Box VIII Certain Observations

Date Published

Box VIII is used only for the specific issues of clarity of claims, description and drawings, whether the claims are fully supported by the description, and whether the number of claims is unreasonable in consideration of the nature of the invention claimed.

The issues of lack of clarity (including inconsistencies between the claims and description) and lack of descriptive support can be raised irrespective of whether they bear on the questions of novelty, inventive step and industrial applicability. However, if unrelated to the last mentioned criteria, issues of clarity should only be raised in the written opinion when they are regarded as significant issues dealing with the overall scope of the monopoly, and a claim should be regarded as supported by the description unless, exceptionally, there are well-founded reasons for believing that the skilled person would be unable, on the basis of the information given in the application as filed, to extend the particular teaching of the description to the whole of the field claimed by using routine methods of experimentation and analysis or otherwise that there are serious inconsistencies between the claims and the description. See PCT Articles 5 and 6 [Rule 66.2(a)(v) PCT/GL/ISPE/9 at para 5.31 et seq]

Where the issue is raised, based on an applicant's admissions of prior knowledge, that a claimed invention is inadequately defined, the observation should clearly state the dependency on the applicant's admissions.

It is not possible to precisely define hard and fast guidelines as to what constitutes a significant issue, and whether any observations should be made is a matter for an examiner's discretion.

Observations concerning clarity and descriptive support should not be raised in an IPRPII unless first notified in an IPEO (see Rule 66.2(a)(v)).