6.3.8.9 Box VIII Certain Observations

Also in this Chapter:

• 6.3.8.1 Front Page and Notification Application Details
• 6.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs
• 6.3.8.3 Box II Priority
• 6.3.8.4 Box III Non-establishment of Opinion
• 6.3.8.5 Box IV Unity of Invention
• 6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability
• 6.3.8.7 Box VI Certain Documents Cited
• 6.3.8.8 Box VII Certain Defects​​​​​​​

Key Legislation:

Regulations under the PCT:

• Rule 66.2 Written Opinion of the International Preliminary Examining Authority

PCT ISPE Guidelines:

• Paragraph 5.31 Clarity

Related Chapters:

• 6.1.7.3 PCT Articles 5 and 6

• RIO - Processing PCT Tasks - Box VIII

On this page

• Issues raised in Box VIII
  • Issues based on an applicant’s admissions
  • Raising clarity and support issues in IPRPII

Issues raised in Box VIII

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
• whether the number of claims is unreasonable in consideration of the nature of the invention claimed.

The issues of lack of clarity and lack of descriptive support can be raised irrespective of whether they bear on the questions of novelty, inventive step and industrial applicability. Issues of lack of clarity can include inconsistencies between the claims and description.

If the lack of clarity is unrelated to novelty, inventive step and industrial applicability, 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.

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.

A claim should be regarded as supported by the description unless either of the following applies:

• 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.
• There are serious inconsistencies between the claims and the description.

See 6.1.7.3 PCT Articles 5 and 6,  Rule 66.2(a)(v), and PCT/GL/ISPE/12 at paragraph 5.31 et seq.

Issues based on an applicant’s admissions

Where an 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.

Raising clarity and support issues in IPRPII

Observations concerning clarity and descriptive support should not be raised in an International Preliminary Report on Patentability Chapter 2 (IPRPII) unless first notified in an International Preliminary Examination Opinion (IPEO) [see Rule 66.2(a)(v)].