Knight, R (on the application of) v HM Comptroller-General of Patents, Trade Marks & Designs

This is an application for judicial review of a decision of Mr Edwards, the Deputy Director acting on behalf of the Comptroller General of Patents, Designs and Trade Marks. The applicant is Mr Brian Knight and the respondent is the Comptroller.

On 3 February 2006, Mr Knight filed at the UK Patent Office, acting as a receiving office under the Patent Co-operation Treaty (“PCT”), a PCT application from which the applicant now hopes to derive protection in Europe (via the EPO), Russia and Canada. The issue before me is whether or not that application complied with the requirements of Article 11(1) PCT because it contained “a part which on the face of it appears to be a claim or claims”. The UK Patent Office concluded it did not. At the request of the applicant, a hearing took place before Mr Edwards at which the applicant was represented by counsel. By his decision in writing of 5 May 2006, he found against the applicant. The applicant now contends that decision was wrong in law and irrational.

The applicant filed the PCT application on 3 February 2006 under cover of a letter from agents acting on his behalf which stated they were filing, inter alia, a PCT request form PCT/RO/101 (3 sheets) and a document described as “Description (6 pages), claims (2 pages), abstract (1 page) and drawings (2 sheets)”. The check list on page three of the request form was consistent with the body of the letter. It specified that the application contained the following number of sheets: “request (including declaration sheets): 3; description (excluding sequence listing and/or tables related thereto): 6; claims: 2; abstract: 1; drawings: 2”, making a total of 14 sheets. Unfortunately only 12 sheets were sent and it is now clear that the two omitted sheets contained what were intended to be the claims.

On receipt of these documents the Patent Office concluded that the two sheets of claims had been omitted and that the application did not contain a part which on the face of it appeared to be a claim or claims, contrary to Article 11(1)(iii)(e) PCT. It notified the applicant of this perceived defect on 10 February 2006 by issuing a form PCT/RO/103. That notification did not set a period for reply for filing a correction but this was rectified on 10 March 2006, when the form was re-issued inviting any response within ten days.

Thereafter, the applicant requested that a section of the text headed “Abstract” be considered as a claim or, alternatively, that a numbered list concluding the section of the text headed “Description” be treated as a set of claims. Both requests were declined by the Patent Office leading, eventually, to the hearing and decision to which I have referred. By these proceedings the applicant now seeks to quash that decision.

It is convenient at this point to set out in a little more detail the nature of the documents supplied with the application. They comprise seven consecutively numbered pages and two pages of figures. Page 1 carries the title “Spray Apparatus” and “Description”. It proceeds to explain that the invention relates to spray apparatus primarily for use in agriculture, although such apparatus may find application in horticulture or in industry generally. Page 3, lines 4-11 contain what is commonly described as a consistory clause which reads:

“Accordingly, the present invention provides spray apparatus comprising a pipe-work system that combines the feed and circulation lines on the spray boom to make a common feed when the machine is spraying and which converts back to recirculation when the sprayer is agitating, i.e. in a non-spraying condition. This also permits a reduction in the number of valves on the spray machine and greatly simplifies the pipe-work.”

Page 5, line 15 - page 6, line 2 contains that portion of the text upon which the applicant primarily relies. It reads:

“Thus the present invention permits:-

1.

The use of the return line to provide extra flow to the boom when spraying.

2.

A reduction in the size of the feed lines because the return line provides extra flow when spraying.

3.

The purging of the spray line under pressure when filling with chemical.

4.

The use of a single control valve to control the feed and return flows.

5.

The ability to clean the system by incorporating clean water into the filling point (on board tank or independent supply).”

The rest of page 6 is blank. Page 7 is entitled “Abstract”. Below that are the words “Title: Spray Apparatus” and then the following paragraph appears:

“Spray apparatus (1) of the kind having a liquid feed line (8b) connecting a supply of spray liquid (2) and at least one spray nozzle (9), a return line (8c) from the spray nozzle to the supply and a pump (3) for moving spray liquid from the supply (2) to the at least one spray nozzle (9) and for returning spray liquid from the at least one spray nozzle (9) to the supply (2) when the liquid is not being sprayed, characterised in that the liquid return line (8c) serves as at least a portion of the feed line when spraying.”

Finally, the two pages of figures are separately numbered.

The basic requirements of a PCT application are set out in Article 3 which, so far as relevant, reads:

“(1)

Applications for the protection of inventions in any of the Contracting States may be filed as international applications under this Treaty.

(2)

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

(3)

The abstract merely serves the purpose of technical information and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.

(4)

The international application shall

(i)

be in a prescribed language;

(ii) comply with the prescribed physical requirements;

(iii)

comply with the prescribed requirement of unity of invention;

(iv) be subject to the payment of the prescribed fees.”

For present purposes I would draw particular attention to the requirement that the application must contain a request, a description, one or more claims, one or more drawings and an abstract. It is also to be noted that the abstract is specifically distinguished from the claims. It provides technical information but is not to be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.

The description must disclose the invention in a manner sufficiently clear and complete enough for it to be performed while the claims define the scope of protection, as respectively made clear by Articles 5 and 6 PCT. Hence Article 5 reads:

“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.”

And Article 6:

“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.”

Once the application has been filed with a particular receiving office it is checked and processed. Importantly, it will be accorded as an international filing date the date of receipt of the application, provided the requirements of Article 11 PCT are met. So far as relevant this reads:

“(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:

(i)

the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,

(ii)

the international application is in the prescribed language,

(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.”

So the application must contain 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. If the application as filed does not contain such parts then it will not be accorded a filing date until the required correction is filed.

By contrast, Article 14 PCT deals with certain other defects in the application. If, for example, it does not contain a title, an abstract or comply with the various physical requirements called for by the Regulations under the PCT then the receiving office will invite the applicant to correct the application within a prescribed time limit and, if it is so corrected, the original filing date will be retained.

A further important role of the claims is identified by Article 15 PCT. Each PCT application is made the subject of an international search, the objective of which is to discover relevant prior art. That search is made on the basis of the claims, with due regard to the description and any drawings.

I must now turn to the Regulations under the PCT. These contain various rules concerning PCT applications and the international search. Rule 3 deals with the request which, it will be recalled from Article 3, is a part of the application. Rule 3.3 calls for a check list in the following terms:

“(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;

(ii)

where applicable, that the international application as filed is accompanied by a power of attorney (i.e. a document appointing an agent or a common representative), a copy of a general power of attorney, a priority document, a sequence listing in electronic form, a document relating to the payment of fees, or any other document (to be specified in the check list);

(iii)

the number of that figure of the drawings which the applicant suggests should accompany the abstract when the abstract is published; in exceptional cases, the applicant may suggest more than one figure.

(b)

The list shall be completed by the applicant, failing which the receiving Office shall make the necessary indications, except that the number referred to in paragraph (a)(iii) shall not be indicated by the receiving Office.”

The check list is clearly therefore something to which the receiving office must refer in considering whether or not the requirements of Article 11 are satisfied.

Rules 5 to 8 then address the manner, form and content of the description, the claims, the drawings and the abstract respectively. For the purposes of this appeal, I need only note that the description must disclose the invention, as claimed, in such terms that the technical problem and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art. As to the claims, these must be numbered consecutively and must define the matter for which protection is sought in terms of the technical features of the invention. Whenever appropriate, they must contain a statement of those features of the invention which are necessary for the definition of the claimed subject matter but which formed part of the prior art and then a characterising portion which identifies and states the features which, in combination with the prior art features, it is desired to protect. Finally, the abstract must contain, inter alia, a summary of the disclosure which allows an understanding of the technical problem, the gist of the solution to that problem and the principal use or uses of the invention.

Rule 11 identifies the physical requirements of the application and specifies, inter alia, that each element of the application, that is to say the request, the description, the claims, the drawings and the abstract shall commence on a new sheet. Further details are provided in administrative instructions issued to receiving offices that the elements of the application should be placed in the following order: the request, the description, the claims, the abstract and then the drawings. As for sequential numbering, this should be effected by using separate series of numbering: the first series applying to the request only, the second series beginning with the first sheet of the description and continuing through the claims until the last sheet of the abstract and then a further series applying to the sheets of the drawings only.

In my judgment it is clear from this framework that the role of the receiving office is to check that the application is in order in that the applicant has a right to file it, it is in an appropriate language and that it contains the various essential elements of an application. In doing so it does not carry out any form of search or examination but merely ensures the various formal requirements have been met so that the necessary searches can be carried out and that it can be properly examined by an examining body to which it has been forwarded. So far as the description and claims are concerned, the receiving office need only examine the application sufficiently to ascertain whether or not it contains a part of 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.

There was a considerable debate before me as to whether the exercise carried out by the receiving office is largely or solely a formal one. For my part, I do not find this question of much assistance. The requirement under Article 11 PCT is that the application must contain a part which “on the face of it” appears to be a claim or claims. The receiving office must consider the application sufficiently to answer that question. Whether that exercise is characterised as being largely or entirely formal seems to me to be neither here nor there. I am entirely satisfied, however, that it is not the role of the receiving office to analyse the application in detail to see if it can root out something which could form the basis of a claim or claims. I am confirmed in this view by paragraph 219(ii) of the PCT Applicants’ Guide which says:

“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);”

It seems to me that essentially this same approach was taken by Laddie J in Penife’s Application [2004] RPC 37. After referring to the Applicants’ Guide, he continued at [21] to [26]:

“21.

This is consistent with the provisions of Art.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 Art.11(1)(iii). It is not required to test to see whether there is a description which meets the functional requirements of Art.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 Art.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.

22.

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 requirements 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 being put forward as a claim. So, on its face, there is nothing here which appears to be a claim.

23.

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.

24.

Miss Clark goes further. She points out that Art.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 applications:

“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.

25.

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.

26.

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 Art.11(3)(i) have been complied with.”

Penife was primarily concerned with whether or not a consistory clause in the body of the description was something which on the face of it appeared to be a claim. For the reasons given in these paragraphs, he concluded it was not.

The applicant advanced essentially two arguments before the Deputy Director: first, that the numbered list appearing on pages 5 and 6 of the description constituted a part of the application which “on the face of it” appeared to be claims and second, that the section headed “Abstract” had the correct structure of a claim and should be admitted as such. In considering the first argument the Deputy Director took into account the various physical cues for the presence of claims identified in the Penife decision and also the contents of the check list, but concluded the argument must be rejected:

“9.

Mr Davis acknowledged in the main that the check should go to form and not substance, although he did run an alternative argument based on the substance of the abstract that was included. I will come back to that later. But he was able to make some serious points concerning the form of the “numbered list” I mentioned above, that appears on pages 5 and 6. In doing so, he referred to what in my Penife decision I called physical cues for the presence of claims, based on standard drafting practice, which might be used by non-technical staff in looking for claims. I said that such cues may be:

•

Claims are distinguishable from the description, usually by being placed after the description and starting on a new sheet

•

They have a heading such as Claims

•

They are in numbered paragraphs in the manner of a list, each paragraph comprising a single sentence

10.

Mr Davis said that the numbered list here displayed several of these cues: most importantly (and in distinction from the situation in Penife):

•

The list is distinguishable from the description in that it is at the end, and might be considered therefore to follow the description proper: crucially it is not “embedded” within it (as in Penife). The list does not admittedly start on a new sheet, but that can be remedied.

•

There is not a conventional claims heading to the list, but the phrase “Thus the present invention permits” is a heading of sorts that introduces something different, even if not explicitly claims.

•

The paragraphs are certainly numbered, and comprise single sentences.

11.

At this point Mr Davis was tempted (understandably) into matters of substance by saying that item 1 of the numbered list was a technical feature that might well form the subject of a claim.

12.

Mr Davis also took head on another difficult point for him, which was that the check list would seem to show that two pages bearing claims were missing. Mr Davis argued that the check list should be taken to indicate an intention only. I assume this argument implies that the documents as filed might be differently constituted from what is shown in the check list; so if the documents are two pages short according to the check list, that should not be conclusive that claims are not present. I do not think this view squares fully with what Laddie J. said about the Receiving Office looking at the check list (paragraphs 25 and 26 of the reported judgment). Miss Clark (for the Comptroller) had submitted that if it did so,

“…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 that 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 Art.11(3)(i) have been complied with.

13.

So the check list is not determinative; and one can imagine situations where there are discrepancies between the list and what is filed that can be reconciled without assuming that pages are missing. But where, as here, the check list indicates six pages of description (and the checker finds a unitary body of text of six pages that looks like a description), and the check list indicates one page of abstract (and the checker finds one page with text headed Abstract), and the only discrepancy is that two pages, additional in number to those found by the checker, intended as claims, are not to be found, then the first and obvious conclusion is that the pages have not been filed, and therefore, that the claims intended to be on them have also not been filed.

14.

Because of this explanation the checker would not have been put on guard to check the description for something distinguishable as claims. But if, to give the applicant the benefit here, we allow the checker to look into the body of six pages identified by the check list as constituting the description, to find the missing claims, we do not find any indication or cues that are strong enough to disturb the initial view that the claims are missing. Certainly, we find a numbered list that starts halfway down the penultimate page of this body of text, but there are insufficient cues here to identify these as claims. On the contrary, the list is included within the series of pages identified in the check list as description; the list follows on without a page break or other physical division from the preceding text; and (perhaps most importantly) it nowhere mentions the word “claim” or labels the list clearly to a non-technical checker as claims. These factors do not give the checker any justification to suppose that the list should be split off and regarded as a set of claims, in contradiction to what the check list seems to indicate. The list spanning pages 5 and 6 was therefore in my view correctly categorised throughout by the Receiving Officer as description, and not claims.”

Turning to the alternative argument, he rejected this in fairly short terms:

“15.

Mr Davis argued in the alternative that the text labelled Abstract had the correct structure for a claim and should be admitted as such. I cannot accept this because the text on that page is identified as Abstract, and as I said in Penife a body of text cannot be expected to serve two functions when convenient. It is a simple matter of labelling. Such analysis also requires something of an appreciation of the substance of the Abstract, which might be more than the checker should do.

16.

Mr Davis also raised a human rights point concerning the deprivation of property that possible loss of this international application might involve. I appreciate that the penalty for an oversight in omitting claims is severe under the provisions of the PCT, but I and the UK Patent Office are bound in this matter by the clear terms of the PCT, which is an international obligation. I also have some doubts that the failure to launch an application in the first place should be regarded as a deprivation of property under Article 1 to the First Protocol to the European Convention on Human Rights. ”

The Deputy Director therefore decided that the application as filed on 3 February 2006 did not contain a part of which on the face of it appeared to be a claim or claims and it could not therefore be accorded that date as a filing date under the PCT.

Upon this application Mr Richard Davis appeared on behalf of the applicant and Miss Fiona Clark appeared on behalf of the Comptroller. Mr Davis accepted that in order to succeed he must show that the Deputy Director erred in law or that his decision was irrational. As before the Deputy Director, he put his case two ways: first, that the numbered clauses on pages 5 and 6 of the description constituted a part of the application which on its face appeared to be claims; second, and in the alternative, the abstract on its face appeared to be a claim. In relation to both arguments, Mr Davis contended the Deputy Director erred in law in that he misdirected himself as to the correct approach to be adopted by a receiving office or was irrational in that he took into account irrelevant matters and failed to take into account relevant matters.

Mr Davis submitted that Article 11 PCT imposes upon the receiving office an obligation to determine whether or not an application contains a part which, as a matter of substance, is or could be a claim and then to ask itself whether that part can be identified without undue burden. I reject that submission. It forms no part of the role of the receiving office to carry out a detailed analysis of the application to determine whether or not the requirements of Articles 5 and 6 PCT are satisfied. For the reasons I have given, the submission is inconsistent with the terms of Article 11(1)(iii) and, indeed, with the scheme of the PCT which I have summarised. The role of the receiving office is to check the application is in order before according to it an international filing date and forwarding it for substantive examination. It is required to consider the substance of the application only so far as necessary to determine whether or not it contains a part which on the face of it appears to be a claim or claims.

Secondly, it was submitted that the Deputy Director erred in law in that he wrongly approached the question solely rather than largely as a matter of form. I reject this submission too. For the reasons I have given I believe it to be an irrelevant diversion. The only question is whether or not the application contains a part which on the face of it appears to be a claim or claims. That is the question the Deputy Director asked himself and duly addressed in paragraphs 9 to 16 of his decision. He reached the conclusion it did not. I am conscious that failure to comply with the requirements of Article 11 may have very serious consequences. But the words of Article 11 are clear and unambiguous and are no doubt well known to practitioners. They form part of a coherent scheme which enables receiving offices to check and process international applications. In all these circumstances I see no justification for attributing to the words of Article 11 anything other than their ordinary meaning.

Thirdly, it was submitted that the Deputy Director erred in law in giving disproportionate weight to the check list. It was submitted he effectively held that the check list was sufficient to create a presumption that the claims were missing.

Once again, I reject this submission. As I have explained, the check list forms part of the application and is something which the receiving office must consider. In this case the check list specified that the application contained three sheets comprising the request, six sheets of description, two sheets of claims, one sheet of abstract and two sheets of drawings, making 14 sheets in total. Examination of the documents filed reveals that there were indeed three sheets of request, a unitary body of six sheets headed “Description”, one page headed “Abstract”, albeit consecutively numbered with the pages headed “Description”, and two sheets of drawings. I agree with the view expressed by the Deputy Director in paragraph 13 of his decision that in these circumstances the first and obvious conclusion was that the two pages of claims had not been filed. But it was not the only possible explanation. The error might have been in the check list itself.

The submission as to the check list was intimately tied to the further argument that the decision of the Deputy Director was irrational in that he failed properly to consider the “physical cues” which were indicative of a claim or claims, and that in the light of these he ought to have found a part which was indeed a claim or claims. Turning to the numbered list on pages 5 and 6 of the “Description”, Mr Davis submitted that this is a perfectly good set of claims and it was irrational to decide otherwise. He submitted this part is distinguishable from and appears after the description and contains numbered paragraphs in the manner of a list. I accept this part appears at the end of the description and contains numbered paragraphs. However, to my mind it does not appear to be separate from the description; to the contrary, it appears to me to be a part of the description and to constitute a description of the benefits of the invention. It is not headed “Claims” and does not begin, as is usual, on a new sheet. Overall, I do not believe the cues upon which Mr Davis relied begin to displace the reasonable inference drawn from the check list that two pages of claims are missing. Further, all of these matters were considered by the Deputy Director in paragraphs 9 to 14 of his decision. His reasoning reveals no error of law; nor is it irrational. Indeed, I agree with it entirely.

Finally, I must deal with the alternative submission that the page headed “Abstract” is on its face a claim. It was submitted that this fulfils all the formal and substantive requirements of a claim in that it is in two part form, with the parts separated by the words “characterised in that”. Further, it starts on a new page, it appears where the claims should be, that is to say immediately after the description, it is consecutively numbered following on from the description and it has line numbering.

The fundamental problem with this submission is that the page is identified as containing the “Abstract”. This is something separate from and additional to the claims, as Article 3 PCT makes clear. Further, and once again, the check list also makes it clear that the claims appear on two sheets and the abstract on one. The Deputy Director was right to dismiss this argument, as he did in paragraph 15 of his decision.

In all these circumstances I have reached the conclusion this application must be dismissed.