6.3.8.8 Box VII Certain Defects

Date Published
 
 
 

Key Legislation:

Regulations under the PCT:

  • Rule 5.1 Manner of the Description
  • Rule 6.1 Number and Numbering of Claims
  • Rule 6.2 References to Other Parts of the International Application
  • Rule 6.3 Manner of Claiming
  • Rule 6.4 Dependent Claims
  • Rule 9 Expressions, Etc., Not to Be Used
  • Rule 10 Terminology and Signs
  • Rule 66.2 Written Opinion of the International Preliminary Examining Authority

Administrative Instructions under the PCT:

  • s205 Numbering and Identification of Claims upon Amendment

PCT ISPE Guidelines:

Related Chapters:

 

On this page

Introduction

Box VII deals with defects in the form or contents of the international application. For example, failure to comply with one or more of the requirements specified in Rules 5 to 11. Whilst most of the aspects relating to formalities will have been checked by PCT Unit prior to examination, there will be some formality matters which ought to be reported upon by the examiner. These include matters covered in Rules 5.1, 6.1(b), 6.1(c), Ad. Inst. 205, 6.2, 6.3, 6.4, 9 and 10, and Rule 66.2(a)(iii). Some of the matters which may be encountered by an examiner are discussed below.

Omnibus claims

Claims shall not, except where absolutely necessary, rely, in respect of the technical features of the invention, on references to the description or drawings [Rule 6.2(a)]. 

In general, examiners should consider that the scope of omnibus claims is not definite unless the omnibus claims are absolutely necessary and therefore should not search or report on these claims. Under these circumstances where the omnibus claims have not been searched or reported on, the International Search Report (ISR), International Search Opinion (ISO), International Preliminary Examination Opinion (IPEO), International Preliminary Report on Patentability Chapter 2 (IPRPII), or International Type Search report is required to include the following information:

Box II:

Examiners should ensure that

  • Box 2 is checked

  • claim number(s) are identified

  • the following text (or similar) appears directly below:

The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings.

See Annex O for an example of an International Search Report with omnibus claims.

Note: For Citations Box C, ‘Documents Considered to be Relevant’: The claim number(s) of any omnibus claim(s) which have not been searched, should not be included in the ‘Relevant to claim No.’ column.

International Search Opinion

Box III:

Examiners should ensure that​​​​​​​​​​​​ the following boxes are checked and the claims which have not been examined are indicated in each case.

  • The second box is checked and the claim(s) indicated.
  • The sixth box is checked and the claim(s) identified.

To check the sixth box, tick the box in Doc-Gen that states:

No international search report has been established for said claims Nos. because they relate to parts of the international application that do not comply with the prescribed requirements to such an extent that no meaningful international search can be carried out. 

Box V:

Claims that fail to meet the requirements of Rule 6.2(a) and thus have not been searched, should be omitted from Items 1 and 2.

Box VII:

Claims that fail to meet the requirements of Rule 6.2(a) are indicated in this box. Examiners should include text such as the following (or similar):

The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings.

See Annex O for an example of an International Search Opinion with omnibus claims.

International Preliminary Examination Opinion or International Preliminary Report on Patentability Chapter 2

Box III:

Examiners should ensure that the second and sixth boxes are checked, and the claims which have not been examined are indicated.

Box V:

Claims that fail to meet the requirements of Rule 6.2(a) and thus have not been searched, should be omitted from Items 1 and 2.

Box VII:

Claims that fail to meet the requirements of Rule 6.2(a) are indicated in this box. Examiners should include text such as the following (or similar):

The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings. 

Written Opinion Sheet:  

Claims that fail to meet the requirements of Rule 6.2(a) and thus have not been searched, should be omitted.

Supplemental Box:  

Claims that fail to meet the requirements of Rule 6.2(a) are indicated under ‘Other Observations’. Examiners should include text such as the following (or similar):

The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings.

Numbering of claims

If there are several claims, the claims should be numbered consecutively in Arabic numeral [Rule 6.1(b)]. Claims that fail to meet the requirements of Rule 6.1(b) are indicated in Box VII (see PERP [T34]).

Multiple dependent claims

A multiple dependent claim is a dependent claim which refers to more than one other claim. Multiple dependent claims shall not serve as a basis for other multiple dependent claims, except where this matter of claiming satisfies the national law of a designated state. Since our national law allows multiple dependant claims it is not necessary to comment on these aspects in the opinion/report. See Rule 6.4(a).

Other issues such as the numbering of claims after amendment [Ad. Inst. 205(a)] and reference to non-existent drawings are not defects in the form or content and do not need to be mentioned in Box VII (see 6.3.9.2 Formalities).

Amended Reasons

Amended Reason Date Amended

Edited for better readability and accessibility. Edited for consistency with Style Manual. Added subheadings and On this Page menu. Updated link text. 

Added link to RIO guidance material for processing PCT tasks box VII.

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