Penife International Ltd, R (on the application of) v HM Comptroller-General of Patents, Trademarks & Designs

This is an application for judicial review in a patent matter. The applicant is Penife International Limited. The respondent is the Comptroller General of Patents, Designs and Trademarks. This application concerns the proper interpretation and application of various provisions of the Patent Co-operation Treaty (“the PCT”). Before me the applicant is represented by Mr Michael Edenborough and the Comptroller by Miss Fiona Clark.

On 28 May 2003 the applicant filed at the United Kingdom Patent Office a PCT request form, PCT/RO/101, together with certain supporting documentation. On page 3 of the form the applicant indicated that it claimed priority from its earlier GB patent application 0212624.1 which has a priority date of 31 May 2002. On page 4 of the form the applicant stated that the application contained four sheets consisting of the request and declaration sheets, three sheets of description, two sheets of claims, one sheet of abstract and three sheets of drawings. It said, accordingly, that 13 sheets were sent to the Patent Office. Unfortunately, for reasons which have not been explained, the two discrete pages of claims were omitted. The single sheet of abstract was also omitted. The latter omission is not relevant to this application.

On 10 June 2003 the Patent Office sent the applicant form PCT/R0/103, which is an invitation to correct defects. That document drew attention to the omission of the claims. On 1 July of this year the applicant's patent agents wrote to the Patent Office filing a single page containing a claim and a page setting out an abstract of the disclosure. They pointed out that, if the Patent Office determined that there had been a failure to file the necessary claims, the adverse consequences to the applicant could be severe. It would lose its entitlement to claim priority from its May 2002 British application with the result that in many countries it may have invalidated its patent by its own prior use or disclosure. They asserted that there had been no failure to file the necessary claims with PCT/R0/101. A description had been filed and this included, as usual, a consistory clause. The latter, they argued, was a claim.

The matter eventually led to a hearing in the Patent Office. By a decision dated 5 November 2003, Mr H E Edwards, deputy director acting on behalf of the Comptroller, held against the applicant. He held that there had been a failure to comply with the requirements of Article of 11(1) of the PCT. By the current proceedings the applicant seeks to quash that decision.

Article 11(1) PCT provides, insofar as material:

“(1)

The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:

...

(iii)

the international application contains at least the following elements:

(a)

an indication that it is intended as an international application,

(b)

the designation of at least one Contracting State,

(c)

the name of the applicant, as prescribed.

(d)

a part which on the face of it appears to be a description,

(e)

a part which on the face of it appears to be a claim or claims.

(2)

- (a) If the receiving Office finds that the international application did not, at the time of receipt, fulfil the requirements listed in paragraph (1), it shall, as provided in the Regulations, invite the applicant to file the required correction.

(b)

If the applicant complies with the invitation, as provided in the Regulations, the receiving Office shall accord as the international filing date the date of receipt of the required correction.

(3)

Subject to Article 64(4) any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.

(4)

Any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) shall be equivalent to a regular national filing within the meaning of the Paris Convention for the Protection of Industrial Property.”

It is because the Patent Office has held that there has been a failure to fulfil the requirements of article 11(1)(iii)(e) that the provisions of article 11(2) apply and the date of receipt of the application is deemed to be the date on which the correction was filed, namely, 2 July 2003. It will be noticed that article 11(1)(iii) does not require filing of the abstract. That is the reason why the failure to do so is of no relevance to this application.

Mr Edenborough’s central argument is short and simple. There is no requirement in the PCT that the description and claims form separate parts of the application. One document, or part, can perform both functions. The obligation on the receiving office, in this case the Patent Office, is to “find” some part which appears to be a claim. He says that this should be treated as a matter of substance not mere form. On that basis he criticises the decision. He says that Mr Edwards was looking for a “part” identified as containing one or more claims. He should have accepted the applicant's submission that the consistory clause is, as a matter of standard drafting practice, normally in identical terms to the claims found after the description. It therefore sets out the protection sought by the prospective patentee. At least when no separately identified claims are set out, the consistory clause appears to be the claim.

The distinction between the claims and the description is basic to the PCT. Article 5 PCT provides:

“The description

The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.”

Whereas Article 6 PCT provides:

“The claims

The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.”

The last sentence of Article 6 emphasises the inter-relationship between the specification and the claims. The latter has to be supported by the former, but their functions are different. The former is designed to teach the world how the invention works and can be used. The latter is designed to allow the patentee to declare what he claims as his monopoly. Because of their distinct functions it is standard drafting practice to have them separately identified and on different sheets of paper. However, this is not merely a matter of convenient practice. It is, at the very least, encouraged by the PCT and the rules made under it.

First, Article 11(3) itself suggests that the claims and descriptions are separate. It is for this reason that it refers to the application containing a number of “elements”, including “a part”, which on the face of it appears to be a description, and “a part” which on the face of it appears to be a claim or claims. This may not prevent an inventor from incorporating his claims into the body of description, but it does require that there be identifiable parts, one of which consists of the claim or claims.

In addition, Article 58 PCT provides, insofar as material, as follows:

“Regulations

(1)

The Regulations annexed to this Treaty provide Rules:

(i)

concerning matters in respect of which this Treaty expressly refers to the Regulations or expressly provides that they are or shall be prescribed,

(ii)

concerning any administrative requirements, matters or procedures,

(iii)

concerning any details useful in the implementation of the provisions of this Treaty.”

The Regulations also reinforce, if not mandate, good drafting practice in relation to the description and claims. Thus PCT rule 3 provides:

“3.1.

Form of request

The request shall be made on a printed form or be presented as a computer print-out.

3.2

Availability of forms

Copies of the printed form shall be furnished free of charge to the applicants by the receiving Office, or, if the receiving Office so desires, by the International Bureau.

3.3

Check list

(a)

The request shall contain a list indicating:

(i)

the total number of sheets constituting the international application and the number of the sheets of each element of the international application: request, description (separately indicating the number of sheets of any sequence listing part of the description) claims, drawings, abstract.”

It will be recalled that the request form sent by the applicant to the Patent Office contained a check list which set out separately, amongst other things, the number of sheets of description and the number of sheets of claims which were meant to be sent with it.

This is consistent with PCT rule 11 which, insofar as material, provides:

“11.4

Separate sheets etc.

(a)

Each element (request, description, claims, drawings, abstracts) of the international application shall commence on a new sheet. …

11.7

Numbering of sheets

(a)

All the sheets contained in the international application shall be numbered in consecutive Arabic numerals.

11.8

Numbering of lines

(a)

It is strongly recommended to number every fifth line of each sheet of the description, and of each sheet of claims. …

11.9

Writing of text matter

(a)

The request, the description, the claims and the abstract shall be typed or printed.

11.10.

Drawings, formulae, and tables, in text matter

(a)

The request, the description, the claims and the abstract shall not contain drawings.

(b)

The description, the claims and the abstract may contain chemical or mathematical formulae.

(c)

The description and the abstract may contain tables; any claim may contain tables only if the subject matter of the claim makes the use of tables desirable. …”

All of these, and PCT rule 11.8(a) in particular, suggest that the description and claims will be set out on separate sheets.

There is no express reference to consistory clauses in the PCT or its rules. In English patent drafting practice they can be traced back to a time when claims could be invalidated if they were not “fairly based” on the disclosure in the specification: see, for example, Patents Act 1949 section 32(1)(i). The idea was that if the wording of the claim was repeated in substance in the specification it formed part of the description and therefore the claim could not fail for lack of fair basis. It was a rather formalistic attempt to overcome an objection of substance. Even if it did not always work, it became common practice to insert consistory clauses so as to form of the description of the invention.

The practice still continues. As Mr Davies, a partner in the applicant’s patent agents, said in a witness statement served in support of this application, it is standard drafting practice. Miss Clark also said that the rules encouraged the draftsman to include a passage in the description which equates with the wording of the claims. She argued that that is the effect of PCT rule 5.1(a)(iii) which provides:

“5.1

Manner of the description

(a)

The description shall first state the title of the invention as appearing in the request and shall:

...

(iii)

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

Against that background I can consider Mr Edenborough’s argument. His major submission is that the Patent Office must look at the documents filed and as a matter of substance discover whether there is a claim.

I do not accept this submission. The function of the Patent Office as receiving office under the PCT is largely formal. Miss Clark drew my attention to paragraph 219(ii) of the PCT Applicant’s Guide which explains that:

“(ii)

The international application is checked by the receiving Office to determine whether it meets the requirements prescribed by the PCT as to the language, form and contents of international applications (the checks performed by the receiving Office are of a formal nature and do not go into the substance of the invention);”

This is consistent with the provisions of Article 11(1). The receiving office, which in many cases will act as little more than a staging post before the application is forwarded to WIPO and an examining body, has to ensure that certain minimal formal requirements have been complied with. These formal requirements include those set out in article 11(1)(iii). It is not required to test to see whether there is a description which meets the functional requirements of Article 5 PCT, merely that there has been filed an application which contains a part “which on the face of it appears to be a description”. Similarly it is under no obligation to determine whether there are one or more claims which meet the functional requirements of Article 6 PCT. It only has to see whether the application contains a part “which on the face of it appears to be a claim”. The check is superficial. In making that check no doubt the Patent Office will bear in mind normal drafting practice, including those required by the regulations.

As Mr Edwards noted in his decision, according to such practice there are standard features used to indicate what are the claims. As he said, the claims are distinguishable from the description, usually being placed after the description and starting on a new sheet. They have a heading, such as “claims”, and they are in numbered paragraphs in the manner of a list. He did not suggest that these features, save for the requirement that the claims are started on a new sheet, are required by the treaty or the regulations made under it. Nevertheless, they are almost invariable features used in patent applications to identify the claims. None of them are present here. There is nothing in the description which suggests that the consistory clause is put being forward as a claim. So, on its face, there is nothing here which appears to be a claim.

I do not accept the submission that the Patent Office must dig further to find something which will be capable of performing the function of a claim.

Miss Clark goes further. She points out that Article 3 PCT requires the international application to comply with the prescribed physical requirements, meaning the requirements set out in the regulations. Further, that Article provides that the international application:

“shall contain, as specified in this Treaty and Regulations, a request, a description, one or more claims, one or more drawings (where required), and an abstract.”

Therefore the request itself forms part of the international application.

When the receiving office determines whether the international application contains a part, which on the face of it appears to be a claim or claims, it is entitled to look at the request form, including the check list. If it did so here it would be reassured that the claims were contained on two separate sheets. Those sheets were not filed. That is a reason why there is nothing which appears to be the claim.

I accept that submission. The contents of the request form are a factor, not necessarily determinative, which should be taken into account when deciding whether the provisions of Article 11(3)(i) have been complied with.

In the light of the above this application must fail. There is here nothing which, on the face of it, appears to be a claim or claims. However, it appears to me that, even had I accepted Mr Edenborough's primary submission, it would not have secured success on this application. On the assumption that the Patent Office should have looked at this matter as one of substance not form, and ignoring for this purpose the wording of Article 11(1)(iii) which indicates the opposite, one arrives at the same conclusion.

It is no doubt true that the competent reader of this application would have recognised a single paragraph in the middle of page 1 of the description as a consistory clause, but he would have regarded it as part of the description which is what it is supposed to be. The whole purpose of such a clause is to repeat in substance as part of the description the concepts which are contained in the claims, but it remains part of the description. It may well give the reader a very good idea of what the inventor will set out in his claim, but it is not the claim.

The difference between consistory clauses and claims was explained succinctly by Mr Edwards in the decision as follows:

“Consistory clauses that are embedded in and part of the description are not claims.” (paragraph 15)

And:

“Examiners quite often detect discrepancies between the consistory clauses and claims, and customarily ask for them to be brought into agreement.” (Paragraph 20)

Although consistory clauses are normally identical to the claims, they are not invariably so and there is no rule which requires that they must be.

For the above reasons I will dismiss this application.