1.4.1 Paris convention

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).

1.4.3 Patent Cooperation Treaty (PCT)

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.

1.4.4 Harare Protocol

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.

2.0 Introduction

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?) 

2.1 Request (IP Form 3) sec. 34

The examiner should check whether the request complies with the following:

• The request for grant is based on a provisional or a final specification denoted by marking the appropriate boxes on the form. If it is a provisional specification, the examiner should inform the applicant that the final specification is due within one year from the filing date and that the Institute will not process the application until the final specification is filed.

• It states the name, address, nationality and country of residence of the applicant,

• It states the name and address of the inventor

• It states the name and address of the agent where necessary.

• If there is more than one applicant, the request should set out, in addition to an address for each applicant, a single address at which all the applicants can be contacted.

• For each inventor, the request should be accompanied by an extra copy of the statement if there is more than one inventor

2.2 Title of the invention

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:

• personal names, fancy names, the word "patent" or similar terms of a nontechnical nature which do not  serve to identify the invention should not be used;

• the abbreviation "etc.", being vague, should not be used and should be replaced by an indication of what it is intended to cover;

• titles such as "Method", "Apparatus", "Chemical Compounds" alone o7 r similar vague titles do not meet the requirement that the title must clearly state the technical designation of the invention;

• trade names and trade marks should also not be used; the examiner, however, need only intervene when names are used which, according to common general knowledge, are trade names or trade marks.

2.3 Description

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.

2.4 Claims

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.

2.5 Form and content of claims

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.

2.6 Drawings

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.

2.7  Abstract.

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 —

(a)

the title of the invention;

(b) 

a summary of the disclosure included in the description. The summary should indicate the technical field to which the invention relates and the principal use or uses of the invention. The abstract should not include statements about the merits or value of the invention or about uses that are speculative. It should not contain more than one hundred and fifty words. It should try as much as possible to capture the most relevant terms defining the invention.

2.8 General requirements

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.

2.10 Publication of the patent application (Sec. 42)

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.

2.11 Withdrawal of application or priority claim

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

4.6 Classification of Patent Applications

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.

5.1 State of the art – oral disclosure, etc. 

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.

5.2 Priority

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.

5.3 Conflicting applications

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

5.5 Doubts as to the validity of the priority claim; extension of the Search

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:

(i)

 published patent documents filed earlier than the claimed priority date.

(ii) 

published patent documents which claim priority from an application filed earlier than the priority date of the application being searched.

5.6 Documents published after the filing date

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.

5.7 Nonprejudicial disclosures

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.

5.8 Contents of Priorart Disclosures

5.9 Unity of Invention

5.10 Subject – matter to be Excluded from the Search

5.11 General remarks

In relation to searches, the subjectmatter listed in section 21(3) may be considered under the Act as either not to be industrially applicable or, to the extent that the patent application relates to that subject matter as such, to be excluded from patentability, or to constitute an exception to patentability under section 26, the claims are not searched in as far as they relate to such subject matter.

The Examiner has thus to consider the requirements for patentability other than novelty and inventive step. The abovementioned situations may also occur for only some of the claims or for part of a claim. In these cases, this will be indicated in the search or the declaration taking the place of the search report.

Methods for treatment of the human or animal body; diagnostic methods With regard to methods for treatment of the human or animal body by surgery or therapy, or diagnostic methods practised on the human or animal body, it should be noted that products, in particular substances or compositions, for use in any of these methods, are not excluded from patentability, provided that the use of the product for any such method is not comprised in the state of the art. It should be noted that a claim in the form "Use of a substance or composition X for the manufacture of a medicament for therapeutic application Z" may be allowable for either a first or "subsequent" such application.

Even if a claim is drafted as a method of medical treatment and is for this reason not directed to patentable subjectmatter, a meaningful search may be possible if the determining technical feature is the effect of the substance, which can be searched. If, however, specific method features are present (e.g. dosing instructions for the user, combination of pharmaceutical with physical treatment), a meaningful search may not be possible. In cases of doubt the Examiner should carry out the search to the extent that this is possible in the available documentation. However, regardless of whether such claims are searched or not, the applicant’s attention should be drawn on the search opinion (if applicable, to the exclusion of such subject matter from industrial application.

5.12 No meaningful search possible

A limitation of the search may also result from the application not meeting the relevant requirements of the Act to such an extent that a meaningful search of the claims, or of some of the claims, or of part of a claim, is impossible. In such cases, the Examiner should make a meaningful search to the extent that this is possible. What is or is not "meaningful" is a question of fact for the Examiner to determine. The exercise of the discretion of the Examiner will depend upon the facts of the case. There are clearly cases where a search is rendered de facto impossible by the failure to meet the prescribed requirements of the Act. But these are not the only circumstances under which Rule 45 may be invoked. The word "meaningful" should be construed reasonably.

On the one hand, the word "meaningful" should not be construed in such a way that it is invoked simply because a search is difficult. On the other hand, it may be the case that a given claim could, theoretically, be searched completely, but that nevertheless, the Examiner comes to the conclusion, under a proper consideration of the relevant provisions of the Act, that it would not be meaningful to do so, in the sense that it would not serve any useful purpose to do so having regard, for example, to any possible future prosecution of the application.

In other cases, it may be that the results of the search themselves would be quite meaningless. A number of nonlimiting examples illustrated below:

(i) Claims lacking support; insufficient disclosure

One example would be the case of a broad or speculative claim supported by only a limited disclosure covering a small part of the scope of the claim. If the broadness of the claim is such as to render a meaningful search over the whole of the claim impossible, the Examiner will carry out the search on the basis of the narrower, disclosed invention. This may mean a search of the specific examples. In such a case, it will often be de facto impossible to do a complete search of the whole of the claim at all, because of the broad drafting style. In other cases, a search of the whole of the claim would serve no useful purpose, as the claim would not be defensible in any subsequent examination phase. Accordingly, the search will be limited. Here, the requirements underlying the limitation would be those of sufficiency of disclosure and support set out in section 34(5) and section 53(2).

(ii) Claims lacking conciseness

An example would be where there are so many claims, or so many possibilities within a claim, that it becomes unduly burdensome to determine the matter for which protection is sought. A complete search (or any search at all) may de facto be impossible, or alternatively may serve no useful purpose as the claim or claim set would be indefensible in any subsequent examination phase. Again, a partial search or a declaration of no search at all may be appropriate, on the grounds that the lack of conciseness of the claim(s) is such as to render a meaningful search impossible.

(iii) Claims lacking clarity

An example would be where the applicant's choice of parameter to define his invention renders a meaningful comparison with the prior art impossible, perhaps because the prior art has not employed the same parameter, or has employed no parameter at all. In such a case, the parameter chosen by the applicant may lack clarity. It may be that the lack of clarity of the parameter is such as to render a meaningful search of the claims or of a claim or of a part of a claim impossible, because the results of any search would be meaningless, the choice of parameter rendering a sensible comparison of the claimed invention with the prior art impossible. If so, a partial search will be appropriate, the search possibly being restricted to the worked examples, as far as they can be understood, or to the way in which the desired parameter is obtained.

These examples are not exhaustive. The basic principle is that there should be clarity and openness both for the applicant and for third parties as to what has and what has not been searched. Exceptionally, the Examiner may, at his own discretion, where he thinks it appropriate, ask the applicant informally for clarification before deciding whether or not to limit the search in respect of some or all of the claims, or for part of a claim or issue a declaration replacing the search report.

If the deficiencies which rendered a meaningful search impossible are subsequently corrected by amendment or if their existence is successfully refuted by the applicant during the substantive phase of examination, then an additional search may be carried out in the examination procedure.

5.13 Search report

General

The results of the search will be recorded in a search report. A number of different possible limitations of the scope of the search report exist. These are:

(i)

 where claims are deemed abandoned for nonpayment of claims fees;

(ii)

 a declaration replacing the search report

(iii) a partial search report according;

(iv) a partial  search report due to a finding of a lack of unity of invention.

A search report must contain no matter, in particular no expressions of opinion, reasoning, arguments or explanations, other than that required as in the search form.

Form

The search report should be prepared by the examiner and should contains a main page to be used for all searches for recording the important features of the search, such as:

(i)

 the application number;

(ii)

 the classification of the application;

(iii) the fields searched;

(iv) 

the relevant documents revealed by the search; and

(v)

 the name of the examiner who executed the search, as well as supplemental sheet.

Supplemental sheet is to be used for indicating approval or modifications of the title, the abstract as submitted by the applicant, and the figure to be published with the abstract. The supplemental sheet is also to be completed where there are restrictions on the search,

i.e. when claims incurring fees are not searched due to nonpayment of claims fees, when unity of invention is lacking, or when a meaningful search is not possible such that the search report is a partial one or is completely replaced by a declaration that no meaningful search can be conducted.

Chapter VI: Substantive Examination

6.13 Inventions relating to biological material

6.14 Claims

(section 34 (6))  The application must contain "one or more claims". The claims must:

(i)

 "define the matter for which protection is sought";

(ii)

 "be clear and concise"; and

(iii) "be supported by the description".

Since the extent of the protection conferred by a patent or application is determined by the terms of the claims (interpreted with the help of the description and the drawings), clarity of claim is of the utmost importance.

6.14 Form and content of claims

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. It is not necessary that every feature should be expressed in terms of a structural limitation. Functional features may be included provided that a skilled person would have no difficulty in providing some means of performing this function without exercising inventive skill. Claims to the use of the invention, in the sense of the technical application thereof, are allowable.

b) Twopart form

Regulation 14(2) and (3) define the twopart form which a claim should have. The first part 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 from the wording of Regulation 14 that it is necessary only to refer to those priorart 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.

If a single document in the state of the art cited in the search report, reveals that one or more features in the second part of the claim were already known in combination with all the features in the first part of the claim and in that combination have the same effect as they have in the full combination according to the invention, the examiner should require that such feature or features be transferred to the first part. Where, however, a claim relates to a novel combination, and where the division of the features of the claim between the priorart part and the characterising part could be made in more than one way without inaccuracy, the applicant should not be pressed, unless there are very substantial reasons, to adopt a different division of the features from that which he has chosen, if his version is not incorrect.

c) Formulae and tables

The claims, as well as the description, may contain chemical or mathematical formulae but not drawings.

6.15 Kinds of claim

a) Categories

The Act refers to different "categories" of claim (products, process or new 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.

b) Number of independent claims

The number of independent claims is not limited but the independent claims must relate to a single product or a single process.

The following are examples of typical situations falling within the scope of the exceptions from the principle of one independent claim per category:

(i)

examples of a plurality of interrelated products

–

 plug and socket;

–

 transmitter – receiver;

–

 intermediate(s) and final chemical product;

–

 gene – gene construct – host – protein – medicament;

(ii)

example of a plurality of different inventive uses of a product or device:

– second or further medical uses in the claim format of a "second medical use"type claim;

(iii) examples of alternative solutions to a particular problem:

–

 a group of chemical compounds;

–

 two or more processes for the manufacture of such compounds.

c) 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. It is evident that any claim relating to a particular embodiment must effectively include also the essential features of the invention, and hence must include all the features of at least one independent claim. The term "particular embodiment" should be construed broadly as meaning any more specific disclosure of the invention than that set out in the independent claim or claims.

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.

d) 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. The examiner should object if the arrangement of claims is such as to create obscurity in the definition of the subjectmatter to be protected. In general, however, when the corresponding independent claim is allowable, the examiner should not concern himself unduly with the subjectmatter of dependent claims, provided he is satisfied that they are truly dependent and thus in no way extend the scope of protection of the invention defined in the corresponding independent claim.

e) Subjectmatter of a dependent claim

If the twopart form is used for the independent claim(s), dependent claims may relate to further details of features not only of the characterising portion but also of the preamble.

f) Alternatives in a claim

A claim, whether independent or dependent, may refer to alternatives, provided that the number and presentation of alternatives in a single claim does not make the claim obscure or difficult to construe and provided that the claim meets the requirements of unity. In case of a claim defining (chemical or nonchemical) alternatives, i.e. a socalled "Markushgrouping", unity of invention should be considered to be present if the alternatives are of a similar nature and can fairly be substituted for one another.

g) Independent claims containing a reference to another claim

A claim may also contain a reference to another claim even if it is not a dependent claim. One example of this is a claim referring to a claim of a different category (e.g. "Apparatus for carrying out the process of claim 1 ...", or "Process for the manufacture of the product of claim 1 ..."). Similarly, in a situation like the plug and socket example above , a claim to the one part referring to the other cooperating part (e.g. "plug for cooperation with the socket of claim 1 ...") is not a dependent claim. In all these examples, the examiner should carefully consider the extent to which the claim containing the reference necessarily involves the features of the claim referred to and the extent to which it does not.

In the case of a claim for a process which results in the product of a product claim, if the product claim is patentable then no separate examination for the novelty and nonobviousness of the process claim is necessary, provided that all features of the product as defined in the product claim inevitably result from the claimed process. This also applies in the case of a claim for the use of a product, when the product is patentable and is used with its features as claimed. In all other instances, the patentability of the claim referred to does not necessarily imply the patentability of the independent claim containing the reference. It should also be noted that if the process, product and/or use claims have different effective dates, a separate examination may still be necessary in view of intermediate documents.

6.16 Clarity and interpretation of claims

a) Clarity

The requirement that the claims must be clear applies to individual claims and also to the claims as a whole. The clarity of the claims is of the utmost importance in view of their function in defining the matter for which protection is sought. Therefore, the meaning of the terms of a claim should, as far as possible, be clear for the person skilled in the art from the wording of the claim alone. In view of the differences in the scope of protection which may be attached to the various categories of claims, the examiner should ensure that the wording of a claim leaves no doubt as to its category.

b) Interpretation

Each claim should be read giving the words the meaning and scope which they normally have in the relevant art, unless in particular cases the description gives the words a special meaning, by explicit definition or otherwise. Moreover, if such a special meaning applies, the examiner should, so far as possible, require the claim to be amended whereby the meaning is clear from the wording of the claim alone. The claim should also be read with an attempt to make technical sense out of it. Such a reading may involve a departure from the strict literal meaning of the wording of the claims.

c) Inconsistencies

Any inconsistency between the description and the claims should be avoided if it may throw doubt on the extent of protection and therefore render the claim unclear or unsupported or alternatively, render the claim objectionable. Such inconsistency can be of the following kinds:

(i) Simple verbal inconsistency

For example, there is a statement in the description which suggests that the invention is limited to a particular feature but the claims are not thus limited; also, the description places no particular emphasis on this feature and there is no reason for believing that the feature is essential for the performance of the invention. In such a case, the inconsistency can be removed either by broadening the description or by limiting the claims. Similarly, if the claims are more limited than the description, the claims may be broadened or the description may be limited.

(ii) Inconsistency regarding apparently essential features

For example, it may appear, either from general technical knowledge or from what is stated or implied in the description, that a certain described technical feature not mentioned in an independent claim is essential to the performance of the invention, or, in other words, is necessary for the solution of the problem to which the invention relates. The examiner may draw the attention of the applicant to the inconsistency. If, in response, the applicant shows convincingly, e.g. by means of additional documents or other evidence, that the feature is in fact not essential, he may be allowed to retain the unamended claim and, where necessary, to amend the description instead. The opposite situation in which an independent claim includes features which do not seem essential for the performance of the invention is not objectionable. This is a matter of the applicant's choice. The examiner should therefore not suggest that a claim be broadened by the omission of apparently inessential features;

(iii) part of the subjectmatter of the description and/or drawings is not covered by the claims

For example, the claims all specify an electric circuit employing semiconductor devices but one of the embodiments in the description and drawings employs electronic tubes instead. In such a case, the inconsistency can normally be removed either by broadening the claims (assuming that the description and drawings as a whole provide adequate support for such broadening) or by removing the "excess" subjectmatter from the description and drawings. However, if examples in the description and/or drawings which are not covered by the claims are presented not as embodiments of the invention but as background art or examples which are useful for understanding the invention, the retention of these examples may be allowed.

d) General statements, "spirit" of invention

General statements in the description which imply that the extent of protection may be expanded in some vague and not precisely defined way should be objected to. In particular, objection should be raised to any statement which refers to the extent of protection being expanded to cover the "spirit" of the invention. Objection should likewise be raised, in the case where the claims are directed to a combination of features, to any statement which seems to imply that protection is nevertheless sought not only for the combination as a whole but also for individual features or subcombinations thereof.

e) Essential features

An independent claim should specify explicitly all of the essential features needed to define the invention except insofar as such features are implied by the generic terms used, e.g. a claim to a "bicycle" does not need to mention the presence of wheels. If a claim is to a process for producing the product of the invention, then the process as claimed should be one which, when carried out in a manner which would seem reasonable to a person skilled in the art, necessarily has as its end result that particular product; otherwise there is an internal inconsistency and therefore lack of clarity in the claim. In the case of a product claim, if the product is of a wellknown kind and the invention lies in modifying it in certain respects, it is sufficient that the claim clearly identifies the product and specifies what is modified and in what way. Similar considerations apply to claims for an apparatus. Where patentability depends on a technical effect, the claims must be so drafted as to include all the technical features of the invention which are essential for the technical effect.

f) Relative terms

It is preferable not to use a relative or similar term such as "thin", "wide" or "strong" in a claim unless the term has a wellrecognised meaning in the particular art, e.g. "highfrequency" in relation to an amplifier, and this is the meaning intended. Where the term has no wellrecognised meaning it should, if possible, be replaced by a more precise wording found elsewhere in the original disclosure. Where there is no basis in the disclosure for a clear definition and the term is not essential having regard to the invention, it should normally be retained in the claim, because to excise it would generally lead to an extension of the subjectmatter beyond the content of the application as filed. However, an unclear term cannot be allowed in a claim if the term is essential having regard to the invention.

Equally, an unclear term cannot be used by the applicant to distinguish his invention from the prior art.

g) Terms like "about" and "approximately"

Particular attention is required whenever the word "about" or similar terms such as "approximately" are used. Such a word may be applied, for example, to a particular value

(e.g. "about 200C") or to a range (e.g."about x to about y"). In each case, the examiner should use his judgment as to whether the meaning is sufficiently clear in the context of the application read as a whole. However, the word can only be permitted if its presence does not prevent the invention from being unambiguously distinguished from the prior art with respect to novelty and inventive step.

h) Trademarks

The use of trade marks and similar expressions in claims should not be allowed as it may not be guaranteed that the product or feature referred to is not modified while maintaining its name during the term of the patent. They may be allowed exceptionally if their use is unavoidable and they are generally recognised as having a precise meaning.

i) Optional features

Expressions like "preferably", "for example", "such as" or "more particularly" should be looked at carefully to ensure that they do not introduce ambiguity. Expressions of this kind have no limiting effect on the scope of a claim; that is to say, the feature following any such expression is to be regarded as entirely optional.

j) Result to be achieved

The area defined by the claims must be as precise as the invention allows. As a general Regulation, claims which attempt to define the invention by a result to be achieved should not be allowed, in particular if they only amount to claiming the underlying technical problem. However, they may be allowed if the invention either can only be defined in such terms or cannot otherwise be defined more precisely without unduly restricting the scope of the claims and if the result is one which can be directly and positively verified by tests or procedures adequately specified in the description or known to the person skilled in the art and which do not require undue experimentation For example, the invention may relate to an ashtray in which a smouldering cigarette end will be automatically extinguished due to the shape and relative dimensions of the ashtray. The latter may vary considerably in a manner difficult to define whilst still providing the desired effect. So long as the claim specifies the construction and shape of the ashtray as clearly as possible, it may define the relative dimensions by reference to the result to be achieved, provided that the specification includes adequate directions to enable the reader to determine the required dimensions by routine test procedures. It should be noted that the abovementioned requirements for allowing a definition of subjectmatter in terms of a result to be achieved differ from those for allowing a definition of subjectmatter in terms of functional features.

6.17 Parameters

Where the invention relates to a product, it may be defined in a claim in various ways, viz. as a chemical product by its chemical formula, as a product of a process (if no clearer definition is possible) or, exceptionally, by its parameters. Parameters are characteristic values, which may be values of directly measurable properties (e.g. the melting point of a substance, the flexural strength of steel, the resistance of an electrical conductor) or may be defined as more or less complicated mathematical combinations of several variables in the form of formulae. Characterisation of a product mainly by its parameters should only be allowed in those cases where the invention cannot be adequately defined in any other way, provided that those parameters can be clearly and reliably determined either by indications in the description or by objective procedures which are usual in the art. The same applies to a processrelated feature which is defined by parameters. Cases in which unusual parameters are employed or a nonaccessible apparatus for measuring the parameter(s) is used are prima facie objectionable on grounds of lack of clarity, as no meaningful comparison with the prior art can be made. Such cases might also disguise lack of novelty. Whether the method of and the means for measurement of the parameters need also be in the claim.

6.18 Productbyprocess claim

Claims for products defined in terms of a process of manufacture are allowable only if the products as such fulfil the requirements for patentability, i.e. inter alia that they are new and inventive. A product is not rendered novel merely by the fact that it is produced by means of a new process. A claim defining a product in terms of a process is to be construed as a claim to the product as such.

The claim may for instance take the form "Product X obtainable by process Y". Irrespective of whether the term "obtainable", "obtained", "directly obtained" or an equivalent wording is used in the productby process claim, it is still directed to the product per se and confers absolute protection upon the product.

If the subjectmatter of a patent is a process, the protection conferred by the patent extends to the products directly obtained by such process. The provisions of the Act are understood to apply to processes producing products completely different from the starting materials as well as to the processes producing only superficial changes (e.g. painting, polishing).

6.19 "Apparatus for ...", "Method for ...", etc. 

If a claim commences with such words as: "Apparatus for carrying out the process etc..." this must be construed as meaning merely apparatus suitable for carrying out the process. Apparatus which otherwise possesses all of the features specified in the claims but which would be unsuitable for the stated purpose or would require modification to enable it to be so used, should normally not be considered as anticipating the claim.

Similar considerations apply to a claim for a product for a particular use. For example, if a claim refers to a "mould for molten steel", this implies certain limitations for the mould. Therefore, a plastic ice cube tray with a melting point much lower than that of steel would not come within the claim. Similarly, a claim to a substance or composition for a particular use should be construed as meaning a substance or composition which is in fact suitable for the stated use; a known product which prima facie is the same as the substance or composition defined in the claim, but which is in a form which would render it unsuitable for the stated use, would not deprive the claim of novelty. However, if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it would deprive the claim of novelty. An exception to this general principle of interpretation is where the claim is to a known substance or composition for use in a surgical, therapeutic or diagnostic method.

In contrast to an apparatus or product claim, in case of a method claim commencing with such words as: "Method for remelting galvanic layers" the part "for remelting ..." should not be understood as meaning that the process is merely suitable for remelting galvanic layers, but rather as a functional feature concerning the remelting of galvanic layers and, hence, defining one of the method steps of the claimed method

6.20 Definition by reference to use or another entity

Where a claim in respect of a physical entity (product, apparatus) seeks to define the invention by reference to features relating to the entity's use, a lack of clarity can result. This is particularly the case where the claim not only defines the entity itself but also specifies its relationship to a second entity which is not part of the claimed entity (for example, a cylinder head for an engine, where the former is defined by features of its location in the latter). Before considering a restriction to the combination of the two entities, if should always be remembered that the applicant is normally entitled to independent protection of the first entity per se, even if it was initially defined by its relationship to the second entity.

Since the first entity can often be produced and marketed independently of the second entity, it will usually be possible to obtain independent protection by wording the claims appropriately (for example, by substituting "connectable" for "connected"). If it is not possible to give a clear definition of the first entity per se, then the claim should be directed to a combination of the first and second entities (for example, "engine with a cylinder head" or "engine comprising a cylinder head").

It may also be allowable to define the dimensions and/or shape of a first entity in an independent claim by general reference to the dimensions and/or corresponding shape of a second entity which is not part of the claimed first entity but is related to it through use. This particularly applies where the size of the second entity is in some way standardized (for example, in the case of a mounting bracket for a vehicle number plate, where the bracket frame and fixing elements are defined in relation to the outer shape of the numberplate). However, references to second entities which cannot be seen as subject to standardization may also be sufficiently clear in cases where the skilled person would have little difficulty in inferring the resultant restriction of the scope of protection for the first entity (for example, in the case of a covering sheet for an agricultural round bale, where the length and breadth of the covering sheet and how it is folded are defined by reference to the bale's circumference, width and diameter.

It is neither necessary for such claims to contain the exact dimensions of the second entity, nor do they have to refer to a combination of the first and second entities. Specifying the length, width and/or height of the first entity without reference to the second would lead to an unwarranted restriction of the scope of protection.

6.21 The expression "in"

To avoid ambiguity, particular care should be exercised when assessing claims which employ the word "in" to define a relationship between different physical entities (product, apparatus), or between entities and activities (process, use), or between different activities. Examples of claims worded in this way include the following:

(i)

Cylinder head in a fourstroke engine;

(ii)

In a telephone apparatus with an automatic dialler, dial tone detector and feature controller, the dial tone detector comprising...;

(iii) In a process using an electrode feeding means of an arcwelding apparatus, a method for controlling the arc welding current and voltage comprising the following steps: ...; and

(iv) In a process/system/apparatus etc. ... the improvement consisting of...

In examples (i) to (iii) the emphasis is on the fully functioning subunits (cylinder head, dial tone detector, method for controlling the arc welding current and voltage) rather than the complete unit within which the subunit is contained (fourstroke engine, telephone, process).

This can make it unclear whether the protection sought is limited to the subunit per se, or whether the unit as a whole is to be protected. For the sake of clarity, claims of this kind should be directed either to "a unit with (or comprising) a subunit" (e.g. "fourstroke engine with a cylinder head"), or to the subunit per se, specifying its purpose (for example, "cylinder head for a four stroke engine"). With claims of the type indicated by example (iv), the use of the word "in" sometimes makes it unclear whether protection is sought for the improvement only or for all the features defined in the claim. Here, too, it is essential to ensure that the wording is clear.

However, claims such as "use of a substance ... as an anticorrosive ingredient in a paint or lacquer composition" are acceptable on the basis of second nonmedical use

6.22 Use claims

For the purposes of examination, a "use" claim in a form such as "the use of substance X as an insecticide" should be regarded as equivalent to a "process" claim of the form "a process of killing insects using substance X". Thus a claim in the form indicated should not be interpreted as directed to the substance X recognisable (e.g. by further additives) as intended for use as an insecticide.

Similarly, a claim for "the use of a transistor in an amplifying circuit" would be equivalent to a process claim for the process of amplifying using a circuit containing the transistor and should not be interpreted as being directed to "an amplifying circuit in which the transistor is used", nor to "the process of using the transistor in building such a circuit".

6.23 References to the description or drawings

The claims must not, in respect of the technical features of the invention, rely on references to the description or drawings "except where absolutely necessary". In particular they must not normally rely on such references as "as described in part ... of the description", or "as illustrated in Figure 2 of the drawings". The emphatic wording of the excepting clause should be noted. The onus is upon the applicant to show that it is "absolutely necessary" to rely on reference to the description or drawings in appropriate cases. An example of an allowable exception would be that in which the invention involves some peculiar shape, illustrated in the drawings, but which cannot be readily defined either in words or by a simple mathematical formula.

6.24 Method of and means for measuring parameters referred to in claims

A further special case is where the invention is characterised by parameters. Provided that the conditions for defining the invention in this way are met, the definition of the invention should appear completely in the claim itself whenever this is reasonably practicable. In principle the method of measurement is necessary for the unambiguous definition of the parameter. The method of and means for measurement of the parameter values need not however be in the claims when:

(i)

the description of the method is so long that its inclusion would make the claim unclear through lack of conciseness or difficult to understand; in that case the claim should include a reference to the description;

(ii)

a person skilled in the art would know which method to employ, e.g. because there is only one method, or because a particular method is commonly used; or

(iii) all known methods yield the same result (within the limits of measurement accuracy).

However, in all other cases the method of and means for measurement should be included in the claims as the claims define the matter for which protection is sought.

6.25 Reference signs

If the application contains drawings, and the comprehension of the claims would be improved by establishing the connection between the features mentioned in the claims and the corresponding reference signs in the drawings, then appropriate reference signs should be placed in parentheses after the features mentioned in the claims. If there is a large number of different embodiments, only the reference signs of the most important embodiments need be incorporated in the independent claim(s).

Where claims are drafted in the twopart form set out in, the reference signs should be inserted not only in the characterising part but also in the preamble of the claims. Reference signs should not however be seen as limiting the extent of the matter protected by the claims; their sole function is to make claims easier to understand. If text is added to reference signs in parentheses in the claims, lack of clarity can arise. 84). Expressions such as "securing means (screw 13, nail 14)" or "valve assembly (valve seat 23, valve element 27, valve seat 28)" are not reference signs but are special features, that are not applicable. A lack of clarity can also arise with bracketed expressions that do not include reference signs, e.g. "(concrete) moulded brick".

In contrast, bracketed expressions with a generally accepted meaning are allowable, e.g. "(meth)acrylate" which is known as an abbreviation for "acrylate and methacrylate". The use of brackets in chemical or mathematical formulae is also unobjectionable.

6.26 Negative limitations (e.g. disclaimers)

A claim's subjectmatter is normally defined in terms of positive features indicating that certain technical elements are present. Exceptionally, however, the subjectmatter may be restricted using a negative limitation expressly stating that particular features are absent. This may be done e.g. to remove nonpatentable embodiments disclosed in the application as filed or if the absence of a feature can be deduced from the application as filed.

Negative limitations such as disclaimers may be used only if adding positive features to the claim either would not define more clearly and concisely the subjectmatter still protectable or would unduly limit the scope of the claim.

On the other hand, if a claim for a chemical compound refers to it as "consisting of components A, B and C" by their proportions expressed in percentages, the presence of any additional component is excluded and therefore the percentages should add up to 100%.

6.27 Conciseness, number of claims

The requirement that the claims must be concise refers to the claims in their entirety as well as to the individual claims. The number of claims must be considered in relation to the nature of the invention the applicant seeks to protect. Undue repetition of wording, e.g. between one claim and another, should be avoided by the use of the dependent form.

As for dependent claims, while there is no objection to a reasonable number of such claims directed to particular preferred features of the invention, the examiner should object to a multiplicity of claims of a trivial nature. What is or what is not a reasonable number of claims depends on the facts and circumstances of each particular case.

The interests of the relevant public must also be borne in mind. The presentation of the claims should not make it unduly burdensome to determine the matter for which protection is sought. Objection may also arise where there is a multiplicity of alternatives within a single claim, if this renders it unduly burdensome to determine the matter for which protection is sought.

6.28 Support in Description

6.28.1General remarks

The claims must be supported by the description. This means that there must be a basis in the description for the subjectmatter of every claim and that the scope of the claims must not be broader than is justified by the extent of the description and drawings and also the contribution to the art.

Most claims are generalisations from one or more particular examples. The extent of generalisation permissible is a matter which the examiner must judge in each particular case in the light of the relevant prior art.

Thus an invention which opens up a whole new field is entitled to more generality in the claims than one which is concerned with advances in a known technology. A fair statement of claim is one which is not so broad that it goes beyond the invention nor yet so narrow as to deprive the applicant of a just reward for the disclosure of his invention. The applicant should be allowed to cover all obvious modifications of, equivalents to and uses of that which he has described. In particular, if it is reasonable to predict that all the variants covered by the claims have the properties or uses the applicant ascribes to them in the description, he should be allowed to draw his claims accordingly.

As a general rule, a claim should be regarded as supported by the description unless there are wellfounded reasons for believing that the skilled person would be unable, on the basis of the information given in the application as filed, to extend the particular teaching of the description to the whole of the field claimed by using routine methods of experimentation or analysis. Support must, however, be of a technical character; vague statements or assertions having no technical content provide no basis.

The examiner should raise an objection of lack of support only if he has wellfounded reasons. Once the examiner has set out a reasoned case that, for example, a broad claim is not supported over the whole of its breadth, the onus of demonstrating that the claim is fully supported lies with the applicant.

Where objection is raised, the reasons should, where possible, be supported specifically by a published document. A claim in generic form, i.e. relating to a whole class, e.g. of materials or machines, may be acceptable even if of broad scope, if there is fair support in the description and there is no reason to suppose that the invention cannot be worked through the whole of the field claimed. Where the information given appears insufficient to enable a person skilled in the art to extend the teaching of the description to parts of the field claimed but not explicitly described by using routine methods of experimentation or analysis, the examiner should raise a reasoned objection, and invite the applicant to establish, by suitable response, that the invention can in fact be readily applied on the basis of the information given over the whole field claimed or, failing this, to restrict the claim accordingly.

6.28.2Lack of support vs. insufficient disclosure

It should be noted that, although an objection of lack of support is an objection, it can often, also be considered as an objection of insufficient disclosure of the invention the objection being that the disclosure is insufficient to enable the skilled person to carry out the "invention" over the whole of the broad field claimed (although sufficient in respect of a narrow "invention"). Both requirements are designed to reflect the principle that the terms of a claim should be commensurate with, or be justified by, the invention.

Whether the objection is raised as lack of support or as insufficiency is unimportant in examination proceedings; but it is important in opposition proceedings since there only the latter ground is available.

6.28.3Support for dependent claims

Where certain subjectmatter is clearly disclosed in a claim of the application as filed, but is not mentioned anywhere in the description, it is permissible to amend the description so that it includes this subjectmatter. Where the claim is dependent, it may suffice if it is mentioned in the description that the claim sets out a particular embodiment of the invention.

6.29 Unity of invention

6.29.1General remarks

A patent application must "relate to one invention only or to a group of inventions so linked as to form a single general inventive concept". The second of these alternatives, i.e. the singleconcept linked group, may give rise to a plurality of independent claims in the same category.

6.29.2Special technical features

The link between the inventions must be a technical relationship which finds expression in the claims in terms of the same or corresponding special technical features. The expression "special technical features" means, in any one claim, the particular technical feature or features that define a contribution that the claimed invention considered as a whole makes over the prior art. Once the special technical features of each invention have been identified, one must determine whether or not there is a technical relationship between the inventions and, furthermore, whether or not this relationship involves these special technical features. It is not necessary that the special technical features in each invention be the same.

6.29.3Intermediate and final products

Unity of invention should be considered to be present in the context of intermediate and final products where:

(i) 

the intermediate and final products have the same essential structural element, i.e. their basic chemical structures are the same or their chemical structures are technically closely interrelated, the intermediate incorporating an essential structural element into the final product, and

(ii) 

the intermediate and final products are technically interrelated, i.e. the final product is manufactured directly from the intermediate or is separated from it by a small number of intermediates all containing the same essential structural element. Unity of invention may also be present between intermediate and final products of which the structures are not known – for example, as between an intermediate having a known structure and a final product with unknown structure or as between an intermediate of unknown structure and a final product of unknown structure.

In such cases, there should be sufficient evidence to lead one to conclude that the intermediate and final products are technically closely interrelated as, for example, when the intermediate contains the same essential element as the final product or incorporates an essential element into the final product. Different intermediate products used in different processes for the preparation of the final product may be claimed provided that they have the same essential structural element. The intermediate and final products should not be separated, in the process leading from one to the other, by an intermediate which is not new. Where different intermediates for different structural parts of the final product are claimed, unity should not be regarded as being present between the intermediates.

If the intermediate and final products are families of compounds, each intermediate compound should correspond to a compound claimed in the family of the final products. However, some of the final products may have no corresponding compound in the family of the intermediate products, so the two families need not be absolutely congruent. The mere fact that, besides the ability to be used to produce final products, the intermediates also exhibit other possible effects or activities should not prejudice unity of invention.

6.29.4Markush grouping

Where a single claim defines (chemical or nonchemical) alternatives, i.e. a socalled "Markush grouping", unity of invention should be considered to be present if the alternatives are of a similar nature. When the Markush grouping is for alternatives of chemical compounds, they should be regarded as being of a similar nature where:

(i)

all alternatives have a common property or activity; and

(ii)

a common structure is present, i.e. a significant structural element is shared by all of the alternatives, or all alternatives belong to a recognised class of chemical compounds in the art to which the invention pertains.

A "significant structural element is shared by all of the alternatives" where the compounds share a common chemical structure which occupies a large portion of their structures, or, in case the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion in view of existing prior art. The structural element may be a single component or a combination of individual components linked together. The alternatives belong to a "recognised class of chemical compounds" if there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention, i.e. that each member could be substituted one for the other, with the expectation that the same intended result would be achieved. If it can be shown that at least one Markush alternative is not novel, unity of invention should be reconsidered.

6.29.5Individual features in a claim

Objection of lack of unity does not arise because of one claim containing a number of individual features, where these features do not present a technical interrelationship (i.e. a combination), but merely a juxtaposition

6.29.6Dependent claims

No objection on account of lack of unity a is justified in respect of a dependent claim and the claim on which it depends, on the ground that the general concept they have in common is the subjectmatter of the independent claim, which is also contained in the dependent claim. For example, suppose claim 1 claims a turbine rotor blade shaped in a specified manner, while claim 2 is for a "turbine rotor blade as claimed in claim 1 and produced from alloy Z". The common general concept linking the dependent with the independent claim is "turbine rotor blade shaped in a specified manner".

If, however, the independent claim appears not to be patentable, then the question whether there is still an inventive link between all the claims dependent on that claim needs to be carefully considered nonunity. It may be that the "special technical features" of one claim dependent on this nonpatentable independent claim are not present in the same or corresponding form in another claim dependent on that claim.

6.30 Unity invention

Lack of unity during substantive examination

The final responsibility for establishing whether the application meets the requirement of unity of invention ultimately rests with the Examiner. The Examiner will normally initially uphold the position taken in the search opinion and will then require deletion of all the inventions other than that which has been searched. If the Examiner is convinced, e.g. by arguments from the applicant, that the opinion on unity at the search stage was incorrect, then an additional search is performed for that part of the subjectmatter which is judged to be unitary with an invention which was searched and the examination is carried out on those claims which comply with the requirement of unity of invention.

If the applicant has taken the opportunity to have other inventions searched, then he may determine that the application is to proceed on the basis of any of these, the other(s) being deleted. If the applicant has not yet done so, the examiner should at the beginning of substantive examination, if he maintains the objection of lack of unity, invite the applicant to state on which invention the prosecution of the application should be based and to limit the application accordingly by excising those parts belonging to the other inventions.

Whether or not the question of unity of invention has been raised by the Search Division, it must always be considered by the Examiner. Whenever unity is found to be lacking, the applicant should be required to limit his claims in such a way as to overcome the objection. Excision or amendment of parts of the description may also be necessary. One or more divisional applications, covering matter removed to meet this objection, may be filed.

6.31 Novelty

6.31.1General remarks

The Act provides that an invention is new if it is not anticipated by prior art. Everything made available to the public anywhere in, the world by means of written disclosure (including drawings and other illustrations) or, by oral disclosure, use, exhibition or other nonwritten means shall be considered prior art provided that such disclosure occurred before the date of filing of the application or, if priority is claimed, before the priority date validly claimed in respect thereof.

An invention is considered to be new if it does not form part of the state of the art. It should be noted that in considering novelty, it is not permissible to combine separate items of prior art together. It is also not permissible to combine separate items belonging to different embodiments described in one and the same document, unless such combination has specifically been suggested. However, if a document (the "primary" document) refers explicitly to another document as providing more detailed information on certain features, the teaching of the latter is to be regarded as incorporated into the document containing the reference, if the document referred to was available to the public on the publication date of the document containing the reference. The relevant date for novelty purposes, however, is always the date of the primary document. It is further permissible to use a dictionary or similar document of reference in order to interpret a special term used in a document.

6.31.2Implicit features or wellknown equivalents

A document takes away the novelty of any claimed subjectmatter derivable directly and unambiguously from that document including any features implicit to a person skilled in the art in what is expressly mentioned in the document, e.g. a disclosure of the use of rubber in circumstances where clearly its elastic properties are used even if this is not explicitly stated takes away the novelty of the use of an elastic material. The limitation to subjectmatter "derivable directly and unambiguously" from the document is important. Thus, when considering novelty, it is not correct to interpret the teaching of a document as embracing wellknown equivalents which are not disclosed in the documents; this is a matter of obviousness.

6.31.3Relevant date of a prior document

In determining novelty, a prior document should be read as it would have been read by a person skilled in the art on the relevant date of the document. By "relevant" date is meant the publication date in the case of a previously published document and the date of filing (or priority date, where appropriate) in the case of a document.

6.31.4Enabling disclosure of a prior document

Subjectmatter described in a document can only be regarded as having been made available to the public, and therefore as comprised in the state if the information given therein to the skilled person is sufficient to enable him, at the relevant date of the document, to practice the technical teaching which is the subject of the document, taking into account also the general knowledge at that time in the field to be expected of him and not published. Similarly, it should be noted that a chemical compound, the name or formula of which is mentioned in a priorart document, is not thereby considered as known, unless the information in the document, together, where appropriate, with knowledge generally available on the relevant date of the document, enables it to be prepared and separated or, for instance in the case of a product of nature, only to be separated.

6.31.5Generic disclosure and specific examples

In considering novelty, it should be borne in mind that a generic disclosure does not usually take away the novelty of any specific example falling within the terms of that disclosure, but that a specific disclosure does take away the novelty of a generic claim embracing that disclosure, e.g. a disclosure of copper takes away the novelty of metal as a generic concept, but not the novelty of any metal other than copper, and one of rivets takes away the novelty of fastening means as a generic concept, but not the novelty of any fastening other than rivets.

6.31.7Implicit disclosure and parameters

In the case of a prior document, the lack of novelty may be apparent from what is explicitly stated in the document itself. Alternatively, it may be implicit in the sense that, in carrying out the teaching of the prior document, the skilled person would inevitably arrive at a result falling within the terms of the claim. An objection of lack of novelty of this kind should be raised by the examiner only where there can be no reasonable doubt as to the practical effect of the prior teaching (for a second nonmedical use.

Situations of this kind may also occur when the claims define the invention, or a feature thereof, by parameters. It may happen that in the relevant prior art a different parameter, or no parameter at all, is mentioned. If the known and the claimed products are identical in all other respects (which is to be expected if, for example, the starting products and the manufacturing processes are identical), then in the first place an objection of lack of novelty arises. If the applicant is able to show, e.g. by appropriate comparison tests, that differences do exist with respect to the parameters, it is questionable whether the application discloses all the features essential to manufacture products having the parameters specified in the claims.

6.31.8Examination of novelty

In determining novelty of the subjectmatter of claims, the examiner should remember that, particularly for claims directed to a physical entity, nondistinctive characteristics of a particular intended use should be disregarded. For example, a claim to a substance X for use as a catalyst would not be considered to be novel over the same substance known as a dye, unless the use referred to implies a particular form of the substance (e.g. the presence of certain additives) which distinguishes it from the known form of the substance. That is to say, characteristics not explicitly stated, but implied by the particular use, should be taken into account.

It should further be borne in mind that a claim to the use of a known compound for a particular purpose (second nonmedical use) which is based on a technical effect should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection, provided that such technical feature has not previously been made available to the public.

6.31.9Selection inventions

Selection inventions deal with the selection of individual elements, subsets, or subranges, which have not been explicitly mentioned, within a larger known set or range. i) In determining the novelty of a selection, it has to be decided, whether the selected

elements are disclosed in an individualized (concrete) form in the prior art. A selection

from a single list of specifically disclosed elements does not confer novelty. However, if a

selection from two or more lists of a certain length has to be made in order to arrive at a

specific combination of features then the resulting combination of features, not

specifically disclosed in the prior art, confers novelty (the “two lists principle”). Examples

of such selections from two or more lists are the selection of:

(a)

individual chemical compounds from a known generic formula whereby the compound selected results from the selection of specific substituents from two or more “lists” of substituents given in the known generic formula. The same applies to specific mixtures resulting from the selection of individual components from lists of components making up the prior art mixture;

(b)

starting materials for the manufacture of a final product;

(c)

subranges of several parameters from corresponding known ranges.

(ii) A subrange selected from a broader numerical range of the prior art is considered

novel, if each of the following three criteria is satisfied:

a) the selected subrange is narrow compared to the known range;

b) the selected subrange is sufficiently far removed from any specific examples

disclosed in the prior art and from the endpoints of the known range;

c) the selected range is not an arbitrary specimen of the prior art, i.e. not a

mere embodiment of the prior art, but another invention (purposive selection,

new technical teaching).

An effect occurring only in the claimed subrange cannot in itself confer novelty on that subrange. However, such a technical effect occurring in the selected subrange, but not in the whole of the known range, can confirm that criterion c) is met, i.e. that the invention is novel and not merely a specimen of the prior art. The meaning of “narrow” and “sufficiently far removed” has to be decided on a casebycase basis. The new technical effect occurring within the selected range may also be the same effect as that attained with the broader known range, but to a greater extent.

(iii) In the case of overlapping ranges (e.g. numerical ranges, chemical formulae) of claimed subjectmatter and the prior art the same principles apply for the assessment of novelty as in other cases, e.g. selection inventions.

It has to be decided which subjectmatter has been made available to the public by a prior art disclosure and thus forms part of the state of the art. In this context, it is not only examples, but the whole content of the prior art document which has to be taken into consideration. As to overlapping ranges or numerical ranges of physical parameters, novelty is destroyed by an explicitly mentioned endpoint of the known range, explicitly mentioned intermediate values or a specific example of the prior art in the overlap. It is not sufficient to exclude specific novelty destroying values known from the prior art range, it must also be considered whether the skilled person, in the light of the technical facts and taking into account the general knowledge in the field to be expected from him, would seriously contemplate applying the technical teaching of the prior art document in the range of overlap. If it can be fairly assumed that he would do so, it must be concluded that no novelty exists.

The criteria mentioned in (ii) above can be applied analogously for assessing the novelty of overlapping numerical ranges. As far as overlapping chemical formulae are concerned, novelty is acknowledged if the claimed subjectmatter is distinguished from the prior art in the range of overlap by a new technical element (new technical teaching), of the reasons, not published for example a specifically selected chemical residue which is covered in general terms by the prior art in the overlapping area, but which is not individualised in the prior art document. If this is not the case, then it must be considered whether the skilled person would seriously contemplate working in the range of overlap and/or would accept that the area of overlap is directly and unambiguously disclosed in an implicit manner in the prior art, not published. If the answer is yes, then novelty is lacking.

6.32 NonPrejudicial Disclosures

6.32.1General Remark 

There are two specific instances (and these are the only two) in which a prior disclosure of the invention is not taken into consideration as part of the state of the art, viz. where the disclosure was due to, or in consequence of:

(i)

an evident abuse in relation to the applicant or his legal predecessor – e.g. the invention was derived from the applicant and disclosed against his wish (Section 23(4)(a)); or

(ii)

the display of the invention by the applicant or his legal predecessor at an officially recognized international exhibition as defined in Section 23(4)(b) of .

6.32.2Time limit

An essential condition, in both instances (i) and (ii), is that the disclosure in point must have taken place not earlier than twelve months preceding the filing of the application. For calculating the twelvemonth period the relevant date is that of the actual filing date of the patent application (Section 23(4)).

6.32.3Evident abuse

Regarding instance (i), the disclosure might be made in a published document or in any other way. As a particular instance, the disclosure might be made in a European application of earlier priority date. Thus, for example, a person B who has been told of A's invention in confidence, might himself apply for a patent for this invention. If so, the disclosure resulting from the publication of B's application will not prejudice A's rights provided that A has already made an application, or applies within twelve months of such publication. B may not be entitled to proceed with his application. For "evident abuse" to be established, there must be, on the part of the person disclosing the invention, either actual intent to cause harm or actual or constructive knowledge that harm would or could ensue from this disclosure.

6.32.4International exhibition

In instance (ii), the application must be filed within twelve months of the disclosure of the invention at the exhibition if the display is not to prejudice the application. Furthermore, the applicant must state, at the time of filing the application, that the invention has been so displayed, and must also file a supporting certificate.

6.33 Inventive Step (Section 24)

6.33.1General

An invention is considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. Novelty and inventive step are different criteria. Novelty exists if there is any difference between the invention and the known art. The question – "is there inventive step?" – only arises if there is novelty.

6.33.2State of the art; date of filing

The "state of the art" for the purposes of considering inventive step does not include later published patent applications. Date of filing  means date of priority where appropriate.

6.33.3Person skilled in the art

The "person skilled in the art" should be presumed to be an ordinary practitioner aware of what was common general knowledge in the art at the relevant date. He should also be presumed to have had access to everything in the "state of the art", in particular the documents cited in the search report, and to have had at his disposal the normal means and capacity for routine work and experimentation. If the problem prompts the person skilled in the art to seek its solution in another technical field, the specialist in that field is the person qualified to solve the problem. The assessment of whether the solution involves an inventive step must therefore be based on that specialist's knowledge and ability. There may be instances where it is more appropriate to think in terms of a group of persons, e.g. a research or production team, than a single person. This may apply, for example, in certain advanced technologies such as computers or telephone systems and in highly specialized processes such as the commercial production of integrated circuits or of complex chemical substances. (definition should be considered further)

6.33.4Obviousness

Thus the question to consider, in relation to any claim defining the invention, is whether before the filing or priority date valid for that claim, having regard to the art known at the time, it would have been obvious to the person skilled in the art to arrive at something falling within the terms of the claim. If so, the claim is not allowable for lack of inventive step. The term "obvious" means that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art, i.e. something which does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the art. In considering inventive step, as distinct from novelty, it is fair to construe any published document in the light of subsequent knowledge and to have regard to all the knowledge generally available to the person skilled in the art the day before the filing or priority date valid for the claimed invention.

6.33.5Combination vs. juxtaposition or aggregation

The invention claimed must normally be considered as a whole. When a claim consists of a "combination of features", it is not correct to argue that the separate features of the combination taken by themselves are known or obvious and that "therefore" the whole subjectmatter claimed is obvious. However, where the claim is merely an "aggregation or juxtaposition of features" and not a true combination, it is enough to show that the individual features are obvious to prove that the aggregation of features does not involve an inventive step. A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different, e.g. greater than the sum of the technical effects of the individual features. In other words, the interactions of the individual features must produce a synergistic effect. If no such synergistic effect exists, there is no more than a mere aggregation of features. For example, the technical effect of an individual transistor is essentially that of an electronic switch. However, transistors interconnected to form a microprocessor synergically interact to achieve technical effects, such as data processing, which are over and above the sum of their respective individual technical effects.

6.33.6Origin of an invention

While the claim should in each case be directed to technical features (and not, for example, merely to an idea), in order to assess whether an inventive step is present it is important for the examiner to bear in mind that there are various ways in which the skilled person may arrive at an invention. An invention may, for example, be based on the following:

(i)

The formulation of a new idea or of a yet unrecognised problem to be solved (the solution being obvious once the problem is clearly stated); Example: Appropriate tests by the applicant revealed that the effect of a known chemical formulation was no longer satisfactory after prolonged storage, the claimed solution being retrospectively trivial and in itself obvious.

(ii)

The devising of a solution to a known problem; Example: the problem of permanently marking farm animals such as cows without causing pain to the animals or damage to the hide has existed since farming began. The solution ("freezebranding") consists in applying the discovery that the hide can be permanently depigmented by freezing.

(iii) The arrival at an insight into the cause of an observed phenomenon (the practical use of this phenomenon then being obvious); Example: the agreeable flavour of butter is found to be caused by minute quantities of a particular compound. As soon as this insight has been arrived at, the technical application comprising adding this compound to margarine is immediately obvious. Many inventions are of course based on a combination of the above possibilities e.g. the arrival at an insight and the technical application of that insight may both involve the use of the inventive faculty.

6.33.7Problemand –Solution Approach

In practice, in order to assess inventive step in an objective and predictable manner, the examiner should normally apply the socalled "problemandsolution approach". In the problemandsolution approach, there are three main stages:

6.33.8Determination of the closest prior art

The closest prior art is that combination of features, disclosed in one single reference, which constitutes the most promising starting point for an obvious development leading to the invention. In selecting the closest prior art, the first consideration is that it should be directed to a similar purpose or effect as the invention or at least belong to the same or a closely related technical field as the claimed invention. In practice, the closest prior art is generally that which corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention. The closest prior art must be assessed from the skilled person's point of view on the day before the filing or priority date valid for the claimed invention. In identifying the closest prior art, account should be taken of what the applicant himself acknowledges in his description and claims to be known. Any such acknowledgement of known art should be regarded by the examiner as being correct, unless the applicant states he has made a mistake.

6.33.9Formulation of the objective technical problem

In the second stage, one establishes in an objective way the technical problem to be solved. To do this one studies the application (or the patent), the closest prior art and the difference (also called "the distinguishing feature(s)" of the invention) in terms of features (either structural or functional) between the invention and the closest prior art and then formulates the technical problem. Features which cannot be seen to make any contribution, either independently or in combination with other features, to the solution of a technical problem are not relevant for assessing inventive step. Such a situation can occur for instance if a feature only contributes to the solution of a nontechnical problem, for instance a problem in a field excluded from patentability. In the context of the problemandsolution approach, the technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The technical problem thus defined is often referred to as the "objective technical problem".

The objective technical problem derived in this way may not be what the applicant presented as "the problem" in his application. The latter may require reformulation, since the objective technical problem is based on objectively established facts, in particular appearing in the prior art revealed in the course of the proceedings, which may be different from the prior art of which the applicant was actually aware at the time the application was filed. In particular, the prior art cited in the search report may put the invention in an entirely different perspective from that apparent from reading the application only. The extent to which such reformulation of the technical problem is possible has to be assessed on the merits of each particular case. As a matter of principle any effect provided by the invention may be used as a basis for the reformulation of the technical problem, as long as said effect is derivable from the application as filed. It is also possible to rely on new effects submitted subsequently during the proceedings by the applicant, provided that the skilled person would recognise these effects as implied by or related to the technical problem initially suggested.

It is noted that the objective technical problem must be so formulated as not to contain pointers to the solution, since including part of a solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity. The expression "technical problem" should be interpreted broadly; it does not necessarily imply that the solution is a technical improvement over the prior art. Thus the problem could be simply to seek an alternative to a known device or process providing the same or similar effects or which is more costeffective. Sometimes, the objective technical problem must be regarded as an aggregation of a plurality of "partial problems". This is the case where there is no technical effect achieved by all the distinguishing features taken in combination, but rather a plurality of partial problems is independently solved by different sets of distinguishing features.

1.1 Inventions involving the application of known measures in an obvious way and in respect of which an inventive step is therefore to be ruled out:

(i) 

the teaching of a prior document is incomplete and at least one of the possible ways of "filling the gap" which would naturally or readily occur to the skilled person results in the invention; Example: The invention relates to a building structure made from aluminium. A prior document discloses the same structure and says that it is of lightweight material but fails to mention the use of aluminium.

(ii) 

the invention differs from the known art merely in the use of wellknown equivalents (mechanical, electrical or chemican( � Example: The invention relates to a pump which differs from a known pump solely in that its motive power is provided by a hydraulic motor instead of an electric motor.

(iii) the invention consists merely in a new use of a wellknown material employing the known properties of that material; (is it this simple?) 

Example: Washing composition containing as detergent a known compound having the known property of lowering the surface tension of water, this property being known to be an essential one for detergents.

(iv) 

the invention consists in the substitution in a known device of a recently developed material whose properties make it plainly suitable for that use ("analogous substitution"); Example: An electric cable comprises a polyethylene sheath bonded to a metallic shield by an adhesive. The invention lies in the use of a particular newly developed adhesive known to be suitable for polymermetal bonding.

(v) 

the invention consists merely in the use of a known technique in a closely analogous situation ("analogous use"). Example: The invention resides in the application of a pulse control technique to the electric motor driving the auxiliary mechanisms of an industrial truck, such as a forklift truck, the use of this technique to control the electric propulsion motor of the truck being already known.

1.2 Inventions involving the application of known measures in a nonobvious way and in respect of which an inventive step is therefore to be recognised:

(i) 

a known working method or means when used for a different purpose involves a new, surprising effect; Example: It is known that highfrequency power can be used in inductive butt welding. It should therefore be obvious that highfrequency power could also be used in conductive butt welding with similar effect. However, if highfrequency power were used for the continuous conductive butt welding of coiled strip but without removing scale (such scale removal normally being necessary during conductive welding in order to avoid arcing between the welding contact and the strip), there is the unexpected additional effect that scale removal is found to be unnecessary because at high frequency the current is supplied in a

predominantly capacitive manner via the scale which forms a dielectric. In that case, an inventive step would exist.

(ii) 

a new use of a known device or material involves overcoming technical difficulties not resolvable by routine techniques. Example: The invention relates to a device for supporting and controlling the rise and fall of gas holders, enabling the previously employed external guiding framework to be dispensed with. A similar device was known for supporting floating docks or pontoons but practical difficulties not encountered in the known applications needed to be overcome in applying the device to a gas holder.

2. Obvious combination of features?

1.0 Introduction

These Guidelines are structured to follow the sequence of the examination process with each section and subsection constituting a step in the registration proceedings from the receipt of the application up to registration and publication. The General Principles (see below) should be kept in mind throughout the whole examination process.

2.0 General Principles

2.1 Registration

The Industrial Property Act requires the creation and maintenance of a Register of designs in which the particulars of the registrations will be entered (Sec 45, Reg. 45).

2.3 Scope of Examination

The registration procedure involves examination of compliance with the requirements of the Act and the Regulations. However, there are three substantive grounds for refusing an application: where the subjectmatter of the application does not correspond to the definition of a design as set forth in Sec. 84 ; or

• where the design is contrary to public policy or accepted principles of morality. (Sec. 86 (4)) 

• where the design is not new as required by Sec. 86 of the Act. (what about design copyright overlap?) 

Where one of these three grounds is applicable, the examiner notifies the applicant accordingly in the examination report. The applicant will be given the opportunity of withdrawing or amending (Reg. 50) the application or of submitting his/her observations before the examiner takes a decision. The meanings of “design” and “public policy or accepted principles of morality” are explained in section 5 below.

2.5 Time Limits (Reg. 76)

The general rules for the calculation of time limits given in the Act, the Reg. (47(11) and 24(2,3)) and the 2nd Schedule are specified in these Guidelines. If a request for extension of a time limit is made before its expiry and reasons are given by the applicant, then a further period will be allowed. Additional extensions will be granted in exceptional cases only.

2.6 Decisions (Reg. 50)

In all cases where an examiner takes a decision adverse to the applicant the grounds for the decision must be given. Such decision is communicated via a standard letter, containing language that will be adapted to each particular case, which refers to the relevant provisions of the Regulations and explains the reason(s) for the decision.

2.7 Appeal (Sec. 112, Reg. 74, 75)

Applicants have a right to appeal against any decision of the Managing Director to the Industrial Property Tribunal.

2.8 Receipt of Application

Date of Receipt and File Number (Sec.87 )

The application shall be presented by the applicant or agent to the Institute. The application will then be assigned a file number and receiving date then captured in IPAS upon payment of the filing fees; after which the application will be transmitted to the patent registry for further processing. In each case the pages of the document making up the application are marked with the date of receipt and the file number of the application.

2.9 Allocation of Filing Date

Minimum Requirements (Sec. 87(6))

In order to allocate a filing date to an application for a registered design the examiner checks whether the application contains at least:a) a request for registration of a design (IP. Form 27), and information identifying the applicant, and b) a graphic representation of the article embodying the industrial design or a specimen. (sec 87(2) –specific on specimen requirement) 

c) Application fees

d) Identification of the Applicant (Sec. 87(7))  

The requirement under paragraph 4.1.(b) for according a filing date does not mean that the information identifying the applicant has to comprise all the details set out in paragraph

11.1. It has to be clear from that information who the applicant is, i.e. natural persons have to indicate at least their family name and given names(s); legal entities need to state their usual designation.

2.10 Representation of the Design (Sec. 87(7))

Since the representation is the means to specify the features of the design for which protection is sought, it is of utmost importance that it is clear and complete and that nothing regarding the design is left to conjecture.

Drawings, photographs (except slides), computermade representations or any other graphical representation are accepted provided they are suitable for reproduction.

For the purpose of allocating a filing date, a representation is considered suitable for reproduction when it meets the requirement that the design must be reproduced on a neutral background and must not be retouched with ink or correcting fluid. It must be of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished and permitting it to be reduced or enlarged to a size not more than 8 cm by 16 cm per view for entry in the Register and for direct publishing in the Industrial Property Journal referred to in Sec. 91. A background is considered neutral as long as the design is clearly discernible on it. It is acceptable to present graphic representations in coloure.g. photographs mounted on paper.

The Institute accepts all representations of designs that meet the formal requirements of Reg.15. It is the responsibility of the applicant to ensure that the representation of the design is of a quality allowing all the details for which protection is sought to be clearly distinguished.

OFFICE ACTION

& TIMELINE

Search report within 14 days

Checklist D1-Reception Acknowledgement within 7 days

Checklist D2-Formality Examiner Examination Report within 14 days of finding (Reg.47(11), 24(2))

Invite Corrections-F. Examiner Allow 60 days for corrections (Reg.47(11), 24(2) or consider abandoned

Search Report within 14 days (see search procedures)

Checklist D3-Sub. Examiner Examination Report within 14 days of finding (Reg.47(11), 24(2) Allow 60 days for corrections (Reg.47(11), 24(2); and respond to Request for written reasons within 45 Days (Reg. 50) or consider abandoned

Checklist D4-CPE Publication Fee within 60 days of notice (Reg.47(11), 24(2))

Opposition Period-CPE/MD Allow 60 days for opposition

Checklist D5-CPE Preparation of Certificate-CPE Registration-Registrar

9 month Period-IPT CPE/MD-Defend Decision