- Guideline for the examination of Patents, Utility Models, and Industrial Designs
- Foreword
- Acknowledgement
- TABLE OF CONTENTS
- ACRONYMS
- Part I: GENERAL INFORMATION
- 1.1 Introduction
- 1.2 Contacts of the Institute
- 1.3 Business hours
- 1.4 International conventions and treaties
- 1.4.1 Paris convention
- 1.4.2 Trade Related Aspects of Intellectual Property Rights (TRIPS)Agreement
- 1.4.3 Patent Co-operation Treaty (PCT)
- 1.6 Fees
- 1.7 Filing of documents.
- 1.8 Industrial Property Journal
- 1.9 Representation before the Institute (Sec. 34(2) )
- PART II: PATENTS AND UTILITY MODELS
- Chapter 1: Filing of documents and filing date examination
- Chapter II: Formalities procedure for patent applications
- 2.0 Introduction
- 2.1 Request (IP Form 3) sec. 34
- 2.2 Title of the invention
- 2.3 Description
- 2.4 Claims
- 2.5 Form and content of claims
- 2.6 Drawings
- 2.7 Abstract.
- 2.8 General requirements
- 2.9 Additional formalities requirements for applications relating to livingmatter
- 2.10 Publication of the patent application (Sec. 42)
- 2.11 Withdrawal of application or priority claim
- Chapter III: Search and Substantive Examination
- 3.1 Request for substantive examination
- 3.2 Procedure after request
- 3.3 Search
- 3.4 Search in analogous fields
- 3.5 The subject of the search
- 3.6 Interpretation of claims
- 3.7 Amended claims
- 3.8 Abandonment of claims
- 3.9 Anticipation of amendments to claims
- 3.10 Broad claims
- 3.11 Independent and dependent claims
- 3.12 Search on dependent claims
- 3.13 Combination of elements in a claim
- 3.14 Different categories
- 3.15 Subject-matter excluded from search
- 3.16 Lack of unity
- 3.17 Technological background
- Chapter IV: Search Procedure and Strategy
- Chapter V: The State of the Art
- 5.1 State of the art – oral disclosure, etc.
- 5.2 Priority
- 5.3 Conflicting applications
- 5.4 Date of reference for documents cited in the search report; filing andpriority date
- 5.5 Doubts as to the validity of the priority claim; extension of the Search
- 5.6 Documents published after the filing date
- 5.7 Non-prejudicial disclosures
- 5.8 Contents of Prior-art Disclosures
- 5.9 Unity of Invention
- 5.10 Subject – matter to be Excluded from the Search
- 5.11 General remarks
- 5.12 No meaningful search possible
- 5.13 Search report
- Chapter VI: Substantive Examination
- 6.1 Introduction
- 6.2 Sufficiency of disclosure
- 6.3 Insufficient disclosure
- 6.4 Industrial application
- 6.5 Manner and order of presentation
- 6.6 Terminology
- 6.7 Computer programs
- 6.8 Physical values, units
- 6.9 Proper names, trademarks and trade names
- 6.10 Registered trademarks
- 6.11 Reference documents
- 6.12 Drawings
- 6.13 Inventions relating to biological material
- 6.14 Claims
- 6.14 Form and content of claims
- 6.15 Kinds of claim
- 6.16 Clarity and interpretation of claims
- 6.17 Parameters
- 6.18 Product-by-process claim
- 6.19 "Apparatus for ...", "Method for ...", etc.
- 6.20 Definition by reference to use or another entity
- 6.21 The expression "in"
- 6.22 Use claims
- 6.23 References to the description or drawings
- 6.24 Method of and means for measuring parameters referred to in claims
- 6.25 Reference signs
- 6.26 Negative limitations (e.g. disclaimers)
- 6.27 Conciseness, number of claims
- 6.28 Support in Description
- 6.29 Unity of invention
- 6.30 Unity invention
- 6.31 Novelty
- 6.32 Non-Prejudicial Disclosures
- 6.33 Inventive Step (Section 24)
- Examples Relating to the Requirement of Inventive Step-Indicators
- Chapter VII: Grant and publication
- Chapter VIII: Regional and International Applications
- Chapter IX: Annual fees
- PART III: INDUSTRIAL DESIGNS
- 1.0 Introduction
- 2.0 General Principles
- 3.0 Filing date
- 4.0 Formal Requirements
- 5.0 Indication of Products
- 6.0 Transmission of the application to ARIPO (Reg. 31)
- 7.0 Treating Deficiencies
- 8.0 Examination: Grounds for Non- Registrability.
- 8.1 Definition of “design” (Sec. 84a).
- 8.2 Public Policy and Morality (Sec. 86(4))
- 8.3 Treating Deficiencies (Sec. 87(7); Reg. 50)
- 9.0 Classification
- 9.1 Purpose (Sec. 87 (4))
- 9.2 Locarno Classification
- 9.3 Classification by the Applicant
- 9.4 Classification by the Examiner
- 10.0 Multiple Design Applications
- 11.0 Priority
- 12.0 Publication and opposition Period (Reg. 48 and 49)
- 13.0 Registration and Issuance of Certificate(Regulation 52)
- 14.0 References
KENYA INDUSTRIAL PROPERTY
Nairobi 2007
Guidelines for the examination of patents, Utility models, and Industrial Designs are intentioned to provide guidance in the practice and procedure to be followed in processing industrial property applications for the grant and registration of patents, utility models and industrial designs in accordance with the Industrial Property Act 2001(the Act) and the Industrial Property Regulations 2002 (the Regulations).
The Guidelines are not intended to, and cannot, add to or subtract from the provisions of the Act or the Regulations. They are meant to assist the examiners and other Patent Division Staff to consistently apply the Act and the Regulations. However, they cannot be expected to cover all possible situations. The Guidelines are in essence the first step on the long journey of continuous improvement and towards establishment of standards for processing industrial property rights applications in the Institute. The Guidelines will be adapted where necessary to reflect the results of a learning process. More so decisions made by the Managing Director, Industrial Property Tribunal and High Court as provided for in the Industrial Property Act and the Regulations may serve to elaborate and enrich these guidelines.
Further, it needs to be noted that the realms of industrial property covered in these guidelines is quite dynamic and therefore changes in the provisions of the Act and the regulations are expected. Such changes will need to be reflected in the guidelines in order to maintain their relevance for day to day use in the Institute.
Any comments on these Guidelines and any subsequent changes will always be welcome. Such comments should be directed to:
The Managing Director Kenya Industrial Property Institute,
P. O. Box 51648 – 00200, Nairobi. Tel: 2542602210/1 Email: kipi@swiftkenya.com
Special acknowledgement goes to the team that dedicatedly worked on the final draft to ensure that it was ready and specifically recognize the efforts of Mr. Paul M. Chege (Senior Trademarks Examiner), Mr. Fredrick O. Omiti (Senior Patent Examiner), Mrs Eunice W. Njuguna (Chief Legal Officer), Mr. David N. Njuguna (Patent Examiner) and Mr. Reuben Langat (Senior Patent Examiner) for they went beyond the call of their duty to pursue the finalization of this document.
The Managing Director, Prof. James Otieno Odek, in a special way contributed to the formulation of this document. He continually encouraged the committee to finalize the compilation of the document. Most of all he provided the required resources for the completion of this work.
Mr. Joseph M. Mbeva
Chief Patent Examiner
(For and on behalf of the committee responsible for the preparation of the Guidelines)
TABLE OF CONTENTS
Acknowledgement ...............................................................................................................................ii ACRONYMS .........................................................................................................................................vii Part I: GENERAL INFORMATION .......................................................................................................1
1.1 Introduction............................................................................................................................1
1.2 Contacts of the Institute .......................................................................................................1
1.3 Business hours .......................................................................................................................1
1.4 International conventions and treaties ................................................................................1
1.6 Fees.........................................................................................................................................2
1.7 Filing of documents. ..............................................................................................................2
1.8 Industrial Property Journal ...................................................................................................2
1.9 Representation before the Institute (Sec. 34(2) )..............................................................2 PART II: PATENTS AND UTILITY MODELS........................................................................................3 Chapter 1: Filing of documents and filing date examination ......................................................3
1.1 Persons entitled to file an application..................................................................................3
1.2 Reception of documents .......................................................................................................3
1.3 Filing date...............................................................................................................................3 Chapter II: Formalities procedure for patent applications ............................................................5
2.0 Introduction............................................................................................................................5
2.1 Request (IP Form 3) sec. 34 ................................................................................................5
2.2 Title of the invention .............................................................................................................5
2.3 Description .............................................................................................................................5
2.4 Claims .....................................................................................................................................6
2.5 Form and content of claims ..................................................................................................6
2.6 Drawings.................................................................................................................................7
2.7 Abstract. .................................................................................................................................8
2.8 General requirements............................................................................................................8
2.9 Additional formalities requirements for applications relating to living matter. ................8
2.10 Publication of the patent application (Sec. 42)...................................................................9
2.11 Withdrawal of application or priority claim ........................................................................9 Chapter III: Search and Substantive Examination ....................................................................10
3.1 Request for substantive examination ................................................................................10
3.2 Procedure after request ......................................................................................................10
3.3 Search ................................................................................................................................... 10
3.4 Search in analogous fields ..................................................................................................11
3.5 The subject of the search ...................................................................................................11
3.6 Interpretation of claims.......................................................................................................11
3.7 Amended claims................................................................................................................... 11
3.8 Abandonment of claims ......................................................................................................12
3.9 Anticipation of amendments to claims...............................................................................12
3.10 Broad claims......................................................................................................................... 12
3.11 Independent and dependent claims ..................................................................................12
3.12 Search on dependent claims ..............................................................................................13
3.13 Combination of elements in a claim...................................................................................13
3.14 Different categories .............................................................................................................13
3.15 Subjectmatter excluded from search................................................................................14
3.16 Lack of unity......................................................................................................................... 14
3.17 Technological background ..................................................................................................14
iii
Chapter IV: Search Procedure and Strategy .............................................................................15 4.1 Procedure prior to searching .............................................................................................15 4.2 Formal deficiencies............................................................................................................. 15 4.3 Documents cited in the application....................................................................................15 4.4 Abstract; official classification; title of the invention; publication................................... 16 4.5 Search strategy................................................................................................................... 16 4.6 Classification of Patent Applications .................................................................................19 Chapter V: The State of the Art .................................................................................................... 21 5.1 State of the art – oral disclosure, etc. ...............................................................................21 5.2 Priority .................................................................................................................................. 21 5.3 Conflicting applications ....................................................................................................... 21 5.4 Date of reference for documents cited in the search report; filing and priority date ... 21 5.5 Doubts as to the validity of the priority claim; extension of the Search ........................ 22 5.6 Documents published after the filing date ........................................................................22 5.7 Nonprejudicial disclosures .................................................................................................22 5.8 Contents of Priorart Disclosures........................................................................................22 5.9 Unity of Invention................................................................................................................ 23 5.10 Subject – matter to be Excluded from the Search ..........................................................23 5.11 General remarks ................................................................................................................. 23 5.12 No meaningful search possible .........................................................................................24 5.13 Search report ...................................................................................................................... 25 Chapter VI: Substantive Examination .......................................................................................26 6.1 Introduction.......................................................................................................................... 26 6.2 Sufficiency of disclosure...................................................................................................... 26 6.3 Insufficient disclosure.......................................................................................................... 27 6.4 Industrial application ........................................................................................................... 27 6.5 Manner and order of presentation .....................................................................................27 6.6 Terminology ......................................................................................................................... 28 6.7 Computer programs ............................................................................................................ 28 6.8 Physical values, units .......................................................................................................... 28
6.9 Proper names, trademarks and trade names....................................................................28
6.10 Registered trademarks ........................................................................................................ 29
6.11 Reference documents.......................................................................................................... 29
6.12 Drawings............................................................................................................................... 29
6.13 Inventions relating to biological material ..........................................................................29
6.14 Claims ................................................................................................................................... 31
6.14 Form and content of claims ................................................................................................31
6.15 Kinds of claim....................................................................................................................... 32
6.16 Clarity and interpretation of claims....................................................................................34
6.17 Parameters ........................................................................................................................... 36
6.18 Productbyprocess claim....................................................................................................37
6.19 "Apparatus for ...", "Method for ...", etc. ..........................................................................37
6.20 Definition by reference to use or another entity ..............................................................38
6.21 The expression "in" ............................................................................................................. 38
6.22 Use claims ............................................................................................................................ 39
6.23 References to the description or drawings........................................................................39
6.24 Method of and means for measuring parameters referred to in claims......................... 39
6.25 Reference signs.................................................................................................................... 40
6.26 Negative limitations (e.g. disclaimers)...............................................................................40
6.27 Conciseness, number of claims ..........................................................................................41 6.28 Support in Description......................................................................................................... 41 6.29 Unity of invention ................................................................................................................ 42 6.30 Unity invention..................................................................................................................... 44 6.31 Novelty.................................................................................................................................. 44 6.32 NonPrejudicial Disclosures.................................................................................................47 6.33 Inventive Step (Section 24) ................................................................................................48 6.34 Industrial application.......................................................................................................... 56 6.35 Matters excluded from patentability .................................................................................59 6.36 Matters prejudicial to public order, morality, safety and environment ......................... 61 6.37 Recommendation to grant .................................................................................................61 6.38 Recommendation to refuse ...............................................................................................61 Chapter VII: Grant and publication .............................................................................................62 7.0 Grant of Patent .................................................................................................................... 62 7.1 Registers of patent applications and grants......................................................................62 Chapter VIII: Regional and International Applications ...............................................................63 8.0 Introduction.......................................................................................................................... 63 8.1 National Phase ..................................................................................................................... 63
8.2 Substantive Examination of PCT Applications ...................................................................63
8.3 ARIPO Patents Utility Models designs designating Kenya................................................ 65 Chapter IX: Annual fees .............................................................................................................. 65 PART II: INDUSTRIAL DESIGNS.......................................................................................................66
1.0 Introduction.......................................................................................................................... 66
2.0 General Principles ................................................................................................................ 66
2.1 Registration .......................................................................................................................... 66
2.3 Scope of Examination.......................................................................................................... 66
2.5 Time Limits (Reg. 76)..........................................................................................................66
2.6 Decisions (Reg. 50) ............................................................................................................. 66
2.7 Appeal (Sec. 112, Reg. 74, 75) ..........................................................................................66
2.8 Receipt of Application..........................................................................................................67
2.9 Allocation of Filing Date ......................................................................................................67
2.10 Representation of the Design (Sec. 87(7)) .......................................................................67
3.0 Filing date............................................................................................................................. 68
4.0 Formal Requirements ..........................................................................................................68
4.1 Details of the applicant (Sec. 87).......................................................................................68
4.2 Citation of Creator(s) (Sec. 85,33 ) ...................................................................................68
4.4 Format of the Representation of the Design (Reg. 47) ................................................... 69
4.5 Repetitive Patterns .............................................................................................................. 70
4.6 Typographic Typefaces .......................................................................................................70
4.7 Signature .............................................................................................................................. 70
4.8 Treating Deficiencies (Sec. 41(2, 3)) .................................................................................70
5.0 Indication of Products .........................................................................................................70
5.1 Clear Indication.................................................................................................................... 70
5.2 Preferred Form..................................................................................................................... 70
5.3 Treating Deficiencies ...........................................................................................................70
6.0 Transmission of the application to ARIPO (Reg. 31)........................................................ 71
7.0 Treating Deficiencies ...........................................................................................................71
8.0 Examination: Grounds for NonRegistrability. ................................................................71
8.1 Definition of “design” (Sec. 84a)........................................................................................71
8.2 Public Policy and Morality (Sec. 86(4))..............................................................................72
8.3 Treating Deficiencies (Sec. 87(7); Reg. 50)......................................................................72
9.0 Classification......................................................................................................................... 72
9.1 Purpose (Sec. 87 (4)) .......................................................................................................... 72
9.2 Locarno Classification .......................................................................................................... 72
9.3 Classification by the Applicant ............................................................................................72
9.4 Classification by the Examiner............................................................................................72
10.0 Multiple Design Applications ...............................................................................................73
11.0 Priority .................................................................................................................................. 73
12.0 Publication and opposition Period (Reg. 48 and 49) ........................................................ 73
13.0 Registration and Issuance of Certificate(Regulation 52) ................................................. 74
14.0 References............................................................................................................................ 76
KIPI Kenya Industrial Property Institute PCT Patent Cooperation Treaty ARIPO African Regional Intellectual Property Organization WIPO World Intellectual Property Organisation TRIPs Trade Related Intellectual Property Agreements WTO World Trade Organization IPR Intellectual Property Rights IPEA International Preliminary Examining Authority ISA International Search Authority IPER International Preliminary Examination Report
These guidelines give instructions as to the practice and procedure to be followed in the various aspects of processing industrial property applications and more specifically to grant and registration of patents, utility models and industrial designs in accordance with the Industrial Property Act 2001(the Act) and the Industrial Property Regulations 2002 (the Regulations). However, adherence to the Patent Cooperation Treaty, the rules made and the administrative instructions issued thereunder are to be observed in dealing with international patent applications as far as the same are given effect under the Industrial Property Act 2001 and any amendments thereafter. The same also applies to Harare Protocol with respect to regional applications.
The Guidelines are not intended to, and cannot, add to or subtract from the provisions of the Act or the Regulations. They are meant to assist the examiners to consistently apply the Act and the Regulations to the examination procedure, but they cannot be expected to cover all possible situations. The Institute and the users of the system understand that for all concerned there will be a learning process. The Guidelines will be adapted where necessary to reflect the results of that learning process.
Reference in these guidelines to a section, followed by a number, is to be construed as reference to the Act and reference to a regulation will be construed as reference to the Regulations.
The Institute is located in Nairobi South "C", Popo Road, off Mombasa Road, Weights and Measures premises, P. O. Box 51648 00200, Nairobi, Telephone No. 602210/602211. Fax: 606312. Email: kipi@swiftkenya.com or info@kipi.go.ke. Website:
The Registry is open to the public from 9.00 am to 1.00pm and 2.00 pm to 4.00 pm each day from Monday to Friday. If the last day for filing a document falls on a Saturday, a Sunday or on a public holiday, the document may be filed on the next day following the Saturday, Sunday or the public holiday.
Kenya is a member of a number of international treaties and conventions in the field of intellectual property. Such instruments have a direct bearing on the procedures and standards adopted in dealing with industrial property matters. The treaties and conventions include:
The Paris Convention for the Protection of Industrial Property contains provisions in regard to national treatment and right of priority which are domesticated in the Act.
1.4.2 Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement
This is part of the multilateral trade agreements made under the general agreements in tariffs and trade (referred to as the GATT Agreement). It covers a wide range of intellectual property aspects and sets out the minimum standards of protection to be provided by each member of the World Trade Organisation (WTO).
Patent Cooperation Treaty (PCT) is a system for filing international patent applications. It is administered by the World Intellectual Property Organization (WIPO). Under the PCT, an applicant can file a patent application in all the member countries through a single application.
The Harare Protocol is administered by the African Regional Intellectual Property Organization (ARIPO). The protocol empowers ARIPO to grant patents and register industrial designs and utility models on behalf of the contracting states. 1.5 IP Forms
The prescribed forms for requesting any office actions are provided for in the First Schedule to the Regulations.
The Act and the Regulations prescribe a schedule of fees payable to the Institute for various services. The prescribed fees are set out in the Second Schedule to the Regulations. Fees must be paid in Kenya Shillings by local applicants and US$ by foreign applicants. Payments made in other currencies will not be accepted. The fees should be remitted to the Institute either by cash or cheque.
Documents may be sent by post or filed in person. Where documents are sent by post the date of receipt at the Institute shall be deemed to be the date that the Institute receives the document. Once documents are properly received and stamped, they become part of the file kept by the Institute and may not be returned unless they were submitted by error.
The Industrial Property Journal (the Journal), is a statutory monthly publication of the Institute for the purpose of advertising industrial property applications and for publishing other matters required to be published under the Act;
Natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in Kenya must appoint an agent to act for them in all proceedings. If an application is made in these circumstances and an agent has not been appointed, the applicant will be requested in the examination report to do so.
A representative shall be appointed through IP Form No. 39 for each application filed; and a payment of the requisite fees.
Chapter 1: Filing of documents and filing date examination
An application for the grant and registration of a Kenyan patent, utility model, or industrial design may be filed by the inventor or any other person to whom she has transferred the right. It is presumed that a legal entity does not have the ability to invent or create but rather it is the natural persons working for the legal entity. It is on this basis that it is necessary when a legal entity is filing the application, the application be accompanied by a statement justifying the applicants right to a patent (S34 (3); R12 (8)). Such statement shall be furnished on Form IP 4 or assignment documents.
All documents relating to patents, utility models and designs are received at the front office of the patent registry and the date of receipt is stamped upon receipt of the documents. The date of receipt should be applied as not to obliterate any part of the document or make them unsuitable for direct reproduction.
Upon capturing the receipt of any application, the computer system generates the application number automatically. The application is then forwarded to the accounts section for reception of the applicable fees. From the accounts section the application is taken back to the front office for data capture. The application is then forwarded to the registry where a physical file is opened and the file is assigned to an examiner in the relevant field.
All pages of any document received in respect of a new application should be marked with the application number. In addition, copies of all correspondence issued by the Institute should be included in the file, filed in chronological order in which the correspondence is sent to the applicant.
The first task for the examiner is to determine whether the application meets the requirements for according the filing date. These requirements are prescribed under section 41 of the Act as the name of the applicant, description, claims and drawings where necessary.
The documents referred to above should be in English but do not have to meet any particular requirements as to form or presentation. It is essential however they be sufficiently legible to enable the information to be discerned. The applicant should be considered sufficiently identified whenever it is possible to establish the identity of the applicant beyond reasonable doubt on the basis of all data contained in the documents filed. Where there is more than one applicant each applicant must be similarly identified. No objection should be raised at this stage with regard to the status of the applicant or his entitlement to apply. The contents of the description and claims do not require close scrutiny. It will be sufficient to identify a document which appears to include description and one or more claims.
If the application does not fulfil these requirements the examiner is required to invite the applicant, within 14 days from the date of the examination, to submit the required correction. The invitation should indicate that the applicant has 60 days to comply. If the applicant does not comply with the invitation and, as a result, the examiner treats the application as if it had not been filed, the examiner should, within fourteen days, inform the applicant in writing.
Where an application meets the aforementioned requirements, the receiving date becomes the filing date and the same must be so communicated to the applicant in writing.
Chapter II: Formalities procedure for patent applications
(Sec. 41(7) Regulation 24 (4))
Before the application is accepted to proceed for search and substantive examination, the examiner will carry out formality examination to determine whether the application complies with the provisions of the Act and the Regulations as detailed below. The purpose of formality examination is to ascertain conformity of the application to the physical requirements. These physical requirements are necessary to facilitate easy storage, search, retrieval and reproduction of the patent documents and comprehension of the subject matter of the application. (isn’t this part of substantive examination?)
The examiner should check whether the request complies with the following: With regard to the title of the invention it should be checked to ascertain whether it is short and precise, as required under section 34(3) of the Act.
Form IP 3 must also contain the title of the invention. The title must clearly and concisely state the technical designation of the invention and must exclude all fancy names. The examiner should take the following into account: With regard to description of the invention, it should be ascertained that it
a) states the title of the invention;
b) specifies the technical field to which the invention relates; c) indicates the background art which, as far as it is known to the applicant, can be
regarded as useful for the understanding, searching and examination of the
invention; and
d) indicates how the invention is industrially applicable.
With respect to claims, they should be checked to find out whether they set out:
a) the technical features that are necessary to define the subject matter of the invention
but that are part of the prior art (the preamble); and
b) the technical features that, in combination with the features referred to in
subparagraph (a), define that for which protection is sought (the body). It should be noted that the features set out in the claim under paragraph (b) above should be preceded by an appropriate transition. Such transitions may be words such as “characterized in that”, “characterized by”, “wherein the improvement comprises” or any other words to the same effect.
If the application contains more than ten claims, the applicant should be requested to pay excess claims fee.
a) Technical features
The claims must be drafted in terms of the "technical features of the invention". This means that claims should not contain any statements relating, for example, to commercial advantages or other nontechnical matters, but statements of purpose should be allowed if they assist in defining the invention.
b) Twopart format
A claim should be drafted in two part format. The first part (normally called the preamble) should contain a statement indicating the designation of the subjectmatter of the invention
i.e. the general technical class of apparatus, process, etc. to which the invention relates, followed by a statement of those technical features which are necessary for the definition of the claimed subjectmatter but which, in combination, are part of the prior art.
This statement of priorart features is applicable only to independent claims and not to dependent claims. It is clear that it is necessary only to refer to those prior art features which are relevant to the invention. For example, if the invention relates to a photographic camera but the inventive step relates entirely to the shutter, it would be sufficient for the first part of the claim to read: "A photographic camera including a focal plane shutter" and there is no need to refer also to the other known features of a camera such as the lens and viewfinder.
The second part or "characterising portion" should state the features which the invention adds to the prior art, i.e. the technical features for which, in combination with the features stated in subparagraph (a) (the first part), protection is sought.
c) Categories
There are different "categories" of claim ("products, process, apparatus or use"). For many inventions, claims in more than one category are needed for full protection. In fact, there are only two basic kinds of claim, viz. claims to a physical entity (product, apparatus) and claims to an activity (process, use). The first basic kind of claim ("product claim") includes a substance or compositions (e.g. chemical compound or a mixture of compounds) as well as any physical entity (e.g. object, article, apparatus, machine, or system of cooperating apparatus) which is produced by a person's technical skill. Examples are: "a steering mechanism incorporating an automatic feedback circuit ..."; "a woven garment comprising ..."; "an insecticide consisting of X, Y, Z"; or "a communication system comprising a plurality of transmitting and receiving stations". The second basic kind of claim ("process claim") is applicable to all kinds of activities in which the use of some material product for effecting the process is implied; the activity may be exercised upon material products, upon energy, upon other processes (as in control processes) or upon living things.
d) Independent and dependent claims
All applications will contain one or more "independent" claims directed to the essential features of the invention. Any such claim may be followed by one or more claims concerning "particular embodiments" of that invention.
Any claim which includes all the features of any other claim is termed a "dependent claim". Such a claim must contain, if possible at the beginning, a reference to the other claim, all features of which it includes. Since a dependent claim does not by itself define all the characterising features of the subjectmatter which it claims, expressions such as "characterised in that" or "characterised by" are not necessary in such a claim but are nevertheless permissible. A claim defining further particulars of an invention may include all the features of another dependent claim and should then refer back to that claim. Also, in some cases, a dependent claim may define a particular feature or features which may appropriately be added to more than one previous claim (independent or dependent). It follows that there are several possibilities: a dependent claim may refer back to one or more independent claims, to one or more dependent claims, or to both independent and dependent claims.
e) Arrangement of claims
All dependent claims referring back to a single previous claim and those referring back to several previous claims must be grouped together to the extent and in the most appropriate way possible. The arrangement must therefore be one which enables the association of related claims to be readily determined and their meaning in association to be readily construed.
If the specification contains drawings, the examiner should ascertain that they comply with
the following —
a) that they are not coloured;
b) that the lines of the drawings are be black, durable, uniformly thick and welldefined.
c) that the drawings are such that all details can be distinguished without difficulty
when the drawings are reproduced photographically at two thirds their actual size;
d) that all numbers, letters and other references signs are at least .32 centimetres high
and are circled or within brackets or inverted commas;
e) that all features shown in the drawings are disclosed in the description and vice
versa.
f) that the different figures in the drawings are numbered consecutively in Arabic
numerals.
g) that the drawings do not include text.
Where the application refers to drawings which are not included in the application, the examiner should invite the applicant to furnish the missing drawings, and, if the applicant complies with the invitation, the filing date should redated to the date of receipt of the missing drawings. If the applicant does not comply with the invitation any reference to the drawings should be treated as nonexistent.
The examiner is to ascertain that the application contains an abstract. If the abstract is present the examiner should check whether it starts on a new page and whether it includes — The examiner should check to make sure that the application meets the following general requirements; 1) That the application is in triplicate. 2) That each of the following is numbered as a separate series, using Arabic numerals with
the numbers centred at the top of the sheets but not in the top margin — a) the request; b) the description, claims and abstract; and c) the drawings.
3) That every fifth line of the description and the claims is numbered with the number appearing to the left of the line but not in the margin. 4) That all parts of the application are prepared so that they are legible when they are
photocopied or otherwise reproduced. 5) That the form of appointment of agent is filed (form IP 39) and the fee is paid. 6) That there is statement justifying applicant’s right to patent if the applicant is not the
inventor (form IP 4).
2.9 Additional formalities requirements for applications relating to living matter.
If an application relates to a microbiological process or the product thereof and involves the use of a microorganism 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, the examiner should ascertain that a deposit has been made to either KEMRI or KARI which are the recognized depository institutions for the purpose of patenting in Kenya by the date of filing the application.
The examiner should check whether the application provides the name of the depository institution and the file number of the culture deposit. Where the details of the deposited culture are not available at the time of filing, the applicant may submit the missing details within sixteen months from the date of filing or priority. If the application has defects the examiner should invite the applicant to remedy the defects within 90 days from the date of the invitation. The applicant may apply for extension of this time by filing form IP 7 and paying the requisite fee. Such extension should not exceed 60 days. If the applicant does not comply with the invitation, the application should be rejected.
The purpose of the publication is to inform the public of the pending patent application before the Institute. The patent application should be published after the expiration of eighteen months from the filing date or, where priority is claimed, the date of priority. In case of patent applications claiming priority, the term of eighteen months is construed from the original filing date and in the case of patent applications with two or more priority claims, the period is construed from the earliest priority dates.
Before the application is published the applicant should be invited to pay the publication fee. The Industrial Property Journal should be published monthly at the end of each calendar month. The technical preparation for the publication of the IP Journal is considered terminated on or before the 20th day of every month. Therefore, for any matter that has to appear in the Journal in a particular month, the payment should be received by the Institute before the termination of the technical preparation.
If after termination of the technical preparation the patent application is withdrawn to avoid publication, nonpublication cannot be guaranteed. To avoid publication of the application applicants should at least withdraw their application before the 18th Month from the filing date or where applicable the priority date. In the case of patent applications claiming priority, the term of eighteen months is construed from the earliest priority date. If the applicant abandons the priority claim, then the publication is deferred provided the notification of the abandonment is received by the Institute before the termination of the technical preparation for publication.
Chapter III: Search and Substantive Examination
After the application meets all formal requirements, the examiner should invite the applicant to request for substantive examination by filing form IP8 upon payment of the prescribed fee. Where no request is made within the prescribed period of three years, the application shall be deemed to be abandoned and the applicant should be informed in writing and the fact should be published in the Journal.
The Purpose of 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 Act and the Regulations. This chapter deals with search and examination following a request by the applicant for the application to be examined as to substance.
The objective of the search is to discover the prior art relevant for the purpose of determining whether and if so to what extent, the invention to which the application relates is new and involves an inventive step pursuant to sections 22, 23 and 24 of the Act.
The examination procedure and the preparation of the search opinion depend on the search for the knowledge of the state of the art on which assessment of the patentability of the invention is based. The search must, therefore, be as complete and effective as possible, within the limitations necessarily imposed by issues such as unity of invention and other considerations.
The search is carried out in inhouse or external collections of documents or databases, the contents of which are systematically accessible, e.g. by means of words, classification symbols or indexing codes. These are primarily patent documents of various countries, supplemented by a number of articles from periodicals and other nonpatent literature.
A report should be prepared containing the results of the search, in particular by identifying the documents constituting the relevant state of the art.
The search report serves to provide information on the relevant state of the art. it must be realized that in a search, 100% completeness cannot always be obtained, because of such factors as the inevitable imperfections of any information retrieval system and its implementation, and may not be economically justified if the cost is to be kept within reasonable bounds.
For applications claiming priority, the examiner should request the applicant, under section 38 (2), to submit copies of any communication received by the applicant concerning the results of any search or examination carried out in respect of the priority application.
The examiner should for reasons of economy exercise his judgement, based on his knowledge of the technology in question and of the available information retrieval systems, to omit sections of the documentation in which the likelihood of finding any documents relevant to the search is negligible, for example documents falling within a period preceding the time when the area of technology in question began to develop.
The search is carried out in collections of documents or databases which may contain material in all those technical fields pertinent to the invention.
The search strategy should determine the sections of the documentation to be consulted covering all directly relevant technical fields, and may then have to be extended to sections of the documentation covering analogous fields, but the need for this must be judged by the examiner in each individual case, taking into account the outcome of the search in the sections of the documentation initially consulted.
The decision to extend the search to fields not mentioned in the application must be left to the judgement of the examiner, who should not put himself in the place of the inventor and try to imagine all the kinds of applications of the invention possible. The overriding principle in determining the extension of the search in analogous fields should be whether it is probable that a reasonable objection of lack of inventive step could be established on the basis of what is likely to be found by the search in these fields
Basis for the search The search should be made on the basis of the claims, with due regard to the description and drawings (if any). The claims determine the extent of the protection which will be conferred by the patent if granted.
The search should on the one hand not be restricted to the literal wording of the claims, but on the other hand should not be broadened to include everything that might be derived by a person skilled in the art from a consideration of the description and drawings. The objective of the search is to discover prior art which is relevant to novelty and/or inventive step . The search should be directed to what appear to be the essential features of the invention and take into account any changes in the (objective) technical problem underlying the invention which may occur during the search as a result of the retrieved prior art. In this regard it should be noted that although explicit references in the claims to features elucidated in the description are only permissible where "absolutely necessary". Claims containing such references should still be searched if these technical features are unambiguously defined by specific parts of the description.
When interpreting claims for the purpose of the search, the search will also take into consideration prior art incorporating technical features which are well known equivalents to the technical features of the claimed invention, which may undermine inventive step.
Where an application derives from an international application, the applicant may have amended the international application in the international phase, either after receipt of the international search report (Art.19(1) PCT) or during international preliminary examination (Art. 34(2)(b) PCT). The applicant may then specify that he wishes to enter the phase with these or otherwise amended application documents (including claims) according.
For applications, claims that are deemed to have been abandoned for nonpayment of fees must be excluded from the search. This applies both to searches to be carried out in respect of directlyfiled applications and to supplementary searches to be carried out in respect of PCT applications entering the national phase.
In principle, and insofar as possible and reasonable, the search should cover the entire subjectmatter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended .
For example, where an application relating to an electric circuit contains one or more claims only directed to the function and manner of operation, and the description and drawings include an example with a detailed nontrivial transistor circuit, the search should include this circuit.
No special search effort need be made for searching unduly wide or speculative claims, beyond the extent to which they relate to matter which is sufficiently disclosed in the application, and are supported by the description (Art. 84). If, for example, in an application relating to and describing in detail an automatic telephone exchange, the claims are directed to an automatic communication switching centre, the search should not be extended to automatic telegraph exchanges, data switching centres etc. merely because of the broad wording of the claim, but only if it is probable that such an extended search could produce a document on the basis of which a reasonable objection as regards lack of novelty or inventive step could be established.
Likewise, if a claim is directed to a process for manufacturing an "impedance element" but the description and drawings relate only to the manufacture of a resistor element, and give no indication as to how other types of impedance element could be manufactured by the process of the invention, extension of the search to embrace, say, manufacture of capacitors would not normally be justified.
If the main claim relates to the chemical treatment of a substrate, whereas it appears from the description or all the examples that the problem to be solved is solely dependent on the nature of natural leather, it is clear that the search should not be extended to the fields of plastics, fabrics or glass.
Similarly, if the description and drawings are directed to a lock with a safety cylinder whereas the claims refer to a device allowing the indexation of the angular position of a first element with respect to two other rotating elements, then the search should be limited to locks. In cases where the lack of disclosure or support is such as to render a meaningful search over the whole of the scope of the claim(s) impossible, a partial search or a declaration taking the place of a search report.
The search carried out in sections of the documentation to be consulted for the independent claim(s) must include all dependent claims. Dependent claims should be interpreted as being restricted by all features of the claim(s) upon which they depend. Therefore, where the subjectmatter of an independent claim is novel that of its dependent claims will also be novel. When the patentability of the subjectmatter of the independent claim is not questioned as a result of the search, there is no need to make a further search or cite documents in respect of the subjectmatter of the dependent claims as such.
For example, in an application relating to cathode ray oscilloscope tubes, in which the independent claim is directed to specific means along the edge of the front of the tube for illuminating the screen and a dependent claim is directed to a specific connection between the front and the main part of the tube, the examiner should, in the sections of the documentation he consults for searching the illumination means, also search for the connecting means whether in combination with the illumination means or not.
If, after this search, the patentability of the illuminating means is not questioned, the examiner should not extend his search for the connecting means to further sections of the documentation which are likely to contain material pertinent to or specifically provided for these connections.
If in an application dealing with a pharmaceutical composition for treating nail infections the patentability of the subjectmatter of the independent claim relating to specific combinations of the active ingredients is not questioned as a result of the search, there is no need to continue the search for dependent claims dealing with the use of a specific volatile organic solvent as a carrier in the composition.
However, where the patentability of the subjectmatter of the independent claim is questioned, it may be necessary for assessing whether the subjectmatter of the dependent claim as such is novel and involves an inventive step to continue the search in other sections of the documentation, e.g. in one or more additional classification units. No such special search should be made for features that are trivial or generally known in the art. However, if a handbook or other document showing that a feature is generally known can be found rapidly, it should be cited. When the dependent claim adds a further feature (rather than providing more detail of an element figuring already in the independent claim), the dependent claim is to be considered in combination with the features in the independent claim and should be dealt with accordingly.
For claims characterised by a combination of elements (e.g. A, B and C) the search should be directed towards the combination. However, when searching sections of the documentation for this purpose, subcombinations, including the elements individually (e.g. A and B, A and C, B and C, and also A, B and C separately) should be searched in those sections at the same time. A search in additional sections of the documentation either for subcombinations or for individual elements of the combination should only be performed if this is still necessary for establishing the novelty of the element in order to assess the inventive step of the combination.
When the application contains claims of different categories, all these must be included in the search. However, if a product claim clearly seems to be both new and nonobvious, the examiner should make no special effort to search claims for a process which inevitably results in the manufacture of that product or for use of the product. When the application contains only claims of one category, it may be desirable to include other categories in the search. For example, generally, i.e. except when the application contains indications to the contrary, one may assume that in a claim directed to a chemical process, the starting products form part of the state of the art and need not be searched; the intermediate products are only searched when they form the subject of one or more claims; but the final products will always have to be searched, except when they are evidently known.
The examiner may exclude certain subjectmatter from his search. These exclusions may result from certain subjectmatter not complying with the provisions of the Act relating to exclusions from patentability or to susceptibility to industrial application. They may also arise where the application does not comply with the provisions of the Act to such an extent that a meaningful search is impossible for some or all of the claims, or for a part of a claim, for other reasons.
Also, when the claims of the application do not relate to one invention only, nor to a group of inventions linked so as to form a single general inventive concept, the search will normally be restricted to the invention or the linked group of inventions first mentioned in the claims.
In certain circumstances it may be desirable to extend the subjectmatter of the search to include the "technological background" of the invention. This would include:
the preamble to the first claim, i.e. the part preceding the expression "characterised by" or "characterised in that";
the state of the art which in the introduction of the description of the application is said to be known, but not identified by specific citations;
–
the general technological background of the invention (often called "general state of the art").
Chapter IV: Search Procedure and Strategy
Analysis of the application when taking up an application to be searched, the examiner should first consider the application in order to determine the subject of the claimed invention. For this purpose he should make a critical analysis of the claims in the light of the description and drawings. He should in particular consider the content of the claims, description and drawings sufficiently to identify the problem underlying the invention, the inventive concept leading to its solution, the features essential to the solution as found in the claims and the results and effects obtained.
Furthermore, where technical features which are not present in the claims are indicated in the description as essential for the solution of the stated problem, these features should be included in the search.
If the examiner notices any formal shortcomings which have been overlooked during formality examination, he may invite the applicant to remedy these deficiencies. Such deficiencies which the examiner might notice include: 1) physical deficiencies of the application, including:
a) incorrect sequence and/or positioning of page numbering and/or failure to use Arabic
numerals in page numbering
b) presence of drawings in the description and/or claims
c) presence of erasures and/or alterations in the application documents, such that the
authenticity of the content and/other requirements for good reproduction are
jeopardized 2) presence of prohibited matter in the application:
a) which is contrary to public order.
b) constituting disparaging statements. 3) failure to comply with the provisions relating to the deposition of biological material, in
particular with regard to the correct identification in the application of the depository
institution and culture deposit number of the biological material assigned to the
deposited material by the depository institution.
Documents cited in the application under consideration should be examined if they are cited as the starting point of the invention, as showing the state of the art, or as giving alternative solutions to the problem concerned, or when they are necessary for a correct understanding of the application.
However, when such citations clearly relate only to details not directly relevant to the claimed invention, they may be disregarded. In the exceptional case that the application cites a document that is not published or otherwise not accessible to the examiner and the document appears essential to a correct understanding of the invention to the extent that a meaningful search would not be possible without knowledge of the content of that document, the Examiner should postpone the search and request the applicant to provide a copy of the document.
If no copy of the document is received, an attempt is made to carry out the search and then, if necessary, a partial search report or, where applicable, a declaration replacing the search report is prepared.
This partial search report or declaration will be issued giving the following grounds: search was not possible on at least part of the claimed invention. It should also be noted that where the applicant furnishes the document after the search report and the search opinion (if applicable, have been prepared, an additional search on that subjectmatter originally excluded from the search may be carried out due to the correction of the deficiency which led to the partial search.
The examiner should then consider the abstract (together with the title of the invention and the figure, if any, of the drawings to be published with the abstract) in relation to the requirements laid down in the Regulations. Since the abstract should relate to the application as filed, the examiner should consider it and determine its definitive content before carrying out the search, in order to avoid being inadvertently influenced by the results of the search. If publication of the application is due before the search report is drawn up, the examiner has to establish the official classification of the application much earlier before he carries out the search; he examines then at the same time the abstract for the purpose of publication.
This examination of the abstract does not go beyond ensuring that it relates to the application concerned and that no conflict exists with the title of the invention or with the classification of the application. Information in relation to the abstract, the title of the invention and the figure, if any, of the drawings to be published with the abstract should transmitted to the applicant in the communication accompanying the search report.
Having determined the subject of the invention as outlined above it may be desirable for the examiner to prepare first a search statement, defining the subject of his search as precisely as possible. In many instances one or more of the claims may themselves serve this purpose, but they may have to be generalised in order to cover all aspects and embodiments of the invention.
At this time, the considerations relating to subjects excluded from patentability and to lack of unity of invention should be borne in mind. The examiner may also have to restrict the search because the requirements of the Act are not met to such an extent that a meaningful search is impossible. Any such restrictions to the search must be indicated in the partial search or declaration taking the place of the search report.
Next the examiner should start the search process by formulating a search strategy, i.e. a plan consisting of a series of search statements expressing the subject of the search, resulting in sections of the documentation to be consulted for the search. In its initial phase, a search strategy will contain one or more combinations of the basic components mentioned above. The search process should be interactive and iterative in the sense that the examiner should reformulate his initial search statement(s) according to the usefulness of the information retrieved. When using classification units, the examiner should select the classification units to be consulted for the search, both in all directly relevant fields and in analogous fields. The selection of the classification units in related fields should be limited to: become increasingly unrelated. When the examiner is in doubt about the appropriate fields in which to conduct his search, he may request advice from the appropriate supervisor.
Usually various search strategies are possible, and the examiner should exercise his judgement, based on his experience and knowledge of the available search tools, to select the search strategy most appropriate to the case in hand. He should give precedence to search strategies yielding sections of the documentation in which the probability of finding relevant documents is highest. Usually the main technical field of the application will be given precedence, starting with the basic components most relevant to the specific example(s) and preferred embodiments of the claimed invention.
The examiner should then carry out the search, directing his attention to documents relevant for novelty and inventive step. He should also note any documents that may be of importance for other reasons, such as: (iii) documents contributing to a better or more correct understanding of the claimed invention, which are cited in the search report as "T" documents; The examiner should concentrate his search efforts on the use of search strategies yielding sections of the documentation in which the probability of finding highly relevant documents is greatest, and, in considering whether to extend the search to other less relevant sections of the documentation, he should always take account of the search results already obtained.
The examiner should continuously evaluate the results of his search, and if necessary reformulate the subject of the search accordingly. For example, the selection of the classification units to be searched or the order of searching them may also require alteration during the search as a consequence of intermediate results obtained. The examiner should also use his judgement, taking into account results obtained, in deciding at any time during the systematic search whether he should approach the search documentation in some different manner, e.g. by consulting: should turn to documentation outside that which is available to the Examiner. When searching external document collections for material in relation to unpublished subjectmatter using other than secure connections, like the Internet, the examiner should be extremely careful when formulating search strategies so as not to unwittingly reveal confidential material – i.e. any part of the unpublished patent application.
It may happen that the examiner does not find any documents published before the earliest priority date which prejudices the novelty or the inventive step of the claimed invention. In such cases, the examiner should, whenever possible, cite in the search report at least that prior art found in the course of search which discloses a solution to the same problem as that underlying the claimed invention (wherein this problem may change depending on the prior art retrieved and wherein the known solution is technically the closest to the claimed solution ("closest prior art"). Such prior art is to be cited as an "A" document in the search report.
If such a document cannot be found, the examiner should cite as the closest prior art a document which solves a problem closely related to the problem underlying the claimed invention and wherein the solution is technically most similar to that of the application under search.
Where the examiner retrieves documents which are incidentally prejudicial to the novelty of the claimed invention but which do not affect the inventive step thereof after appropriate amendment of the application, and does not retrieve any other documents prejudicing inventive step, the examiner should also proceed as above.
In the case of an national application derived from an international application and being subjected to a supplementary search after entering the national phase , it is possible that the examiner does not uncover any further relevant priorart documents in the search over and above the documents already cited in the international search report by the International Searching Authority. In such cases, it is permissible to have no further relevant documents in the supplementary search report.
Reasons of economy dictate that the examiner use his judgement to end his search when the probability of discovering further relevant prior art becomes very low in relation to the effort needed. The search may also be stopped when documents have been found clearly demonstrating lack of novelty in the entire subjectmatter of the claimed invention and its elaborations in the description, apart from features which are trivial or common general knowledge in the field under examination, application of which features would not involve inventive step. The search for conflicting applications should, however, always be completed to the extent that these are present in the available documentation.
After completion of the search, the examiner should select from the documents retrieved the ones to be cited in the report. These should always include the most relevant documents (which will be specially characterised in the report. Less relevant documents should only be cited when they concern aspects or details of the claimed invention not found in the documents already selected for citation. To avoid increasing costs unnecessarily, the examiner should not cite more documents than is necessary and therefore, when there are several documents of equal relevance, the search report should not normally cite more than one of them. Subsequently, the examiner prepares the search report.
It may happen occasionally, that after completion of a search report, the Examiner discovers further relevant documents (e.g. in a later search for a related application). These documents should be added to the search report up to the time that preparations for its publication are completed. Up to the filing of a request for examination, such later discovered documents should be communicated to the applicant. Thereafter, such documents may be used in examination.
When a material error is found to be present in a search report prior to publication thereof, a new search report will be drawn up which supersedes the preceding one. Where the search report has already been sent to the applicant, the error should immediately be notified to the applicant. When a serious error is noted following publication of the application, a corrigendum is published in the Journal. If the error comprises the transmission of an incorrect document as a citation, the correct document should be sent.
The official classification of the patent application is performed by the examiner, using the classification symbols contained in the rules of the IPC for the inventions as claimed ("Obligatory Classification"). He can also assign appropriate classification symbols and/or indexing codes to any additional information ("NonObligatory Classification") as defined in the Guide to the IPC in force at the time.
The level of classification at this stage should be as general as practicable on the basis of a quick and cursory scrutiny of the document (e.g. the title and independent claim or claims). On the other hand, the level should be specific enough to avoid the need for any intermediate stage of preclassification before allocation to the competent section.
The preclassification required for this first allocation should be made on the basis of the independent claims. If this results in preclassification in more than one subclass, then whichever of these seems to be the most relevant to the claimed invention (or the invention first claimed, if there is lack of unity of invention) should be selected. In most cases no further classification is required to enable applications to be allotted to the Examiner but, where it is necessary, it falls within the authority of the examiner in charge of the field to arrange for such allotment in an expedient manner.
If, on reaching the section, an application has been found to be incorrectly preclassified and thus inappropriately allocated, it is reclassified and reallocated by the section receiving it, the indication on the dossier being appropriately amended.
The classification of the patent application is performed by the examiner as described above. Preferably, this should be done when he has studied the content of the application in order to carry out the search. However, if publication of the application is due before the search report is drawn up, it is necessary for the examiner to study the application sufficiently to determine the official classification at this earlier stage.
If the classification of the application is in more than one subclass, or more than one main ("00") group within a subclass, then all such classifications should be assigned. The classification of the invention as claimed should be distinguished from any additional classification and/or indexing code.
In addition, where it is necessary to assign more than one symbol for the invention itself, the symbol which in the examiner's opinion most adequately identifies it, or, when this presents difficulties, the symbol which identifies the invention for which most information is given, should be indicated first, e.g. in order to facilitate subsequent allocation of the applications.
The classification should be determined without taking into consideration the probable content of the application after any amendment, since this classification should relate to the disclosure in the published application, i.e. the application as filed. If, however, the examiner's understanding of the invention, or of the content of the application as filed, alters significantly as a result of the search (e.g. as a result of prior art found or because of clarification of apparent obscurities), he should amend the classification accordingly, if the preparations for publication have not at that stage been completed.
When the scope of the invention is not clear, the classification has to be based on what appears to be the invention insofar as this can be understood. It is then necessary to amend it if obscurities are removed by the search.
Classification in cases of a lack of unity of invention Where objection of lack of unity of invention arises, all inventions must be classified, since all will be disclosed in the published application.
Verification of official classification As a general rule, applications will not be systematically scrutinised after leaving the Examiner in order to verify the correctness of the official classification assigned by the examiner.
Chapter V: The State of the Art
According to section 23(2), oral disclosure, use, exhibition, etc. are recognized as prior art. However, the examiner, in carrying out a search, should cite an oral description, etc. as prior art only if he has available a written confirmation or is otherwise convinced that the facts can be proved. Such references to oral disclosure, prior public use, disclosure by sale, etc. are more usually brought up by opponents in invalidation/ revocation proceedings.
If the claimed priority dates cannot be verified at this stage, uncertainty will exist as regards their validity and the search for conflicting applications should be extended so as to cover all published applications with an earliest claimed priority date up to the filing date (not the claimed priority date(s)) of the application under consideration.
Potentially conflicting national and international applications Generally, where the search is concluded less than eighteen months after the national or international filing date of the application (the filing date according to Art. 80 and not its claimed priority date(s)), it will not be possible at the time of the search to make a complete search for potentially conflicting national and international applications.
5.4 Date of reference for documents cited in the search report; filing and priority date
Where the validity of the priority claim cannot be verified at the search stage, the basic reference date for the search must be taken as the date of filing of the application as accorded.
The Examiner takes into account documents published between the earliest priority date and the filing date of the application under consideration, and these documents are identified as such in the search report. For identifying these documents when an application has more than one priority date, the oldest date is to be applied.
When deciding which documents to select for citing in the search report, the examiner refers to these dates and should preferably choose any published before the date of priority. Thus, for example, where there are two documents, one published before the date of priority and the other after that date but before the date of filing, but otherwise equally relevant, he should choose the former.
It is the responsibility of the Examiner to check whether and to what extent the priority claim is justified. However, where intervening state of the art or potential state of the art is revealed in the search, the Examiner should, if possible, check the validity of the priority claim. Furthermore, documents showing that a priority claim might not be justified (e.g. an earlier application or patent from the same applicant indicating that the application from which priority is claimed may not be the first application for the invention concerned) should be cited in the search report. However, no special search effort should normally be made for this purpose, except when there is a special reason to do so, e.g. when the priority application is a "continuationinpart" of an earlier application from which no priority is claimed.
Sometimes the fact that the country of residence of the applicant is different from the country of the priority application may also be an indication that it is not a first filing, justifying a certain extension of the search.
When the search is extended for this purpose, it should be directed to: The search does not normally take into consideration documents published after the filing date of the application. However, some extension is necessary for specific purposes, and certain other situations may occur in which a document published after the filing date is relevant; examples are a later document containing the principle or theory underlying the invention, which may be useful for a better understanding of the invention, or a later document showing that the reasoning or the facts underlying the invention are incorrect. The search should not be extended for this purpose, but documents of this nature known to the examiner could be selected for citation in the report.
Disclosures of the invention should not be taken into consideration if they occurred no earlier than six months preceding the filing of the patent application and if they were due to an evident abuse in relation to the applicant or his legal predecessor, or due to display at an official, or officially recognised, international exhibition. The Examiner should, nevertheless, cite in the search report any documents he has reason to believe is relevant. In this case too the reference date for the search will be the filing date of the application.
As a general rule, the Examiner selects for citation only documents which are present in the search documentation or which it has access to in some other manner. In that way, no doubt exists about the contents of the documents cited, since the examiner generally has physically inspected each document cited.
Under certain circumstances a document whose contents have not been verified may be cited, provided there is justification for the assumption that there is identity of content with another document which the examiner has inspected; both documents should then be mentioned in the search report. For example, instead of the document published before the filing date in a language other than English and selected for citation, the examiner may have inspected a corresponding document (e.g. another member of the same patent family, or a translation of an article) in English and possibly published after the filing date. Also it may be assumed that, in the absence of explicit indications to the contrary, the contents of an abstract are contained in the original document. Further, it should be assumed that the contents of a report of an oral presentation are in agreement with that presentation.
If the Examiner considers that the application does not comply with the requirement of unity of invention, he must search it, and draw up the partial search report, for those parts of the application which relate to the invention (or group of inventions forming unity) first mentioned in the claims. The partial search report is supplemented with a specification of the separate inventions.
With regard to the search opinion in cases of a lack of unity of invention, when determining which invention is the invention or unitary group of inventions first mentioned in the claims, the examiner takes account of the content of the dependent claims, disregarding trivial claims.
The examiner should not raise an objection of lack of unity merely because the inventions claimed are classified in separate classification units, or merely for the purpose of restricting the search to certain sections of the documentation, for example, certain classification units.
INSTITUTE
Guideline for the examination of Patents, Utility Models, and Industrial Designs
Foreword
Acknowledgement
Preparation of Guidelines for the examination of Patents, Utility Models and Industrial Designs was inspired and driven by the desire of the patent Division’s Staff to standardize and improve on the procedures for processing applications for patents, utility models and industrial designs. Consequently the staff contributed greatly to the development of these guidelines. I wish to recognize the efforts of all who were involved in one way or another. On behalf of the committee tasked to come up with the Guidelines, I am grateful for the cooperation and support that was received from other members of staff. I recognize the efforts of those who found time and made efforts to avail their comments and constructive criticism formally and informally for they helped shape this document.
ACRONYMS
Part I: GENERAL INFORMATION
1.1 Introduction
1.2 Contacts of the Institute
1.3 Business hours
1.4 International conventions and treaties
1.4.1 Paris convention
1.4.3 Patent Cooperation Treaty (PCT)
1.4.4 Harare Protocol
1.6 Fees
1.7 Filing of documents.
1.8 Industrial Property Journal
1.9 Representation before the Institute (Sec. 34(2) )
PART II: PATENTS AND UTILITY MODELS
1.1 Persons entitled to file an application
1.2 Reception of documents
1.3 Filing date
2.0 Introduction
2.1 Request (IP Form 3) sec. 34
2.2 Title of the invention
2.3 Description
2.4 Claims
2.5 Form and content of claims
2.6 Drawings
2.7 Abstract.
2.8 General requirements
2.10 Publication of the patent application (Sec. 42)
2.11 Withdrawal of application or priority claim
3.1 Request for substantive examination
3.2 Procedure after request
3.3 Search
3.4 Search in analogous fields
3.5 The subject of the search
3.6 Interpretation of claims
3.7 Amended claims
3.8 Abandonment of claims
3.9 Anticipation of amendments to claims
3.10 Broad claims
3.11 Independent and dependent claims
3.12 Search on dependent claims
3.13 Combination of elements in a claim
3.14 Different categories
3.15 Subjectmatter excluded from search
3.16 Lack of unity
3.17 Technological background
4.1 Procedure prior to searching
4.2 Formal deficiencies
4.3 Documents cited in the application
4.4 Abstract; official classification; title of the invention; publication
4.5 Search strategy
4.5.1 Subject of the search; restrictions
4.5.2 Formulating a search strategy
4.5.3 Carrying out the search; types of documents
4.5.4 Reformulation of the subject of the search
4.5.5 Closest prior art and its effects on the search
4.5.6 End of search
4.5.7 Preparation of the search report
4.5.8 Documents discovered after completion of the search
4.5.9 Errors in the search report
4.6 Classification of Patent Applications
4.6.1 Preclassification (routing)
4.6.2 Incorrect preclassification
4.6.3 Classification of the application
4.6.4 Classification when the scope of the invention is not clear (e.g. a partial search)
5.1 State of the art – oral disclosure, etc.
5.2 Priority
5.3 Conflicting applications
5.4.1 Verification of claimed priority date(s)
5.4.2 Intermediate documents
5.5 Doubts as to the validity of the priority claim; extension of the Search
5.6 Documents published after the filing date
5.7 Nonprejudicial disclosures
5.8 Contents of Priorart Disclosures
5.8.1 General remark
5.8.2 Citation of documents corresponding to documents not available English.
5.9 Unity of Invention
5.9.1 General remarks
5.9.2 Decision with respect to unity of invention