especially when the
claims have been substantially limited, the examiner should bear in mind
that the following questions may require special consideration at the
amendment stage:cralaw:red
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(i) Unity
of invention:
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Do
the amended claims still satisfy the requirements of Sec.38.1? If the
documents cited in the search report Seem to reveal lack of novelty or
inventive step in the concept common to all the claims as filed, but the
amended claims do not necessitate further search, the examiner should
consider carefully whether objection to lack of unity is justified at this
stage of the proceedings (See III, 7). If, however, the amended claims
lack a common inventive concept and a further search is necessary,
objection should be raised.
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(ii)
Changing
to unsearched subject-matter:cralaw:red
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If
amended claims are directed to subject-matter which has not been searched
(e.g. because it only appeared in the description and the examiner did not
find it appropriate to extend the main search to this subject-matter), and
which does not combine with the originally claimed and searched invention
or group of inventions to form a single general inventive concept, such
amendments are not admissible. This applies particularly when this
unsearched subject-matter alone is now claimed.
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Applicants
should bear in mind that the examining procedure should be brought to a
conclusion in as few actions as possible, thus the examiner may not allow
further amendments (R.912, 2nd sentence, R.927). See also VI, 4.7 here
above).
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It
is important also to ensure that no amendment adds to the content of the
application as filed and thus offends against the proviso in Sec.49 as
explained in the following paragraphs.
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Additional
subject-matter
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Sec.49,
proviso R.916
R.919 |
5.3 There is
normally no objection to an applicant introducing, by amendment, further
information regarding prior art which is relevant; indeed this may be
required by the examiner (See II, 4.4 and 4.18). Nor will the
straight-forward clarification of an obscurity, or the resolution of an
inconsistency, be objected to (e.g. under Sec.36.1, clarity or under
R.918). When, however, the applicant Seeks to amend the description (other
than references to the prior art), the drawings, or the claims in such a
way that subject-matter which extends beyond the content of the
application as filed is thereby introduced, the application as so amended
cannot be allowed.
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5.4 An amendment
should be regarded as introducing subject-matter which extends beyond the
content of the application as filed, and therefore unallowable, if the
overall change in the content of the application (whether by way of
addition, alteration or excision) results in the skilled person being
presented with information which is not directly and unambiguously
derivable from that previously presented by the application, even when
account is taken of matter which is implicit to a person skilled in the
art. At least where the amendment is by way of addition, the test
corresponds to the test for novelty given in IV, 7.2.
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Under
Sec.49 and R.919 it does not appear to be permissible to add to an
application matter present only in the priority document for that
application. For correction of errors See VI, 5.9 here below.
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5.5 For example, if
an application related to a rubber composition comprising several
ingredients and the applicant Seeks to introduce the information that a
further ingredient might be added, then this amendment should normally be
objected to as offending against
the proviso in Sec.49. Likewise, in an application which described
and claimed apparatus "mounted on resilient supports", without disclosing
any particular kind of resilient support, objection should be raised if
the applicant Seeks to add the specific information that the supports are,
or could be, e.g. helical springs (See, however, VI, 5.6 here
below).
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5.6 If, however, the
applicant can show convincingly that the subject-matter in question would,
in the context of the invention, be so well-known to the person skilled in
the art that its introduction could be regarded as an obvious
clarification, the amendment may be permitted. For example, in the matter
of the rubber composition referred to in VI, 5.5 here above, if the
applicant were able to show that the further ingredient which he sought to
introduce was, say, a well-known additive normally used in rubber
compositions of that kind as an aid to mixing and that its omission would
generally be questioned, then its mention would be allowable on the
grounds that it merely clarified the description and introduced nothing
not already known to the skilled person; however, if the introduction of
this additive brought about some special effects not originally disclosed,
an amendment mentioning this should not be allowed. Similarly in the
above-mentioned
case of the resilient supports, if the applicant were able to demonstrate
that the drawings, as interpreted by the skilled person, showed helical
springs, or that the skilled person would only consider helical springs
for the mounting in question, the specific mention of helical springs
would be allowable.
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5.6a Where a
technical feature was clearly disclosed in the original application but
its effect was not mentioned or not mentioned fully, yet it can be deduced
without difficulty by a person skilled in the art from the application as
filed, subsequent clarification of that effect in the description does not
contravene the proviso of Sec.49.
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5.7 Amendment by the
introduction of further examples should always be looked at very carefully
in the light of the general considerations outlined in paragraphs VI, 5.3
to 5.6a here above, and will not, in general, be admissible. The same
applies to the introduction of statements of new (i.e. previously not
mentioned) effects of the invention such as new technical advantages: for
example, if the invention as originally presented related to a process for
cleaning woollen clothing consisting of treating the clothing with a
particular fluid, the applicant should not be allowed to introduce later
into the description a statement that the process also has the advantage
of protecting the clothing against moth damage.
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5.7a Under certain
circumstances, however, later filed examples or new effects, even if not
allowed into the application, may nevertheless be taken into account by
the examiner as evidence in support of the patentability of the claimed
invention. For instance, an additional example may be accepted as evidence
that the invention can be readily applied, on the basis of the information
given in the originally filed application, over the whole field claimed
(See III, 6.4). Similarly a new effect (e.g. the one mentioned in VI, 5.7
here above) may be considered as evidence in support of inventive step,
provided that this new effect is implied by or at least related to an
effect disclosed in the originally filed application (See IV,
9.10).
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5.7b Any supplementary
technical information submitted after the filing date of the application
which cannot be incorporated in the application documents as such will be
added to the part of the file which is open to public inspection under
Sec.44.2. From the date at which the information is added to the open part
of the file, it forms part of the state of the art within the meaning of
Sec.24.1.
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5.7c Care must also be
taken to ensure that any amendment to, or subsequent insertion of, a
statement of the technical problem solved by the invention meets the
proviso of Sec.49. For example it may happen that following restriction of
the claims to meet an objection of lack of inventive step, it is desired
to revise the stated problem (R.407(c)) mentioned in the description to
emphasise an effect attainable by the thus restricted invention but not by
the prior art. It must be remembered that such revisionis
only permissible if the effect emphasised is one deducible by a person
skilled in the art without difficulty from the application as filed (See
VI, 5.6a and 5.7 here above).
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5.7d Features which are not
disclosed in the description of the invention as originally filed but
which are only described in a cross-referenced document which is
identified in such description are prima facie not within the content of
the application as filed for the purpose of the proviso of Sec.49. It is
only under particular conditions that such features can be introduced by
way of amendment into the claims of an application.For,
example such an amendment would not contravene Sec.49 if the description
of the invention as filed leaves no doubt to a skilled reader that
protection is or may be sought for such features, that such features
contribute to solving the technical problem underlying the invention, that
such features at least implicitly clearly belong to the description of the
invention contained in the application as filed and thus to the content of
the application as filed, and that such features are precisely defined and
identifiable within the disclosure of the reference
document.
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5.8 Alteration or excision
of the text, as well as the addition of further text, may introduce fresh
subject-matter. For instance, suppose an invention related to a
multi-layer laminated panel, and the description included several examples
of different layered arrangements, one of these having an outer layer of
polyethylene; amendment of this example either to alter the outer layer to
polypropylene, or to omit this layer altogether would not normally be
allowable. In each case the specific panel disclosed by the amendment
example would be quite different from that originally disclosed and hence
the amendment would introduce fresh subject-matter and therefore be
unallowable.
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5.8a The replacement or
removal of a feature from a claim may, for example, not contravene the
proviso of Sec.49 provided the skilled person would directly and
unambiguously recognize that the feature was not explained as essential in
the disclosure, it is not, as such, indispensable for the function of the
invention in the light of the technical problem it serves to solve, and
the replacement or removal requires no real modification of other features
to compensate for the change. In case of replacement by another feature:
the replacing feature must of course find support in the original
application documents, so as not to contravene the proviso of
Sec.49.
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5.8b However, when the
extent of a claim is to be limited because of a coincidental overlap
between the prior art and the claimed subject-matter, and the claim's
remaining subject-matter cannot be defined more clearly and concisely by
positive features, this specific prior art may be excluded by means of a
disclaimer.
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Correction
of errors
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5.9 Correction of errors
in the application documents is a special case involving an amendment,
therefore the requirements of the proviso of Sec.49 apply
likewise.
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Where
the mistake is in the description, claims or drawings, the correction must
be obvious in the sense that it is immediately evident (at least once
attention is directed to the matter):cralaw:red
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(i)
that
an error has occurred; and
(ii)
what
the correction should be.
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Regarding
(i), the incorrect information must be objectively recognisable for a
skilled person using common general knowledge from the originally filed
application documents (description, claims and drawings) taken by
themselves.
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Regarding
(ii), the correction should be within the limits of what a skilled person
would derive directly and unambiguously, using common general knowledge,
and Seen objectively and relative to the date of filing, from the
originally filed application documents. Evidence of what was common
general knowledge on the date of filing may be furnished in any suitable
form.
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Such
a correction is of a strictly declaratory nature and establishes what a
skilled person, using common general knowledge, would already derive on
the date of filing from the parts of a patent application, Seen as a
whole, relating to the disclosure.
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Requests
for correction can only be considered until the decision to grant a patent
or to refuse the application has been taken. Concerning correction of
errors in a granted patent, reference is made to Sec.57 and
Sec.58.
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6. Discussion with the
applicant
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6.1
In this section the term "applicant" is intended to mean
"representative" where he has appointed one. Where the applicant
has appointed a representative, the communication should be with that
representative.
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6.2
According to the IRR, Final Provisions, Sections 1(a)(b), all
business with the Office shall be transacted in writing. Actions will be
based exclusively on the written record, and no attention will be paid to
any alleged oral promise, stipulation or understanding.Unless
otherwise provided, the personal attendance of applicants and other
persons at the Office is unnecessary. Their business can be transacted by
correspondence.
|
| R.905
R.928 |
6.3
As regards information on any specific technical or scientific
matter pending final action by the Bureau, the applicant may, upon request
and upon the payment of a fee, request in writing a conference with the
examiner, specifying the query he would want to propound to the examiner.
The examiner has the discretion to grant the request or to choose to reply
to the query in writing. Interviews for the discussion of pending
applications shall not be held prior to the first written official action
thereon.
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6.4
The circumstances in which it may be appropriate for the examiner
accept the request for an interview rather than send a further written
action are considered in VI, 4.4 here above. If the applicant requests an
interview the request should be granted unless the examiner believes that
no useful purpose would be served by such a discussion.
|
| R.928 |
6.5
When an interview is requested, the matters for discussion should
be clearly stated. When granting the request and making the necessary
arrangements, the examiner should record the particulars and briefly
indicate the matters to be discussed. The interview shall take place within the premises of the
Bureau during regular working hours as specified by the examiner.
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6.6
Solely the examiner dealing with the application will normally
conduct the interview. It should always be made clear to the applicant
that any agreement reached must ultimately be subject to the approval of
the examiner’s superior.
|
| R.928 |
6.7
The interview is not a procedure as formal as a hearing before the
legal division; it shall nevertheless always be reduced to writing and
signed by both the examiner and the applicant immediately after the
interview. Such writing shall form part of the records of the Bureau.
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6.8
The recording of the interview depends upon the nature of the
matters under discussion. Where the interview is concerned with the
clarification of obscurities, the resolution of uncertainties, or putting
the application in order by clearing up a number of minor points it will
usually be sufficient if the examiner makes a note on the file of the
matters discussed and the conclusions reached, or amendments agreed. If,
however, the interview is concerned with resolving weightier matters, such
as questions of novelty, inventive step, or whether the amendment
introduces fresh subject-matter, then a fuller note of the matters
discussed should be made in the file.
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|
6.9
The records of interviews should always indicate whether the next
action is due to come from the applicant or the examiner. Pending time
limits may be extended.
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6.10
If a fresh objection of substance is raised at an interview and no
amendment to meet it is agreed at the time, the objection must be
confirmed by a letter giving the applicant a fresh period within which he
may reply if he so wishes. Otherwise time limits may not be altered as a
result of an interview.
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7. Work within the
examining divisions
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|
7.1
As stated in VI, 1.4 here above, the examiner may Seek the advice
of other members of the examining division, such as his assistant division
chief or division chief, if necessary, at any stage in the examination.
Any action processed by the examiner will be checked by his superior(s). With ongoing examination, a point will be reached when it
becomes appropriate for the examiner to refer the case formally to his
superior. This will arise if he considers that a final action is
appropriate, i.e. if it the application is in order to proceed to grant;
or, at the other extreme, if there Seems no possibility of amendment which
would overcome his objections, or if the applicant has made no serious
attempt to meet these objections and it therefore appears that the
application must be refused. Between these extremes there are other
circumstances in which reference to the superiors is appropriate, e.g. an
interview may be requested by the applicant because an impasse has been
reached.
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7.2
If the examiner considers that the application satisfies the
requirements of the IP code and the IRR, and is thus in order to proceed
to grant he should usually make a brief written report. As a general rule,
it will be appropriate in this report for the examiner to give the reasons
why, in his opinion, the subject-matter as claimed in the application is
not obvious having regard to the state of the art. He should normally
comment on the document reflecting the nearest prior art and the features
of the claimed invention which make it patentable, although there may be
exceptional circumstances where this is not necessary, e.g. where
patentability is based on a surprising effect. He should also indicate how
any apparently obscure but important points have ultimately been
clarified, and if there are any borderline questions which the examiner
has resolved in favor of the applicant, he should draw attention
specifically to these.
The report may be made very brief by including references pointing to the
relevant file contents, e.g. applicant’s reply etc.
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7.3
When referring to his superioran application which is not in order for grant of a patent, the
examiner should make a written report which sets out the points at issue,
summarises the case history to the extent necessary to enable his superior
to obtain a quick grasp of the essential facts, and recommends the action
to be taken, e.g. refusal, or grant conditional upon certain further
amendments. As the superiors will require to study such cases themselves,
there is no need for a detailed exposition. It will be useful however to
draw attention to any unusual features or to points not readily apparent
from the documents themselves. If the reportrecommends refusal and the issue Seems clear cut, the
examiner may include with his report a draft reasoned decision for issue
by the Office (See VI, 2.5 here above); if the issue is not clear cut, the
drafting of the reasoned decision should be deferred until the superiorhas studied the case.
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7.4
When an application is referred to the superior, he will first
consider the case and will indicate his opinion on the course of action to
be taken. When further action is needed, the substantive examiner will be
entrusted with the work.
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7.5
The superior should bear in mind that his function generally is not
to make a complete re-examination of the application. If, following
a discussion, the conclusions
of the examiner entrusted with the examination are generally considered to
be reasonable, they should be accepted.
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7.6
If, in the opinion of the superior, the possibility exists of
amending the application to bring it into a form which meets the
requirements of the IP code and the IRR, then the examiner should be
entrusted with the task of communicating to the applicant that the
application should be refused on certain grounds unless satisfactory
amendments are submitted within a stated period. If, within the time
limit, satisfactory amendments are made, the examiner will then report
back to his superiorrecommending
that the application should proceed to grant. If not, he should report
back recommending refusal.
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|
Sec.51.2
R.913
IRR
Part 13 |
7.7 If,
on the other hand, the examiner and his division chief are satisfied that
the applicant has had sufficient opportunity to amend and that all the
requirements are still not met, the examiner should issue a final
rejection or a decision to refuse the application under Sec.51.1; this
decision will normally be drafted by the examiner. The grounds of refusal
must be stated and full reasons must be given; refusal may be based only
on grounds on which the applicant has had an opportunity to put forward
comments. In addition, the applicant's attention must be directed to the
provisions for appeal laid down in Sec.51.2, R.913(a)(b), and in Part 13
of the IRR.
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7.8
Any decision is issued by the examining division is signed by the
examiner and his superior(s).
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8. Searching and the
search report
|
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The search report
|
| Sec.44.1 R.800, R.701.1 |
8.1
The search report is prepared before the publication of the
application and published together with the application. The
search report normally is in the form prescribed by R.701.1.
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|
In cases where the application lacks unity, the search
report may relate to more than one invention. In some exceptional cases
provided only a incomplete search report will be available. Due to
obscurities in the application as filed.
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8.2
Assuming that a search has been made and documents cited, there are
two special problems that may arise occasionally in respect of such
documents. The first is the date of publication of the material in the
document; this is dealt with in IV, 5.2 the other problem concerns
documents in a foreign language (e.g. Japanese, German or French).
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8.3
The search examiner will cite a document in a foreign language only
if he knows or has strong evidence leading him to suspect (e.g. from
drawings, from an abstract, or a corresponding patent in English or
Filipino), or from a translation produced by himself or some other person
familiar with the language of the document) that the document is relevant.
The substantive examiner, in his first action, may cite the document on
the basis of similar evidence; an abstract or corresponding document in
English, if supplied by the search examiner, will also be cited. If,
however, the applicant disputes the relevance of the document and gives
specific reasons, the examiner should consider whether, in the light of
these reasons and of the other prior art available to him, he is justified
in pursuing the matter. If so, he may try to obtain from the applicant a
translation of the document (or merely the relevant part of it, if that
can be easily identified), or at least statements concerning specific
questions relating to the disclosure comprised in the document.
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|
Search for conflicting
Philippine applications
|
| Sec.24.2 |
8.4
As stated in VI, 2.3 here above,
the examiner will need to make a so-called "topping-up" search
for conflicting Philippine applications falling within the area defined by
Sec.24.2. This is because the searchable collection of the Philippine
applications may not be complete in respect of such material at the time
the main search is made. Since priority dates claimed (if any) may not be
accorded to all or part of the application but may be accorded to the
appropriate part of a conflicting application (See V, 2.1), this search
should be extended so as to cover all published Philippine applications
filed up to one year or more after the filing of the application under
consideration. If the examiner is unable to complete this
"topping-up" search at the first examination stage he should
ensure that such search is completed before the application is reported to
be in order for the grant of a patent.
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|
In the cases in which an application is found to be in
order before this search can be completed (because of publication delays
concerning older, potentially conflicting Philippine applications), the
grant of a patent should not be substantially delayed for this reason
unless the examiner has knowledge of such a conflicting application which
would have to be citedagainst novelty. In this case, publication of the
relevant application, should, if possible, be accelerated and the granting
of the application in question should be delayed.
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|
Other additional
searches during examination
|
|
8.5
An additional search will sometimes be required either at the first
stage of amendment or subsequently. This may arise for a number of
reasons. First, an additional search may be necessary where only an
incomplete search report (e.g. because of obscure claims) has been issued
after the main search, and subsequently the deficiencies which rendered a
meaningful or complete search impossible have been corrected by amendment,
or successfully refuted by the applicant. An additional search may also be
necessary where the claims have been so amended that their scope is no
longer covered by the original search. Exceptionally,
an additional search may be required if the applicant refuses an
acknowledgment of prior art (See IV, 9.5), or if the examiner believes
that material relevant to obviousness might be found in technical fields
not taken into account during the main search.
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|
8.6
The substantive examiner is not barred from looking for a relevant
document whose existence he knows of or has reason to suspect, if he can
retrieve that document in a short time from material available at the
Office.
|
| Sec.39 R.612 R.612.1 |
8.7
In the case of foreign applications, pursuant to Sec.39 and R.612
and 612.1, the applicant will generally be requested to provide copies of
relevant documents relating to that foreign application, e.g. search
reports, examination reports, and citations. Such requests may be issued
during the whole procedure up to grant, depending on the circumstances of
the case. See also VI, 2.3a and 2.4a here above.
|
| R.805 |
8.9
Concerning the formats to be used in citing relevant documents,
reference is made to R.805. The
references cited should be clearly identified, the relevant passages
thereof should be identified as precisely as possible.
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|
9. Special
applications
|
|
Divisional
applications
|
| Paris
ConventionArt.4
G |
The
Philippines are a signatory state of the Paris Convention. Art.4 G of the
Paris Convention reads:“G. – (1) If
the examination reveals that an application for a patent contains more
than one invention, the applicant may divide the application into a
certain number of divisional applications and preserve as the date of each
the date of the initial application and the benefit of the right of
priority, if any.
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|
"(2) The applicant may
also, on his own initiative, divide a patent application and preserve as
the date of each divisional application the date of the initial
application and the benefit of the right of priority, if any. Each country
of the Union shall have the right to determine the conditions under which
such division shall be authorized.”
|
| Sec.38.2 R.604(b)
R.606- R.610 |
Sec.38.2 and R.604(b), R.606 to R.610 relate to the
first case (requirement for restriction, following a lack of unity
objection) and R.611 to the second case (division on own initiative).
|
| R.611 |
9.1
Subsequent to the filing of a patent application, a divisional
application may be filed. The divisional application is accorded the same
filing date as the parent application, and has the benefit of any right of
priority of the parent application in respect of the subject-matter
contained in the divisional application. A Philippine application may give
rise to more than one divisional application. A divisional application may
itself give rise to one or more divisional applications.
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|
9.2
The applicant may file a divisional application of his own volition
(voluntary division). The most common reason, however, for filing a
divisional application is to meet an objection under Sec.38.1 of lack of
unity of invention (mandatory restriction). If the examiner objects to
lack of unity, the applicant is allowed a period in which to limit his
application to a single invention. Concerning details of the procedure in
case of lack of unity objection, reference is made to the provisions of
Sec.38.2 and R.604 to 610 and to III, 7.
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|
9.3
Divisional applications may be filed on a pending application
before the parent application is withdrawn, abandoned or patented. This
means that the mere deletion of subject-matter in an application is not
prejudicial to the later filing of a divisional application up to the
events mentioned above. When deleting subject-matter the applicant should,
however, avoid any statements which could be interpreted as abandonment.
The applicant may thus file a divisional application for the
subject-matter deleted in the parent application if he wishes to obtain
protection for this subject-matter.
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|
9.4
The substantive examination of a divisional application should in
principle be carried out as for any other application but the following
special points need to be considered.
|
|
The
examination of a divisional examination should normally be carried out as
soon as possible by the examiner of the parent application.The
claims of a divisional application need not be limited to subject-matter
already claimed in claims of the parent application; however the
subject-matter may not extend beyond the content of the parent application
as filed (See proviso in Sec.38.2). If a divisional application contains
subject-matter additional to that contained in the parent application as
filed and the applicant is unwilling to remedy this defect by removal of
that additional subject-matter, the divisional application must be
refused. It cannot be converted into an independent application taking its
own filing date. Moreover a further divisional application for this
additional subject-matter will also be refused.
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|
If the divisional application's subject-matter is
restricted to only a part of the subject-matter as claimed in the parent
application, this subject-matter must be directly and unambiguously
derivable as such a separate entity, which could be used outside the
context of the invention of the parent application.
|
|
9.5
The description and drawings of the parent application and the or
each divisional application should in principle be confined to matter
which is relevant to the invention claimed in that application. However,
the repetition in the description of a divisional application of matter in
the parent application need not be objected to unless it is clearly
unrelated to or inconsistent with the invention claimed in the divisional
application.
|
| Sec.111 R.915 |
9.6
The parent and divisional applications may not claim the same
subject-matter (See IV, 6.4and
e.g.Sec.111 and R.915). This
means not only that they must not contain claims of substantially
identical scope, but also that one application must not claim the
subject-matter claimed in the other, even in different words. The
difference between the claimed subject-matter of the two applications must
be clearly distinguishable. As a general rule, however, one application
may claim its own subject-matter in combination with that of the other
application. In other words, if the parent and divisional applications
claim separate and distinct elements A and B respectively which function
in combination, one of the two applications may also include a claim for A
plus B. In such a case, both applications should contain appropriate
cross-references which clearly set out the position.
|
|
Applications resulting
from a court order or decision under Sec.67
|
| Sec.67 |
9.7
In certain circumstances, before a patent has been granted on a
particular application, it may be adjudged as a result of a final court
order or decision that a person other than the applicant is entitled to
the grant of a patent thereon. In this event this person may either (Sec.67.1):
(a)
prosecute
the application as his own application in place of the applicant,
(b)
file a new
patent application in respect of the same invention, or
(c)
request that
the application be refused.
(See
also IV, 8).
|
|
9.8
If the other person adopts the first of these alternatives he
becomes the applicant in place of the former applicant and the prosecution
of the application is continued from the position at which it was
interrupted.
|
|
9.9
If however the other person files a new application under
Sec.67.1(b), the provisions of Sec.38.2 apply to this new application
mutatis mutandis. This means that the new application is treated as though
it were a divisional application i.e. it takes the date of filing and the
benefit of any priority right of the original application. The examiner
must therefore ensure that the subject-matter content of the new
application does not extend beyond the content of the original application
as filed.
|
|
9.10
The IP code and the IRR are silent about cases where the original
application has been withdrawn or refused or was deemed to be withdrawn
and is thus no longer pending. Sec.67.1(b) does not appear to exclude the
filing of a new patent
application in respect of the same invention in such a case.
|
|
9.11
The IP code and the IRR are silent about cases where, by a final
court order or decision, it is adjudged that a third party is entitled to
the grant of a patent in respect of only part of the matter disclosed in
the patent application.
|
|
It would
appear that in such a case, the foregoing considerations apply only to
such part of the matter and
thatthe option
of Sec.67.1(a) is not open to the third party and,
- regarding
the option of Sec.67.1(b), the new application must beconfined
to that part of the original subject-matter to which he has become
entitled; similarly the original application must be confined to the
subject-matter to which the original applicant remains entitled. The new
application and the amended original application will stand in a
relationship to each other similar to that appertaining between two
divisional applications, and they will each stand in a relationship to the
original application similar to that in which divisional applications
stand in relation to the application from which they are divided. The
guidance set out in VI, 9.4, 9.5 and 9.6 here above therefore applicable
to this situation.
|
|
10. Time limits for
response to communications from the examiner, requirements on reply.
|
| R.929 R.930 |
10.1
The general considerations relating to such time limits are set out
in R.929 and R.930. The time limit for response to a letter from the
examiner should in general be between two months.
|
| R.929(a) |
If an applicant fails to prosecute his application
within the required time as provided in the IRR, the application shall be
deemed withdrawn (R.929(a)).
|
| R.929(b) |
10.2 The
time limit for reply may be extended only for good and sufficient cause,
and for a reasonable time specified. Any such request must be filed on or
before the day on which the action by the applicant is due.
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The examiner may grant a maximum of two extensions,
provided that the aggregate period granted including the initial period
allowed to file the response, shall not exceed six months from the mailing
date of the official action requiring such response (R.929(b)).
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An extension of the time limit may e.g. be appropriate,
for instance, if the applicant resides a long way from his representative
and the language of the proceedings (i.e. English, Filipino) is not one to
which the applicant is accustomed; or if the subject-matter of the
application or the objections raised are exceptionally complicated.
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| R.929(c) |
10.3
Prosecution of an application to save it from the deemed withdrawal
must include such complete and proper action as the condition of the case
may require. Any reply not responsive to the last official action shall
not save the application from being deemed withdrawn (R.929(c)).
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R.929(d)R.911(b) |
10.4
Such a reply must be a bona fide attempt to deal with all the
objections raised by the examiner. When the reply is a bona fide attempt
to advance the case, and is a substantially complete response to the
examiner’s action, but consideration of some matter or compliance with
some requirements has been inadvertently been omitted, opportunity to
explain and supply the omission may be given.However,
if a serious objection raised in the examiner’s action has not been
dealt with at all and is still applying , the examiner may refuse the
application under Sec.51.1 and R.913.
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11. Examination of
observations by third parties
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Sec.47R.802 |
Following the publication of the patent application,
any person may present observations concerning the patentability of the
invention. Such observations must be filed in writing and must include a
statement of the grounds on which they are based. That person shall not be
a party to the proceedings before the Bureau of Patents. The statement of
grounds must be presented in English or Filipino language.
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In the context of substantive examination, such
observations are only taken into account if a request for examination has
been filed.
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The observations are communicated to the applicant who
may comment on them. The Office will acknowledge the receipt of such
observation to the third party. The Office will not inform the third party
of any further action taken by the Office in response to his observations.
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If, in whole or in part, they call into question the
patentability of the invention, they must be taken into account by the
examiner until the end of the examination proceedings.
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If the
observations relate to alleged prior art available other than from a
document, e.g. from use, this should be taken into account only if the
alleged facts are either not disputed by the applicant or proprietor or
established beyond reasonable doubt. Observations
by third parties received after the conclusion of proceedings will not be
taken into account and will simply be added to the file.
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Since opposition proceedings before the Bureau of
Patens are not foreSeen by the Code, observations by third parties may be
considered as an low-cost way of attacking a potential patent.
Petitions to cancel a patent (post grant) are handled by the Bureau
of Legal Affairs, Sec.61-66
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12. Oral proceedings
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R.905
R.928 |
Formal oral
hearings before the examiner are not foreSeen in the IP code or IRR.Informal
interviews/conferences with the examiner are addressed in VI,6 here above.
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13. Taking of evidence
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13.1
This section deals only with the kind of evidence most likely to
arise in pre-grant proceedings, i.e. written evidence.
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13.2 An
examiner would not, as a general rule, require evidence to be produced.
The primary function of the examiner in proceedings before grant is to
point to the applicant any ways in which the application does not meet the
requirements of the IP-Code. If the applicant does not accept the view of
the examiner, then it is for the applicant to decide whether he wishes to
produce evidence in support of his case and, if so, what form that
evidence should take. The examiner should afford the applicant a
reasonable opportunity of producing any evidence which is likely to be
relevant. However, this opportunity would not be given where the examiner
is convinced that no useful purpose would be served by it, or that undue
delay would result.
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13.3
Written evidence could include the supply of information, or the
production of a document or of a sworn statement. To take some examples:cralaw:red
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To rebut an allegation by the examiner of lack of
inventive step, the applicant might, in support of his case, supply
information as to the technical advantages of the invention. Again he
might produce a sworn |
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statement, either from himself or from an independent
witness, purporting to show
that workers in the art have been trying for a long time unsuccessfully to
solve the problem with which the invention is concerned, or that the
invention is a completely new departure in the relevant art.
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R.419 toR.419.4 |
13.4
Concerning models, reference Is made to the provisions of R.419 to
419.4.
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14. Grant and
publication of patent
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Sec.50R.1000 |
14.1
If the application meets the requirements of the IP code and the
IRR, the Office shall grant the patent.
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14.2If the examiner considers that the application satisfies the
requirements of the IP code and the IRR and is thus in order to proceed to
grant he should make a brief written internal report recommending grant.
This report may be called a votum. As a general rule, it will be
appropriate in this report for the examiner to give the reasons why, in
his opinion, the subject-matter as claimed in the application is not
obvious having regard to the state of the art. He should normally comment
on the document reflecting the nearest prior art, the technical problem
solved, and the features of the claimed invention which solve the problem
and thus make it patentable. He should also indicate how any major
objections have been met, or if they have been withdrawn the reason for
this, for example the applicant provided good counter arguments to show
that the objection was wrong. If there are any borderline questions which
the examiner has resolved in favour of the applicant, he should draw
attention to these.
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| Sec.51.1 |
The internal report may be made very brief by including
references pointing to the relevant file contents, e.g. applicant’s
reply, etc.
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Sec.50.1
Rule
1000 |
14.3
When
an application which is not in order for grant of a patent, despite one or
more letters to the applicant and failure by him to meet the objections
raised, the application should be refused. The examiner should make a
written report which sets out the points at issue, summarises the case
history to the extent necessary to enable someone else to obtain a quick
grasp of the essential facts, and recommends refusal. It will be useful to
draw attention to any unusual features or to points not readily apparent
from the documents themselves.
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Sec.52.1R.1002 |
14.4 An
application may only proceed to grant provided that all fees are paid on
time. If the required fees for grant and printing are not paid in due
time, the application shall be deemed withdrawn.
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Sec.52.2Rule
1003 |
14.5 The
grant of the patent together with other information shall be published in
the IPO Gazette within six (6) months.
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14.6 Any
interested party may then inspect the complete description, claims and
drawings of the patent on file with the Office. |
