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Personal Reflections on Patent
Examination
This document contains personal reflections on
some of the issues involved in the examination of patent
applications and oppositions to granted patents, especially the
importance of the correct interpretation of a text. This document
may help to understand the thinking behind a particular patent
practice, but is not about the practice of any particular
organisation. No rights may be derived from this
document.
For comments, questions & suggestions, or to get the pdf file by e-mail: c o n t a c t @ 2 6 0 4 . i n f o
Contents
1.2 Objective
of a patent system
1.3 Claims
to intellectual property
1.6 The
presumption of validity
1.8 Filing
for protection in different
countries
1.10 Patent
Cooperation Treaty
1.11 Timing of
filing, search and examination
1.12 Interpretation
of legal provisions
3 Claims
to intellectual property
3.1 Claims
to products and processes
3.4 Claims
referring to other claims
3.5 The
number of allowable
claims
4 Interpretation
of disclosures and claims
4.1 The
significance of interpretation
4.2 Interpretation
based on understanding
4.3 Interpretation
based on what is made available to the
public
4.4 Interpretation
based on enablement
4.5 The
relevant date for interpretation
4.6 Disclosures
of combinations
4.8 The
scope (and disclosure) of a claim
4.9 Review
of an interpretation
5 Limitations
to the freedom to amend
5.1 Limitation
by the content of the application as
filed
5.2 Limitation
by the protection conferred by the granted
patent
5.3 Potential
consequences of adding information
5.5 Less
safe amendments to claims
5.6 Amendment
of a claim referring to another product or
process
5.7 Amendment
of the number of components claimed in
combination
5.8 Amendment
of a claim by deletion of a non-essential
feature
5.9 Amendment
of a claim by addition of a feature from an
embodiment
5.10 Amendment
of a claim by addition of a generalisation of a
feature
5.11 Amendment
of a claim based on a drawing
5.12 Amendment
of a claim based on an implicit
feature
5.13 Amendment
of a claim by limiting a range of values of a
parameter
5.14 Minor
amendments to the wording of a
claim
5.15 Amendment
to acknowledge prior art or a conflicting
application
5.16 Amendment
based on a conflicting application or prior
art
5.17 Amendment
of the description to conform with amended
claims
5.18 Timing of
the examination of amendments
5.22 Claims
having no counterpart in the original
claims
6 Search
for prior art and conflicting
applications
7 Technicality,
Industrial Applicability and
Exclusions
7.3 Exclusions
from Patentability
8.2 Ranges
of values of a parameter
8.3 Proof
of lack of novelty and proof of
novelty
9.3 Obviousness
- the starting point
9.4 Obviousness
- difference, technical effect and
problem
9.5 Obviousness
- teaching of the solution of the
problem
9.6 Obviousness
- multiple applications
9.7 Obviousness
- proof and disproof
9.8 Contribution
- starting point and difference
9.9 Contribution
- technical effect
9.10 Contribution
- the solution of a problem
10 Unity
of invention and double
patenting
10.4 Examination
at the search stage
11 Acknowledgement
of background art
11.2 Acknowledgement
of background art in the
description
12.1 The
requirement of implementability - not
marketability
12.2 Description
of an embodiment of the invention as
claimed
13.1 Proving a
lack of clarity
13.2 Clarity of
the disclosure of a claim
13.3 Clarity of
the definition of a product
13.6 Clarification
of a granted claim