QUEEN'S BENCH DIVISION
THE ADMINISTRATIVE COURT
Strand, London, WC2A 2LL
B e f o r e :
|THE QUEEN ON THE APPLICATION OF PENIFE INTERNATIONAL LIMITED||(Claimant)|
|HM COMPTROLLER-GENERAL OF PATENTS, TRADEMARKS AND DESIGNS||(Defendant)|
Smith Bernal Wordwave Limited
190 Fleet Street London EC4A 2AG
Tel No: 020 7404 1400 Fax No: 020 7831 8838
(Official Shorthand Writers to the Court)
Miss Fiona Clark and Mr Henry Ward (instructed by The Treasury Solicitors, London) appeared on behalf of the Defendant
Crown Copyright ©
Mr Justice Laddie:
The factual background:
"(1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:
(iii) the international application contains at least the following elements:
(a) an indication that it is intended as an international application,
(b) the designation of at least one Contracting State,
(c) the name of the applicant, as prescribed.
(d) a part which on the face of it appears to be a description,
(e) a part which on the face of it appears to be a claim or claims.
(2) - (a) If the receiving Office finds that the international application did not, at the time of receipt, fulfil the requirements listed in paragraph (1), it shall, as provided in the Regulations, invite the applicant to file the required correction.
(b) If the applicant complies with the invitation, as provided in the Regulations, the receiving Office shall accord as the international filing date the date of receipt of the required correction.
(3) Subject to Article 64(4) any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.
(4) Any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) shall be equivalent to a regular national filing within the meaning of the Paris Convention for the Protection of Industrial Property."
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."
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."
(1) The Regulations annexed to this Treaty provide Rules:
(i) concerning matters in respect of which this Treaty expressly refers to the Regulations or expressly provides that they are or shall be prescribed,
(ii) concerning any administrative requirements, matters or procedures,
(iii) concerning any details useful in the implementation of the provisions of this Treaty."
"3.1. Form of request
The request shall be made on a printed form or be presented as a computer print-out.
3.2 Availability of forms
Copies of the printed form shall be furnished free of charge to the applicants by the receiving Office, or, if the receiving Office so desires, by the International Bureau.
3.3 Check list
(a) The request shall contain a list indicating:
(i) the total number of sheets constituting the international application and the number of the sheets of each element of the international application: request, description (separately indicating the number of sheets of any sequence listing part of the description) claims, drawings, abstract."
"11.4 Separate sheets etc.
(a) Each element (request, description, claims, drawings, abstracts) of the international application shall commence on a new sheet. …
11.7 Numbering of sheets
(a) All the sheets contained in the international application shall be numbered in consecutive Arabic numerals.
11.8 Numbering of lines
(a) It is strongly recommended to number every fifth line of each sheet of the description, and of each sheet of claims. …
11.9 Writing of text matter
(a) The request, the description, the claims and the abstract shall be typed or printed.
11.10. Drawings, formulae, and tables, in text matter
(a) The request, the description, the claims and the abstract shall not contain drawings.
(b) The description, the claims and the abstract may contain chemical or mathematical formulae.
(c) The description and the abstract may contain tables; any claim may contain tables only if the subject matter of the claim makes the use of tables desirable. …"
The Consistory Clause:
"5.1 Manner of the description
(a) The description shall first state the title of the invention as appearing in the request and shall:
(iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art."
"(ii) The international application is checked by the receiving Office to determine whether it meets the requirements prescribed by the PCT as to the language, form and contents of international applications (the checks performed by the receiving Office are of a formal nature and do not go into the substance of the invention);"
"shall contain, as specified in this Treaty and Regulations, a request, a description, one or more claims, one or more drawings (where required), and an abstract."
Therefore the request itself forms part of the international application.
"Consistory clauses that are embedded in and part of the description are not claims." (paragraph 15)
"Examiners quite often detect discrepancies between the consistory clauses and claims, and customarily ask for them to be brought into agreement." (Paragraph 20)