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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:

  • para 5.10 Form and Content of Claims
  • para 16.30 Restriction of the Subject of the International Search

This part of the opinion or report 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. [Rule 66.2(a)(iii)]. The following is a discussion on some of the matters which may be encountered by an examiner.

Omnibus claims

According to Rule 6.2(a), claims shall not, except where absolutely necessary, rely, in respect of the technical features of the invention, on references to the description or drawings. In general, examiners should consider that the scope of omnibus claims is not definite unless they 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 ISR, ISO, IPEO/IPRPII, or International Type Search report is required to include the following information:

ISR (see Annex O for example) / INTERNATIONAL TYPE SEARCH:

Box II: ensure that Box 2 is checked, the claim no(s) identified and 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.” (or similar) in the space directly below."

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


ISO (see Annex O for example):

Box III: ensure that​​​​​​​​​​​​​​

a. The second box is checked and the claim(s) indicated; and

b. The sixth box is checked and the claim(s) identified (Note that this is facilitated by ticking the box in Doc-Gen stating:

"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")  

in each case indicating the claims which have not been examined.

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 or 2;

Box VII: Claims that fail to meet the requirements of Rule 6.2(a) are indicated in this box. The text such as “The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings.” (or similar) will suffice.

IPEO / IPRPII:

Box III: Ensure that 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 or 2;

Box VII: Claims that fail to meet the requirements of Rule 6.2(a) are indicated in this box. The text such as “The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings.” (or similar) will suffice.

INTERNATIONAL TYPE SEARCH:

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”. The text such as “The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings.” (or similar) will suffice.

In those cases where it is absolutely necessary for the claims to rely, in respect of the technical features of the invention, on references to the description or drawings, then they would be searched and reported upon.  Such searching and reporting would be done in accordance to the PCT/GL/ISPE/12 at para 16.30 (PCT/GL/ISPE/12 para 5.10 provides examples of claims where reference to the description is absolutely necessary.)

Numbering of claims

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

Multiple dependent claims

According to Rule 6.4(a) multiple dependent claims (dependent claim which refers to more than one other claim)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. [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 need not be mentioned in Box VII (see 6.3.9.2 Formalities).

Amended Reasons

Amended Reason Date Amended

Published for testing
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