IPA patent 6.1.7.3-pct-articles-5-and-6 — IP Australia Patent Manual of Practice and Procedure – 6.1.7.3 PCT Articles 5 and 6

Also in this Chapter:​​​​​​​ 6.1.7.1 Claim Interpretation According to the PCT Guidelines 6.1.7.2 Broad Claims ​​​​​​​ 6.1.7.4 Claims Lacking Clarity and Excessive/Multitudinous Claims 6.1.7.5 Procedure for Informal Communication with the Applicant Key Legislation: Patent Cooperation Treaty (PCT): Article 5 The Description Article 6 The Claims PCT ISPE Guidelines: Paragraph 5.29 Paragraphs 5.43 – 5.44 Paragraph 5.45 Paragraph 5.55 Patents Act: s40 Specifications Related Chapters: 5.6.7 Full Disclosure, Sufficiency, Clarity, Support and Usefulness (s40) 6.1.7.4 Claims Lacking Clarity and Excessive/Multitudinous Claims Annex J On this Page Introduction PCT Article 5 Interpretation of PCT Article 5 Determining whether undue experimentation is required PCT Article 6 Interpretation of PCT Article 6 Claims extend beyond the disclosure Claims are inconsistent with the description Citing documents for Article 6 objections Overlap between PCT Articles 5 and 6 Examples Introduction The provisions of Articles 5 and 6 are equivalent to the requirements of subsections 40(2)(a) and 40(3) following the Raising the Bar Act . In general, examiners may follow the guidance provided in 5.6.7 Full Disclosure, Sufficiency, Clarity, Support and Usefulness (s40) when considering issues arising under Articles 5 and 6. However, examiners should only raise serious deficiencies in international examination. PCT Article 5 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. Interpretation of PCT Article 5 PCT Article 5 focuses on the disclosure of the specification and considers its sufficiency. However, because it is necessary that the invention is enabled across the full scope of the claims, the breadth of the claims is also a consideration as to whether the description is sufficient. The PCT Guidelines state that the disclosure of the claimed invention is considered sufficiently clear and complete if it provides information which is sufficient to allow the invention to be carried out by a person skilled in the art as of the international filing date, without undue experimentation (see PCT/GL/ISPE/12 paragraph 5.45 ). Although a reasonable amount of trial and error is permissible, a person skilled in the art must — on the basis of the disclosure of the claimed invention and the general knowledge — be able to carry out the invention without undue experimentation. Determining whether undue experimentation is required In determining whether undue experimentation is needed to carry out the claimed invention, a well-founded objection must consider each of the following points: the breadth of the claims the nature of the invention the general knowledge of a person skilled in the art the level of predictability in the art the amount of direction provided in the application, including references to prior art the amount of experimentation required to carry out the claimed invention on the basis of the disclosure Any objection made under Article 5 of the PCT should include at least a brief consideration of each of these points. The objection should give particular emphasis to the amount of experimentation required. PCT 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. Interpretation of PCT Article 6 PCT Article 6 focuses on the claims and considers clarity and conciseness, and whether or not they are supported. The issues of clarity and conciseness are not discussed here — see also 6.1.7.4 Claims Lacking Clarity and Excessive/Multitudinous Claims . The PCT Guidelines state that there must be a basis in the description for the subject matter of every claim and that the scope of the claims must not be broader than is justified by the description and drawings (see PCT GL 5.43 ) . This means that the claims must be enabled (fully supported) across their entire scope and consistent with the description. Claims extend beyond the disclosure The claims will extend beyond the disclosure and will therefore not be fully supported under Article 6 if there are well-founded reasons for believing that the person skilled in the art possessing the common general knowledge in the art would be unable (on the basis of the information given in the body of the specification as filed) to extend the particular teaching to the whole field claimed by using routine methods of experimentation or analysis (see PCT Guidelines Paragraph 5.44 ). For example, this will apply where the claimed invention cannot be performed over its full scope because a feature is missing from the claim that is necessary for the function or operation of the claimed invention (see PCT Guidelines Paragraph 5.55 ). An objection under Article 6 on this ground must set out well-founded reasons as to why the claimed invention is not enabled over the full scope of the claim. If the examiner is aware of a published document that supports their reasoning, they should refer to this document in their objection. Claims are inconsistent with the description The claims will be inconsistent with the description and will therefore not be fully supported under Article 6 if there are significant inconsistencies between the claims and the description (see PCT Guidelines Paragraph 5.29 ). For example, the description may state, or may imply, that a certain technical feature not mentioned in the claims is essential to the performance of the invention. Any objection under Article 6 on this ground must set out reasons as to why (after reading the specification) there are serious inconsistencies between the claims and the description. In response to such an objection, the claims may be amended to include the necessary feature. However, if the applicant can show convincingly by way of response that it would be clear to a person skilled in the art that the description was incorrect in suggesting that the feature in question was necessary to enable the claimed invention to be carried out, the objection will be overcome. Citing documents for Article 6 objections Documents used in support of an Article 6 objection may be listed in the International Search Report under ‘Documents Considered to Be Relevant.’ Documents that are also used for Novelty or Inventive Step purposes should be given X and Y classifications in the usual way. Documents that are used only in support of an Article 6 objection should be given an L classification if their publication dates are before the priority date and a T classification if their publication dates are after the priority date (see 6.1.12.5.2 Citation Category ).​​​​​​​ Overlap between PCT Articles 5 and 6 Note that PCT Articles 5 and 6 should be separately considered. However, there is significant overlap between the issues considered under Articles 5 and 6. The examiner may elect to take separate objections under each of Article 5 and Article 6 in a single case. Alternatively, the examiner may take one or other of these objections, depending on which is most suitable to the facts of each case. Examples Examples of objections under Articles 5 and 6 are provided in Annex J .