assignment uk patent

Assignments overview and pitfalls to beware!

03 December 2012

Many patents will see a change in ownership at some stage in their lives. Assignments are commonplace and occur for a variety of reasons; for example, in the context of a business sale where a buyer purchases all of the assets (including intellectual property assets) of a business from the vendor. Another is in the context of intra-group reorganisations.

Assignments can also occur as part of settlement of a dispute. This article outlines some of the pitfalls of which you should be aware when assigning patents; many of which can be averted by careful drafting of the assignment agreement.

Unless the assignment is intra-group, there will usually be some distance between what the assignee wants (typically, a variety of representations, warranties and indemnities in respect of the assigned rights) and what the assignor is prepared to give. This is a commercial decision and hence no two negotiated patent assignments will be identical.

Consideration

Under English law, to be a valid contract there must be consideration which is either money or money's worth. This is often overlooked but a key point required for the assignment agreement to be legally binding. Whilst the acceptance of mutual obligations may suffice, it is simplest to have a sum of money (even if only for £1). An alternative is to execute the assignment as a deed, though there are specific formalities which must be followed for the agreement to be a deed. Of course, if the parties agree to nominal consideration (eg, £1), it is important that this small amount is actually paid to the assignor.

An assignment of a UK patent (or application) must be in writing and signed by the assignor. It used to be the case that an assignment of a UK patent (or application) would need to be signed by both parties, however the law was changed in 2005. In reality, both parties will usually sign the assignment agreement. Where one or both of the parties is an individual in their personal capacity or a foreign entity, special 'testimonial' provisions are required; for example the signature to the assignment may need to be witnessed.

The assignment

English law distinguishes two types of assignment: legal and equitable. To assign the legal interest in something means that you have assigned simply the title to that property and not the right to exercise the rights inherent in it. This is the equitable (beneficial) interest and if this is not also assigned with the legal title, this can result in a split in ownership. Unless the parties specifically agree otherwise, legal and beneficial ownership should always be assigned together. It is possible to have co-assignees (ie, co-owners) but the terms of the co-ownership will need to be carefully considered.

It is possible to assign the right to bring proceedings for past infringements in the UK, but not in some other jurisdictions. Where non-UK rights are involved, local advice may be required as to whether such an assignment would be enforceable as against a prior infringer. This potential uncertainty makes a robust further assurance clause even more desirable (see below), to ensure the assignor's co-operation after completion of the assignment.

The assignee will also typically argue for (and the assignor will typically resist) a transfer with 'full title guarantee', as this implies as a matter of law certain covenants: that the assignor is entitled to sell the property; that the assignor will do all it reasonably can, at its own expense, to vest title to the property in the assignee; and that the property is free from various third party rights.

In terms of European patents (EP), it is important to remember that ownership of an EP application is determined under by the inventor/applicant's local law, rather than under European patent law. This means that a formal, written assignment agreement should be executed to ensure that the applicant is entitled to ownership of the patent application, for example in cases where the work undertaken was done by a consultant or where local law dictates that the owner is the inventor(s). An assignment should include assignment of the right to claim priority, as well as the right to the invention and any patent applications. This need to obtain an effective assignment of the application (and right to claim priority) is particularly important where a priority application has been made in the name of the inventor. If such an assignment is not executed before applications which claim priority from earlier cases (for example, PCT applications) are filed, the right to ownership and/or the right to claim priority may be lost.

Don't forget tax

Currently, there is no stamp duty payable on the assignment of intellectual property in the UK. However, particularly for assignments which include foreign intellectual property rights, there can be considerable tax implications in transferring ownership of intellectual property rights in some countries and it is always prudent to check that the transfer will not result in excessive tax liabilities for you.

Update the register

Registered rights need to be updated at the patent offices. You will need to decide who pays for this: in the case of one patent, it is a simple process, however in the case of a whole portfolio, the costs can be considerable. Remember, if you ever need to take any action on a patent you own, you need to ensure you are the registered owner of that right at the applicable office.

In the UK, assignments can be registered but there is no statutory requirement to do so. In the case of international assignments, local offices may require recordal of the assignment. In any event, it is desirable for an assignee to ensure that the transaction is recorded. Section 68 of the UK Patents Act provides that an assignee who does not register the assignment within six months runs the risk of not being able to claim costs or expenses in infringement proceedings for an infringement that occurred before registration of the assignment, although recent case-law has reduced this risk somewhat.

Further assurance

The assignee will typically take charge of recordals to the Patents Offices; however they will often need the assignor's help in doing so. A 'further assurance' clause is a key element of the assignment from an assignee's point of view both for this purpose and for assisting in the defence and enforcement of patents or applications for registration. On the other hand, the assignor will typically seek to qualify its further assurance covenant by limiting it to what the assignee may reasonably require, and that anything done should be at the assignee's expense. An assignor should also require that recordals are done promptly to minimise their future correspondence from patent offices.

International transactions

In transactions which involve the transfer of patents in various countries, the parties can execute a global assignment which covers all the patents being transferred, or there can be separate assignments for each country. The former, global assignment, is usually preferred however this will frequently need to be supplemented by further confirmatory assignments in forms prescribed by the relevant international patent registries. As noted above, the preparation and execution of such assignments can be time-consuming and costly, hence the need to decide in advance who bears the cost of such recordals, and the assignee should insist on a further assurance provision.

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UK: The Basics Of Patent Law - Assignment And Licensing

Gowling WLG's intellectual property experts explain assignment and licensing in a series of articles titled 'The basics of patent law'.

The articles cover, respectively: Types of intellectual property protection for inventions and granting procedure ; Initiating proceedings ; Infringement and related actions ; Revocation, non-infringement and clearing the way ; Trial, appeal and settlement ; Remedies and costs ; Assignment and Licensing and the Unified Patent Court and Unitary Patent system.

The articles underpin Gowling WLG's contribution to Chambers' Global Practice Guide on Patent Litigation 2017 , for which Gordon Harris and Ailsa Carter wrote the UK chapter .

Introduction

Any patent, patent application or any right in a patent or patent application may be assigned (Patents Act 1977 (also referred to as "PA") s.30(2)) and licences and sub-licences may be granted under any patent or any patent application (PA s.30(4)).

The key difference between an assignment and a licence is that an assignment is a transfer of ownership and title, whereas a licence is a contractual right to do something that would otherwise be an infringement of the relevant patent rights. Following an assignment, the assignor generally has no further rights in relation to the relevant patent rights. On the granting of a licence, the licensor retains ownership of the licensed rights and generally has some continuing obligations and rights in relation to them (as set out in the relevant licence).

Formalities

Any assignment of a UK patent or application, or a UK designation of a European patent, must be in writing and signed by, or on behalf of, the assignor. For an assignment by a body corporate governed by the law of England and Wales, the signature or seal of the body corporate is required (PA s.30-31). With regards the assignment of a European patent application however, such assignment must be in writing and signed not just by the assignor but by both parties to the contract (Article 72 EPC).

There is no particular statutory provision regarding the form of a licence or sub-licence (exclusive or otherwise). However, in view of the advisability of registration (discussed below) and legal certainty, it is sensible that any licence be in writing. In addition, normal contractual formalities apply, such as intention to create legal relations, consideration and certainty of terms, etc.

Registration

Registration (with the UKIPO) of an assignment or licence is not mandatory. However, if the registered proprietor or licensor enters into a later, inconsistent transaction, the person claiming under the later transaction shall be entitled to the property if the earlier transaction was not registered (PA s.33). Registration is therefore advisable. Failure to register an assignment or an exclusive licence within six months will also impact the ability of a party to litigation to claim costs and expenses (PA s.68) and might, potentially, enable an infringer to defend a claim for monetary relief on the basis of innocent infringement (PA s.62).

The procedure for registration is governed by the Patents Rules 2007. The application should be made on the appropriate form, should include evidence establishing the transaction, instrument or event, and should be signed by or on behalf of the assignor or licensor. Documents containing an agreement should be complete and of such a nature that they could be enforced. A translation must be supplied for any documentary evidence not in English.

In practice (particularly in the context of a larger corporate transaction in which many different asset classes are being transferred, not just intellectual property), parties sometimes agree short form documents evidencing the transfer of the relevant patent rights and will submit these for registration. This can enable parties to save submitting full documents for the whole transaction, which may include sensitive commercial information that is not relevant to the transfer of the patent rights themselves.

Types of licence

A licensee may take a non-exclusive or exclusive licence from the licensor. The distinction between such licences is both legally and commercially significant.

On a basic level an exclusive licence means that no other person or company can exploit the rights under the patent and this means the licensor is also excluded from exploiting such rights. Exclusivity may be total or divided up by reference to, for example, territory, field of technology, channel, or product type. The extent of exclusivity generally goes to the value of the rights being licensed and will feed into the agreed financials. It is worth noting that the term "exclusive licence" does not have a statutory definition under English law, so it is very important to define the contractual scope of exclusivity in the relevant licence agreement.

In the event a licensor wants to retain the ability to exploit the rights in some way (for example an academic licensor may want the ability to continue research activities) then appropriate carve outs from the exclusivity should be expressly stated in the licence agreement.

A non-exclusive licensee has the right to exploit rights within the patent as determined by the licence agreement. However, the licensor may also exploit such rights as well as granting multiple other licences to third parties (which may include competitors of the original licensee).

Much less common is a sole licence, by which the patent proprietor agrees not to grant any other licences but gives the licensee the right to use the technology and may also still operate the licenced technology itself.

Compulsory licences

A compulsory licence provides for an individual or company to seek a licence to use another's patent rights without seeking the proprietor's consent. Compulsory licences under patents may be granted in circumstances where there has been an abuse of monopoly rights, but are very rarely granted in the UK.

An application for a compulsory licence can be made by any person (even a current licensee of the patent) to the Comptroller of Patents at any time after three years from the date of grant of the patent. In respect of a patent whose proprietor is a national of, or is domiciled in, or which has a real and effective industrial or commercial establishment in, a country which is a member of the World Trade Organisation, the applicant must establish one of the three specified grounds for relief. If satisfied, the Comptroller has discretion as to whether a licence is granted and if so upon what terms. The grounds are:

demand for a patented product in the UK is not being met on reasonable terms;
the exploitation in the UK of another patented invention that represents an important technical advance of considerable economic significance in relation to the invention claimed in the patentee's patent is prevented or hindered provided that the Comptroller is satisfied that the patent proprietor for the other invention is able and willing to grant the patent proprietor and his licensees a licence under the patent for the other invention on reasonable terms;
the establishment or development of commercial or industrial activities in the UK is unfairly prejudiced;
by conditions imposed by the patentee, unpatented activities are unfairly prejudiced.

The terms of the licence shall be decided by the Comptroller but are subject to certain restrictions on what type of licence can be granted, namely the licence: cannot be exclusive; can only be assigned to someone who has been assigned the part of the applicant's business that enjoys use of the patented invention; will be for supply to the UK market; will include conditions allowing the patentee to adequate remuneration; and must be limited in scope and duration to the purpose for which the licence is granted.

Infringement

The type of licence is also significant when it comes to tackling infringement. Under statute, an exclusive licensee has the same right as the proprietor of a patent to bring proceedings with respect infringement committed after the date of the licence and such proceedings may be brought in the licensee's name (PA 67(1)). An exclusive licensee of a patent application may also bring proceedings in its own name (PA ss. 67(1) & 69). In practice, however, these statutory provisions are often excluded or varied by parties negotiating complex licensing transactions. A licensee may also have a right under a licence to bring proceedings for an infringement occurring before the licence came into effect.

A non-exclusive licensee does not have any right under statute to bring proceedings in its own name. However, this could be negotiated into a licence agreement, though it may be difficult for a licensor to agree this point if it has multiple non-exclusive licensees.

Effect of non-registration on infringement proceedings

There is no requirement that a licence must be registered before proceedings can be commenced by an exclusive licensee. However, non-registration can affect a licensee's ability to recover its costs in relation to such proceedings.

Implied terms

Established rules of construction apply to assignment and licence agreements. Parties should ensure that important terms are included as express terms. There is no implied warranty that any assigned or licensed patent will be valid, or that an assignee or licensee will work the invention (for example, that they will exploit the rights and manufacture products). In certain very limited circumstances a court will order 'rectification' of an assignment or licence agreement, namely a court will order a change in the assignment or licence agreement to reflect what the agreement ought to have said in the first place. Regardless of this, all key terms should be included expressly in all assignment and licence agreements.

Termination of licences

Except where there is express contractual provision or where a licence has been wrongly terminated and damages sought, under English law there is no compensation payable to licensees on termination of a licencing agreement. The licence agreement should be clear as to what circumstances may give rise to termination, for example the non-payment of royalties, material breach or insolvency. The agreement should also make clear what happens in the event of termination in relation to, for example, existing stock of licensed products or work in progress.

Next in our 'The basics of patent law' series, we will be discussing the Unified Patent Court and Unitary Patent system.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Patent assignment

Published by a lexisnexis ip expert.

This Practice Note provides guidance on the assignment (transfer) of patents and patent applications. It covers the formalities for assigning patents, the procedure for registering (or recording) the transactions and key points to consider in drafting an assignment.

For information about licensing patents, see Practice Note: Licensing intellectual property rights.

Patent protection

The Patents Act 1977 (PA 1977) is the main law governing the patents system in the UK. UK patents can derive from either a national UK patent application or a European patent application. For more information, see Practice Notes: Applying for a UK national patent and Applying for a European patent.

PA 1977 treats patents and patent applications as personal property rights. As such, patents and patent applications can be assigned, licensed or otherwise transferred. The transfer of rights can take place at any stage from prior to the making of the invention to after the expiry of the patent. It is also possible for a patent assignment to extend the assignor’s obligations to enter into good faith negotiations with the assignee concerning assignment or licensing of any improvements

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Key definition:

Patent definition, what does patent mean.

Patents protect inventions. A grant of patent runs for a term of 20 years provided the periodic renewal fees are paid. Patents are granted by the UK Intellectual Property Office (UK IPO ) or European Patent Office (EPO).

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The basics of patent law - assignment and licensing

The articles underpin Gowling WLG's contribution to Chambers' Global Practice Guide on Patent Litigation 2017, for which Gordon Harris and Ailsa Carter wrote the UK chapter.

Introduction

Formalities

Registration

Types of licence

A licensee may take a non-exclusive or exclusive licence from the licensor. The distinction between such licences is both legally and commercially significant.

Compulsory licences

demand for a patented product in the UK is not being met on reasonable terms;
the exploitation in the UK of another patented invention that represents an important technical advance of considerable economic significance in relation to the invention claimed in the patentee's patent is prevented or hindered provided that the Comptroller is satisfied that the patent proprietor for the other invention is able and willing to grant the patent proprietor and his licensees a licence under the patent for the other invention on reasonable terms;
the establishment or development of commercial or industrial activities in the UK is unfairly prejudiced;
by conditions imposed by the patentee, unpatented activities are unfairly prejudiced.

Infringement

The type of licence is also significant when it comes to tackling infringement. Under statute, an exclusive licensee has the same right as the proprietor of a patent to bring proceedings with respect to infringement committed after the date of the licence and such proceedings may be brought in the licensee's name (PA 67(1)). An exclusive licensee of a patent application may also bring proceedings in its own name (PA ss. 67(1) & 69). In practice, however, these statutory provisions are often excluded or varied by parties negotiating complex licensing transactions. A licensee may also have a right under a licence to bring proceedings for an infringement occurring before the licence came into effect.

Effect of non-registration on infringement proceedings

Implied terms

Termination of licences

Next in our 'The basics of patent law' series, we will be discussing the Unified Patent Court and Unitary Patent system.

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Law and practice

Manual of Patent Practice

Section 14: the application.

Sections (14.01 - 14.209) last updated: October 2023.

This section prescribes the manner of making an application, its form and content, the requirements which must be fulfilled by the contents, and provides for withdrawal of the application. Specific provisions relating to some of these matters are also laid down in rr.12-16.

The Regulatory Reform (Patents) Order 2004 and Patents (Amendment) Rules 2004: Coming into Force and Transitional provisions

The form and contents of an application as set out in s.14(1) and the conditions governing withdrawal of applications at the request of the applicant under s.14(9) were deregulated by the Regulatory Reform (Patents) Order 2004 (“the 2004 Order”) in conjunction with the Patents (Amendment) Rules 2004 (“the 2004 Rules”). The 2004 Order and the 2004 Rules incorporated the principles of Articles 5 and 6 of the Patent Law Treaty, and both statutory instruments came into force on 1 January 2005. The Patents Rules 1995 as amended have been replaced entirely from 17 December 2007 by the Patents Rules 2007.

Code of practice

The Code of Practice (the first part of which can be found below) identifies best practice points for patent applicants and agents, which if followed widely will lead to savings and efficiencies in the Office, and consequently to better service and better value. Examiners and other Office officials may on occasion draw the Code to the attention of the applicant or agent, and may ask for it to be complied with before the case is processed further if that would be more efficient.

However, it is not to be expected that best practice can always be adhered to. The Office has no right to demand compliance with the Code of Practice because the Code is advisory only and has no legal force.

If an application does not comply with one of the points of the Code of Practice then this does not necessarily justify an objection under the Patents Act or Rules. For example, an application having more than one independent claim in one category would not comply with code point 1e, but this would not usually justify an objection under s.14(5)(b). When drawing attention to non-compliance with the Code of Practice, examiners should therefore make it clear whether they are also raising a formal objection under the Act or Rules.

Code of practice for applicants and agents

Drafting and filing patent applications.

This part of the Code of Practice for applicants and agents relates to the drafting and filing of patent applications under the Patents Act 1977. The quality of the application that is received by the Office determines in large part the effort that has to be expended during the statutory search and examination, in putting the application in a state to be granted, and is thus a central factor for the Code. The Code does not seek to eliminate the need for search and examination, but rather to optimise drafting towards UK law and practice and to avoid formulations that are clearly problematic for the UK search and examination. When drafting specifications for filing at this Office the aim should therefore be to adhere to the Code points below.

This part of the Code also deals with presentational and procedural matters that have to be checked by the Office after the initial filing. The Office tries to keep red tape to a minimum, but some formalities are necessary for the system to work properly. There is substantial scope for efficiency savings if the best practices set out in this Code are known and followed

Point 1: The claims as filed: structure

The claims as filed should be structured to have:

a) One independent claim defining all the technical features essential to the invention or inventive concept. Inessential or optional features should not be included in this claim; consequently terms such as “preferably”, “for example”, or “more particularly” should not be included, as the feature being introduced by such terms does not restrict the scope of the claim in any way. The independent claim should include sufficient details of interrelationship, operation or utility of the essential features to enable the scope of the claim to be determined (see 14.110.1) ; and

b) dependent claims incorporating all the features of the independent claim and characterised by additional non-essential features (see 14.134) .

In addition:

c) further independent claims are only justified where the inventive concept covers more than one category, e.g. apparatus, use, process, product (see 14.159 to 14.168) , complementary versions within one category, e.g. plug and socket, transmitter and receiver, which work only together (see 14.161) , or distinct medical uses of a substance or composition (see 14.162) .

Therefore claims as filed should not, where it might have been avoided, contain:

d) multiple unrelated inventions that would clearly give rise to a plurality objection (see 14.157.1)

e) multiple independent claims in any one category, even if only one inventive concept is present (see 14.110.1 and 14.140)

f) claims of a total number or complexity not justified by the nature of the invention (see 14.110.1 and 14.140)

g) claims which are in principle unsearchable by reason of the number of alternatives embraced, or the choice of characterising parameters or desiderata (see 14.110 and 14.133)

h) dependent claims that are not fully limited by the terms of the preceding independent claim, e.g. dependent claims which omit, modify or substitute a feature of an independent claim (see 14.134)

If these points are not met on filing, suitable claim amendments should be filed if the search examiner requests them to enable search ( see 17.94.9 and 17.108 ) Amendments may be required by the substantive examiner before examining such claims ( see 18.43.1 and 18.39 ).

The above points also apply at the entry into the UK national phase of international applications under the Patent Cooperation Treaty.

Point 2: The claims as filed: patentability

a) the claims as filed should not, where it might have been avoided, define an invention which is clearly excluded from being patentable under the Act ( see 1.07 to 1.40.4 ).

If this point is not met on filing, suitable claim amendments should be filed if the search examiner requests them to enable search ( see 17.94.9 ). Examiners may either require amendment before searching or examining such claims, or may issue a report that a search would serve no useful purpose ( see 17.94-17.94.10 and 17.98 ).

Point 3: Other aspects of the specification as filed

a) the use of a compact style of consistory clause, which in the description defines the invention by reference to the claims, is strongly encouraged (see 14.148) .

b) trade marks are an indication of the origin rather than the composition or content of goods, and should not be used in patent applications where a generic term can be used instead. Trade marks are only permitted in claims where it can be shown that their use is unavoidable and does not introduce ambiguity (see 14.137) . Where marks that are registered are mentioned, they should be acknowledged as such (see 14.100 and 14.101) . If a trade mark is not registered, its owner should be indicated (see 14.100)

c) passages which confuse the scope of the invention (see 14.139.1) or claims that are unspecific (e.g. those claiming “Any novel matter…” ) (see 14.139) should not be filed. Removal of such passages will be required.

d) the specification should be clear and precise. It should not repeat matter unnecessarily, nor should it contain matter which is irrelevant to the invention - for example the complete details of well-known ancillary features need not be given (see 14.74)

e) only the most relevant prior art should be discussed (see 14.91 and 14.92) . For example, a few documents which illustrate how a problem has previously been approached could be discussed with a view to distinguishing the invention in suit from them or illustrating its advantages.

f) If the specification has been drafted abroad then it should be adapted to comply with sections 14(3) and 14(5) of the Patents Act 1977 and the Code points before it is filed here. Action should be taken to ensure that it is written in a reasonable standard of English before it is filed.

g) the patent specification is intended to describe the invention precisely and it is vital that the meaning of all abbreviations and words used is clear and unambiguous. Words, abbreviations or acronyms used in the specification that are new, may be considered to be jargon, or may be at risk of being ambiguous (for example because their meaning is not yet generally settled in the field in question) should not be used unless unavoidable, in which case a definition should be given in the specification.

Point 4: The abstract

a) the abstract and abstract title should meet the requirements of rule 15 of the Patents Rules 2007, concisely summarising the matter contained in the specification, including the technical field, distinctive technical features, and principal use of the invention (see 14.173 to 14.184)

b) an abstract having wording that merely reproduces an independent claim will not comply with this Code and may be rejected on the ground of non-compliance with the Rules (see 14.184)

Point 5: Forms and formalities on filing

a) the presentation of the application (including drawings) should meet the requirements of rule 14 of the Patents Rules 2007 ( see 14.26 - 14.57 ). For example, documents must be legible and capable of reproduction, and the margins should be kept clear and free from headers or footers denoting references or other matter (see 14.28) .Shading is allowed in drawings so long as it does not obscure any detail in the drawings. In addition, a specification may include photographs if they are clear enough to be reproducible (see 14.41) .

b) an official form should be used where required by the Rules, and it should be completed fully and accurately ( see 14.04 . for the application form).

c) supporting documents should also be provided where appropriate; for example a covering letter where some explanation is needed.

d) to allow us to direct incoming items quickly to the right place all appropriate identifiers should be given:

form 1 should give ADP number(s) and customer reference;

forms and letters filed after Form 1 should give application number and (optionally) customer reference;

the payment page incorporated into each fee-bearing form should give contact details and indicate the method of payment;

bank transfers should state the application or patent number, or, if not known, the reason for payment e.g. search fee.

In correspondence with applicants and their representatives, the Intellectual Property Office will use customer references if given, and will tell agents the applicant’s ADP numbers ( see 14.04.1 and 14.04.5 ).

e) if it is critical that an application be filed within a certain time window such as the twelve months of the Paris Convention, the application should be filed with sufficient time remaining for any fatal defects to be detected and put right.

f) [Deleted].

g) electronic filing of applications is strongly encouraged; official fees are reduced for certain electronically-filed documents. See Apply for a UK patent .

s.119 CoP is also relevant

The prescribed form of the application is laid down in the rules. The filing fee was abolished by the 2004 Order, which replaced it with the application fee specified in s.14(1A). An application may be filed by hand, by post, or by email ( to [email protected] ). As of 31st October 2020 the office can no longer accept documents sent by facsimile (fax).. Alternatively, an application may be submitted online via the Office website, or using the secure online filing system provided by EPO Online Services if the filer has completed the enrolment procedure for that service.. The filing date accorded to an application is the date of receipt, if the Office is open to receive that class of document; if not, it is the next working day (see also 14.29 ). Confirmation copies are only required if requested by the Office e.g. if there is a problem with the clarity/completeness of the faxed document received. Confirmatory copies should be prominently marked “In confirmation of fax”. See also 22.07 ) for filing considerations relating to documents which might include information of relevance to national defence or security. The hours and days when filings may be made are governed by s.120. Under r.97 of the Patents Rules 1995, an application filed by post was deemed to have been filed when the letter containing it would be delivered in the ordinary course of post. However, the Patents Rules 2007 do not include a rule relating to postal deeming and therefore any document posted on or after 17 December 2007 will be accorded the date of receipt it is actually received in the Office.

While an application must eventually contain all the items referred to in s.14(1A) and this subsection, the final proviso of s.14(2) makes clear that for an application to be initiated and given a filing date it is sufficient for it to comply with the conditions of s.15(1), ( see 15.02-15.06 ).

Request for the Grant of a Patent

r.12(1) and r.25(1) is also relevant

The request must be made on Patents Form 1; this is designated a formal requirement (see 17.07).

Considering each part of the form:-

1. Reference Number

Although there is no obligation to provide such a reference, it is clearly in the applicant’s interest to do so, since until an application number has been accorded by the Office there is no reliable way of identifying a particular application. It may also be useful should any confusion arise over the application numbers accorded to several cases filed together. If provided, the Office will use the applicant’s reference number in correspondence related to the application.

14.04.2 [deleted]

2. applicant’s details.

r.12(2) and r.12(3) is also relevant

The applicant’s name and address should be entered in Part 2 of the Form ( see 15.03 ), but failing that the Form must contain sufficient information to enable the applicant to be contacted. Where a date of filing is accorded to an application which does not give the applicant’s name and address, the applicant must be notified of the failure, and the comptroller may refuse the application if the applicant fails to file their name and address within two months of such a notification. Under r.108(1) together with r.108(5) and (7), the two-month period for filing the applicant’s name and address may be extended at the comptroller’s discretion in tranches of 2 months, but no extension may be granted after two months following the expiry of the period as prescribed or previously extended - see 123.36.10-12. Where Parts 2 and 4 of the Form do not, between them, contain enough information to enable the applicant to be contacted, the contact information in Part 12 may suffice. [If contact details are provided but establishing contact is difficult, advice should be sought from Legal Section.]

s.7(1) is also relevant

An application may be made by any person either alone or jointly with another. (“Person” means either an individual or a corporate body, see 7.02). If the inventor is not also an applicant they should not be named on Form 1.

An applicant who is an individual should apply in their true name. Exceptionally, a pseudonym may be used if it is well established and is customarily used by the individual for banking and other business purposes. The name must be given in full, the surname or family name being underlined. Letters or statements denoting academic or professional qualifications may appear after the name. A statement of nationality or occupation is not required and should not be given. Once a particular established name and signature has been used subsequent business should not be effected by the same individual using a different name or signature unless the name has changed, eg due to marriage. A corporate body should be designated by its legal name. In the case of either an individual or a corporate body, a business name or trading style, eg “trading as XYZ”, or a former name is not required and should not be given. If known, the automatic data processing (ADP) number of the applicant should be given for identification of the applicant; this number will supplied to an applicant’s agents.

If an application is made on behalf of a Government Department, the applicant should be stated to be the Secretary of State or Minister responsible for the department, and not the individual holding such office. Applications from police forces should be made by the relevant Police Authority.

Each applicant must give, in full, a permanent address, which may be either a private or a business address. A c/o is not acceptable unless it can be shown that it is a permanent address for the applicant which the Office can rely on for communicating with the applicant, e.g. if, in the case of a company, it is registered with Companies House as the company’s address. It is in the applicant’s best interests to provide the Office with a secure and reliable address. Standard abbreviations, e.g. Rd, USA, are allowable.

Since the United Kingdom does not accord diplomatic recognition to Taiwan the statement “Republic of China” for the country of incorporation or address of an applicant located in Taiwan cannot be accepted and should be objected to. If the applicant disagrees they should be advised that the onus is on them to ascertain from the Foreign Office what is considered to be an acceptable designation.

Where there is not enough space on the form for the details of more than one applicant, any further names and addresses should be given on a continuation sheet and the use of a continuation sheet should be indicated in parts 9 of the form.

3. Title of Invention

r.44(1)(d) is also relevant

This is the title entered in the register and in the list of new applications in the Journal. By virtue of s.14(1)(a) and r.12(1), a title is a formal requirement, thus if there is no title given on Form 1 the applicant should be required to provide one, or to confirm that the title, if any, on the specification is to be used on Form 1. (See also 14.49- 51 and 19.24 ). The title should avoid disclosing the invention, since it is published in the Journal prior to publication of the application under s.16(1).

4. Address for Service Details

If the applicant has appointed an agent their name should be given in this part of Form 1. The agent need not be registered ( see 274.03 ).

[If the agent’s name is missing from Form 1, but it is clear from the information supplied who the agent is, the agent’s details should be inserted on COPS by the Formalities Examiner, and Form 1 annotated appropriately.]

CoP and r.101(1) is also relevant

An agent filing an application is assumed to be duly authorised to act for the applicant, and in general no specific evidence to this effect is required. (The comptroller has the power to require an agent to produce evidence, at any stage in proceedings, that they are authorised. This will be done only if there is some reason for doubting the authority or for requiring it to be confirmed). If however, subsequent to the filing of Form 1, the applicant wishes to change their agent or an agent is appointed for the first time, the incoming agent must file Patents Form 51. Notification on Form 51 should not be made if the (new) agent will only perform administrative tasks such as paying renewal fees or registering an assignment. If an applicant who has been represented by an agent decides to dispense with the services of the agent and represent themselves as a private applicant, then they should be advised to provide written confirmation of this change. A copy of the applicant’s letter will then be sent to the former agent.

[The Office is no longer prepared to retain general authorisations; if one is filed it should be returned to the agent. If a specific authorisation is filed it will, although redundant, be allowed to remain on the file. ]

r.103, r.104, CDPA s.281(5), PR Sch. 4 Parts 2 & 3 is also relevant

Every application must include an address for service, which must be in the United Kingdom (including the Isle of Man), Gibraltar or the Channel Islands. An address for service of an agent cannot be accepted in the Channel Islands or Gibraltar unless they also have a residence or place of business in the UK, or Isle of Man, ( see 281.04 ). The address for service is treated for all purposes as the address of the person concerned with the proceedings and all communications must be addressed to the applicant at or c/o this address. Communication with the applicant can only be through this address; if an agent has been appointed and the applicant contacts the office direct they must be advised to communicate through their agent. If there is no acceptable address for service on an application and there is sufficient information to contact the applicant, they should be contacted and be directed to file an acceptable address for service within 2 months (this period can be extended using Rule 108(2) and 108(3) – see 123.36.5 . If an acceptable address is not provided within this time period, or there is insufficient information to make contact with anyone to provide such an address, the application is treated as withdrawn.

[Where the address for service is not in the UK, Gibraltar or the Channel Islands, a request for compliance with this requirement within 2 months should be made, with a warning that failure to comply will lead to the application being withdrawn under r.104(4)(a)]

[If no address has been given at part 5, but it is clear from the information given that an agent is acting for the applicant, the agent’s address will be entered on COPS by the formalities examiner, and Form 1 annotated appropriately. Likewise if no agent has apparently been appointed and an address given in part 3 is within the United Kingdom, Gibraltar or the Channel Islands, this will be entered as the address for service on COPS.]

5. Declaration of Priority

r.6(1) & (4) is also relevant

If priority is claimed from an earlier application (see s.5), the date and country of filing of the earlier application should normally be declared at the time of filing the application in suit. The file number of the earlier application should preferably also be stated if it is available. A copy of the earlier application and any necessary translation do not however need to be filed at this stage.

6. Claiming an Earlier Application Date

s.15(9) is also relevant

The number of the earlier application and its filing date should be given. In the case of an application under s.15(9) (a divisional application) the request for an earlier filing date must be made at the time of filing the application in suit, ( see 15.18 ).

7. Inventorship

s.13(2) is also relevant

Where all the applicants named in Part 2 of the Form 1 are also the inventors, a mark should be made in the top “Yes” box. If one or more of the applicants is not an inventor, the top “No” box should be marked instead. Where there is one or more inventor whose name is not given as an applicant in Part 2 of the Form, a mark should be placed the lower “Yes” box in part 7 of the Form. It follows that the lower “No” box in part 7 of the Form should only be marked in the case where all inventors are named applicants and all named applicants are inventors.

s.7(3) is also relevant

Since “inventor” means the actual deviser of the invention a corporate body cannot claim to be an inventor. Where an applicant named in Part 2 of the Form is a corporate body and the top “Yes” has been marked in Part 7, an objection should be raised.

8. Application Fee

s.15(10)(c), r.22(2) and r.22(7) is also relevant

While the application fee may be paid at any time up to the expiry of the period prescribed by r.22(7), nevertheless when it is paid at the time of filing this fact should be indicated by placing a mark in the “Yes” box in part 8 of the Form 1, and where it is not paid at the time of filing it follows that the “No” box should be marked. If the application fee is paid at a later date, a surcharge will be payable (unless it is paid in the period 30 July 2020 to 31 March 2021).

9. Documents making up the application

It should be noted that the information in the check list relates to the application as filed; pages filed subsequently should not be indicated in this check list.

s.15(1)(c)(ii) and s.15(10)(b), r.22 is also relevant

Where the application is not accompanied by a description, and a reference to an earlier application under s.15(1)(c)(ii) is relied upon for qualifying for a date of filing, the application number, country of filing and date of filing of that earlier application should be entered in Part 9 of the Form. A reference must be substantiated by the filing of a certified copy within the time specified by rule 22(3), which is four months from the date of filing, and a description must be filed within the time specified by rule 22(1), which is the same period as for the claims and abstract and is the later of twelve months from the earliest date or two months from the date of filing. Where both a description is filed and the details of an earlier application are given in Part 10 of the Form, the applicant (or their agent) should be contacted to clarify under which of the (mutually exclusive) options of s.15(1)(c) the application is made.

[If the check list has not been completed, or if it has been completed in a manner which is not consistent with what has been filed, the formalities examiner should raise the matter with the agent or applicant].

10. Documents accompanying the application

Documents or forms filed subsequently should not be indicated in this check list.

11. Request

The form must be signed at this part either by the or each applicant or by the agent who has filed the application. Where a signature is missing, the formalities examiner should raise an objection requiring a duly signed form to be submitted ( see 15A.20 ).

12. Person to contact

If a contact name and telephone number is given any telephone enquiry about how the form has been filled in should be made to the person named.

Application of Rule 4(2)

r.4(2) is also relevant

Where an earlier version of Form 1 is used, and where the information on that Form is sufficient for the application in question, no objection should be raised and the Form should be regarded as a Form acceptable to the comptroller and containing the information required.

[ 14.05-14.24 Deleted ]

Amendment or correction of Form 1

r.49 is also relevant

If the applicant wishes to correct his or her name, then Form 20 is required. However, correction of any of the other information given on Form 1 merely requires notification in writing. ( See 19.05-19.12 32.06 and 117.17-117.21 ).

Form and presentation of documents

r.25(1) and r.25(2) is also relevant

The size and presentation of the documents (including drawings) making up an application are governed by r.14. The requirements of r.14(1), (2) and (3) are designated as formal requirements (except for where an application is delivered in electronic form or using electronic communications, in which case only the requirements of rule 14(1) are formal requirements); those that are not so designated are identified in paragraphs 14.54 , 14.55 and 14.57 . Some general provisions regarding the content of the specification are laid down in r.12(4)-(7); these are not designated formal requirements.

Size and presentation

PR Sch. 2 part 1, PR Sch. 2 parts 1-3, CoP is also relevant

All documents making up an application must be on A4 matt white paper.

For drawings, the minimum margins must be 20mm at the top and the left hand side, 15mm at the right hand side and 10mm at the bottom. There must not be any frames (lines surrounding matter). For documents other than drawings the minimum margins must be 20mm at the top, right, left and bottom. The margins of all documents should be completely blank, even from case reference details; line numbers and page numbers are regarded as being part of the text rather than being in the margin.

[It will not be necessary to object to de minimis deviations from the prescribed minima if it is certain that printing and binding of the document will not be affected].

PR Sch. 2 part 1 para. 2 is also relevant

The contents of all documents, including drawings, making up an application or replacing such documents must be suitable for reproduction.

PR Sch. 2 parts 1-3 is also relevant

The description, claims and abstract must use at least 1½ line spacing and the capital letters in any typeface or font used must be more than 2mm high.

[If the specification of a private applicant’s case does not meet the r.14 requirements the applicant should be given the opportunity to overcome any deficiency. In the event that the applicant does not comply with an initial request and providing that there are no other outstanding requirements, the specification should be retyped in the Office with the approval of the Formalities Manager. The retyped application should be accompanied by a suitable instruction for publication. The applicant should also be advised in writing that their application has been retyped and given four weeks from the date of the letter being issued in which to object. If there is no objection, the application can be allowed to proceed to A-publication.]

14.31 [deleted]

PR 1995, r.20(2) is also relevant

The specification (including drawings) and abstract, and any replacement sheets, must be filed in duplicate for cases filed before 26 June 2006, but there is no need to do so for cases filed after this date. Carbon copies are acceptable provided that the requirements set out in Schedule 2 are met

PR Sch. 2 paras. 8 & 13 is also relevant

The request for grant (Form 1), the description, the claims, the drawings and the abstract must each begin on a new sheet. The pages of the description, claims and abstract are normally secured, eg by stapling, in the top left-hand corner; the request for grant and the drawings normally remain as separate sheets.

PR Sch. 2 paras.4, 5, 12 & 14 is also relevant

The pages of the description and claims must be numbered consecutively in a single series. This is so even when the claims and/or the abstract are filed later than the description. The sheets of drawings must also be numbered consecutively in a single series, and the drawings themselves must be numbered consecutively in a single series. Where a sequence listing is set out at the end of the application, it must be numbered consecutively in a separate series.

[When re-numbering of pages is required as a consequence of addition or excision of pages, this will be carried out by the formalities examiner before grant. Replacement pages therefore should not be required. (Numbering with a letter suffix (eg page 2a) is not satisfactory and should be corrected (together with deletion of any explanatory note such as “page 2a follows” on a preceding page) before an application is sent for grant). The formal re-numbering will then be effected in Publishing Section prior to B publication. No objection should be raised to the absence of line numbering.]

PR Sch. 2 para 6 is also relevant

For documents other than drawings, page numbers must be located at the top or bottom of the page (but not in the margin) in the centre; the numbers are regarded as part of the text rather than as being in the margin.

[If page numbers are in the wrong place and there is a space in the right place, the amendment should be made by the formalities examiner by deleting and re- entering without making an objection. Line numbering may be ignored when measuring margins. ]

Alterations

PR Sch. 2 part 1 is also relevant

All documents, including drawings, making up an application or replacing such documents must be suitable for reproduction and must not include frames (lines surrounding matter).

Alterations may thus be allowed if they can be regarded as de minimis. Any such alterations in manuscript should be neat and printed rather than written. They must not extend into the minimum margins and they must not be so placed as to hinder the normal scanning of the page by the reader. They must also be in black ink - blue ink is not acceptable as it cannot be reproduced reliably.

[In applying the de minimis rule the overriding consideration is that the resulting document must, in all respects, be suitable for direct reproduction and that the legibility of the text must not be impaired by any alterations. Further, the number of alterations and the manner of their execution should not give the page an untidy appearance. The determination of where to draw the line must be left to good sense. As a guide it may be taken that if, say, one or two words of a claim are changed, the consequential manuscript amendment of these words whenever they occur throughout the description could be permitted. On the other hand, a manuscript amendment of several lines should not be regarded as de minimis. Manuscript insertions made by the examiner should be printed, but objections should not be raised if the applicant or agent writes rather than prints provided the writing is neat and clearly legible. ]

The question as to what is the number and nature of deletions that would be considered reasonable is a matter for judgement; it should be borne in mind that the aim is to obtain a document which is reasonably free of deletions. It may be reasonable to delete the same word or part of a word throughout the specification, or to delete a few words, all or part of a sentence or a short paragraph on a single page. A single deletion comprising most of a page is not considered reasonable unless it is done in a manner leaving the deleted area blank. Nor is it considered reasonable to have many deletions on a single page, or deletions which break up the text in a manner making reading awkward. No objection is raised to otherwise reasonable deletions occurring on several pages so long as the total number remains moderate having regard to the length of the specification. While the extent of deletions may not be such as to require objection the subsequent inclusion of further deletions may not be allowable.

Whilst the overriding consideration is that the specification shall be capable of being directly reproduced, there is a further consideration that any deletions should not either by their number or the manner of their execution spoil the appearance of the finished document. Deletions should preferably be effected by erasure or obliteration - visible or “invisible”. Striking-out should be clear and neat; a straight-edge should be used, except for crossing out single letters. Deletions should be made in black ink and be such as to ensure satisfactory reproduction. There must be no uncertainty as to the extent of the deletion.

Further requirements for drawings

PR Sch. 2 para.18 is also relevant

Drawings must not only be such as to permit direct reproduction, as laid down in paragraph 2 of Schedule 2, but the scale of the drawings and the distinctness of their graphic execution must be such that it would still be clear if it were reduced by linear reduction to two thirds of its original size. Since the drawings when reproduced may be of a different size than when filed, no scale should be specified in words and no dimensions should be given in the drawings. If it is considered desirable, a scale or other reference for making reference may be included, but it must be represented diagrammatically.

PR Sch.2 part 3 is also relevant

Drawings should comprise black lines, but may also include shading so long as the shading does not obscure detail within the drawings. Cross-sections should be indicated by hatching. A specification may include photographs, however as with all parts of the specification, they must be clear enough for reproduction. Colour drawings or photographs are not allowable.

PR Sch.2 para.12 is also relevant

Figures of the drawings should be numbered consecutively in a single series, independently of the numbering of the sheets.

PR Sch. 2 para. 20 is also relevant

All numbers, letters and reference signs on the drawings should be simple and clear; brackets, circles or inverted commas should not be used in association with numbers and letters. The capital letters in any typeface or font used in any drawing must be more than 3mm high. The Latin, and, where customary, the Greek alphabet should be used.

The drawings should not contain extensive textual matter. A few words may be allowed as aiding understanding of the drawings. In the case of electrical circuits and block schematic or flow sheet diagrams, a few short catchwords are allowable and may be desirable. If extensive text is present, such that the sheet may be considered to constitute part of the description, then objection should be raised under r.14(3) together with paragraph 19 of schedule 2, which states that a drawing must not be included in the description.

The title of the invention, and the applicant’s or agent’s name, should not appear on the drawings.

14.46 Flow sheets and diagrams are considered to be drawings.

r.14(1) r.113(1) see is relevant

Apart from the certified copies of priority applications required by r.8, all documents (including drawings) making up an application, or replacing such documents, must be in English or Welsh. Where the original document is not in English or Welsh this requirement can be met by the foreign-language document being accompanied by a translation into English.

r.12(8) r.12(9) is also relevant

Not withstanding the requirement to file an application in English, an application can qualify for a date of filing if the description (or what appears to be the description) is in a foreign language, providing that the indication that a patent is sought and the identity of the applicant (or the means of contacting them) are in English. Where a date of filing is accorded to an application comprising a foreign-language description, the applicant must be notified of the failure to comply with r.14(1). The comptroller may refuse the application if the applicant fails to file a description in English or Welsh within two months of such a notification (extendable at the discretion of the comptroller under r.108(1) together with r.108(5)-(7)).

Content of the application

r.12(4) r.12(7) is also relevant

The specification should state the title of the invention and should continue with the description, claim or claims and any drawing referred to in the description or any claim, in that order. Where the specification includes drawings, the description must include a list of drawings briefly describing each of them. The claims should be headed in such a way that the commencement of the claims is clearly identifiable, eg by the title “Claims”. In R v Comptroller-General of Patents, ex parte Penife International Ltd [2004] RPC 37 which considered the requirement of Art.11(1) of the PCT to file claims with the application, it was held that a consistory clause setting out the scope of the invention was part of the description and was not a claim.

[There is no prescribed preamble to the claims. Although the simple title “Claims” is preferred, no objection should be raised to any title which serves the required purpose. The title “What I (or we) claim is”, (as used under the 1949 Act) is allowable. ]

r.12(6) is also relevant

The title must be short and indicate the matter to which the invention relates. If it is not in agreement with that given on Form 1, (see 14.04.10), or even if there is no title on the specification, the specification as filed should be published under s.16(1).

[The maximum length of a title permitted by COPS on the computerised register is 158 characters . If a title to be entered on the Register exceeds this the Office will amend the title accordingly (see also 18.42 18.86 and 2.40 of the Formalities Manual ].

The title should not contain a fancy or trade name, a person’s name, the word “patent” or the abbreviation “etc” - whatever is intended to be covered by this later term should be indicated more explicitly, or the words “and the like” may, if appropriate and clear in context, be used.

Some requirements for the technical content

PR Sch. 2 para.19 is also relevant

The request for grant, the description, the claims and the abstract must not contain drawings; any drawings forming part of the specification must be on sheets which are separate from the text and numbered as a separate series.

r.13(7), PR Sch .2 para. 5 is also relevant

The description, the claims and the abstract may contain chemical or mathematical formulae. If it is considered necessary an applicant may be required to file a copy of such formulae prepared in the manner prescribed for drawings. For applications which include a sequence listing, this listing is considered to form part of the description (rather than the drawings) and therefore may be inserted at any point in the description. These would then be subject to excess pages fees as they are part of the description. It is usual, however, for the sequence listing to be placed at the end of the description and before the claims. Alternatively, a sequence listing may be set out at the end of the application, in which case it must be numbered consecutively in a separate series to the description and claims, and rule 12(4) does not apply. In this case, the sequence listing would not be subject to excess pages fees. See 15A.04 for practice at preliminary examination stage when a sequence listing has not been filed.

[Rule 13(6) requires that, if it is reasonably possible, a sequence listing shall be delivered in electronic form or using electronic communications, even where the patent application is not delivered in electronic form or using electronic communications.]

PR Sch. 2 para. 22, r.25(1) r.14 is also relevant

The description and the abstract may contain tables. The claims may contain tables of information only if the comptroller agrees. This is one of the requirements set out in part 4 of Schedule 2 and is therefore not a formal requirement. The question as to whether tables in a claim are allowable is therefore a matter for the substantive examiner, and no objection should be raised at an earlier stage.

PR Sch. 2 part 4 r.25(1) r.14 is also relevant

The terminology and any references used must be consistent throughout the application for a patent. Only technical terms, signs and symbols which are generally accepted in the field in question may be used. The same features should be denoted by the same reference sign throughout the application. References must only be included in the drawing(s) where they are mentioned in either the description or the claims. These are not formal requirements; hence amendment to meet them should not be required at the preliminary examination stage.

PR Sch.2 para. 24-25 is also relevant

Where units of measurement used in the application are not standard international units of measurement, the equivalent standard international units of measurement must be provided, and where no international standard exists, units must be used which are generally accepted in the field. Temperatures should be given in degrees Celsius (centigrade), except that as a matter of practice, degrees Kelvin are acceptable to express cryogenic or colour temperatures. There is, however, no objection to non- standard units used in a statement of prior art by way of direct quotation.

[Council Directive 80/181/EEC (as amended by Council Directive 89/617/EEC and Directive 1999/103/EC of the European Parliament and of the Council) prescribes the use of SI units. While applicants should be advised to use such units, there is no sanction against the use of non-SI metric-based units (eg Angstrom units), and they should not be objected to. ]

r.25(1) is also relevant

The EC Units of Measurement Directive (Council Directive 2009/3/EC) requires the use of metric units in documents (such as patent specifications) sent out by any part of government. Non-metric units may be used but only in conjunction with metric ones and then only as supplementary indications with metric units predominating. Examiners should ensure that the requirements of paragraph 24 of Schedule 2 are met in any specification sent for grant. No amendment should be required at the preliminary examination stage to secure compliance with that rule, since it does not define a formal requirement nor is it specified in rule 23 as being one of the rules relevant to preliminary examination. Applications which do not comply with paragraph 24 of Schedule 2 (or the Directive) are nevertheless published under s.16 as filed.

[RC35 should be used to object to the absence of metric or Celsius units. When both non-metric and metric values are given, the examiner should not check that the conversions are accurate for consistency’s sake, but objection should be raised in the case of manifest error. ]

s.130(7) is also relevant

Section14(3) is intended to have, as nearly as practicable, the same effect as the corresponding provisions of the EPC, PCT and CPC. Article 83 EPC and Article 5 PCT require the invention to be disclosed “in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art”. An objection under this section of Art is often said to relate to “sufficiency of disclosure” or “sufficiency”. The pre-grant provision under s.14(3) accords directly with s.72(1)(c) which sets out the same requirement for the validity of the granted patent. Whilst the bulk of the case law discussed below relates to proceedings under s.72, the principles set out in these cases are pertinent both to s.14(3) and s.72(1)(c).

s76(2) is also relevant

It is the responsibility of the applicant to ensure that, at the time of filing the application, the disclosure is clear and complete in respect of the invention claimed in each of the claims. If it is not, then either the application must be refused or, if it is possible to do so, the claims must be restricted to that matter which has been adequately disclosed i.e. that for which there is an enabling disclosure ( see 14.67 ) relating to enablement). Deficiencies in the disclosure cannot be rectified by adding matter subsequent to filing without falling foul of s.76(2).

Sufficiency: summary of general principles

In Eli Lilly v Human Genome Sciences [2008] RPC 29 at [239] Kitchin J gave the following summary of the relevant principles, to be applied when assessing whether an application satisfies this section of the Act:

The specification must disclose the invention clearly and completely enough for it to be performed by a person skilled in the art. The key elements of this requirement which bear on the present case are these: (i) the first step is to identify the invention and that is to be done by reading and construing the claims; (ii) in the case of a product claim that means making or otherwise obtaining the product; (iii) in the case of a process claim, it means working the process; (iv) sufficiency of the disclosure must be assessed on the basis of the specification as a whole including the description and the claims; (v) the disclosure is aimed at the skilled person who may use his common general knowledge to supplement the information contained in the specification; (vi) the specification must be sufficient to allow the invention to be performed over the whole scope of the claim; (vii) the specification must be sufficient to allow the invention to be so performed without undue burden.

Similar summaries have also been utilised in a number of court decisions (see e.g. Wobben v Vestas-Celtic Wind Technology Ltd [2007] EWHC 2636 (Pat) ).

The purpose of the requirements imposed by s.14(3) and s.72(1)(c) is to prevent a patentee laying claim to products or processes which the teaching of the patent does not enable the skilled addressee to perform ([Zipher Ltd v Markem Systems Ltd [2009] FSR1]http://www.bailii.org/ew/cases/EWHC/Patents/2008/1379.html). Thus, all consideration of sufficiency in essence deals with the extent to which the applicant has provided an enabling disclosure for their invention (see also 2.10 and 72.03 ).

Whilst there is only one provision under the Act, it is now settled law that sufficiency in terms of the disclosure being clear and complete enough for the invention to be performed by the person skilled in the art is approachable in three different ways:

(1) Classical insufficiency (2) Insufficiency by ambiguity/uncertainty (3) Insufficiency by excessive claim breadth

A summary of what should be understood by each of these approaches to sufficiency is provided in Zipher Ltd v Markem Systems Ltd [2009] FSR 1 , with the first two also being set out in Medimmune Ltd v Novartis Pharmaceuticals UK Ltd, Medical Research Council [2011] EWHC 1669 (Pat) . These three approaches will be considered in more detail in 14.67-14.82 below, however first it is necessary to set out some general points common to all three.

Claim construction

Construction of the claims should be approached in the usual fashion (see s.125). This involves putting a purposive construction on the claims, interpreting them in the light of the description and drawings as set out in Section 125(1)

Date at which sufficiency is judged

In Biogen Inc. v Medeva plc [1997] RPC 1 the House of Lords held that sufficiency should be decided at the date of filing of the application (rather than the date of publication as had been the case under the 1949 Act). This being the case because

it would be illogical if a patent which ought to have been rejected under section 14(3) is rendered immune from revocation under section 72(1)(c) by advances in the art between the date of application and the publication of the specification.

The person skilled in the art

The concept of the skilled person is that of the uninventive, but technically competent person (or team) who is considered for the purpose of assessing inventive step ( see 3.26-3.28.2 ). As stated by Aldous J in Mentor Corporation v Hollister Inc. [1991] FSR 557 (at page 561):

The section requires that the skilled man be able to perform the invention. Such a man is the ordinary addressee of the patent. He must be assumed to be possessed of the common general knowledge in the art and the necessary skill and expertise to apply that knowledge. He is the man of average skill and intelligence, but is not expected to be able to exercise any invention. In some arts he may have a degree, in others he will be a man with practical experience only. Further, in circumstances where the art encompasses more than one technology, the notional skilled addressee will be possessed of those technologies which may mean that he will have the knowledge of more than one person.

However, although the phrase “person skilled in the art” is construed in the same way when considering sufficiency and inventive step, for the purposes of s.14(3) the skilled person is seeking to make the patent work and does so with the common general knowledge at the time the patent was filed. In contrast to the situation for inventive step purposes, the skilled worker has the patent in front of them, and thus is “trying to carry out the invention and achieve success,…not searching for a solution in ignorance of it.” (see Zipher Ltd v Markem Systems Ltd [2009] FSR 1 at page 50). This can be significant in determining the nature and skills of the skilled person (or team), as they need not be the same for both inventive step and sufficiency purposes (See Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] RPC 33 at paragraphs 40 and 61-64, and MoPP 3.28-3.28.2).

In Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] RPC 2 , the Patents Court held that where a programmer formed part of the addressee team of a computer-based invention, it was essential to form a view of their capabilities. It was mentioned that the writing of anything other than a trivial program required substantial effort in writing and debugging even though much programming required no creative thought and a competent programmer would have substantial experience in their area of expertise.

The court in Kirin-Amgen Inc. v Roche Diagnostics GmbH [2002] RPC 1 concluded that, once the addressee’s skill and knowledge has been assessed, it may nevertheless be appropriate to consider that the skilled person might consult someone else on a certain point when trying to implement the teaching of the patent. Since a patent is a document which is intended to be practical, rather than theoretical, in nature - and its teaching is there for the purpose of being worked - it would be unrealistic to adopt too rigid an approach to the question of the knowledge of the skilled addressee.

In Regeneron Pharmaceuticals v Kymab Ltd [2018] EWCA Civ 671, it was held that the skilled person is not bound to carry out the invention precisely as described and can use the common general knowledge to perform the invention and make any obvious changes that may be necessary, provided of course that any work involved is not undue. See 14.85-14.88 for detail on undue burden).

Classical Insufficiency

This is the name now commonly given to what was previously understood simply as ‘insufficiency’. It relates to the situation where there is no enabling disclosure. In Zipher Ltd v Markem Systems Ltd [2009] FSR 1 Floyd J offers the following useful summation of the objection:

Classical insufficiency arises where the express teaching of the patent does not enable skilled addressee to perform the invention. This type of insufficiency requires an assessment …of the steps to which it would be necessary for the skilled reader or team to take in following the teaching of the specification and in order to arrive within the claim. Plainly the steps should not include inventive ones. But a patent can also be found insufficient if the steps can be characterised as prolonged research, enquiry or experiment.

Degree of sufficiency required

In order to be sufficient the application must include at a minimum something amounting to one embodiment or example that can be put into effect. However this should not be equated with one embodiment being enough to necessarily render the application sufficient as was regarded as the situation under some previous authorities (Chiron Corp. v Organon Teknika Ltd (No.3) [1994] FSR 202 at 241, Mölnlycke AB v Procter Gamble (no.5)[1994] RPC 49) . Indeed Generics (UK) Limited and others v H Lundbeck A/S [2009] RPC 13 illustrates how even when a claim defines only a single discrete product, in that case a single chemical compound, there can still be argument over whether that is sufficiently enabled. Instead the application must be sufficient to enable the whole breadth of the claim to be worked. This is discussed further under ‘Insufficiency by excessive claim breadth’ below (14.79-14.82) . However in all situations sufficiency is a question of fact – does the patent enable the invention to be worked across the breadth of the claim? The courts have sought to provide some guidance in answering this question, but have warned “one must be on one’s guard against formulations that gloss the statutory requirement as there is always a risk that they will end up being substituted for it” ( Halliburton Energy Services Inc v Smith International (North Sea) [2006] RPC 2 at para.133 . As noted in Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9 “Whether the specification is sufficient or not is highly sensitive to the nature of the invention. The first step is to identify the invention and decide what it claims to enable the skilled man to do. Then one can ask whether the specification enables him to do it.”

There has been much discussion regarding what should be expected of the skilled worker in establishing this enablement. However, a useful test, given in Edison and Swan Electric Light Co v Holland 6 RPC at page 282, consists in asking whether anything new has to be found out by a person of reasonably competent skill following the directions in the specification in order to succeed; if the answer is yes, the disclosure is not complete enough. Similarly, the classic statement of the test for insufficiency in Valensi v British Radio Corporation [1973] RPC 337 at 377 (CA) is useful:

We think the effect of these cases as a whole is to show that the hypothetical addressee is not a person of exceptional skill and knowledge that he is not to be expected to exercise any invention nor any prolonged research, inquiry or experiment. He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors in the specification, if a means of correcting them can readily be found.

This negative test, the absence of prolonged research, was approved by the Court of Appeal in Mentor Corporation v Hollister Inc [1993] RPC 7 (PDF, 880KB) as was the judge in the lower court’s statement regarding the positive test that only the performance of “routine trials” should be required:

When, a little later, Aldous J came to apply the law to the facts of this case, he refers to “routine trials” and “normal routine matters that the skilled man would seek to do and would be able to do”. Mr. Thorley criticises the use of the word “routine”. To require the performance of routine trials is, he said, to ask too much of the addressee. I do not agree. “Routine” is just the word I would have chosen myself to describe the sort of trial and error which has always been regarded as acceptable; and “routine trials” has the further advantage that it is a positive concept, which is easily understood and applied. In practice, therefore, it may provide a surer test of what is meant by “clearly enough and completely enough” in section 72(1) of the Act than the negative test proposed in Valensi, namely the absence of prolonged research, enquiry and experiment. If the trials are unusually arduous or prolonged, they would hardly be described as routine.

However, it was stressed in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] EWCA Civ 1715 that not only did the setting of a gigantic project, even if merely routine, not satisfy the test, but also that no analogy should be drawn with genetic engineering and pharmaceutical inventions, where much routine work is involved in implementation, as in such cases the work that goes into bringing them to market relates to testing efficacy and safety — not in actually making the invented product.

Quality of product enabled

In Mentor Corporation v Hollister Inc [1993] RPC 7 (PDF, 880KB) (at page 17 lines 4-14) it was accepted that it was enough that the patent allowed a “workable prototype” to be arrived at with comparative ease (see reference to routine trials above at 14.69) and the requirement was not to produce a “successful commercial product”. Similarly, the fact that a specification does not refer to a step which may well be useful for the purpose of being able to reproduce consistently reliable products of commercial quality and range does not render the disclosure incomplete provided that the directions in the specification lead to a product which has “patent utility”, i.e. is suitable for and fulfils the purpose for which the specification states it is intended. For instance, a useful perfecting step in making a compound does not have to be disclosed if the imperfectly produced compound can still be used for the application’s purpose. ( American Cyanamid v Ethicon [1979] RPC 215 at page 265). Thus the applicant also does not have to disclose preferred embodiments.

In addition, the applicant is not required to disclose the best method of performing the invention which they are entitled to claim. (Rule 5.1(a)(v) of the PCT specifies that the best mode should be described, but goes on to say that where the national law of a designated state does not require description of the best mode (as in the UK) failure to describe the best mode shall have no effect in that State).

Functional claims

The criteria for adequacy of disclosure are the same whatever the form of the claim and are not stricter when the claim is of functional form, that is when it is limited by result, e.g. is of the “No-Fume” type see 14.120 , (International Business Machines Corporations Application [1970] RPC 542). However, where claims are defined by functional features or desirable results, the specification does need to provide enough instruction for the skilled person to be able to achieve the desired result without embarking on a research programme (see 14.69 , 14.82 and 14.87 . In order to be sufficient, functional or mechanistic claims must also not be so ambiguous as to be unworkable see 14.76- 14.78 .

Medical use claims

For applications or patents relating to a second or further medical use of a known substance or composition, the courts have held that the specification as filed must make it plausible that the substance or composition will be effective for the claimed use or uses; if not, the patent will be insufficient. This requirement for plausibility was confirmed by the Supreme Court in Warner-Lambert Company LLC v Generics (UK) Ltd (t.a. Mylan) & Anor. [2018] UKSC 56 , and criteria for determining plausibility were set out. However, in this decision (and the preceding lower court decisions) it was not suggested that this requirement extended more generally to the assessment of sufficiency in other categories of invention, and the criteria set out by the Supreme Court are specific to inventions concerning new medical uses. For this reason, the detailed discussion of this issue is provided in the discussion of second medical use claims at 4A.29.2-4A.30 .

Errors and omissions

An error will not cause a patent to be found invalid, whether it is found in the description or in a drawing, provided that the skilled worker would both observe it and be in a position to correct it. In No-Fume Ltd v Frank Pitchford & Co. Ltd. (1935) 52 RPC 231 at 243 Romer LJ stated:

The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistake or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency.

It is neither necessary nor desirable that details of well-known ancillary features should be given, but the specification must disclose any feature essential for carrying out the invention in sufficient detail to render it obvious to the skilled person how to put the invention successfully into practice. In Badische Anilin and Soda Fabrik v La Societe etc du Rhone 15 RPC 359, a specification which referred merely to the use of an autoclave of unstated material, was held to be insufficient. It was necessary for success that an iron vessel be used, and yet it was shown that other autoclaves, e.g. enamelled, were frequently used in the trade.

In Mayne Pharma v Debiopharm and Sanofi-Synthélabo [2006] EWHC 1123 (Pat) , it was held that for a claim defining “a stable oxaliplatin solution formulation comprising oxaliplatin, an effective stabilising amount of a buffering agent … and a pharmaceutically acceptable carrier” to be sufficient, it must be possible to design a test which can answer the question: “have I used such an amount or not?”. The specification pointed, however, to the answer “you don’t have to add any at all”, and the invention so claimed was therefore insufficiently disclosed.

Insufficiency by ambiguity/uncertainty

Whilst the skilled person is taken to be trying to make the invention work, as held by Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9 , the second way in which insufficiency can arise is when the disclosure is so ambiguous as to make it impossible to know whether one had worked the invention or not. This Lord Hoffman distinguished from a simple lack of clarity in Kirin Amgen. The relevant claim required the recombinant erythropoietin (rEPO) of the invention to have a higher molecular weight compared to urinary erythropoetin (uEPO). However different uEPOs have different molecular weights, thus whether or not a product fell within the claim depended on the choice of uEPO and the specification did not tell the skilled person how to make this choice. Lord Hoffman elaborated “In the present case, however, the choice of uEPO has nothing to do with making the invention work. It is simply a criterion against which one tests whether rEPO falls within the claims…All the skilled man can do is try and guess which uEPO the patentee had in mind and if the specification does not tell him, then it is insufficient.” Elsewhere in his judgement Lord Hoffman provided an artificial example of how lack of clarity can overstep the mark into insufficiency:

If the claim says that you must use an acid, and there is nothing in the specification or context to tell you which acid, and the invention will work with some acids but not with others but finding out which ones work will need extensive experiments, then that in my opinion is not merely lack of clarity; it is insufficiency. The lack of clarity does not merely create a fuzzy boundary between that which will work and that which will not. It makes it impossible to work the invention at all until one has found out what ingredient is needed.

In Anan Kasei v Neo Chemicals [2019] EWCA Civ 1646 , Floyd LJ noted “that Lord Hoffmann’s emphasis was simply intended to draw attention to the distance between the judge’s finding and a case which presented doubtful cases at the edge of a claim. For my part, I do not agree that the objection of uncertainty is answered simply because there is something within the claim which is clear, if there is a large territory (more than a fuzzy boundary) where the claim is uncertain”. In this decision Lewison LJ suggested that ‘uncertainty’ was more appropriate than ‘ambiguity’ because something is ambiguous when it is capable of having two (or more) meanings, and ultimately the court will be able to decide which of them is the correct meaning, whilst the issue at hand was that of uncertainty. If the court cannot ascertain the boundary, having used all the interpretative tools at its disposal, it must conclude that the specification does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art.

Similarly in Sandvik Intellectual Property AB v Kennametal UK Ltd [2011] EWHC 3311(Pat) (at paragraph 164), a claim to a coating having a particular texture coefficient on a cutting tool was insufficient for ambiguity because calculating the value of the coefficient required reference to a value measured against a standard and there was no disclosure of which of the two widely used common standards was used by the patentee. In this case, this ambiguity only made a difference between infringement and non-infringement at the extremities of this one parameter, nonetheless in those circumstances it was impossible to say whether the product fell within the claim or not, because it was uncertain what the correct test was. In Zipher Ltd v Markem Systems Ltd [2009] FSR 1 (at paragraph 374) Floyd J cautioned that “If the skilled person cannot tell whether he is working the invention or not, the specification is insufficient. It is not, however, enough to establish this type of insufficiency to show that there may be a puzzle at the edge of the claims. It will normally be necessary for the problem to permeate the whole claim”.

Functionally or mechanistically-defined uses are not considered to be inherently so ambiguous as to be insufficient by the UK courts. In the context of medical uses, Regeneron Pharmaceuticals v Genentech [2012] EWHC 657 the Patents Court considered whether a claimed use for the treatment of “a non-neoplastic disease or disorder characterised by undesirable excessive neovascularisation” was so ambiguous as not to be defined sufficiently for the skilled person to determine whether or not the claims are infringed. Floyd J rejected this allegation:

There was no evidence that the skilled addressee would have any difficulty in determining whether a given disease would fall within the terms of the claim as I have construed them.

The description is presumed to be addressed to a person skilled in the art who is doing their best to understand and not to criticise; technological defects or obscurities which are unimportant and do not cast doubt on the scope of the invention are not fundamentally objectionable. Objection should not be raised merely because it is possible to describe the invention more clearly, provided there is an invention that is sufficiently described (cf. Schwarzkopf and Ors’ Application, 31 RPC 437 at 439).

Insufficiency by excessive claim breadth

The disclosure of an invention must be sufficient to enable the invention to be performed to the full extent of the monopoly claimed. In contrast to the situation where a patent or application is classically insufficient, there may be an enabling disclosure for some portion of the invention, but not for the full breadth of the claims. It therefore follows that restricting the scope of the claims to that which is enabled can overcome the objection.

The House of Lords in Biogen Inc v Medeva plc [1997] RPC 1 held that for the purposes of s.14(3) and 72(1)(c) the disclosure must be sufficient to enable the whole width of the claimed invention to be performed, and the disclosure of a single embodiment will not always satisfy the requirement regardless of the width of the claim. Insufficiency arising from a disclosure which does not enable the invention to be performed across the entire claim width is thus sometimes referred to as “Biogen insufficiency”. This principle is not confined to chemistry and biotechnology patents. In Nokia GmbH v IPCom GmbH & Co KG [2009] EWHC 3482 (Pat) the patent for synchronization of mobile radio telephones was attacked on the grounds that the whole scope of the claim was not workable. The initial synchronization required “coarse frequency synchronization at least if the accuracy of the carrier frequencies is not adequate, in which case the coarse frequency synchronization operates independently of bursts and determines whether the frequency of the determined carrier is within a tolerance band”. Nokia’s attack was based on the fact that the coarse frequency synchronization was not enabled while IPCom argued that if the coarse frequency synchronization did not work then it would have been possible to obtain an oscillator of sufficient accuracy to avoid the need for coarse frequency synchronisation at all. In effect two methods were claimed and IPCom’s defence was, that if one didn’t work, the skilled person could still perform the other. Floyd J (as he then was) rejected the argument and restated the principle set out in Biogen that the entire scope of the claim must be enabled, not just part of it. In effect both methods had to be enabled.

Pumfrey J held in Minnesota Mining & Manufacturing Co’s (Suspension Aerosol Formulation) Patent 1999 RPC 135 (at 150-151) that a specification is insufficient if it provides no teaching relating to the criteria according to which the skilled person is taken to be using the invention. What will suffice to satisfy the criterion that the disclosure must be sufficient across the whole width of the claimed invention will vary depending upon the nature of the claim. Thus, for example, when there is in truth more than one product which is claimed, the question has to be asked whether the invention of one product is the invention of the other. Unless it is they are different inventions and each must be sufficiently described. A similar conclusion had been reached by the Court of Appeal in that case and Chiron Corp. and ors v Murex Diagnostics Ltd and ors [1996] RPC 535 (pages 612 and 613).

In Anan Kasei v Neo Chemicals [2019] EWCA Civ 1646 , Floyd LJ considered the implications of Biogen v Medeva plc and Generics (UK) Limited and others v H Lundbeck A/S [2009] RPC 13 and drew out the following:

The principle in Biogen is concerned with permissible scope of claim in the light of the patentee’s contribution to the art. In general, that principle is that the claim must not extend to embodiments which owe nothing to the patentee’s contribution to the art. In the case of a claim to a single novel chemical compound [as in Generics v Lundbeck], the patentee’s technical contribution is that compound. Such a claim will not be insufficient if the single compound is enabled by a method in the specification, notwithstanding the fact that there may be other methods of making it which owe nothing to the disclosed method. The same must be true of a claim to a class of compounds, each of which can be made by the application of a method disclosed in the specification. There is no requirement that the patentee disclose more than one method, where one method will do. This does not mean that all claims to a class of products by definition comply with the Biogen principle. The conclusion in Biogen shows that a claim which is formally to a class of products may cover embodiments which owe nothing to the patentee’s technical contribution. The reason why the claim in Biogen offended the principle was not because it had “process components” but because the language of the claim was so generalised (both in relation to the manner in which the product was made and in relation to its function) that it extended to embodiments which owed nothing to the patentee’s contribution to the art. A claim to a product defined by its function (e.g. any heavier than air flying machine referred to by Lord Hoffmann at page 52 in Biogen) is capable of extending to subject matter which owes nothing to the patentee’s contribution to the art.

The EPO Technical Board of Appeal in EXXON/Fuel oils [1994] 9 OJEPO 653 (T409/91) and UNILEVER/Detergents [1995] 4 OJEPO 188 (T435/91) which held that an application should provide enough information to allow a person skilled in the art to carry out substantially all that which falls within the ambit of what is claimed. In T435/91 the Board considered the sufficiency of a ‘functional’ definition of a component in a claimed composition and found that the indefinite and abstract host of possible alternatives must all be available to the skilled person if the definition is to satisfy the requirement for sufficiency. Novartis AG v Johnson & Johnson [2009] EWHC (Pat) 1671 drew on the EPO case law in T 435/91, T 694/92 and (in particular) T 1743/06 when considering the sufficiency of a claim to a contact lens defined almost entirely by desirable characteristics. Kitchin J (as he then was) stated:

…a claim to a class of products said to possess a useful activity must be based upon the identification of a common principle which permits a reasonable prediction to be made that substantially all the claimed products do indeed share that activity. Further, it is not permissible to by-pass that requirement simply by adding a functional limitation which restricts the scope of the claim to all products which do have the relevant activity, that is to say all those which ‘work’. In the case of a claim limited by function, it must still be possible to perform the invention across the scope of the claim without undue effort.

This was upheld at the Court of Appeal in Novartis AG v Johnson & Johnson [2010] EWCA Civ 1039 . Jacob LJ observed:

“Generally patents with functional claims give you guidance as to what to do if you embark on a trial and error process. The reader can learn from the errors so as to reach something that works. But not here.”

The claim was therefore considered to amount to “if you try any pair of polymers, to see if they work…and find anything that does, we claim it.” Moreover, it was not clear even whether the examples provided in the patent “worked” according to the parameters defined in the claim. The patent was therefore revoked on grounds of sufficiency.

In American Home Products Corp. v Novartis Pharmaceuticals UK Ltd [2001] RPC 8 the invention concerned the use of a known antibiotic (rapamycin) for the preparation of a medicament for inhibiting organ or tissue transplant rejection. The Court of Appeal reversed the lower court’s decision and held that the claim only covered rapamycin, but did not cover derivatives of rapamycin, and was thus sufficient. The court then observed that, had the claim covered derivatives, the patent would have been insufficient because there was no disclosure in the description enabling the skilled person to decide which of the many possible derivatives would have worked. Although there was a strong possibility that some of the large number of derivatives would work in the same way as rapamycin itself, it was impossible to say which would so work, unless the skilled person undertook the “vast and correspondingly burdensome” research task necessary. Thus the court distinguished between a sufficient description, which requires the skilled person to use their skill to perform the invention, and an insufficient description, which requires the skilled person to go to the expense and labour of trying to ascertain which of the products encompassed by the claim actually has the required properties. Similarly, in DSM NV’s Patent [2001] RPC 35 (see paragraphs 181-194), a claim was insufficient because a skilled worker seeking to implement the invention over the whole width of the claim would have been required to depart from the express teaching of the patent and experiment over a long period of time before possibly achieving the desired result.

In Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 (PDF, 128KB) Lord Briggs (at paragraph 56) summarised the following helpful principles which should be used when assessing the sufficiency of product claims that cover a range of embodiments; “i) The requirement of sufficiency imposed by article 83 of the EPC exists to ensure that the extent of the monopoly conferred by the patent corresponds with the extent of the contribution which it makes to the art. ii) In the case of a product claim, the contribution to the art is the ability of the skilled person to make the product itself, rather than (if different) the invention. iii) Patentees are free to choose how widely to frame the range of products for which they claim protection. But they need to ensure that they make no broader claim than is enabled by their disclosure. iv) The disclosure required of the patentee is such as will, coupled with the common general knowledge existing as at the priority date, be sufficient to enable the skilled person to make substantially all the types or embodiments of products within the scope of the claim. That is what, in the context of a product claim, enablement means. v) A claim which seeks to protect products which cannot be made by the skilled person using the disclosure in the patent will, subject to de minimis or wholly irrelevant exceptions, be bound to exceed the contribution to the art made by the patent, measured as it must be at the priority date. vi) This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made. Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be made, as at the priority date. vii) Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made.” viii) Enablement across the scope of a product claim is not established merely by showing that all products within the relevant range will, if and when they can be made, deliver the same general benefit intended to be generated by the invention, regardless how valuable and ground-breaking that invention may prove to be.

Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 was clarified by Birss J in Illumina Cambridge Ltd v Latvia MGI Tech SIA & Ors [2021] EWHC 57 (Pat). He held that the principles set out by Lord Briggs at paragraph 56 of Regeneron (see above), are not limited to product claims and apply equally to method claims. To assist with transposing the principles in Regeneron to apply them in different circumstances he reframed principles iv-vii) in general terms as follows;

‘‘ iv) The disclosure required of the patentee is such as will, coupled with the common general knowledge existing as at the priority date, be sufficient to enable the skilled person to perform substantially all the types or embodiments [ ] within the scope of the claim. That is what, [ ], enablement means. […]

v) A claim which seeks to protect products or processes which cannot be performed by the skilled person using the disclosure in the patent will, subject to de minimis or wholly irrelevant exceptions, be bound to exceed the contribution to the art made by the patent, measured as it must be at the priority date.

vi) This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled […]. Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range […] within the scope of the claim to be performed. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be performed, as at the priority date.

vii) Nor will a claim which in substance passes the sufficiency test be defeated by dividing the […] claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product or process in achieving the purpose for which it is to be performed.’’

In this case, which dealt with DNA sequencing technology, MGI attempted to argue Illumina’s patent was insufficient because, a) the scope of the claims were broad enough to encompass nucleotides that could not be used in the claimed sequencing method, and, b) the claims covered methods of sequencing with unspecified read-lengths, whilst the specification only disclosed examples of short read-lengths. Birss J emphasised that the requirement to show enablement across the entire scope of a claim only applies to a ‘‘relevant range’’, and held that because features a) and b) did not relate to the ‘‘the essence or core of the invention (closely related to the technical contribution and/or the inventive concept)’’ they were not relevant ranges in the Regeneron sense, and therefore could not render the claim insufficient. This reinforces what Lord Briggs said at point vii) of paragraph 56 in the original Regeneron judgment. For further discussion on the concept of relevant ranges refer to paras 276-277 of the Illumina judgment.

A principle of general application

The approach taken in the functionally defined cases above (Novartis, American Home Products etc.) deals with the question of where the specification discloses a “principle of general application”. In both Novartis and American Home Products (above), the insufficiency arose in part because the cases did not contain a “principle of general application” by which the limited examples could be said to enable the general terms used in the claims. In American Home Products Hoffmann LJ stated:

Thus if the patentee has hit upon a new product which has a beneficial effect but cannot demonstrate that there is a common principle by which that effect will be shared by other products in that class, he will be entitled to a patent for that product but not for the class, even though some may subsequently turn out to have the same beneficial effect… On the other hand, if he has disclosed a beneficial property which is common to the class, he will be entitled to a patent for all products of that class (assuming them to be new) even though he has not himself made more than one or two of them.

Biogen Inc. v Medeva plc (above) was clarified by the Court of Appeal in Kirin-Amgen Inc. v Transkaryotic Therapies Inc. [2003] RPC 3 (PDF, 228KB) , and at the House of Lords appeal (Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9) . Lord Hoffmann held that “a principle of general application” was simply an element of the claim stated in general terms. Such a claim was sufficiently enabled if it could be reasonably expected that the invention would work with anything falling within the general terms. For example, a requirement of “connecting means” was enabled if the invention could reasonably be expected to work with any means of connection, but it was not necessary for the patentee to have experimented with all of them.

Similarly in Regeneron Pharmaceuticals Inc v Genentech Inc [2012] EW HC 657 (Pat) (upheld at appeal Regeneron Pharmaceuticals Inc, Bayer Pharma AG v Genentec Inc [2013] EW CA Civ 93) the Patents Court considered that a second medical use claim relating to “Use of a hVEGF antagonist in the preparation of a medicament for the treatment of a non-neoplastic disease or disorder characterised by undesirable excessive neovascularisation” did relate to a “principle of general application” and as such a claim in correspondingly broad terms was acceptable (See also Examination Guidelines for Patent Applications relating to Medical Inventions in the Intellectual Property Office paragraphs 49 and 156-7 . In many of these cases, the extent to which the breadth of the claim is excessive has to be assessed according to how much work the skilled person needs to carry out to make the invention work.

The subject of a ‘‘principle of general application’’ was revisited in Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 , where the court considered to what extent the ‘‘principle of general application’’ could be used to satisfy the sufficiency requirement for a product claim where the specification enabled the skilled person to make some, but not all, of the products in a range. The court held that cases of this nature inevitably fall into two categories. The first category is that in which the claim encompasses embodiments unavailable at the priority date, but nevertheless a sufficient general principle exists which enables the skilled person, using the disclosure and/or their common general knowledge, to work the invention across the scope of the claim and apply the general principle to embodiments as and when they are discovered – reference is made to Genentech I/Polypeptide expression (T 292/85) and UNILEVER/Stable Bleaches (T 226/85) as examples of cases in this category. The second category is that in which there is no general principle which would allow the skilled person to work the claim across its entire range, and it is not possible to rely on either the disclosure or their common general knowledge to enable the remaining scope of the claim – reference is made to EXXON/Fuel oils (T409/91) and UNILEVER/Detergents (T435/91) as examples of cases in this category. In the case before the court here, which related to genetically modified mice, the court found that it fell into the second category. The skilled person at the time of the earliest date was not able to insert large sequences of DNA without exercising inventive ingenuity. Consequently, there was only enablement across a very small part of the claimed range and the claim was held to be insufficient (see 14.82.1 ).

Undue burden

The specification does not need to disclose all the details of the operation to be carried out in order to perform the invention since an enabling disclosure it is to be interpreted by the skilled person, in light of common general knowledge, who is reasonably expected to carry out tests. In Eli Lilly & Co. v Human Genome Sciences, Inc.[2008] EWHC 1903 (Pat) [2008] RPC 29 , Kitchin J held that the specification must be sufficient to allow the invention to be performed without undue burden, having regard to the fact that the specification should explain to the skilled person how the invention can be performed. The question whether a burden is undue must be sensitive to the nature of the invention, the abilities of the skilled person and the art in which the invention has been made (at the time of filing).

It should always be remembered that the skilled person is also taken to be trying to make the invention work, as held by Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9 . Thus if the skilled person would quickly realise that one method would work and another would fail, the specification is not insufficient because the claim is expressed in terms broad enough to include both methods.

In Chiron Corp. v Organon Teknika Ltd. [1994] FSR 202 where it took the applicants themselves several years from filing an application, claiming among other things a vaccine, to successfully produce the vaccine, the vaccine claim was held to be invalid. However, in American Cyanamid v Ethicon [1979] RPC 215 at 265, in which it had been contended that a patent claiming a surgical suture made of a particular polymer was invalid for, inter alia, insufficiency in that it did not point out the need for adequately drying the polymer and freeing it from undesired monomer, it was held that the disclosure was not insufficient since these were steps which “the instructed reader desirous of achieving success could be expected, if necessary, to take”. Accordingly the hypothetical addressee had to be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors and omissions in the specification if a way of correcting them could readily be found (Mentor Corporation v Hollister Inc [1993] RPC 7), although is not expected to exercise any invention or any prolonged research, inquiry or experiment. Referring to this case, Pumfrey J in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] RPC 2 agreed that the straightforward test for sufficiency was whether the specification required the addressee to carry out tests or developments that went beyond routine trials. Where the specification is very complex and its development would be expected to be accompanied by a great amount of work, it is always necessary to keep a balance between the interests of the public and the interests of the patentee in the sense that it is necessary to guard against imposing too high a standard of disclosure merely because the subject matter was inherently complex.

The question of an undue burden was at the heart of the sufficiency of a claim to a functionally-defined product in T 1743/06 INEOS/Silicas. In this case, the Board held that, while it was acceptable that the skilled person would need to use a reasonable amount of trial and error to select conditions which would achieve the desired result, there must be adequate instructions in the specification, or on the basis of common general knowledge, to lead the skilled person towards success, through evaluation of initial failures.

Claim breadth and insufficiency in relation to claims with both structural and functional limitations was considered in FibroGen Inc. v Akebia Therapeutics Inc [2021] EWCA Civ 1279 . Birss LJ, following closely the reasoning in Regeneron Pharmaceuticals Inc v Genentech Inc [2012] EWHC 657 (Pat) , held that regardless of whether a claim contains functional limitations, structural limitations or a mixture of both, answering the question of whether a principle of general application is plausible/credible requires use of the same three-step test; i) Identify what falls within the scope of the claimed class? ii) Identify what it means to say that the invention works (in other words what is the invention for)? iii) Determine whether it is possible to make a reasonable prediction that the invention will work with substantially everything falling within the scope of the claim?

If it is possible to make the prediction of step (iii) then a claim cannot be held insufficient merely because the patentee has not demonstrated the invention works in every case – if a principle of general application exists, functional language will invariably cover compounds which have not been invented yet. What is important is that: a) the skilled person, without undue burden, is able to identify compounds beyond those named in the patent that fall within the scope of the claims, and, b) the skilled person can work substantially anywhere within the whole claim (e.g. no inventive step can be needed to work in a part of the claim that was not available in the specification, as was held to be the case in Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 (PDF, 128KB) . In other words, for claims with structural and functional components it must be possible for the skilled person, given any compound satisfying the structural requirements of the claim, to apply tests without undue burden, to see if it satisfies the functional requirements of the claim and thereby work out if it is a claimed compound. The type of large-scale work required to screen compounds for their functional features in this case was found to be routine, with the court holding that this would not constitute an undue burden for a medicinal chemist.

It is noteworthy that the COA found that the original trial judge had fallen into error when applying step (i) of the three-step test, by construing the claims too broadly. Proper account had not been taken of the limitations as to the scope of the claims imposed by the functional features present, the correct approach to claim construction being that the claims were directed towards compounds possessing the relevant structural properties that also had the relevant functional features.

Considerations during examination and search

Care should be taken to make it readily apparent what sort of sufficiency objection is being made. Therefore a classical insufficiency objection should be raised only in the clearest cases, when the disclosure appears inadequate to support a valid claim. However where the claims are unduly broad and speculative objection may be raised under s.14(3) and/or under s.14(5) (see also 14.102-14.104) . Such an objection may not be overcome by the addition of further examples or features to the specification since this is prohibited under s.76(2), however an objection to the excessive breadth of the claims under either section may be remedied by restricting the scope of the claims. If made under s.14(3) as an objection to insufficiency due to excessive claim breadth then some indication that a portion of the claim(s) is regarded as enabled should be made clear to the applicant. This is not only an issue to be considered at substantive examination, but the examiner should consider the scope of the search to be conducted in light of the enabled disclosure. If the search has been restricted because only a portion of the claims appear to be enabled then that should be made clear to the applicant either in the search letter, exam opinion or examination report as applicable.

Inventions contrary to well-established laws

If successful performance of the invention is inherently impossible because it would be contrary to well-established laws (e.g. where the alleged invention is a perpetual motion machine) objection may arise under s.14(3). If the claims are directed to its function and not merely its structure objection may also arise under s.4(1) - see 4.05 and also Eastman Kodak Co. v American Photo Booths Inc. BL O/457/02 , in which the hearing officer held that the invention could not function as described and claimed, and so lacked both industrial applicability and sufficiency of disclosure. Similarly, the hearing officers in Blacklight Power Inc.’s Application BL O/170/09 , and Robinson’s Application BL O/336/08 held that the applications in question were both insufficient and lacking in industrial applicability as the claimed inventions relied on scientific theories of doubtful validity. The hearing officers in these cases followed the test set out in the Patents Court judgment in Blacklight Power Inc. v The Comptroller-General of Patents [2009] RPC 6 and held that there was not a reasonable prospect that the applicant’s theory might turn out to be valid if it were to be fully investigated at a trial – see 4.05.1-4.05.2. Regardless of whether objection arises under s.4(1) or s.14(3), one of the procedures set out in 17.94- 17.96.4 should be followed at the search stage.

The applicant is not obliged to describe or acknowledge the prior art, since the reader is presumed to have the general background technical knowledge appropriate to the art. There may however be instances in which the absence or inadequacy of a statement of prior art renders it difficult to understand how the invention is to be performed. Alternatively, documents found during the search or otherwise, may show that the statement of prior art is inadequate or misleading. This could be the case if an ambiguous presentation gave the impression that the prior art had solved less of the problem than was actually the case.

A specification may include fair and reasonable comment on prior inventions with a view to distinguishing the invention in suit from them or illustrating its advantages, but no statement disparaging a prior patent or describing it in an unfair or misleading manner should be included. There is however no objection to a mere statement that a prior invention is in some respects unsatisfactory.

References to other documents

An application as filed may contain a reference to another document or webpage, in which further information is to be found. For example, the application may refer to another document or webpage “the contents of which are incorporated herein by reference”. The allowability of such a reference must be considered if the further information to be found in the other document is essential for there to be a clear and complete disclosure of the invention ( see 14.94 ). On the other hand, a reference to a document containing information which is not essential for sufficiency need not be considered; such references are allowable, even if the referenced document was only made available after the filing date of the present application and/or it is a patent document referred to by its application number.

Pumfrey J in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] RPC 2, [2005] EWHC 1623 made it clear that cross-referencing for the purpose of supplementing a disclosure is highly undesirable, stating that applications should be complete in themselves (see paras. 61-62 and 30). Since the date at which sufficiency has to be judged is the date of filing, not the date of publication ( see 14.63 ), Pumfrey J also held in the same case that a document referred to in the specification must have been published by the date of filing the application for a reference to be effective.

In Akebia Therapeutics Inc v Fibrogen Inc [2020] EWHC 866 (Pat) , Arnold LJ held that there is no principle of law that the skilled team are deemed to read all documents cited in a patent. Whether they would do so depends on the context and the wording of the specification. In this case, a large number of documents were referenced in the patent, and the specification gave little, if any, direction as to which would be worth following up, and so “the skilled team would not necessarily follow up any of the cited publications.” Therefore it cannot be assumed (for the purpose of sufficiency) that the skilled person will consider every document referenced in the patent or application.

If the information contained in a referenced document is necessary for a person skilled in the art to carry out the invention then the examiner should confirm that the document was published at the filing date. If not, then objection should be raised under s.14(3) informing the applicant that references to documents containing essential information and published later than the filing date, or not at all (including applications withdrawn before publication and applications unpublished at the time of filing of the application in suit) should be deleted. Supplementing or replacing of the reference by an indication of the contents of the documents (beyond what is already explicitly contained in the application as filed) is not allowed. Where the publication date of a reference containing essential information is unclear the applicant should be asked to verify the date. For instance, in the case of a reference to a webpage essential for a complete disclosure of the invention, a copy of the verifiably-dated webpage showing its contents prior to the date of filing must be provided. Furthermore, in the situation where it appears to the examiner that a referenced document might contain information necessary for sufficiency but the document is not readily available, the applicant should be asked to file a copy and verify its publication date.

[If the entire text of another specification is appended to the application in suit it should be removed from the copy for publication but should remain on the open part of the file so that it will subsequently be published by laying open. The following footnote should be added to the front page of the published application ( see 16.29 ) - “A specification referred to in the application and appended to it is not included in this publication but is available for inspection in accordance with the provisions of Section 118(1) of the Patents Act 1977”. At substantive examination the removal from the specification of the appended specification should be required. Relevant matter from it may be added to the description if required for sufficiency. ]

Provided that the publication requirements set out above are satisfied and if requested by the applicant, the examiner should allow a reference to be replaced by the matter referred to, provided that, when the reference is to another application, the matter was present in that application as filed. Where the language of the documents referred to is other than English and the disclosure of the invention would not be clear and complete enough without the reference, such replacement (in English) should be required. Where the reference is to a document not readily available to the examiner the applicant should be asked to file a copy and/or a translation, as necessary.

There is an indication on the front page of a granted patent specification if that case relates to a “parent” or divisional application. There is no reason why applicants should not be encouraged to include cross-references in other suitable circumstances where the front page of the granted patent will not give any warning of a related application or patent, e.g. where another application of the same date by the same applicant claims matter described in the application in suit.

Trade marks

The description should be as clear and straightforward as possible, with the avoidance of unnecessary technical jargon. Since however it is addressed to persons skilled in the art to which it relates it is acceptable, and will often be desirable, for it to use technical terms which are well known in that art. Little known or specially formulated technical terms may be used provided they are adequately defined and that there is no generally recognised equivalent. Foreign terms may be used where there is no English equivalent. Terms already having an established meaning should not be used differently if this is likely to cause confusion, but in some circumstances it may be appropriate for a term to be borrowed from an analogous art.

A recognised trade description should not be used in such a way as to give rise to uncertainty or ambiguity; eg “leather” should not be used as a general term covering materials resembling leather, unless the precise meaning given to the word “leather” is defined. If a specification contains a reference to a proprietary article or specific product the composition of which is not well known, the description should state the composition of the article or the way in which it is prepared. If the applicant maintains that the information is well known in the art, or if the specification so states, and the examiner is unable to verify this, evidence in support of the contention may be required.

The use of proper names or similar words to refer to materials or articles is undesirable in so far as such words merely denote origin, or where they may relate to a range of different products. The product should be sufficiently identified, without reliance on the word, to enable the invention to be carried out by the skilled person. Such words which have generally accepted meanings as standard descriptive terms may however be used without further explanation; examples are Bowden cable, Belleville washer, zip fastener.

A trade mark should preferably not be used in a specification since it is an indication of origin rather than of composition or content and on that account cannot properly be used to describe an article. (For trade marks in claims, see 14.137). If a registered trade mark is used it should generally be accompanied by wording showing that it is a trade mark, since its use as a descriptive term without acknowledgement may be prejudicial to the rights of its owner (Official Ruling 1914 (A) 31 RPC Appendix i). However, a word that has been registered as a trade mark only requires acknowledgement if it is being used in the specification with reference to the goods or services for which the trade mark is registered. Acknowledgement should preferably take the form of “(RTM)” inserted after the trade mark. However, use of the symbol ® is also regarded as acceptable. The acknowledging of registered trade marks should extend to their obvious derivatives. Any word which is a trade mark should commence with a capital letter. Any statement that a term is a trade mark or a registered trade mark should not be challenged, nor should any attempt be made to determine whether such a term is being used within its registered class; the registered owner may be using the mark for goods not covered by registration and they may have common law rights to its use in this way. If a mark is known not to be registered it is good practice to indicate the name of the owner. The validity of the trade mark is not material. Community trade marks and international trade marks registered under the Madrid Protocol (and effective in the U.K.) should be acknowledged in exactly the same way as trade marks registered directly with the Office. (For acknowledgement of trade marks without the applicant’s consent, see 19.24-19.26 .

[In order to check whether a word used in a specification is a registered trade mark, the examiner should access the Trade Mark Database provided on the Office’s external website. This contains details of all trade marks registered or effective in the U.K., including Community and international trade marks effective in the U.K. For advice on how to ensure that trademarks are acknowledged, see 19.24-19.26. See 14.137 if a trade mark is used in a claim].

A number of words which are registered trade marks have come into such general use that the fact that they are trade marks tends to be overlooked. Examples of such words are ‘Bakelite’, ‘Caterpillar’, ‘Filofax’, ‘Frisbee’, ‘Jacuzzi’, ‘JCB’, ‘Kodak’, ‘Lycra’, ‘Rollerblade’, ‘Tabloid’, ‘Thermos’, ‘Vaseline’, ‘Velcro’, ‘Walkman’ and ‘Yale’. Such words should be acknowledged in just the same manner as other less well-known trade marks.

Relationship of s.14(3) with s.14(5)

s.125(1) s.76(2) are also relevant

Since “the invention” whose disclosure must be clear and complete is that defined in the claims, the requirement of s.14(3) may overlap with those of s.14(5), that the claims define the invention, be clear and be supported by the description, since all are concerned with the relationship between the extent of the disclosure and the scope of the claims.

When considering whether an objection should be made under s.14(3) or under s.14(5) consideration should first be given as to the extent of the enabling disclosure. If the objection to be made is clearly that the, or part of the, claim lacks an enabling disclosure then objection should be made under s.14(3). If the objection is that the description casts doubt on the true scope of the invention, in that it causes genuine difficulty in determining the scope of the claims, then objection should be made under s.14(5)(c). Many situations will fall between the two scenarios, but care should always be exercised to ensure that the invention considered is that of the claims properly construed rather than simply the embodiment(s). For further information on embodiments of the invention, see 14.144 . Also, see 14.113 . However where the claims are unduly broad and speculative objection may be raised under s.14(3) and/or under s.14(5) (see also 14.79-14.82) . Such an objection may not be overcome by the addition of further examples or features to the specification since this is prohibited under s.76(2), however an objection to the excessive breadth of the claims under either section may be remedied by restricting the scope of the claims. When considering whether an objection should be made under s.14(3) or s.14(5)(b) then consideration should first be given to whether the unclear word or phrase creates merely a “fuzzy boundary”, as described by Lord Hoffman in Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9 abstract to the scope of the claim or whether it renders it impossible to determine what falls within and without the claim as a whole (see insufficiency by ambiguity/uncertainty above at 14.79-14.82) .

Objection does not arise under s.14(3) merely because particular matter claimed is absent from the description, since it is the specification (which includes the claims) which is required to disclose the invention; objection should in such a case be made under s.14(5)(c), (see 14.145) . However while the insertion in the description of a passage in agreement with an originally unsupported claim may overcome the objection under s.14(5)(c), objection will remain if this passage is not in itself a clear and complete enough disclosure of that particular aspect of the invention, so that the applicant has failed to discharge their duty under s.14(3) not only to disclose the invention but to do so in a manner which allows it to be performed.

[Section 14(4) Repealed]

Subsections (4) and (8) of s.14 were concerned with how an invention which required for its performance the use of a micro-organism could be disclosed. This is now provided for in s.125A.

S.14(5) and (6) are specified as provisions which are so framed as to have, as nearly as practicable, the same effect as the corresponding provisions of the EPC, PCT and CPC; a.84 EPC and a.6 PCT use essentially the same wording as s.14(5)(a)-(c), and a.82 EPC is essentially the same as s.14(5)(d). (There is no requirement of unity of invention in the articles of the PCT, but Rule 13.1 of the Treaty is essentially equivalent to s.14(5)(d)).

The provision in the Rules referred to in s.14(6) is to be found in r.16. There is no article in the EPC or PCT equivalent to s.14(6) but Rules 44 and 13.2 of the respective treaties use wording similar to that of r.16. (See further 14.159) .

Defining the invention: Clarity

With the exception of r.16 there is no provision in the Rules regarding the form and content of claims. Although the EPC and PCT Rules do contain such provisions, s.130(7) is not interpreted as requiring compliance with these rules, and indeed some of the provisions of the EPC and PCT are at variance with UK practice. Rule 43(1) EPC and Rule 6.3 PCT prescribe the so-called Germanic form of claim, in which a recital of the prior art is followed by a statement of what characterises the invention. This type of claim is often described as being in “two-part form”, and in the US is sometimes referred to as a Jepson claim. (The PCT Rule goes on to say that where the national law of a State does not require this form of claiming, failure to use it shall have no effect).

In contrast it is established practice in UK law that the form of the claim is a matter for the applicant, any claim which fulfils the requirements of the Act being acceptable. Although the Germanic form of claim may in many cases be the most convenient, particularly for example when the invention is an improvement in a known type of apparatus, the applicant cannot be required or urged to present their claim in this way. In British United Shoe Machinery Co Ltd v A Fussell and Sons Ltd, 25 RPC at page 651, it was stated that “a man must distinguish what is old from what is new by his claim; but he has not got to distinguish what is old from what is new in his claim”.

CoP is also relevant

The claims must be drafted in terms of the technical features of the invention and should not contain any statements relating, for example, to commercial advantages or other non-technical matters. In addition, claims should not define the invention over the prior art by unusual, non-standard or unreasonable parameters against which no comparison with the prior art can be made, unless the invention does not allow of a clear alternative definition. Statements of purpose, or reference to results or desiderata should only be used in claims if they assist in defining the invention and no better mode of definition is possible. It is not necessary that every feature should be expressed in terms of a structural limitation. Functional limitations may be included provided that a skilled person would have no difficulty in providing some means of performing this function without exercising inventive skill (see 14.48 for the relation of claims to the description).

The claims as a whole should aim to define and delimit the features of the invention, with the independent claims clearly establishing the essential features of the invention as well as sufficient details of interrelationship, operation or utility to establish that the invention achieves the intended objectives. The more independent claims there are, the more doubt is cast on the essential features of the invention, particularly where there is more than one independent claim in the same category, such as multiple independent claims for a product, process, apparatus, or use. The aim should therefore be to define the essential features of the invention using a single claim for each category, and to leave additional non-essential features to dependent claims. Under certain limited circumstances, this may not be appropriate, for example: where the invention relates to a number of closely-related products - such as transmitters and receivers (see 14.161) , where there are different uses of a product or apparatus, or where there are closely-related alternative solutions to a particular problem. It follows that claims in a style where many independent claims in one category are included, all of varying scope and features, are particularly inappropriate. In addition to lacking clarity, this style of patent claim may also be considered to lack conciseness (see 14.140) and give rise to plurality of invention (see 14.157-14.168)

Construction of the claims

s.125(1) is also relevant See also 2.11-2.17, 125 , 125.01-125.24 and, with regard to biotechnological inventions, 76A.07-76A.09 .

The requirement that the claims shall be clear applies to individual claims and also to the claims as a whole, and is of the utmost importance in view of the function of the claims in defining the monopoly sought. Each claim should be read giving the words the meaning and scope which they normally have in the relevant art. The claim should also be read with an attempt to make technical sense of it; such a reading may involve a departure from the strict literal meaning of the wording of the claim (see 14.114) . The claims are to be interpreted having regard to the description and any drawings ( see also 125 ). If, in a particular case, the description gives the words used in a claim a special meaning, by explicit definition or otherwise, this should be clear from a reading of the claim alone; where a special meaning is given to a term or phrase in a claim by a definition in the description the use of some such phrase as “as hereinbefore defined” will reduce the risk of ambiguity. A reference to prior art in the specification is a factor to be taken into account in interpreting a patent. In Ultraframe (UK) Ltd v Eurocell Building Plastics [2005] RPC 7 the Patents Court held that this would depend on the way the prior art was acknowledged. If the specification identified some particular feature of the prior patent as disclosing a problem which the inventor claimed to have overcome, it might be of considerable relevance in interpreting the width of the claim.

The prima facie meaning of words used in a claim may not be their true meaning when read in the light either of a definition found elsewhere in the specification or of technical knowledge possessed by persons skilled in the art. In these circumstances a claim may bear a meaning different from that which it would have borne had no such assisting light been available. Thus, if the draftsperson has specifically indicated somewhere in the specification what they means by a particular expression, then that must be taken into account - see Kirin- Amgen Inc. v Roche Diagnostics GmbH [2002] RPC 1, in which Neuberger J also cautioned against too heavy a reliance on dictionary definitions, which are “shorn of any relevant context”. The House of Lords appeal on this case, Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9, confirmed that the meaning of words is what the skilled person would have understood the author to mean by using these words. Nonetheless, the starting point for interpreting words – especially non-technical words – in a claim will usually to be their ordinary definition, before considering their context and use in the specification; as held by the Court of Appeal in both Fabio Perini SPA v LPC Group plc and others [2010] EWCA Civ 525 and Occlutech GMBH and anr v AGA Medical Corp. and anr [2010] EWCA Civ 702. Further, in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2010] RPC 8, the Court of Appeal held that the skilled reader is taken to suppose that the patentee knew some patent law – that their claim is for the purpose of defining the monopoly and that it should be for something new. Knowledge of that may well affect how the claim is construed. For instance, the patentee would not be expected to have claimed what they had expressly acknowledged was old.

There is no justification for departing from the unambiguous and grammatical meaning of a claim and narrowing or extending its scope by reading into it words which are not in it, or for using stray phrases in the body of a specification for the purpose of narrowing or widening the boundaries of the monopoly fixed by the plain words of a claim. For example, the Court of Appeal in Fabio Perini SPA v LPC Group plc and others [2010] EWCA Civ 525 rejected an argument that the word “slit” should have a narrowly-defined meaning based on the exemplification in the patent, rather than the ordinary meaning of a long, narrow opening. The patentee is under a statutory obligation to state in the claims what is the invention they desire to protect. In Glaverbel S A v British Coal Corporation [1995] RPC 255 the Court of Appeal held that the claims should be read together with the body of the specification but if a claim is expressed in clear language, ie the meaning of the claim is clear, the monopoly sought cannot be extended or cut down by reference to the rest of the specification. This approach has subsequently been endorsed in, for example, Lubrizol Corporation v Esso Petroleum Co. Ltd [1998] RPC 727 and Cartonneries de Thulin SA v CTP White Knight Ltd [2001] RPC 6.

In the UK, “consisting of” is generally interpreted to mean “consisting exclusively of” whilst “comprising” is generally interpreted to mean “including” (i.e. other integers or features may be present). The conventional interpretation of “comprising” to mean “including” was approved of by Kitchin J. in DLP Ltd’s Patent [2007] EWHC 2669 (Pat), [2008] RPC 11. These terms are considered to be clear unless, on the facts of the particular case, there is genuine doubt as to their meaning. See also 14.123.1 .

In view of the differences in the scope of protection which may be attached to various categories of claim (eg directed to a product, process, apparatus or use), the wording of a claim should leave no doubt as to its category.

Purposive construction; variation in non-essential features of a claim

The Protocol to Article 69 of the EPC

( see also 125.09-125.25 )

For discussion of the Protocol to Article 69 of the EPC, see 125. For a discussion on Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48, see 125.17.3-125.18.5 and 125.26 .

Inventions defined by ranges

In Auchincloss and another v Agricultural & Veterinary Supplies Ltd. and Others [1997] RPC 649, Peter Prescott QC (sitting as a deputy judge) distinguished (at pages 663-665 and 689) a stated range from the term “descriptive word or phrase” used by Lord Diplock in Catnic and found that a departure from this range, however small, is not a variant in the Catnic sense. He stated (at page 689):-

The aim of the Catnic line of cases is to ascertain the purpose of the patentee, but objectively, that is, through the eyes of the skilled reader of the document. Where the patentee has expressed himself in terms of a descriptive word or phrase there may be room for supposing that he was using language figuratively, and did not intend to restrict himself to the purely literal meaning. But where the patentee has defined an integer of his claim in terms of a range with specified numerical limits at each end, his purpose must be taken to have been to claim thus far and no further.

In Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] RPC 2, Pumfrey J held that a claim which defined the axial force on each cone as being between 31 and 35 per cent of the total axial force should be construed to mean the specified number to two significant figures, so including, for example, 30.500 per cent to 35.499 per cent.

In Smith & Nephew Plc v Convatec Technologies Inc [2015] EWCA Civ 607 Kitchin LJ confirmed that the approach to the interpretation of claims containing a numerical range is no different from that for any other claim. That is, the claims are construed to mean what a skilled person would have understood them to mean. The judge also considered a series of relevant cases and drew out certain points of particular relevance to claims which include a numerical range. First, the scope of any such claim must be exactly the same whether one is considering infringement or validity. Secondly, there can be no justification for using rounding or any other kind of approximation to change the disclosure of the prior art or to modify the alleged infringement. Thirdly, the meaning and scope of a numerical range in a patent claim must be ascertained in light of the common general knowledge and in the context of the specification as a whole. Fourthly, it may be the case that, in light of the common general knowledge and the teaching of the specification, the skilled person would understand that the patentee has chosen to express the numerals in the claim to a particular but limited degree of precision and so intends the claim to include all values which fall within the claimed range when stated with the same degree of precision. Fifthly, whether that is so or not will depend upon all the circumstances including the number of decimal places or significant figures to which the numerals in the claim appear to have been expressed.

The judge went on to determine that in this particular case the claimed range of “between 1% and 25%” would be understood by a skilled person to include all values greater than or equal to 0.5% and less than 25.5%. That is, the claim would include all values which would fall within the claimed range, once the values are rounded to the nearest whole number. He found that in the context of the claimed method, the purpose of expressing numbers to a particular degree of precision was to convey to the reader the range of permissible values and the accuracy with which those values need to be determined. The judge dismissed the ‘significant figures’ approach (which would have resulted in the claimed range including all values greater than or equal to 0.95% and less than 25.5%) in part because this would require values close to the bottom of the range to be determined with much greater accuracy than those near the top.

The above approach was reaffirmed in Napp Pharmaceutical Holdings Ltd v Dr Reddy’s Laboratories (UK) Ltd [2016] EWCA Civ 1053 . Floyd LJ agreed with the decision in Smith & Nephew Plc, that claims must be construed to mean what the skilled person would understand them to mean. All of the figures in the patent were multiples of five. Floyd LJ stated that even though this is the case, this fact says nothing about the degree of precision to which these numbers are expressed and that this does not contradict the skilled person’s normal understanding that numbers written in this way would be treated as expressed to the nearest whole number. Floyd LJ also stated that the term “about” in a claim (e.g. about 10%) suggests that something wider was meant than if the word “about” was omitted and that a more generous degree of imprecision was claimed.He concluded, agreeing with the decision of the Patents Court, that “about 10%” in the claim should extend to 9-11%.

For situations in which the application in suit specifies a range which overlaps with a range disclosed in prior art, see 2.06.2 .

Invention defined by reference to intended use

A claim to an apparatus or material for a particular purpose is construed as a claim to any apparatus or material having the features specified which is suitable for that purpose ( see 2.12-2.14 ). On the other hand, a claim to something “when used in” a particular process is regarded as protecting only the use of the invention in this way ( see 2.15 ) while a claim to “the use of” a material is regarded as equivalent to a claim to a method of using the material ( see 2.16 ).

A claim merely directed to “Apparatus for carrying out the method of …. according to claim X”, or some such wording will not normally be clear in scope. For further discussion of construction of phrases such as “for”, “suitable for” and “adapted to” see 2.12-2.14.1 The claim should normally clearly specify the essential features of the apparatus unless all the integers which would constitute such apparatus are clearly implicit in the method claimed, and all such apparatus would be novel and non-obvious.

The area defined by the claims must be as precise as the invention allows. As a general rule, claims which attempt to define the invention, or a feature thereof, by a result to be achieved should not be allowed. However, they may be allowed if the invention can only be defined in such terms or cannot be defined more precisely without unduly restricting the scope of the claims and if the result is one which can be directly and positively verified by tests or procedures adequately specified in the description and involving nothing more than trial and error. In No-Fume Ltd v Frank Pitchford Co Ltd, 52 RPC 231 (PDF, 2.3MB) , a claim to an ash receptacle for smokers in which the dimensions of certain parts were such that smoke from objects thrown into the receptacle did not emanate from the receptacle was allowed on the grounds that the invention could be realised by dimensions other than those disclosed, by experiments not involving inventive ingenuity. However, claims of this kind are generally undesirable and it should be noted that the No- Fume claim was allowed solely because the invention did not admit of precise definition independently of the result achieved. Any claim which includes a subordinate clause prefaced by words such as “so that” or “the arrangement being such that” requires special consideration from this point of view. In BL O/031/17 (PDF, 132KB) , the hearing officer considered a claim defining a seating assembly for an aircraft cabin. The claim was defined by the result that a passenger access path was produced between seats. The hearing officer found it was possible to define the invention without reference to the result to be achieved, however defining the invention in any other way would unduly restrict the scope of the monopoly sought. He also determined that the claimed result could be easily verified by a person skilled in the art. Based on these findings, and on the specific facts of the case, he concluded that the claim was clear despite being defined by result.

Product by Process claims

The House of Lords in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 held that ‘product-by-process’ claims (e.g. “Product X obtained by process Y”) should be construed as a claim to the product as such in line with EPO practice (see Decision T 150/82 International Flavors and Fragrances Inc [1984] OJEPO 309 ; this is irrespective of whether the term “obtained”, “obtainable”, “directly obtained” or an equivalent wording is used. Claims for products defined in terms of a process of manufacture are allowable only if the products as such fulfil the requirements for patentability; a “product-by-process” claim is not rendered novel merely by the fact it is produced by means of a new process ( see also 2.15 ). A claim for a patentable product defined by its process of manufacture is only allowable if the product cannot satisfactorily be characterised by reference to its structure or composition; if the product can be defined by other means, an objection under clarity and/or conciseness should be raised. Product by process claims can be difficult to identify so care should be taken when assessing claims. If a product claim includes any method or process steps (even if those steps are not explicitly defined as ‘manufacturing’ steps), the claim is a product by process claim. For example, a claim to “an apparatus comprising features A and B, where feature A is treated in an oven”, is a product by process claim. In addition, a product by process claim will result if a product claim incorporates method/process steps as a result of a reference to another claim.

Chemical cases

Where the invention relates to a chemical compound it may be characterised in a claim in various ways, eg by its chemical formula, or, exceptionally, by its parameters or as a product of a process. Characterisation of a chemical compound solely by its parameters should, as a general rule, be allowed only in those cases where the invention cannot be adequately defined in any other way, for example in the case of macromolecular chains. In such cases however only parameters usual in the art should be employed to characterise the compound, since use of unusual parameters may disguise lack of novelty ( see 2.18-2.20 and 3.88-3.93 ).

Chemical “process” claims should define the starting material, the end product and also the means adopted for converting the one into the other (British Celanese Ltd’s Application, 51 RPC 192). The definition of a process in the claims with reference to such “tools of the trade” as condensation, polymerisation, esterification and sulphonation, or even by the use of the term “reacting”, is permissible provided the specification contains no reservations affecting the universality of the process. In Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9, the House of Lords held that the protection conferred by a process claim should extend to products directly obtained by the process in accordance with EPC Article 64(2) (see also 14.120.1) .

The extent to which the ingredients of a composition need to be specified in order adequately to define the invention depends greatly on the subject-matter concerned. Thus a claim to “a pharmaceutical composition containing compound X together with a diluent or carrier” is allowable, X being a medically active compound which characterises the composition, and the diluent or carrier being any material suitable for the purpose and being choosable by knowledge of the art or by non-inventive experiment. In the field of alloys, sufficient of the constituents should be specified such that the claim is not speculative and is adequately supported by the disclosure.

In EPO Decision T 589/89, NATIONAL RESEARCH/Polyurethane compositions ([1994] EPOR 17), the use of the word “comprising” was held to mean that further reactive ingredients may be present in the claimed composition. However, where the word “consists” is used, the proportions of the specified ingredients must total 100 per cent (EPO Decision T 711/90, unreported). This is consistent with the long-standing practice in the UK that “consisting of” is generally interpreted to mean “consisting exclusively of” whilst “comprising” is generally interpreted to mean “including” (i.e. other integers or features may be present). The EPO has interpreted the phrase “consisting essentially of” as meaning that unspecified components could be present in the claimed composition if the characteristics of the claimed composition are not materially affected by the presence of these unspecified components (EPO Decision T 472/88, GENERAL ELECTRIC/ Thermoplastic resin ([1991] EPOR 486), EPO Decision T 340/89, GENERAL FOODS/caffeine ([1992] EPOR 199), EPO Decisions T 522/91 and T 759/91(each unreported)). This settled view of the EPO is followed in the UK. This has been confirmed by Anan Kasei Co Ltd & Rhodia Operations SAS v Molycorp Chemicals & Oxides Ltd [2018] EWHC 843 (Pat) and the corresponding Court of Appeal decision Anan Kasei v Neo Chemicals [2019] EWCA Civ 1646 . Thus a claim to a composition “consisting essentially of X, Y and Z” could be found to be anticipated if the prior art includes such a composition which also contains other components which do not appear to materially affect its characteristics (e.g. its activity or function).

Omnibus claims

r.12(6A) is also relevant

Claims to the preferred embodiments of the invention which end with some such words as “substantially as described and shown (or illustrated) in the accompanying drawings” are limited to the embodiments described and depicted in the drawings. Such claims fall within the type known as “omnibus” claims which also include claims referring to examples (eg in chemical cases) or to tables. As a result of the Patents (Amendment) (No.2) Rules 2016 (PDF, 55.7KB) , it is not possible to include omnibus claims in UK patent applications, unless this is the only way to define the technical features of the invention clearly and concisely. If in response to an objection to an omnibus claim the applicant demonstrates that the invention cannot otherwise be clearly and concisely defined using words, a mathematical or chemical formula or any other written means, the examiner should allow the omnibus claim to remain. An example might be where the invention involves some peculiar shape, illustrated in the drawings, but which cannot be clearly defined either in words or by a simple mathematical formula.

[Substantive examiners should raise an objection to any omnibus claims present in a pending patent application, using PROSE clause RC37 unless:

(a) A notification of intention to grant has already issued; or (b) The examiner is already convinced that the technical features of the invention cannot otherwise be clearly and concisely defined;

Examiners should note their reasons for not raising an objection in a minute.]

An omnibus claim should not suggest that a drawing, example or table illustrates or exemplifies the invention if it does not, for example if it is present for comparison or as prior art, but there is no objection to referring to the invention “as described with respect to” such drawings, examples or tables, provided the wording of the claim and of the description makes the position clear. However the words “substantially as described” are insufficient by themselves to limit a claim to the embodiment described, and its scope will be construed to be as wide as the statement of invention. In such cases care should be taken to ensure that the invention is set forth in precise terms in the body of the specification, that ambiguity does not arise see 14.139.1 and 14.139.2 and that the statement of invention is not broader than the main claim see 14.146 . With regard to omnibus claims of copending applications describing the same apparatus, see 18.95 .

In Raleigh Cycle Co Ltd and Anr. v Miller and Co Ltd, 65 RPC 141 , an omnibus claim directed to a generator “constructed, and arranged substantially as described with reference to and as illustrated in the accompanying drawings” was construed as a narrow claim, but was held, by virtue of the qualification “substantially”, to have been infringed by a generator not having stepped stator windings, even though the only embodiment specifically disclosed did have such windings. In Jansen Betonwaren B.V. v Ian Robbie Christie ( BL O/496/15 (PDF, 85.5KB) the hearing officer considered the validity of an omnibus claim to “A building block substantially as described with reference to the drawings.” The claim was construed narrowly such that it required the “four main design features” disclosed in the description and all features shown in the sole figure. The claim was nevertheless determined to lack novelty on the basis of prior public use. The hearing officer also found an even narrower construction of claim 1 was possible. Under this construction the claim required the building block to be manufactured using “a mix of concrete sand and cement as well as elastomer and thermoplastics”. The additional limitation rendered the claim novel over the alleged prior use but resulted in the disclosure being insufficient.

Disclaimers

A disclaimer is a form of claim limitation. It is an amendment to an already existing claim comprising the incorporation of a “negative” technical feature. Typically, this will entail excluding specific embodiments or areas from a general feature. A disclaimer is allowed if what remains once the disclaimed material has been subtracted from the claim is clearly supported; that is, the disclaimer does not add matter contrary to s.76(2). An amendment to a claim by the introduction of an “undisclosed” disclaimer, where neither the disclaimer as such nor the subject matter excluded by it was disclosed in the application as filed, may be allowable providing certain criteria are met (see 14.127). These criteria were set out by the EPO Enlarged Board of Appeal in joined cases G1/03 (Disclaimer/PPG) and G2/03 (Disclaimer/Genetic Systems) [2004] 8-9 OJEPO 413 and [2004] EPOR 33. The Board later confirmed in G2/10 (Disclaimer/SCRIPPS) that if the criteria for allowing an undisclosed disclaimer were met the subject matter remaining in the claim after the introduction of the disclaimer would still need to be disclosed in the application as filed.

The Board held that an undisclosed disclaimer is allowable in the following circumstances:

a) Delimiting a claim against an anticipation published after the priority date. Where a novelty objection is raised under section 2(3), an undisclosed disclaimer may be allowed to distinguish between an application and the s.2(3) prior art. The purpose of a disclaimer excluding a conflicting application is merely to take account of the fact that different applicants are entitled to patents in respect of different aspects of inventive subject matter. The disclaimer splits the invention as a whole into two parts: in respect of the identical part, it preserves the rights of the first applicant; for the rest, disclosed for the first time in the later application, it attributes the right to the second applicant;

b) Delimiting a claim against an anticipation in an unrelated field that the skilled person would never take into consideration (i.e. an accidental anticipation). This occurs when a piece of prior art would be disregarded by the skilled person, either because it belongs to a technical field remote from that of the invention, or because its subject matter suggests it would not help to make the invention. An undisclosed disclaimer may be allowed to distinguish an application from prior art such as this, even if cited under s.2(2). Take, for example, a claimed invention that concerns a large group of chemical compounds with certain properties which are advantageous for a specific use. One single compound within that group turns out to be known for a completely different use and, therefore, only properties irrelevant to the new use are known. A disclaimer may be used to prevent that one single compound from presenting a bar to patenting the group. A disclaimer cannot be used to delimit a claim against an anticipation that is not accidental;

c) Delimiting a claim against subject matter excluded from patentability for non-technical reasons, such as methods of treatment of the human body or inventions contrary to public morality For example, a method of avoiding offspring of a certain sex would be contrary to public morality when applied to humans, but not when applied to cows. If the claims are directed broadly to mammals, an undisclosed disclaimer may be used to exclude human beings and so avoid objection under s1(3). A disclaimer that excludes subject matter not eligible for patent protection may only serve the purpose of removing such specific legal obstacles. It is unlikely that a disclaimer can be used to disclaim excluded matter in general in order to meet to the requirements of novelty, inventive step, clarity and support, which all claims must satisfy;

Undisclosed disclaimers cannot be used to delimit a claim against non working embodiments. If a claim is directed to a large number of alternatives, some of which do not work, then either the specification will contain sufficient criteria for finding appropriate alternatives over the claimed range or there are problems relating to the sufficiency of disclosure of the invention or the level of inventive step. A disclaimer is inappropriate for dealing with either of these situations. Furthermore, the disclaimer should not remove more than is necessary either to restore novelty or disclaim excluded subject matter. A disclaimer that was relevant to assessment of inventive step or sufficiency of disclosure would add subject matter and would not be allowed.

The approach in G1/03 was affirmed by the Board in G1/16. In this decision, the Board also held that an undisclosed disclaimer “must not provide a technical contribution to the subject matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure.

The decision of the Board was considered in M-Systems Flash Disk Pioneers Ltd v Trek Technology (Singapore) Pte Ltd (BL O/318/06), where amendment by undisclosed disclaimer was held in principle to be allowable to limit a claim in the light of conflicting prior art under s. 2(3), although the hearing officer was unable to exercise discretion to allow the amendment on other grounds. In Sudarshan Chemical Industries Ltd v Clariant Produkte (Deutschland) GmbH [2014] RPC 6 the Court of Appeal upheld the view of the lower court that the disclaimer resulted in a monopoly of ambiguous and uncertain scope and, having considered the board decision in G1/03, that it resulted in the disclosure of added matter. It was held that, far from the prior art disclosure being in a remote technical field, the prior art was in fact the most directly relevant earlier disclosure and the starting point from which the invention of the patent in suit had been made. In other words the circumstances in this case were not those described in 14.127 b ) above. The use of disclaimers for an ‘accidental anticipation’ (as described in 14.127 b) was further discussed in the EPO Board of Appeal decision T 1218/14 (Dohler/DuPont Nutrition Biosciences). It was noted that to allow such a disclaimer the disclosure must be so unrelated and remote (from a technical point of view) that the skilled person would never have taken it into consideration when making or working on the invention. In this case, the fact that the invention was considered inventive over the disclosure (which was a secondary document in a mosaic) did not mean the disclosure was sufficiently remote from the invention that a disclaimer was allowable.

A claim is bad if it contains internal contradictions. The EPO Technical Board of Appeal has held that a claim to a composition containing, inter alia, 40-95% of polyamide was not clear since, even if the other essential constituents were present in the minimum quantities specified the maximum amount of polyamide that could be present was 89% (Decision T02/80; OJEPO 10/81).

A claim should not include vague or equivocal forms of wording which leave the reader in doubt as to the exact scope of a feature. Examples of this are relative terms such as “thin”, “wide”, “strong”. If such terms appear in a claim it is usually necessary to have them either defined or excised. No objection arises, however, if the relative term has a recognised meaning in the art, eg “high-frequency amplifier”, and this is the meaning intended. The term “predetermined” may need consideration: it may be meaningful in some contexts, e.g. to distinguish between fixed and variable values, but meaningless in other contexts, e.g. where all comparable values are fixed. In Nikken Kosakusho Works v Pioneer Trading Co. [2006] FSR 4, a tool chuck had “an annular groove of predetermined depth”, and it was held that this phrase was objectionable and in itself implied nothing about either the criteria for choosing the depth, or the range of values it should have. On the other hand, in Folding Attic Stairs Ltd v Loft Stairs Co. Ltd. [2009] FSR 24, the Patents Court held that a claim to a manufacturing process wherein an element was spaced at “a preset distance” from another element was meaningful in the context of the claim; it meant the spacing between these elements was selected by the manufacturer with a specific aim as described in the specification. The term “predetermined size” in the same claim was also held to be clear in context. Hence, if it is clear from the description that these factors are essential to the performance of the invention, they should be made explicit when clarifying the claims.

Although the claims are interpreted in the light of the description, it was held in IGT/Acres Gaming Inc.’s Application [2008] EWHC 568 that if a claim seems to bear a meaning that is, in fact, inconsistent with its real meaning when read in the context of the whole document, the claim is obscure and open to objection under s.14(5)(b) because the reader may be misled as to its scope.

Generalising expressions such as “substantially” or (applied to numerical data) “about” should be construed, both as regards the extent of the monopoly and the relationship between the invention and the prior art, according to the subject-matter and the context. They may be allowable if they do not render the scope of the claims indeterminate. In PLG Research v Ardon, [1995] RPC 287 Aldous J. applied the Catnic principle in holding that “substantially uniplanar” did not exclude an insubstantial departure from uniplanarity due, for example, to features inherent in manufacture. “Uniplanarity” should be judged on the basis of the eye of the skilled addressee, who would judge a departure by its size and quality. On the other hand, where such generalising expressions are inappropriate, eg a reference to “an alkyl group containing about five carbon atoms”, objection should be raised.

The question as to whether such terms as “back”, “front”, “above”, “upwardly”, are allowable or whether they introduce uncertainty into the claim, must be decided upon the facts of the case. Particular care is needed when for example the location of a feature of the invention is defined by reference to apparatus not forming part of the invention claimed or even by reference to a person using the invention, although there will be many instances when such references are rendered clear by the inclusion of expressions such as “when in use”, or “when held by an operator”.

Under certain circumstances, claims may define a limited number of features of which one or may be selected ( see 14.123 ). However, features that are defined in purely optional terms such as “preferably”, “for example”, “such as”, or “more particularly” should be objected to. Such terms do not restrict the scope of the claim and consequently lack conciseness.

[ Additional care should be taken when examining an application with a large number of claims or where it appears that optional features have been included purely with the objective of minimising excess claims fees.]

A claim whether independent or dependent, can refer to alternatives provided that this does not make the claim obscure or difficult to construe (see also 14.164) . However, such claim formulations should be avoided if, by reason of the large number of alternatives, the generality of the claim is impossible to search in its entirety. Markush claims are an example of this type of claim: such claims set out a number of alternatives (possibly using words such as “selected from the group consisting of …”). They are often used in chemical cases as a way of setting out various functionally- equivalent alternatives in one or more parts of the chemical compound being claimed.

A claim whose wording suggests that it is appendant to a preceding claim, so that it purports to incorporate all the features of the preceding claim, but which on inspection is found not to be properly so appendant (since, for example, it states that a feature of the preceding claim is omitted or replaced by a different feature, so that the claim is not fully limited by the terms of the preceding claim) may be open to an objection of inconsistency. However a claim which expressly states that it is directed to a modification of the subject-matter of an earlier claim and particularises the modification may be acceptable, provided the scope of the claim is clear. Care should be taken to ensure that a search carried out in respect of a claim which is modified in this way by a later claim has covered the matter claimed in the later claim. (See also 14.164) .

When a claim includes reference letters or numerals used in the description and drawings these should not influence the construction of the claim, but should be taken as a helpful identification of features in the specific embodiment which may help a reader orient themselves at the stage when they are trying to work out what the patent is about (as held in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2010] RPC 8 ) and confirmed in Jarden Consumer Solutions (Europe) Ltd v SEB SA & Anor [2014] EWCA Civ 1629 ). The only restriction brought about by the inclusion of such reference letters or numerals is that the claim must be interpreted so as to include the specific example (Rodi and Wienenberger AG v Henry Showell Ltd, [1966] RPC at page 453) . No objection should be raised to the presence of the references. (In contrast applicants for patents under the EPC or the PCT are urged, by Rules 43(7) and 6.2(b) of the respective treaties, to use references in their claims. The PCT rule goes on to say that such references may be removed by a designated Office for the purposes of publication; this is not the practice of the UK Office).

Although ideally it should be possible to ascertain the scope of any claim of a specification without recourse to other documents, (and certainly without recourse to evidence of what a patentee intended a claim to mean - see Glaverbel v British Coal Corporation and anr [1995] RPC 255), the inclusion of a reference to an earlier specification as one of the integers of a claim is not completely precluded. The overriding consideration is the clarity of the claim. A reference to a feature “as described in” an earlier document will not normally be clear in scope. It should also be remembered that if the reference is to a claim of an earlier patent specification, this may subsequently be amended, thereby altering the scope of the claim under consideration. The availability of the other document and inconvenience to a reader should also be borne in mind; in particular, objection should always be raised if the document referred to is in a foreign language. (Whether a reference can be replaced by matter from an earlier specification depends on its date of publication - see 14.85) .

Claims defined by an industry or technical standard which could change over time should generally be objected to under clarity. This was discussed in paragraphs 26-28 of the hearing officer’s decision in Bilgrey Samson Ltd’s Application, BL O/577/01 . However, as with the guidance on the use of trade marks in claims (see 14.137 below), references to standards may be allowable in limited circumstances where the reference would be clear to the skilled person and there is no danger of confusion for third parties at a later date, e.g. where the standard is identified with a specific version or edition number.

Since a trade mark is indicative of the origin of goods rather than of their content or composition, the use of a Trade Mark in a claim should generally only be permitted where the applicant is able to show that its use is unavoidable and does not introduce ambiguity. However, in limited circumstances such as when trade marks relate to industry or technical standards which specify the technologies identified by those trade marks, for example Bluetooth and WiFi, references to these trade marks may be allowable (see also 14.136.1 above). [If a Trade Mark is used in a claim, RC12 should be added to RC11 (see 14.100- 14.101 , 19.25-19.26 Senior Examiners may decide to allow a reference to a Trade Mark in a claim without consulting their Group Head but Examiners should only allow such references with the concurrence of their senior officer.]

Claims containing two or more sentences have always been resisted on the grounds of ambiguity. In Leonard’s Application [1966] RPC 269, it was held that claims consisting of disjunctive sentences would of necessity give rise to uncertainty as to the precise scope of the monopoly sought, but a claim was eventually allowed directed to “an automatic change speed transmission having all the following characteristics in combination ….” followed by numbered paragraphs (each a separate sentence) setting out the characteristics of the transmission.

Claims directed to “Any novel matter …” or which are similarly directed are unacceptable and should not be filed as they serve no useful purpose: in particular such claims cannot be relied upon to form the sole support for claiming a broad scope of protection in a subsequent divisional application. These claims should be ignored at the search stage and their removal should be required before the application proceeds to grant.

Impact of the specification on the clarity of the claims

Moved to 14.144

Moved to 14.144.1

Conciseness

The requirement that the claims shall be concise refers to the claims in their entirety as well as to the individual claims. The number of claims must be considered in relation to the nature of the invention the applicant seeks to protect. In Contra Vision Ltd’s Patent ( BL O/079/00 ) a request to amend the claims was refused partly on the grounds that the proposed amendments would have resulted in sixty-eight independent claims and a four-fold increase in the total number of claims, and thus the claims would not have been concise. A lengthy statement of claim in which the wording of one claim is repeated to an unnecessary extent is open to objection (Bancroft’s Application 23 RPC 89). It follows that a statement of claim is not allowable if it is framed on the American system to include a long series of claims which are independent of each other yet almost identical in subject-matter. Multiple independent claims of slightly varying but overlapping scope also open up the need for analysis of subject matter common to those independent claims, with the result that plurality of invention may be found (see 14.157-14.168) .

Each claim should cover some area of subject-matter not the subject of another claim, and objection should be raised when two or more claims are coterminous. While the Courts will if possible construe the claims so as to give a different meaning to each one, if little or no difference can be found between two of the claims, this affords no ground for departing from the reasonable and natural meaning of the language.

Support by the description

The words “supported by the description” were new in the 1977 Act, replacing the 1949 Act requirement that the claims had to be fairly based on the matter disclosed in the specification. In Schering Biotech Corp’s Application [1993] RPC 249 Aldous J felt that it was not right to rely on cases decided under the “fairly based” requirement and emphasised the importance of coming to the right decision since a patent, when granted, cannot be attacked on this ground ( see 14.152 ).

The view of the EPO Technical Board of Appeal in AgrEvo UK Ltd (T 939/92 OJEPO 6/96) was that “support by the description” means that the technical features stated in the description as being essential features of the described invention must be the same as those used to define the invention in the claims, for otherwise the claims would not be true definitions but mere descriptions. This view that support is purely a drafting matter does not clearly correspond, for example, with the view of Aldous J in Schering Biotech Corp’s Application [1993] RPC 249 (see 14.149) . Thus, until such time as the courts endorse the EPO’s interpretation of support in AgrEvo UK Ltd, the guidance given below should be followed.

Most claims are generalisations from one or more particular examples. The extent of generalisation permissible is a matter which must be judged 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 their invention. The applicant should be allowed to cover all obvious modifications, equivalents to and uses of that which they have 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 they should be allowed to draw their claims accordingly.

Objections should only be raised relating to an inconsistency between claims and description when the inconsistency causes genuine difficulty in determining the scope of the claims. Examples where this might (but not always) occur are:

the description may state, or may imply, that a certain technical feature not mentioned in the main claim is essential to the performance of the invention. In such a case, the claims should normally be amended to include this feature. If however the applicant can show convincingly that it would be clear to a person skilled in the art that the description was incorrect in suggesting that the feature in question was essential, and if the main claim which implies (by omission) that the feature is not essential was present on the date of filing, amendment of the description may be allowed instead

if it is difficult to determine whether an embodiment falls within the scope of the claims, then an objection should be made. However, in general, an objection should not be raised if an embodiment falls outside the scope of the claims as the claims should clearly define the monopoly sought.

No objection is required if the description contains any general statement stating that the scope of protection includes equivalents. Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48 sets out clear criteria for the courts to determine equivalents.

Where certain subject-matter is clearly disclosed in a claim of the application as filed, but is not mentioned anywhere in the description, it is permissible to amend the description, provided the amendment does not give rise to any other objection, so that it includes this subject-matter. When however original claims filed later than the filing date of the application contain matter not present in the description, such matter will need to be deleted. Objection should be raised under s.14(5)(c), rather than under s.76(2) since later-filed original claims do not constitute an amendment of the application (but any subsequently-filed claims do, see 15.54).

Many applicants choose to include an opening statement or “consistory clause” or “statement of invention” setting out the nature of the invention in the description. The applicant however is not required to include such a statement if the description indicates without ambiguity the nature of the invention. Sometimes there are inconsistencies between the claims and statements of invention that are provided. Examiners should only object to such inconsistencies when they cause genuine difficulty in determining the scope of the claims. This is expected to occur only rarely. If, however, the description of the invention contains generalising statements and the specification contains an omnibus claim (see 14.124-14.125) not of the narrow form discussed in Raleigh Cycle Co Ltd and Anr v Miller and Co Ltd, 65 RPC 141 then an opening statement defining the invention is necessary. (In the Raleigh Cycle specification the omnibus claim was directed to a generator, “constructed, and arranged substantially as herein described with reference to and as illustrated in the accompanying drawings”).

(CoP is also relevant)

The use of a compact style of consistory clause, which imports a reference to one or more claims into the statement of invention, is strongly encouraged since this avoids repetition. When the claims are read in their context as part of the description the true scope of the invention should not be in doubt. If such reference includes independent claims care should be taken that they do not import uncertainty into the description of the invention (United Shoe Machinery Application 57 RPC 71).

In Glatt’s Application [1983] RPC 122 (see 14.151(a) ) it was held that if claims are put forward which cover something which plainly was never within the contemplation of the invention as described in the specification then they lack support. This view was reinforced by Aldous J in Schering Biotech Corp’s Application ( see 14.142 ) when it was held that the correct approach was to consider the claims in the specification through the eyes of the skilled person in the art, to ascertain what is the invention which is specified in the claims, compare that with the invention described in the specification and thereafter decide whether the invention in the claims is supported by the description. Mere mention in the specification of features appearing in the claim is not necessarily sufficient support. “The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.” This approach was believed by Aldous J to be consistent with that of the EPO in Biogen NV v Hoffmann-La Roche & Co. AG (T301/87 OJEPO 8/90). It is also consistent with the finding of the Court of Appeal in Biogen v Medeva [1995] RPC 25 at p 87, regarding the implications of quoting a claim verbatim in the description.

If it appears that the description is inadequate to support a broad claim, it is possible to argue either that the disclosure is not clear and complete enough or that the claim is not supported by the description. In general a classical sufficiency objection (see 14.67-14.75) should be raised under s.14(3) only in the clearest cases, when the disclosure appears inadequate to support a valid claim. However where the claims are unduly broad and speculative objection may be raised either under s.14(3) as insufficiency through excessive claim breadth and/or under s.14(5) ( see also 14.79-14.82 ). Such an objection may not be overcome by the addition of further examples or features to the specification since this is prohibited under s.76(2), however an objection to the excessive breadth of the claims under either section may be remedied by restricting the scope of the claims (See also 14.102-14.104) .

The following are examples of cases where the relationship of the claim to the description has been considered:-

(a) In Glatt’s Application, [1983] RPC 122, an article for conditioning fabrics in a laundry dryer and comprising a flexible woven or non-woven sheet having on it areas of fabric conditioning composition was described in a way which indicated that it was an essential feature that the material of the sheet be permeable to air. A claim which was silent as to the permeability of the sheet was held by the Patents Court to be not supported by the description (see 14.149)

(b) In Universite Rene Descartes ( BL O/147/88 ) it was decided that to insert into a claim a specific numerical example, not expressly stated in the description, would result in a claim which was not supported by the description. (With regard to the narrowing of a claim to a sub-range not specified before, see 18.69- 18.69.1 .

(c) In A C Edwards Ltd v Acme Signs & Displays Ltd [1990] RPC 621 and [1992] RPC 131 it was held that the invention of claim 1 (which was substantially amended pre-grant) was not directed to a different inventive concept than that disclosed in the original application. There was therefore support for the amended claim in the description. (In practice this decision may give support, in certain circumstances, for an intermediate generalisation - the case related to a 7 element digital display in which any required digit could be displayed using flaps which cover/uncover the elements. As described each flap was attached to a baseboard by two studs. The originally filed claim 1 was silent in respect of the studs but the amended claim 1 included, for each flap “a stud”. It was held that this limitation to claim 1 “did not disclose use of a single stud any more than did claim 1 of the application”. See also 76.15-15.1 .

(d) In Raychem Ltd’s Applications [1986] RPC 547 the applicant sought to amend claim 1 by deleting the final step in a process and thus claim an intermediate product. It was held that the amended claim would not be supported by the disclosure which clearly disclosed the final step as an essential feature of the invention. It was held that such a claim must also offend against Section 76 ( see also 76.17 ).

Broad or speculative claims

An applicant does not have to restrict their claims to the specific embodiment described, but the width of the claims must be properly supported by the description of the invention in the specification (for discussion of insufficiency by excessive claim breadth see 14.79 onwards). A claim can only be supported by an enabling disclosure (Asahi Kasei Kogyo KK’s Application [1991] RPC 485, at page 536). When claims are broad and speculative, in that their scope extends beyond the description to embrace possibilities the effects of which cannot readily be predetermined or assessed on the basis of what is described, and the description gives merely an indication of the full breadth of scope of the invention but no, or inadequate, directions of how to put it into practice across the range claimed, objection should be raised that such claims are not supported by the description. In Esau’s Application, 49 RPC 85 a claim for apparatus for influencing substances by means of high frequency electrical energy was refused since it embraced any kind of influence on any kind of substance. Eventually the law officer allowed the claims to be redrafted to cover a process for the aggregation of fine particles from gases or liquids for the purpose of effecting their removal. The law officer’s remarks on page 87, lines 42-47 about broad and indeterminate claims are invoked again in Shell Development Co’s Application, 64 RPC at page 154 and in General Electric Co Ltd’s Application [1961] RPC at page 24. In Schering Biotech Corp’s Application (see 14.142 , the judge rejected the wider of two alternative claims 1 as unsupported: whereas the invention was the use of a new insert in a vector to produce a polypeptide having a certain activity, passages suggesting that by using that new insert other inserts of unknown code and amino-acid sequence could be found did not provide a description adequate to support a claim to a monopoly covering the other inserts. It was unjustified to claim the use of all vectors producing the required result, where only one vector had been investigated. This followed the judgment in the Court of Appeal in Genentech Inc’s Patent [1989] RPC 147 concerned with genetic engineering, in which Dillon L J observed (at page 236-7) “the Patent Office ought to have very clearly in mind that it is undesirable to allow claims the object of which is to cover a wide and unexplored field or where there is no disclosure in the specification which is in any way coterminous with the monopoly indicated in the claims.” The reasons of the three judges in Genentech in finding all claims invalid differed, but they were unanimous that the reason relied on by Whitford J, ie that the claims were not supported by the description, was not a ground for revocation under s.72(1). Mustill L J observed (at page 261) that “grounds of objection have always been prone to overlap, and that the very same factors may lead to an irredeemable flaw in the patentability of the supposed invention, and to an impossibility of framing an application which complies with section 14(5)”. Subsequently, in Chiron Corpn v Organon Teknika [1994] FSR 202 Aldous J observed that s.72(1)(c) could not provide grounds for attacking a claim where in essence the complaint was one of lack of support; it being important that the effect of s.72(1) should be the same as the equivalent provision applied in many other European countries. In the case of medical inventions having at their heart a medical use ( see 4A.16-4A.31 ), the description should not only identify a condition that may be treated but also demonstrate by reference to tests that the treatment is a reality and not just a possibility (Hoerrmann’s Application [1996] RPC 341, Consultant Suppliers Ltd’s Application [1996] RPC 348). However, in Prendergast’s Applications ([2000] RPC 446) Neuberger J emphasised that rudimentary tests would suffice and that full, detailed and rigorous testing of the drug for the proposed condition is not necessary.

In Pottier’s Application [1967] RPC 170 a broad claim to: ‘A process for the treatment of hydrated seedlings which comprises subjecting the seedlings to cold shock at a temperature below 0°C for a period sufficiently long to affect the size of the resulting plant’, was refused, following Esau’s Application (see 14.152) because the claim was broad and speculative. The treatment of sugar beet seedlings only was described. Such a claim might be permissible if it were made clear in the description that the conditions set forth in relation to that plant applied to other plants generally; but otherwise the claim would not be regarded as adequately supported unless the description gave a sufficient range of examples, relating to different kinds of plants, to enable a horticulturist to deduce how the process should be applied to virtually any plant. In Amchem’s Products Inc’s Patent, [1978] RPC 271, where claim 1 was directed to a process for increasing the resistance of any plant to any disease or internal malfunction by treating it with one or other of a number of specified compounds in an amount sufficient to increase the resistance, and the description referred only to protecting tomatoes, cucumbers and potatoes against particular diseases, it was held that the invention claimed had not been sufficiently and fairly described.

Claims directed to all solutions of a problem are not allowable unless invention lies in the identification of the problem. In N V de Bataafsche Petroleum Maatschappij’s Application, 57 RPC 65, it was an essential feature of a claim to a process for impermeabilizing and tightening soils etc, that an aqueous dispersion of a bituminous substance forming part of a mixture caused to penetrate the soil and coagulate therein was “suitably stabilized”. No general instructions were given in the specification as to how this was to be done and the claim was held to include “every method of achieving that suitable stability by achievement whereof the problem is to be solved” and to be invalid by the same reasoning as that promulgated by Lord Parker in British United Shoe Machinery Co Ltd v Simon Collier Ltd 26 RPC pages 48-51. In Chemische Fabrik auf Aktien’s Application, 45 RPC 403, a claim to a chemical process using “a catalyst” and thus embracing any catalyst which would give the desired result was disallowed. In David Kahn Inc v Conway Stewart & Co Ltd [1974] RPC at pages 319-320 it was stated that “A patentee may rightly claim a monopoly wider in extent than what he had invented. If he has discovered a general principle or invented a general method and discloses one way of carrying it out, he may claim all ways of carrying it out, but he is not entitled to claim a monopoly more extensive than is necessary to protect what he has himself said is his invention. He cannot claim all solutions to a problem unless invention lies in identification of the problem”.

A claim in generic form ie relating to a whole class eg of products 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 inadequate to enable the skilled person 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 applicant should be required to show that the invention can in fact be readily applied on the basis of the information given, over the whole field claimed, or, failing this, to restrict the claim to accord with the description. An example of this might be a claim to a specified method of treating “synthetic resin mouldings” to obtain certain changes in physical characteristics. If all of the examples described related to thermoplastic resins and the method was such as to appear inappropriate to thermosetting resins, then restriction of the claims to thermoplastic resins might be necessary.

A claim may broadly define a feature in terms of its function, even where only one example of the feature has been given in the description, if the skilled reader would appreciate that other means could be used for the same function. For example, “terminal position detecting means” in a claim might be supported by a single example comprising a limit switch, it being obvious to the skilled person that eg a photoelectric cell or a strain gauge could be used instead. In general, however, if the entire contents of the application are such as to convey the impression that a function is to be carried out in a particular way, with no intimation that alternative means are envisaged, and a claim is formulated in such a way as to embrace other means, or all means, of performing the function, then objection arises. Furthermore, it may not be sufficient if the description merely states in vague terms that other means may be adopted, if it is not reasonably clear what they might be or how they might be used.

Reach-through claims

“Reach-through” claims to compounds identified by an assay or screening method with particular properties, and to the downstream uses of such compounds are speculative as the claim covers all compounds possessing these properties when assayed, whether or not they have been specifically identified in the description of the patent. If the relationship between the function of the materials and their structural features is not defined, identification of all compounds from the assay with the desired properties would require substantial experimentation by trial and error to screen compounds for the desired activity. Therefore “reach-through” claims are both insufficient and unsupported by the description. Furthermore, these claims often give no information about the chemical and physical characteristics of the material possessing the desired activity screened for and will also be unclear.

Unity of Invention

s.125 is also relevant

Each claim of a specification defines at least one invention. However the requirements of the Act regarding unity of invention are met if the claims relate to a group of inventions which are so linked as to form a single inventive concept. The question as to whether the inventions are related in this way is not based on rigid rules but rather on broad considerations as to the degree of interdependence between the inventions claimed, and as to the state of the art concerned, as explained in the following paragraphs. The practice to be adopted for dealing with applications considered to lack unity of invention during search or substantive examination is discussed in paragraphs 17.106-17.114 and 18.37-18.41 respectively (see 17.108.2 and 18.38.1 in particular, for the format that should be adopted when reporting plurality to applicants during search and substantive examination respectively).

Multiple inventive concepts should not be included in the same application if they are unrelated to the extent that they will inevitably give rise to a plurality objection.

When considering unity of invention, regard should be had to the underlying inventive concept of each of the inventions claimed. This concept may be expressed in different ways see 14.159 and may be implicit rather than explicit. Regard may be had to the purpose and/or result of each invention. One criterion which would be suitable for some sets of claims would be to determine whether the common subject- matter of the claims is novel and involves an inventive step. Other criteria are referred to in the subsequent paragraphs. The lack of novelty or the obviousness of the common subject-matter may be established by citing documentary evidence, but this is not necessary, at least in the first instance, if the common matter is clearly known or obvious. Specifications forming part of the state of the art by virtue of s.2(3) may not be used to demonstrate that common subject-matter is not new.

r.16 is also relevant

Inventions should be treated as being linked so as to form a single inventive concept where there exists between the inventions a technical relationship which involves the same or corresponding “special technical features”, i.e. features which define a contribution which each of the claimed inventions, when considered as a whole, makes over the prior art. The inclusion of any one of the following combinations of claims of different categories in the same application should be permitted :

(a) in addition to an independent claim for a product, an independent claim for a process specially adapted for the manufacture of the product, and an independent claim for use of the product; or
(b) in addition to an independent claim for a process, an independent claim for an apparatus or means specifically designed for carrying out the process; or
(c) in addition to an independent claim for a product, an independent claim for a process specially adapted for the manufacture of the product and an independent claim for an apparatus or means specifically designed for carrying out the process. This list of combinations of claims in different categories (process, product, use, apparatus) is not exhaustive, and other combinations should be considered on their merits.

Examiners should use their discretion to determine whether the claims in question share a single inventive concept, any doubt being resolved in favour of the applicant. In Dow Chemical Company’s Application (BL O/175/83) the hearing officer concurred with the view expressed in EPO Decision T110/82 (OJEPO 7/83) that one of the determining factors is the equitable levying of fees between applicants. However the fact that the subject-matter of two claims cannot be covered by a single search does not necessarily demonstrate that unity of invention is lacking. On the other hand if a single search suffices on a borderline case the benefit of any doubt can be resolved in favour of the applicant.

s.72 s.26 is also relevant

Plurality of invention is not a ground on which a patent may be revoked, nor may any person, in any proceedings, raise such an objection to the claims of a patent as granted or as amended after grant ( see 26.01 ).

Claims to separate articles which are inter-related, for example, by being characterised in that they are to be used together, may be regarded as linked to form a single inventive concept. This would be the case with separate claims to two parts of an electrical or other coupling, or to a housing and to contacts to be mounted in the housing, provided they were specifically adapted for one another and have no further obvious application. In particular separate claims may be justified to parts which may be manufactured or sold separately, such as a rupturable container of fuel and a burner adapted to pierce the container when mounted on it; or a container of chemicals to be sprayed which is adapted to be mounted on a carrier, and such a carrier specially adapted for receiving the container; or to a new form of cable and to a sheath stripper particularly adapted to deal with this cable. Another example where there is unity of invention would be a transmitter and receiver which were adapted to be used together, for example by employing a particular novel method of encoding or modulating the signal; however a transmitter and a receiver intended for use with it would be regarded as separate inventions if they could also be used with known receivers or transmitters.

When a specification discloses a number of distinct surgical, therapeutic or diagnostic uses for a known substance or composition, separate claims to the substance or composition for the respective uses are not, as a general rule, regarded as lacking unity of invention, if there has not been any previous medical use of the substance or composition.

The fact that the inventions defined in independent claims may be directed to solving the same problem or to implementing the same idea, or that separately claimed processes may lead to the same product, may not be sufficient in itself to confer unity of invention. In particular the fact that a class of chemical intermediates has been prepared solely in order to be converted to particular products may not demonstrate that there is a single inventive concept linking claims to the intermediates and the products. The EPO Technical Board of Appeal held in Decision T35/87 (OJEPO 4/88) that it is necessary for unity of invention between intermediates and end-products that groups of intermediates prepared and oriented towards the end-products be technically closely interconnected with the latter by sharing an essential structural element. Therefore, if intermediate and final products include a common structure which can be considered to be novel and involve an inventive step then claims to the products can relate to a single inventive concept even though separate searches for the products may be necessary.

There is normally no question of plurality of invention when one claim is within the scope of another, whether by repeating the wording of it or by being dependent on it, even though the additional matter in the narrower claim would have been capable of being claimed as a further invention. Where however a claim is presented as dependent on another but in fact is not limited to the invention of the other claim, for example, by directing a claim to an apparatus as suitable for use in a claimed system, or by stating that one or more integers of the other claim are omitted or are replaced by other features, there is the possibility of plurality of invention. Likewise when alternatives are specified in a single claim, the claim should be mentally rewritten as a series of independent claims which can then be assessed for unity of invention in the usual way. A plurality objection may also be raised if an independent claim is clearly unduly broad and speculative and not new or inventive, and is apparently merely a device for giving an impression of unity of invention between otherwise unrelated dependent claims ( see 17.66 and 17.110 ).

14.165-167 [deleted]

Where an applicant has discovered a useful property in a group of chemically related compounds, some of which are known, claims to the new use (subject to the provisions of s.4A(1)), to compositions containing the compounds for such use, and to any of the compounds that are novel per se and to their method of preparation, are considered to form a single inventive concept provided that all of the compounds, whether novel or known, possess the common characterising property giving rise to the use.

The abstract

s.14(2)(b) and (c) is also relevant

The abstract is not part of the specification, and it is clear from s.125(1), which refers to the claims being interpreted by the description and any drawings contained in the specification, that it cannot be used to give assistance in determining the extent of the protection conferred by the claims. The form and content of the abstract are governed by r.15.

s.97(1)(a), s.15(5)(a) is also relevant

If an abstract fails to meet any requirement of r.15 then it may be amended by the examiner, using the power given to the comptroller by s.14(7). Although amendments made by the examiner do not form a part of the application as filed, it is the amended form of the abstract that is included in the published ‘A’ document, see 16.08 (There is no appeal to the Patents Court from a decision of the comptroller under s.14(7)). If however the abstract as filed clearly fails to meet the dictionary definition of an abstract (ie a brief statement of the chief points of a larger work), for example when it is little more than a title, then objection should be raised that no abstract has been filed and the applicant asked to remedy this. If the time allowed for filing the abstract ( see 15.50 ).has already expired (including any extension allowed under r.108), the application will be taken to have been withdrawn ( see 15.55 ).

[An objection that the applicant has failed to file anything that meets the dictionary definition of an abstract should only be raised in the clearest cases. The desirability of giving every help to private applicants should be borne in mind.]

r.15 is also relevant

The purpose of the abstract is to provide technical information about the patent application, and so the abstract should reflect the content of the specification. However, in reality, matter is sometimes disclosed in an abstract which is not disclosed in the specification as filed. Following the decision of the Patents Court in Abbott Laboratories Ltd. v Medinol Ltd [2010] EWHC 2865 (Pat) it is important to note that the specification cannot be amended to incorporate such matter from the abstract into the description or claims, whether or not the abstract was filed on the day of filing. This decision (which overturns previous Office practice as established in ARMCO Inc’s Application BL O/84/85 – see 76.08.2 has major implications for applications in which the abstract contains significant material not disclosed elsewhere in the application. In Abbott Laboratories Ltd. v Medinol Ltd, Arnold J held that s.14(7) should be interpreted as meaning that the purpose of the abstract is to give technical information only (by reference to the similar Art.85 EPC and associated EPO case law), and so is irrelevant for the purpose of determining the disclosure of the application as filed. The disclosure of the abstract, even if filed on the date of filing, cannot therefore be considered for the purpose of determining under s.76 whether an amendment adds matter extending beyond the disclosure of the application as filed. It is not possible to incorporate this material into the description or claims by subsequent amendment, and so it will not be possible for the applicant to claim this matter, or to rely on this disclosure to provide support for the claims or to overcome an objection of insufficiency. The applicant should therefore be informed of this situation and its implications as soon as possible, so that they may have the opportunity to withdraw and re-file the application with the matter in question included in the specification. In addition, Arnold J said that the purpose of the abstract is to provide a summary of the disclosure of the specification, and so if it does not mean the same thing as the specification then it must be assumed to be an inaccurate summary. Therefore, when re- framing the abstract, the examiner should delete any material which does not appear elsewhere in the application, regardless of whether the abstract was filed on the day of filing or later.

[Inclusion of material in the abstract but not in the specification is most likely in applications from private applicants, and so examiners dealing with applications from private applicants should be particularly alert to this possibility.]

[Applications from private applicants are sent to the Private Applicant Unit (PAU) see 17.03 . PAU examiners will scrutinise abstracts to determine whether they contain matter not present elsewhere in the application. If the PAU examiner becomes aware that there is a significant disclosure in the abstract which is not present elsewhere in the application, then they may issue a letter to the applicant under the ABS or ABCSE procedure as set out in 17.94.5-9 This letter should give the applicant the options to withdraw the application and re-file (with a refund of the search fee), or to continue with the application.]

[Where a private applicant case has been sent to an examination group, this problem is most likely to come to light when the search examiner scrutinises and if necessary re-frames the abstract. If the search examiner discovers significant material in the abstract which is not disclosed elsewhere in the application, they should inform the applicant of this problem and its implications as soon as possible. This may be done by including an appropriate warning in the search letter. However, if the matter disclosed solely in the abstract is likely to be critical for the grant of a patent, then it may be more appropriate to issue an ABS or ABCSE letter.]

It appears to follow that a consequence of the decision that the abstract is to be ignored when considering the disclosure of the application is that an applicant cannot rely on matter contained solely in an abstract for the purposes of claiming priority. ( See 5.20-5.25 ).

It follows from s.14(7) that subject-matter in the abstract but not in the specification can only be cited against an invention which has a priority date later than the date of publication of the application containing the abstract.

CoP and r.15(1) is also relevant

The abstract must have a title which encapsulates the invention disclosed in the specification. The abstract title (along with the title of the invention) is published on the front page of the A-specification.

[If there is no abstract title the search examiner should provide one in PROSE for translation into COPS without raising objection under r.15(1). It is not necessary to add the abstract title to the page containing the abstract. No other title should be entered, and because of restrictions inherent in COPS, the title should not exceed 158 characters (including spaces) or include subscripts, such as present in chemical formulae. No abstract title (or anything else in lieu of the title) should be entered in PROSE if an abstract has not been filed. ]

The abstract title can be different from the title given to the application on filing. The latter is unlikely to make a suitable abstract title if, as is generally the case, it is expressed in broad terms to avoid disclosure of the invention in the Journal before the application itself is published. If the abstract title is unsuitable (for example if it is too long or too vague) the examiner should amend it. Examples of titles which are regarded as unsuitable are

(a) any title including such expressions as “improvements in or relating to” or “and the like”
(b) titles such as “chemical compound” or “control circuit”, which give little or no indication of the invention
(c) over-long titles which are apparently intended merely to indicate that the specification contains claims in certain categories (process, apparatus etc), eg “Gas-permeable seamless pipe structure and method and apparatus for production thereof”, or “Method of bleeding a hydraulic system and means therefor”
(d) over-long titles which contain matter, for example relating to possible fields of application of the invention, more properly to be found in the body of the abstract
(e) titles including a trademark ( see 19.24 ).

When amending an abstract title to make it an effective search tool, care should be taken to avoid adding matter not in the specification. Before amending an abstract title, the search examiner should read enough of the specification to be certain that the alterations are accurate and that the amended title encapsulates the disclosed invention.

The text of the abstract should comply with r.15(2), (3) and (7), which read:-

(2) The abstract must contain a concise summary of the matter contained in the specification.

(3) That summary must include—

(a) an indication of the technical field to which the invention belongs; (b) a technical explanation of the invention; (c) the principal use of the invention.

(7) The abstract must not contain any statement on the merits or value of the invention or its speculative application.

The abstract should be primarily directed to that which is new in the art to which the invention pertains. Clearly an abstract which describes only the background or prior art or does not adequately reflect the technical disclosure in the specification is inappropriate. If the invention is in the nature of a modification to a known apparatus, process, product or composition, the abstract should, while making clear the context of the invention, be directed to the technical features of the modification. If the invention is of a basic nature the entire technical disclosure may be new in the art and the abstract should be concerned with the entire disclosure. In either case it should be clear from the abstract where the inventive contribution to the technical field lies by indicating this in the opening sentence(s). The main specifics about the invention and how it can be practised should then be set out.

The abstract should be drafted so that it constitutes an efficient instrument for the purposes of searching and disclosure in the particular technical field, in particular by making it possible to assess whether there is a need to consult the specification itself. The scope of the abstract, and the words used in it, should be selected to ensure that retrieval from electronic databases is likely when searching similar applications at a later date.

The check list in the “WIPO Standard ST.12/A” provides a useful guide for the writer or reviser of an abstract. It indicates that, provided that the specification contains the information, the abstract should include the following:-

(a) where the invention is an article, its identity, use, construction, organisation and method of manufacture;
(b) where the invention is a chemical compound, its identity (structure if appropriate), method of preparation, properties and uses;
(c) where the invention is a mixture, its nature, properties, use, essential ingredients (identity, function), proportions of ingredients (if significant), and preparation;
(d) where the invention is a machine, apparatus or system, its nature, use, construction, organisation and operation;
(e) where the invention is a process or operation, its nature and characterising features, material and conditions employed, product (if significant), and the nature of a relationship between the steps, if more than one.
(f) where the disclosure involves alternatives, the abstract should deal with the preferred alternative and identify the others if this can be done succinctly; if this cannot be done, it should mention that they exist and whether they differ substantially from the preferred alternative.

This checklist is for guidance only. In particular the content of the abstract should be determined by the new technical disclosure of the specification rather than by the nature of the claims.

Where features are merely preferred or optional, the abstract should avoid any implication that they are essential to the invention. If the disclosure involves alternatives, the abstract should deal with the preferred alternative and identify the others, if this can be done succinctly; if this cannot be done, it should mention that they exist and whether they differ substantially from the preferred alternative. Where the claims relate to more than one invention, the subject matter of the further inventions should be included in the abstract, even though no search may yet have been carried out in respect of these inventions.

Where the specification contains extensive numerical data or tables, eg relating to physical properties or compositions, the presence of such data, and their nature, should be indicated in the abstract, if this can be done briefly.

The general nature of a chemical compound or composition should be given as well as the use thereof, eg “the compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics”. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example. Wherever applicable, the chemical formula should be given which, among all the formulae contained in the specification, best characterises the invention.

[When a search examiner wishes the abstract to be accompanied by a formula (other than one which can be typeset in normal typescript), they will generally have to provide a copy for use in preparing the front page of the ‘A’ publication].

For this purpose, the examiner should provide a document on the dossier containing a copy of the formula in question from a suitable page of the description or claims. This document may be created and imported onto the dossier electronically; or alternatively, created manually and subsequently scanned on to the dossier. A minute should also be added to the dossier giving clear instructions to Formalities concerning the document’s inclusion in the publication sub-file.

The quality of the copy of the formula will be checked in Publishing Section for suitability for reproduction and a fresh copy will be made there if necessary. The above action is of course unnecessary if the abstract already includes an acceptable representation of the formula or a suitable formula drawing see 15A.09 is available. ]

r.15(2) is also relevant

An abstract should normally contain not more than 150 words, as it is unlikely to be considered to be concise if it extends beyond 150 words. However, if a longer text is considered essential, there is space on the front page which will accompany the published specification for approximately 200 words. Abstracts should therefore contain 200 words at the very most (including any reference numerals). Unnecessary phrases such as “the invention relates to” or “and the like” may be deleted, and an unduly long introductory statement which only indicates what is old and well-known may be curtailed or deleted. While the removal of such superfluous matter is of particular importance when the abstract is longer than 150 words, it may also be deleted even if the abstract is short.

It is not necessary for the abstract to indicate the kind of protection sought by the claims. Thus for example if an apparatus has been described in the abstract and the specification includes claims to a method of using the apparatus and/or to an article produced by the apparatus, there is no need for the abstract to indicate this if the technical features of the method and article are implicit in the description of the apparatus.

The legal phraseology or the sentence structure used in patent claims, should be avoided in abstracts. Thus an abstract that is identical to, or closely resembles, an independent claim should not be filed, nor should an abstract use words commonly associated with patent claims such as “said” and “means”.

The search examiner must keep in mind that the abstract is an important search tool and if it is unsatisfactory for that purpose they should amend it. A critical appraisal of the abstract by the search examiner is therefore necessary although this should not involve a rigorous analysis to determine how far r.15 is complied with. They should not attempt extensively to rewrite it for simply stylistic reasons. Thus if an abstract does not reflect the main contribution to the art in an application (eg where the claim is heavily anticipated or badly drafted) the search examiner should amend the abstract to incorporate that contribution. It may also be necessary to add to an otherwise adequate abstract one or two phrases to ensure that it reflects all of the matter in the application which has been classified including any further inventions.

[Any required amendments should made to the copy of the abstract provided on PROSE.]

When reframing an abstract to make it an effective search tool, care should be taken to avoid adding matter not in the specification (but see 14.171 for the procedure where the abstract as filed includes matter not present in the specification). Before amending an abstract, the search examiner should read enough of the description to be certain that the alterations are accurate. The minimum to be read depends on what is necessary for the search examiner to obtain a clear understanding of the essential nature of the invention. Where a statement of the background of the invention is included in the abstract it should not normally be deleted, since it will frequently help to explain the solution provided by the invention.

The search examiner should resist the temptation to amend an abstract which adequately fulfils its purpose merely because they would have written it differently. Nor should subject-matter be deleted merely because it does not appear to be useful search material in the heading(s) in which the application is classified. In particular, matter relating to the use of the invention may appear to be of no relevance to the s.17 searcher, but may well be useful to other readers.

r.15(4)-(6) is also relevant

Drawings particularly for the abstract are not required and should not be filed. The applicant is required to indicate on the abstract which figure, or, exceptionally, figures of any drawings of the specification should accompany the abstract when published. If they have not done so it is up to the search examiner to decide which figure(s) should be used and to record this as outlined in 14.190 . The search examiner may decide that one or more figures other than those suggested by the applicant may be used instead or additionally if they consider that they better characterise the invention. Normally not more than one figure should accompany the abstract. Exceptionally two figures may be used provided that, when sufficiently reduced in size to be accommodated on the front page of the application, they, together with the reference characters thereon, would still be readable. [No objection should be raised under r.15(4) in the event that no figure has been indicated on the abstract. In such circumstances the search examiner should decide upon a suitable figure. ]

It should be clearly apparent from the abstract what the or each accompanying figure represents. To aid identification of features mentioned in the abstract, relevant reference numerals which appear in the selected figure(s) should be freely used in the abstract. Numerals which appear only in other drawings should normally not be used, although exceptionally, a numeral which is considered necessary for an understanding of the abstract but appears only in these other drawings, may be referred to. Such reference should be bracketed, eg (29, Fig 16), without any additional wording such as “see” or “not shown”. When this expedient is adopted it should be ensured that reference numerals which do appear in the abstract drawing(s) are without brackets.

The search examiner should revise or check the abstract and record the number of the figure which is to accompany it (see 14.188) on the abstract itself as well as in the “Fig. Ref.” field on PROSE (see below). If no figure is to accompany it, they should record this.

[The figure number should appear separately on the page to the text of the abstract. It is not necessary to put brackets around either the figure number or the application number, although this may be done to provide additional clarity.

[The figure(s) to accompany the abstract should be recorded using PROSE by entering the figure number(s), the word “FIG” where it is a single unnumbered figure, the abbreviation “RTA” (ie ‘refer to the abstract’) when special instructions are needed or the word “None” when no figure is to accompany the abstract.

In some instances (particularly chemical cases), a figure or formula may be included in the abstract itself, rather than separately within the drawing pages. In these cases, the abbreviation “RTA” should be recorded on PROSE, and no further information need be added to the abstract page itself; in such situations do not write “None” or “No Figure” either in PROSE or on the abstract text page.

In exceptional cases where part of a figure or a combination of two or more figures is required for the abstract, a document containing a copy of the relevant figure(s) should be provided on the dossier and annotated appropriately. This document may be created and imported onto the dossier electronically; or alternatively, created manually and subsequently scanned on to the dossier. A minute should also be added to the dossier giving clear instructions to Formalities concerning the document’s inclusion in the publication sub-file.]

Amendments to the abstract submitted before s.16 publication should be taken into account by the search examiner when deciding on the text to be published. Since however when the specification of the patent is published after grant it is not accompanied by an abstract, amendments to the abstract filed after s.16 publication serve no purpose, although of course they remain on the file and are open to public inspection. If however the applicant draws attention to an error in the published abstract which is such as to render the abstract wrong or misleading in a material respect, an erratum may be issued provided that the error arose during publication or during reframing of the abstract by the search examiner. ( See 16.33 ).

[Section 14(8) Repealed.]

Subsection (8) has been repealed, see 14.91 . [14.193-14.198 Deleted]

An intimation of withdrawal will not be acted on by the Office unless it is clear and unqualified and in writing, and from a person with the authority to make the withdrawal. The withdrawal request may be by paper or electronic communication.

Directions prescribing the form and manner in which email messages withdrawing applications should be delivered to the Office were published in the PDJ No.5946 on 7 May 2003 and came into effect from 8 July 2003. These directions are reproduced in full in the “Relevant Official Notices and Directions” section of this Manual. Email withdrawal requests should be titled “Withdrawal of patent application number GBYYXXXXX.X” and sent to [email protected] and include in the main body of the message a clear statement of withdrawal and indication that the sender is authorised to make the withdrawal. This email address should not be used for other proceedings under the Act or any other correspondence relating to business carried out by the Office. The email should be in plain text (RFC822-compliant); messages in MS-TNEF/RTF or HTML formats and messages that are encrypted or digitally signed will not be accepted. If an email request does not comply with the directions, the Office may treat the message as not having been delivered. The time and date of receipt of the email message will be taken as the time/date stamp the message receives when it enters the Office internal email system, which will not be the exact time/date it was sent. A return email message will be sent by the Office to confirm receipt of the withdrawal request; the request cannot be treated as being delivered unless this acknowledgement has been sent. (See also 14.205)

[When an application has been withdrawn (or has been refused or treated as having been withdrawn or refused) the Formalities manager should add the appropriate label to the cover of the dossier, add “Fmls comp – Terminated” action to the dossier, and carry out the appropriate COPS action (so that, regardless of whether or not the application has been published under s.16, the termination is advertised in the Journal).]

[Where on any application for which a valid notification of withdrawal is received, there is a Form 9 (and fee) already lodged but no copy of the external search report on file and/or a Form 10 (and fee) already lodged but no copy of the first substantive examination report on file, then before taking any other action the formalities examiner should refer the application to the appropriate Group Head for any action required in the examining group. The application should then be referred back to the relevant formalities manager for completion of the termination action as set out above and refund of the Form 9 and/or form 10 fee(s) in appropriate circumstances (see 14.207) ]

In General Motors Corporation (Longhouse’s) Application [1981] RPC41 a letter withdrawing the application was written, on instructions from the applicant company in the United States, by a technical assistant under the control of the authorised agent (both being employees of the applicant). Subsequently, the applicants having changed their minds, the authorised agent wrote requesting reinstatement of the application. Refusing the request, the hearing officer held that the technical assistant had the implied authority, by virtue of his employment, to make the withdrawal. In Siemens Medical Systems Inc.’s Application ( BL O/063/00 ) it was held that withdrawal takes place as of the date on which the withdrawal request is filed, and not on the date that the Register is updated to show the withdrawal.

When there is more than one applicant a request for withdrawal will not be effective if made by only some of the applicants unless it is clear that the remaining applicants have given them the express authority to do so.

It is not necessary for a request to use the words “withdrawal” or “withdrawn”; it is sufficient if the statement expresses, in whatever terms (for example by referring to “abandonment”) positive intention to terminate the application forthwith. However a statement of intention, such as that the applicant is no longer interested in prosecuting their application, is not sufficient. For example, an applicant may state that they do not intend to file a request for substantive examination; such an indication is not binding on them, and they may change their mind and file the request at any time within the prescribed period. Similarly an applicant may indicate that they do not intend to reply to a report issued under s.18(3). In such cases no specific action should be taken, the application being left to await further action by the applicant or until it is, in due course of time, treated as having been withdrawn or refused.

If the applicant or agent has indicated that they do not intend to proceed (or some such non-committal wording), but has not unequivocally and in writing withdrawn the application, and some course of action by the Office, such as search, A-publication, substantive examination, hearing, or grant, is pending, they should be asked to indicate in writing their clear intentions. If no clear withdrawal is forthcoming the application will proceed. If the applicant or agent indicates over the telephone that they wish to withdraw an application, they should be told to express their intention in writing. If no letter or email is received the request will not be acted on.

If at any time the applicant or agent purports to effect a conditional withdrawal, they should be requested to file an unqualified statement of withdrawal, failing which the application is regarded as still in being.

If an application is withdrawn before preparations for its publication have been completed it will not be published under s.16(1) (see 16.07). Thus if an applicant wishes to prevent publication of their application they must unequivocally withdraw it before preparations for publication have been completed ( see 16.02 ). The directions prescribing the form and manner of delivery of email messages to the Office to withdraw applications (see 14.199.1 state that if an application is to be withdrawn in time to prevent publication, the email message must be received by the Office up to 23.59 on the day before preparations for publication are complete; if the email messages is received after that time, it will be too late to prevent publication. If a letter requesting that an application be withdrawn and not published is received too late to prevent publication and it appears likely, even if not explicitly stated, that the applicant intended to withdraw only if publication were not going to take place, they should be asked to state clearly their intentions.

[When a request for withdrawal is received for an application already in the A- publication cycle, the divisional publication liaison officer should be contacted immediately. When a request for withdrawal is received before publication but after preparations for publication are complete (as determined by 16.02 ), the relevant formalities group will issue an appropriate letter depending on whether or not withdrawal appears to be conditional on prevention of publication. In each case subsequent action will depend on any response from the applicant. ]

r.107 is also relevant

Likewise if they wish to withdraw their application before grant they must do so before the issue of the letter informing them of the grant. If a written request for withdrawal is received in the Office before the issue of the grant letter but not in time to prevent issue of the letter, then the grant may be rescinded ( see 18.89-90 ).

[When a written request for withdrawal is received for an application already in the grant cycle, the publication liaison officer for your division should be enlisted immediately. The publication liaison officer will call a meeting of all interested parties to decide whether withdrawal is appropriate, and take the necessary steps to effect withdrawal, including communication with the applicant to formally rescind the grant by letter when the grant letter has been sent. ]

If an application in respect of which Form 9A or Form 10 has been filed is withdrawn before the report under s.17 or s.18 respectively is issued, the fee paid may be refunded. Such a refund is however a matter of discretion and not a right.

[The refund is authorised by the appropriate formalities group. ]

A withdrawn application may be used for the purposes of claiming priority for a later application, subject to the provisions of the Act ( see 5.04 ).

This subsection was added by the Regulatory Reform (Patents) Order 2004, and establishes that, although section 14(9) provides that a withdrawal may not be revoked, the withdrawal may be corrected under the provisions of section 117. This provision came into force on 1 January 2005 and applies to applications filed both before and after this date. If the application in question had been published under section 16 and the fact of withdrawal had also been published, special provisions apply ( sections 117(3),(04) and 117A ).

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Practical Law

Transferring intellectual property rights: avoiding the pitfalls

Practical law uk articles 2-504-4154 (approx. 11 pages).

What IPR are from a legal perspective.
The practicalities and consequences of the registration of registrable IPR transactions, and the due diligence to be conducted.
How to identify the relevant IPR to be transferred.
How to document the transfer.
Some important issues concerning liability arising on the transfer of IPR.

Legal nature of IPR

Confidential information, community rights, registering assignments of ipr, administrative and costs issues.

It was not practicable to register the assignment within the six-month time limit.
The assignment was registered as soon as practicable thereafter.

Protecting mortgages and charges

Registered rights due diligence.

Carry out an initial search of the register to check that the seller is the registered proprietor. Check for any earlier assignments to that seller and investigate thoroughly any such assignments and the circumstances surrounding them. If there are any such assignments, consider taking an assignment of the seller's causes of action for failure to deliver good title against his own seller (if any still remain).
Carry out a second search on the morning of completion as the IPO/OHIM update their registers at midnight following each working day.
Register the transaction on the day it completes, wherever possible, or as soon as possible thereafter.
Require the seller to assign with full title guarantee ( see " Liability " below ).

Identifying the relevant IPR

Identify the relevant registered IPR which are to be transferred.
Produce a conceptual definition of the non-registered IPR which are to be included in the sale, such as "all the company's know-how (whether recorded or not) and documentation relating to the process of manufacturing xyz".
Identify which (if any) of the IPR being transferred will still need to be used by the seller or its group after the transaction has taken place, and determine how such access is to be secured (this will usually require some form of licence back).
Identify which IPR are not going to be transferred to the buyer, and consider whether or not to write to the buyer explaining precisely which IPR are not going to be included in such a sale and why. This can stop arguments occurring later as to what was meant to be included or excluded, and should also make an action for rectification (correction) of the assignment agreement much more difficult for the buyer to win.
Properly instruct the seller's negotiating team and lawyers as to the matters above.

Documenting the transaction

Assigning by deed, method of assignment in a sale and purchase agreement, what should be assigned in an spa, country-specific agreements, patent attorney files.

The person disposing of the IPR has the right to dispose of them.
The person disposing of the IPR will do all he reasonably can do, at his own cost, to give the assignee the title he purports to give ( section 2(1), 1994 Act ).
Charged or encumbered the IPR with any charge or encumbrance, which still exists at the time of the present disposition.
Granted any third party rights in relation to the IPR, which still subsist at the time of the present disposition.
Allowed anyone else to do so.

Excluding liability

Sale of goods act 1979, mortgages and charges of ipr.

An outright assignment of the legal title in the IPR to the lender.
A right of redemption; that is, the right to have the legal title transferred back to the borrower once repayment and other obligations have been fulfilled.
Pending exercise of the right of redemption by the borrower, some form of licence back from the lender to the borrower to enable the borrower to use the IPR in its business.
The charging clause.
A transfer mechanism to allow the transfer of the IPR in the event of default.
A range of negative obligations on the borrower not to grant conflicting security or other interests in the charged IPR.

Practicalities of assignment: an overview

Problems with the ipr registration system.

Trademarks/Trade Marks
Confidentiality
United Kingdom

An International Guide to Patent Case Management for Judges

9.7.1 injunctive relief.

Often, the principal reason why a patentee will have commenced infringement proceedings will have been to seek an injunction against the defendant to prevent it from infringing the patent. The courts of England and Wales have the power to grant injunctions “in all cases in which it appears to the court to be just and convenient to do so.” 142

The exact wording and scope of an injunction is usually considered by the trial judge at the consequentials hearing. The normal form of the injunction is one in “general form,” restraining the defendant(s) from infringing the patent, as opposed to one limited to restraining the defendant(s) from performing the specific acts found by the court at trial to infringe the patent.

The granting of a general form injunction is a matter of discretion. The important issue of whether and in what terms to grant an injunction was considered by Mr Justice Birss (as he then was) in Evalve Inc. v. Edwards Lifesciences Ltd , 143 who identified the following general principles:

i) A general injunction to restrain future infringements is the normal remedy for the patentee. ii) The burden is on the defendant to give reasons why such an injunction should not be granted. iii) All the circumstances should be considered. The public interest, such as the impact on third parties, is a relevant consideration. […] iv) In a proper case, the public interest may justify refusal of or carve out from injunction, and an award of damages in lieu. […] v) The starting point of any consideration of the public interest in relation to a remedy after a patent trial is that the patent system as a whole is already criss-crossed with provisions which strike balances between different public interests. vi) The availability of an exclusionary injunction is an important manifestation of the monopolistic nature of a patent right. While monopolies in general are against the public interest, once a patent has been found valid and infringed, the patent monopoly is something which it is in the public interest to protect by an injunction in order to further the purposes of the system as a whole, such as to promote investment in innovation. vii) Therefore when […] various public interests are engaged and pull in different directions, one should have in mind that the legislator is better equipped than the courts to examine these issues and draw the appropriate broad balance. The jurisdiction to refuse or qualify a patent injunction on public interest grounds is not there to redraw the broad balance of public interests set by Parliament in the patent system. The power should be used sparingly and in limited circumstances. 144

The courts have, in an appropriate case, been prepared to grant an injunction that extends beyond the lifetime of the patent in order to deprive the defendant of the “springboard” from which it had benefited by infringement during the patent’s lifetime. 145

The courts also have the ability to tailor injunctive relief to the nature of the case. For example, in cases where the patentee is under an obligation to grant licenses on FRAND terms, the injunction may be expressed to lapse if the defendant enters into a license on the terms that the court has held to be FRAND. 146 Conversely, because the grant of an injunction is an exercise of the court’s discretion, the courts have, in appropriate cases, been prepared to refuse or limit a final injunction following a finding of infringement and substitute an award of damages in lieu of the injunction.

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Patent Prosecution Matters

Recording assignments at patent offices, importance of recording assignments at patent offices.

Patents and patent applications are a form of intellectual property – this allows them to be owned and transferred between parties, just like other forms of property.

Patent offices around the world, including the United Kingdom Intellectual Property Office (UKIPO) and the European Patent Office (EPO), maintain a register of patents (and patent applications) and their respective owners. When a patent or patent application is assigned to a new owner, the named proprietor on the register can be updated by filing a request with the relevant patent office. It is also possible to record other patent-related transactions, such as mortgages or licences.

Why is it important to record an assignment at the Patent Office?

It is recommended to record an assignment as soon as possible, as there may be negative consequences of delaying doing so. For example, although there is no statutory requirement to record an assignment against a UK patent, if an assignment is not recorded within six months then the assignee may not be able to claim costs or expenses in infringement proceeding for an infringement that occurred before the assignment was recorded.

It is also beneficial to record any assignments of European patent applications at the EPO. This is because, once granted, a European patent is validated as separate national patents. Recording a single assignment for one application in the European phase is therefore much cheaper and more efficient than doing so in multiple patent offices after grant.

Depending on the jurisdiction, there may be a requirement to record of an assignment against foreign patents and/or patent applications.

What is required to record an assignment?

Requirements for recording an assignment vary by jurisdiction, but in general a form needs to be filed giving details of the assignee, together with payment of a fee. Evidence of the transfer may also be required, such as a copy of a signed assignment document. It may be necessary to indicate the authority of the signatory on the assignment, by stating the signatory’s job title (e.g. director).

Is there anything else that I need to know?

It is important to note that the assignment of patents and patent applications may be subject to stamp duty in the UK. This will depend on the date of the transfer and whether any real property (e.g. land, buildings, etc.) or any stocks or shares in a business entity were transferred together with the IP. When recording the assignment at the UKIPO you will need to indicate either that stamp duty is not payable, or that all necessary stamp duty has been paid.

Jemma Jacobs

Intermediate generalisation.

16 June 2021

Examining Division Oral Proceedings

Correcting a patent application.

11 May 2021

What Is Added Subject Matter?

What is two-part form, what is unity of invention, a european award-winning patent and trade mark firm delivering world-class advice to enhance the commercial value of intellectual property rights globally..

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Practical Help

Registration of patent licences and assignments

A patent licence can be registered at the UK Intellectual Property Office and at the European Patent Office. Such registration is not essential but has several advantages.

Registration of patent assignments is essential in order to transfer the legal ownership in the patent.

Regardless of whether the licence is exclusive or non-exclusive, registering the licence ensures that any person who subsequently acquires rights in the patent (such as a subsequent licensee, or subsequent owner if the licensor chooses to assign the patent) is made aware of the licence.

This becomes important if the rights that are subsequently granted are inconsistent with the rights that have been previously granted. If, for example, an earlier licence is not registered, a subsequent exclusive licence or assignment would take priority over the earlier licence and the subsequent licensee or assignee would not (provided that they did not in fact know of the earlier licence) be required to honour the earlier licence. If, however, the earlier licence is registered, the subsequent licensee or assignee is prevented from denying knowledge of the licence (even if they did not actually check the register) and the earlier licensee can continue to exercise their rights.

In the case of an exclusive licence, the UK Patents Act 1977 grants the licensee additional rights.

In particular, unless stated otherwise in the licence, an exclusive licensee is entitled to bring proceedings against a third party for any infringement of the licensed patents committed after the date of the licence.

If an exclusive licensee wishes to bring such proceedings, registration of the licence has two key advantages:

it enables the licensee to easily establish that they are entitled to bring the proceedings because they are registered as the exclusive licensee; and
it ensures that, if the infringement proceedings are successful, the licensee is entitled to recover their costs and expenses from the infringer (subject to what the terms of the exclusive licence may say on this point).

An exclusive licence must be registered with the UK Intellectual Property Office within six months of the date of the licence agreement in order to protect the right of the exclusive licensee to recover their costs and expenses in any successful infringement proceedings. If the licence is not registered, the exclusive licensee loses the right to recover these costs and expenses.

Legal ownership of a patent belongs to the person whose name is on the patent register in respect of that patent. Where a patent has been assigned by agreement between the parties, but that agreement has not yet been registered, legal ownership in the patent has not yet passed (although something called "beneficial ownership" of the patent will have passed). Therefore it is essential for a patent assignment to be registered if the assignee wishes to enjoy the full benefits of legal ownership of the patent.

In addition, in the UK, if an assignment of a patent is not registered with the Intellectual Property Office within six months of the date of the assignment agreement, the assignee will lose their right to recover their costs and expenses in any successful infringement proceedings.

As patents are territorial rights, any licence or assignment that covers patents in more than one country must be registered in each relevant country. One exception to this is European patents. Where the European Patent has not yet reached the end of its opposition period after grant, the licence or assignment can be registered with the European Patent Office and will cover the bundle of European countries designated by the patent (or patent application). However, after expiry of the opposition period of a European patent, the licence or assignment must be registered in each of those European countries designated. Registration requirements differ in each county.

In the UK, registration is a simple process. To register a licence or assignment, a form must be completed and submitted to the Intellectual Property Office together with a small fee. If the form is signed by the licensor or assignor, no further evidence of the licence or assignment is required. Alternatively, it is sufficient for the licensee or assignee to submit a photocopy of the licence or assignment agreement (with commercially sensitive information removed if desired) as evidence that the licence or assignment has been granted.

In the European Patent Office there is no specific form for requesting the registration of a licence or assignment. A request must be made in writing to the European Patent Office requesting the registration, and the request must be accompanied by documents satisfying the European Patent Office that the licence or assignment has been granted. These documents may be an original or certified copy of the licence or assignment agreement. Alternatively, it is sufficient for the request to include a statement that the licence or assignment has been granted and for the licensor or assignor to sign that request.

In Austria patent licences can be registered any time. The 6 month period allowed in the UK for exclusive licences does not apply in Austria, but the patent right, the lien and all other material rights derived from the patent shall be acquired and shall become effective against third parties solely when entered into the patent register.

While the date of acquisition of licence rights shall be governed by the provisions of civil law, against third parties license rights shall become effective only on entry onto the patent register. The rank of the registered rights is determined by the order in which the petitions for entry have been lodged with the patent office. At the same time received applications shall enjoy equal rank.

The registration is made upon written request from one of the parties concerned or by judicial request. The request shall be accompanied by the document starting with grounds the entry is to be made either in its original or as a duly certified copy.

The registration of a licence on the patent register of the Austrian Patent Office secures licences in case of bankruptcy of the licensor. If the licensor goes bankrupt, the liquidator has to fulfill the contract without having an articulated right of pre-termination. Caution is called for if the liquidator exploits the licensed patent as part of the assets involved in the insolvency proceedings. In this case, the transferee of the patent is entitled to terminate the contract within a legal period of 24 hours without being bound to contractual time limits or dates. The licensee can protect himself against this unpleasant surprise only by registering the licence right onto the patent register.

Once, the licences are registered, the transferee is bound to the periods of time and dates agreed in the licence contract.

If you have any questions on this article or would like to propose a subject to be addressed by Synapse please contact us .

Requiments for the registration of assignments

Talitha Shkopiak

Talitha is an associate in the Intellectual Property group based our in London office.

Rainer Schultes

"In the UK, registration is a simple process. To register a licence or assignment, a form must be completed and submitted to the Intellectual Property Office together with a small fee."

"In Austria patent licences can be registered any time. The 6 month period allowed in the UK for exclusive licences does not apply in Austria."

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Documents required for recording assignments at the United Kingdom Intellectual Property Office

Recordal of assignments of UK Trade Marks The assignment document transfers legal ownership of the trade mark from one legal entity to another. Trade Marks Form TM16 To file an application of change to record a change of ownership, use form TM16. Form TM16 requires the following details: - trade mark number(s) - the full name of the current registered owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document The filing of form TM16 at the UKIPO incurs an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Trade Marks Form TM16P In the case of filing to record a partial assignment of goods and/or services, form TM16P should be completed. Form TM16P requires the following details: - trade mark number(s), - the full name of the current registered owner(s), - the full name and address of the new owner(s), - method of transfer (in this case assignment), - the date of assignment, which is the date on the assignment document - the list of the goods and services which are being assigned The filing of form TM16P at the UKIPO has an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Document inclusion: Although it is not mandatory to include a copy of the assignment document for filing at the trade marks registry, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy of the assignment document will suffice.

Recordal of assignments of UK Patents The assignment of a UK patent or application transfers legal ownership of the patent/application from one legal entity to another. Patents Form PF21 To file an application of change to record a change of ownership can be done using form PF21. Form PF21 requires the following information: - patent application or patent numbers - the full name of the current registered owner(s) - the full name and address of the new owner(s) - the method of transfer (in this case, assignment) - the date of assignment, which is the date on the assignment document The filing of form PF21 at the UKIPO incurs an official fee of £50. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice. A scanned electronic copy will suffice. The Patent Office may require further evidence of the transaction if the circumstances warrant it.

Recordal of assignments of UK Registered Designs The assignment of a UK registered design transfers ownership of the design from one legal entity to another. Designs Form DF12A To file an application of change to record a change of ownership is done using form DF12A. Form DF12A requires the following information: - registered design application number / registered design number - the full name of the current registered design owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document. The filing of form DF12A does not require payment of an official fee. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy will suffice.

Recordal of assignments at European Union intellectual property office (EUIPO)

Recordal of assignments of EU Trade Marks The assignment of an EU registered trade mark transfers legal ownership of the trade mark from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered trade mark application number / registered trade mark number - the full name of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document If both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signs the request verifies that the transfer is done on behalf of both parties. However, providing documentary evidence in the form of a copy of the assignment document is good practice. In all other cases, applications for recordal must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation of the assignment document is not necessary unless requested by the EUIPO. Legalisation of documents is not necessary. Currently, there is no official fee for the recordal of a transfer of rights at the EUIPO unless there is only a partial transfer for some goods or services only, which incurs an official fee.

Recordal of assignments of Registered Community Designs The assignment of a registered Community design transfers legal ownership of the registered rights in the design from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered Community design application number / registered Community design number - the full name and address of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document

Where both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signed the request verifies that this is done on behalf of both parties. However, providing documentary evidence in the form of a copy of this document is good practice. In all other cases, recordal applications must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation is not necessary unless requested by the EUIPO. Legalisation is not necessary. The official fee for recording the assignment is €200 per design.

Recordal of assignments at the European patent office European Patents and applications The assignment document transfers ownership of the European patent or patent application from one legal entity to another. The request to record the assignment needs to be filed at the EPO using form 5050 or by writing a covering letter to the EPO requesting they action the recordal of the assignment based on the covering letter. The covering letter must include: • Name and address of the current proprietor • Name and address of the new proprietor • Date of the assignment Any kind of written evidence suitable for proving the transfer of ownership is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer. Art. 72 EPC requires that for an assignment, the signatures of the parties appear on the documents submitted as evidence of the transfer. In all cases, an indication of the signatory’s entitlement to sign, e.g. his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. In particular, the EPO will examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity. Notarisation is not required unless requested by the European Patent Office. The European Patent Office does not require legalisation of documents. There is an official fee cost for recording a transfer at the EPO. This is official fee “022 Registration of transfer”, and is €105.

If you wish to record an assignment of any of the above rights, then please contact:

Luke Franks - [email protected] Robert Franks – [email protected]

Notice: whilst the above information is believed to be correct at the time of writing, requirements and procedures can change. The above should not be relied upon as definitive legal advice.

21 Jun 2018

PATENT ASSIGNMENT: HOW TO TRANSFER OWNERSHIP OF A PATENT

By Michael K. Henry, Ph.D.

Intellectual Property
Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

WHAT IS A PATENT ASSIGNMENT AND WHY DOES IT MATTER?

A patent assignment is an agreement where one entity (the “assignor”) transfers all or part of their right, title and interest in a patent or application to another entity (the “assignee”).

In simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent.

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

PATENT ASSIGNMENT VS. LICENSING

It’s common to confuse the two concepts, but patent assignment is different from licensing.

In a license agreement, the patent owner gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership.

In a patent assignment, the original owner permanently transfers its ownership to another entity.

USING EMPLOYMENT AGREEMENTS TO TRANSFER PATENT OWNERSHIP

Before your employees begin developing IP, implement strong hiring policies that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an employment agreement that establishes up front what IP the company owns — typically, anything the employee invents while under your employment.

The employment agreement should include the following provisions:

Advance assignment of any IP created while employed by your company, or using your company’s resources
An obligation to disclose any IP created while employed by your company, or using your company’s resources
An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include incentives to create and disclose valuable IP .

DRAFTING AGREEMENTS FOR NON-EMPLOYEES

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

Independent contractors: Some inventors may be self-employed.
Joint collaborators: Some inventors may be employed by, say, a subsidiary or service company instead of your company.
Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

OBTAINING WRITTEN ASSIGNMENTS FOR NEW PATENT APPLICATIONS

In addition to getting signed employment agreements, you should also get a written assignments for each new patent application when it’s filed, in order to memorialize ownership of the specific patent property.

Don’t rely exclusively on the employment agreement to prove ownership:

The employment agreement might contain confidential terms, so you don’t want to record them with the patent office
Because employment agreements are executed before beginning the process of developing the invention, they won’t clearly establish what specific patent applications are being assigned

While you can execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse (rightly or wrongly) to execute the assignment.

As such, we recommend executing the assignment before filing, to show ownership as of the filing date and avoid complications (like getting signatures from estranged inventors).

HOW TO EXECUTE A WRITTEN PATENT ASSIGNMENT

Well-executed invention assignments should:

Be in writing: Oral agreements to assign patent rights are typically not enforceable in the United States
Clearly identify all parties: Include the names, addresses, and relationship of the assignor(s) and assignee
Clearly identify the patent being assigned: State the patent or patent application number, title, inventors, and filing date
Be signed by the assignors
Be notarized : If notarization isn’t possible, have one or two witnesses attest to the signatures

RECORDING A PATENT ASSIGNMENT WITH THE USPTO

Without a recorded assignment with the U.S. patent office, someone else could claim ownership of the issued patent, and you could even lose your rights in the issued patent in some cases.

So the patent owner should record the assignment through the USPTO’s Assignment Recordation Branch . They can use the Electronic Patent Assignment System (EPAS) to file a Recordation Cover Sheet along with a copy of the actual patent assignment agreement.

They should submit this paperwork within three months of the assignment’s date. If it’s recorded electronically, the USPTO won’t charge a recordation fee .

Need to check who owns a patent? The USPTO website publicly lists all information about a patent’s current and previous assignments.

WHEN WOULD I NEED TO EXECUTE A NEW ASSIGNMENT FOR A RELATED APPLICATION?

You’ll need only one patent assignment per patent application, unless new matter is introduced in a new filing (e.g., in a continuation-in-part , or in a non-provisional application that adds new matter to a provisional application ). In that case, you’ll need an additional assignment to cover the new matter — even if it was developed by the same inventors.

WHAT IF AN INVENTOR WON’T SIGN THE WRITTEN ASSIGNMENT?

If you can’t get an inventor to sign an invention assignment, you can still move forward with a patent application — but you’ll need to document your ownership. To document ownership, you can often rely on an employee agreement , company policy , invention disclosure , or other employment-related documentation.

DO I NEED TO RECORD MY ASSIGNMENTS IN FOREIGN COUNTRIES?

Most assignments transfer all rights, title, and interest in all patent rights throughout the world.

But in some countries, the assignment might not be legally effective until the assignment has been recorded in that country — meaning that the assignee can’t enforce the patent rights, or claim damages for any infringement that takes place before the recordation.

And there might be additional formal requirements that aren’t typically required in the United States. For example, some countries might require a transfer between companies to be signed by both parties, and must contain one or both parties’ addresses.

If you’re assigning patents issued by a foreign country, consult a patent attorney in that country to find out what’s required to properly document the transfer of ownership.

NEED HELP WITH YOUR PATENT ASSIGNMENTS?

Crafting robust assignment agreements is essential to ensuring the proper transfer of patent ownership. An experienced patent professional can help you to prepare legally enforceable documentation.

Henry Patent Law Firm has worked with tech businesses of all sizes to execute patent assignments — contact us now to learn more.

GOT A QUESTION? Whether you want to know more about the patent process or think we might be a good fit for your needs – we’d love to hear from you!

Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.

14 Jun 2018

INTRODUCING OUR NEW PATENT AGENT, BRENT CLOTHIER

By Michael Henry

Don't miss a new article. Henry Patent Law's Patent Law News + Insights blog is designed to help people like you build smart, scalable patent strategies that protect your intellectual property as your business grows. Subscribe to receive email updates every time we publish a new article — don't miss out on key tips to help your business be more successful.

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Lenovo sues Asus for patent infringement, seeks US ZenBook ban

Why can't we be frands.

Updated Chinese computer manufacturer Lenovo announced on Tuesday it had filed suit against Taiwanese manufacturer Asus for patent infringement related to software, hardware and connectivity in multiple products.

In a press release , Lenovo detailed that the action was in response to August 2023 filings from Asus in the Regional Court of Munich related to cellular technologies. The Chinese giant indicated it had offered a cross-licensing deal to Asus as a solution.

The Regional Court of Munich is Germany's busiest patent tribunal and often hears mobile communication related patent cases, and even published [PDF] guidelines on FRAND – the Fair, Reasonable And Non-Discriminatory licensing framework often applied to standards-essential patents (SEPs).

Lenovo's release declared it is a "strong proponent" of licensing agreements and FRAND terms, but in the next paragraph, Chief IP officer, John Mulgrew offered a caveat:

Increasingly, we're seeing some licensors bypass FRAND discussions and rely instead on threats to extract inflated, supra-FRAND royalties from licensees.

Mulgrew called litigation a "last resort" – a resort at which Lenovo has obviously booked a room, spread out its towel on a comfy-looking banana chair, and told staff to keep bringing fruity drinks with a little umbrella on top for the foreseeable future.

Europe floats patent overhaul, which obviously everyone's thrilled about
Is America's chip blockade working against China? So far, our survey says: No
Mega patent holder Huawei said to be putting licensing squeeze on SMEs
Acer, Asus, Dell, HP, and Lenovo sign up for $42 billion scheme to make kit in India

In a statement filed with the US International Trade Commission (ITC), Lenovo stated it seeks a limited exclusion order barring US entry to accused products. Those products are named as laptops, notebooks, 2-in-1 tablet computers tablets, desktop PCs, tower PCs, workstations, routers and components that infringe on four different patents.

The offending items include products like the Asus Zenbook Pro and Flip 14 with its 360° ErgoLift hinge.

Lenovo claimed in its lawsuit that it "has suffered, and continues to suffer, immediate and irreparable harm as a result of Defendants' past and continuing infringement" and therefore called for Asus to "cease and desist from marketing, advertising, distributing, offering for sale, selling, or otherwise transferring, including the movement or shipment of inventory" the infringing products.

In its letter to the ITC, Lenovo argued no harm will befall US consumers if ASUS products are banned, given the Taiwanese company’s small share of the US PC market (2.9 percent in Q2 2023) means consumers will not be starved for alternatives. Maybe even from Lenovo.

Among the four disputed patents is one concerning improvements that reduces the number of steps – and thereby overall delay – when transmitting an uplink package; a Wireless Wake-On-LAN Power Management technique; an invention that allows a user to initiate a diagonal scroll at any location by using two fingers; and a hinge block that enables a laptop to convert to a tablet.

Lenovo’s suit was filed on November 15 in the US District Court for the Northern District of California.

In its California lawsuit, the ThinkPad-maker claimed it is entitled to damages, including lost profits, caused by the alleged patent infringement. ®

Updated to add:

Asus has been in touch to refer to its statement on the Taiwan Stock Exchange, saying that "with respect to the ongoing litigation, ASUS will diligently safeguard its rights in accordance with the law. However, we are not able to make any specific comments about this case."

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Biden's facing the clock to veto apple watch import ban after itc patent ruling, ericsson sues lenovo over 5g patents, accuses it of stalling talks, martin goetz, recipient of the first software patent, logs off at 93, apple and lenovo are dropping the ball for visually impaired users, asus thinks outside the 4″ x 4″ box with plans for custom nucs, judge tosses sonos's $32.5m patent win over google with savage slam down, lenovo to offer android pcs, starting with an all-in-one that can pack a core i9.

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D Young & Co
An assignment of a UK patent (or application) must be in writing and signed by the assignor. It used to be the case that an assignment of a UK patent (or application) would need to be signed by both parties, however the law was changed in 2005. In reality, both parties will usually sign the assignment agreement.
Change or update your patent
Fill in an appointment or change of agent form and send to IPO to: appoint someone to deal with your patent for you change your representative change your representative's details change the...
Assigning patent rights to others
An assignment of a patent or patent application is void unless it is in writing. Post 1 January 2005, the need for assignments to be signed by both assignees and assignors was removed for assignments of UK patents. This change was effected via the Regulatory Reform (Patents) Order 2004.
Intellectual Property Transactions in the UK: Overview
1. Give a brief overview of the main IPRs in your jurisdiction and how they are protected. Patents To patent an invention it must: Be novel. Involve an inventive step. Be capable of industrial application. Patent protection does not cover: Scientific or mathematical discoveries, theories or methods. Literary, dramatic, musical or artistic works.
The Basics Of Patent Law
Any assignment of a UK patent or application, or a UK designation of a European patent, must be in writing and signed by, or on behalf of, the assignor. For an assignment by a body corporate governed by the law of England and Wales, the signature or seal of the body corporate is required (PA s.30-31).
Transfer of IP rights in the UK (and EPO)
A patent can be transferred by legal transaction, court order, will or succession. There is no requirement to record an assignment at the UK Intellectual Property Office (IPO) in order for it to become effective. It is nevertheless advisable to do so. Assignment of a European patent application must be registered at the European Patent Office ...
Assignments
An assignment of a UK patent (or application) must be in writing and signed by the assignor. It used to be the case that an assignment of a UK patent (or application) would need to be signed by ...
Patent assignment
Published by a LexisNexis IP expert Practice notes This Practice Note provides guidance on the assignment (transfer) of patents and patent applications. It covers the formalities for assigning patents, the procedure for registering (or recording) the transactions and key points to consider in drafting an assignment.
Basics of patent law: assignment and licensing
Any assignment of a UK patent or application, or a UK designation of a European patent, must be in writing and signed by, or on behalf of, the assignor. For an assignment by a body corporate governed by the law of England and Wales, the signature or seal of the body corporate is required (PA s.30-31).
Assignment of patents (pro-assignee)
An agreement for the assignment of UK patents, drafted from the assignee's perspective. To access this resource, sign in below or register for a free, no-obligation trial Sign in. Contact us. Our Customer Support team are on hand 24 hours a day to help with queries: +44 345 600 9355 ...
Patent forms and fees
1. Online patent forms Please note that the search, substantive examination and application fees are all reduced when filed online as set out below. 2. Other online services 3. Patent...
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A standard patent application and invention assignment conveying all rights in the patent application, inventions disclosed in the application, and any related applications and resulting patents from the inventor to an assignee. The executed assignment can be recorded with the US Patent and Trademark Office (USPTO). This Standard Document includes integrated drafting notes with important ...
Manual of Patent Practice
The section applies to applications for patents under the Act, including international applications (UK) which have been published under the PCT and entered the UK national phase (and are...
Application to register or give notice of rights
Use this form to apply to register a change of ownership or give notice of rights acquired in a patent or in an application for a patent. From: Intellectual Property Office Published 29 April...
PDF Application to record a change of ownership or give notice of ...
(REV OCT 16) Intellectual Property Office is an operating name of the Patent Office Patents Form 21. Patents Form 21. Patents Act 1977 (Rule 47) Application to record a change of ownership or give notice of rights . acquired in a patent or patent application (See the notes on the back of this form) 1 Your reference:
Manual of Patent Practice
Request for the Grant of a Patent Show 1. Reference Number Show 2. Applicant's Details Show 3. Title of Invention Show 4. Address for Service Details Show 5. Declaration of Priority Show 6....
Transferring intellectual property rights: avoiding the pitfalls
Registering assignments. The UK patent and registered trade mark regimes provide that unless assignments, mortgages and charges of such rights are registered at the UK Intellectual Property Office, they do not bind those who subsequently acquire, in good faith, a conflicting interest in them, at a time when they did not know of the earlier unregistered transaction.
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The UK patent system is governed by the Patent Act. Discover how the patent system works in the United Kingdom.
Recording Assignments At Patent Offices
Importance Of Recording Assignments At Patent Offices. Patents and patent applications are a form of intellectual property - this allows them to be owned and transferred between parties, just like other forms of property. Patent offices around the world, including the United Kingdom Intellectual Property Office (UKIPO) and the European Patent ...
Registration of patent licences and assignments
Registration requirements differ in each county. In the UK, registration is a simple process. To register a licence or assignment, a form must be completed and submitted to the Intellectual Property Office together with a small fee. If the form is signed by the licensor or assignor, no further evidence of the licence or assignment is required.
PDF Patents Form 21
8. Agent or address for service to be used by the new owner. New owners "Address for Service" in the United Kingdom, Gibraltar or the Channel Islands to which all correspondence should be sent....
Recordal of assignments of UK Trade Marks
The assignment of a UK patent or application transfers legal ownership of the patent/application from one legal entity to another. Patents Form PF21 To file an application of change to record a change of ownership can be done using form PF21. Form PF21 requires the following information:
Patent Assignment: How to Transfer Ownership of A Patent
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Lenovo takes rival Asus to court for patent infringement
Wed 22 Nov 2023 // 05:30 UTC. Updated Chinese computer manufacturer Lenovo announced on Tuesday it had filed suit against Taiwanese manufacturer Asus for patent infringement related to software, hardware and connectivity in multiple products. In a press release, Lenovo detailed that the action was in response to August 2023 filings from Asus in ...

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11. Request

12. Person to contact

Application of Rule 4(2)

Amendment or correction of Form 1

Form and presentation of documents

Size and presentation

14.31 [deleted]

Alterations

Further requirements for drawings

14.46 Flow sheets and diagrams are considered to be drawings.

Content of the application

Some requirements for the technical content