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England and Wales High Court (Administrative Court) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Administrative Court) Decisions >> Knight, R (on the application of) v HM Comptroller-General of Patents, Trade Marks & Designs  EWHC 2264 (Admin) (09 October 2007)
Cite as:  EWHC 2264 (Admin)
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QUEENS BENCH DIVISION
Strand, London, WC2A 2LL
B e f o r e :
| The Queen
on the application of
Brian George Knight
|- and -
|Her Majesty's Comptroller-General of Patents, Trade Marks and Designs
Fiona Clark (instructed by Treasury Solicitors) for the Respondent
Hearing date: 27 July 2007
Crown Copyright ©
MrJustice Kitchin :
"Accordingly, the present invention provides spray apparatus comprising a pipe-work system that combines the feed and circulation lines on the spray boom to make a common feed when the machine is spraying and which converts back to recirculation when the sprayer is agitating, i.e. in a non-spraying condition. This also permits a reduction in the number of valves on the spray machine and greatly simplifies the pipe-work."
"Thus the present invention permits:-
1. The use of the return line to provide extra flow to the boom when spraying.
2. A reduction in the size of the feed lines because the return line provides extra flow when spraying.
3. The purging of the spray line under pressure when filling with chemical.
4. The use of a single control valve to control the feed and return flows.
5. The ability to clean the system by incorporating clean water into the filling point (on board tank or independent supply)."
"Spray apparatus (1) of the kind having a liquid feed line (8b) connecting a supply of spray liquid (2) and at least one spray nozzle (9), a return line (8c) from the spray nozzle to the supply and a pump (3) for moving spray liquid from the supply (2) to the at least one spray nozzle (9) and for returning spray liquid from the at least one spray nozzle (9) to the supply (2) when the liquid is not being sprayed, characterised in that the liquid return line (8c) serves as at least a portion of the feed line when spraying."
The legal framework
"(1) Applications for the protection of inventions in any of the Contracting States may be filed as international applications under this Treaty.
(2) An international application shall contain, as specified in this Treaty and the Regulations, a request, a description, one or more claims, one or more drawings (where required), and an abstract.
(3) The abstract merely serves the purpose of technical information and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.
(4) The international application shall
(i) be in a prescribed language;
(ii) comply with the prescribed physical requirements;
(iii) comply with the prescribed requirement of unity of invention;
(iv) be subject to the payment of the prescribed fees."
For present purposes I would draw particular attention to the requirement that the application must contain a request, a description, one or more claims, one or more drawings and an abstract. It is also to be noted that the abstract is specifically distinguished from the claims. It provides technical information but is not to be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.
"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 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:
(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,
(ii) the international application is in the prescribed language,
(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."
So the application must contain a part which on the face of it appears to be a description and a part which on the face of it appears to be a claim or claims. If the application as filed does not contain such parts then it will not be accorded a filing date until the required correction is filed.
"(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;
(ii) where applicable, that the international application as filed is accompanied by a power of attorney (i.e. a document appointing an agent or a common representative), a copy of a general power of attorney, a priority document, a sequence listing in electronic form, a document relating to the payment of fees, or any other document (to be specified in the check list);
(iii) the number of that figure of the drawings which the applicant suggests should accompany the abstract when the abstract is published; in exceptional cases, the applicant may suggest more than one figure.
(b) The list shall be completed by the applicant, failing which the receiving Office shall make the necessary indications, except that the number referred to in paragraph (a)(iii) shall not be indicated by the receiving Office."
The check list is clearly therefore something to which the receiving office must refer in considering whether or not the requirements of Article 11 are satisfied.
"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);"
It seems to me that essentially this same approach was taken by Laddie J in Penife's Application  RPC 37. After referring to the Applicants' Guide, he continued at  to :
"21. This is consistent with the provisions of Art.11(1). The receiving Office, which in many cases will act as little more than a staging–post before the application is forwarded to WIPO and an examining body, has to ensure that certain minimal formal requirements have been complied with. These formal requirements include those set out in Art.11(1)(iii). It is not required to test to see whether there is a description which meets the functional requirements of Art.5 PCT, merely that there has been filed an application which contains a part "which on the face of it appears to be a description". Similarly it is under no obligation to determine whether there are one or more claims which meet the functional requirements of Art.6 PCT. It only has to see whether the application contains a part "which on the face of it appears to be a claim". The check is superficial. In making that check no doubt the Patent Office will bear in mind normal drafting practice, including those required by the regulations.
22. As Mr Edwards noted in his decision, according to such practice there are standard features used to indicate what are the claims. As he said, the claims are distinguishable from the description, usually being placed after the description and starting on a new sheet. They have a heading, such as "claims", and they are in numbered paragraphs in the manner of a list. He did not suggest that these features, save for the requirements that the claims are started on a new sheet, are required by the Treaty or the regulations made under it. Nevertheless, they are almost invariable features used in patent applications to identify the claims. None of them are present here. There is nothing in the description which suggests that the consistory clause is being put forward as a claim. So, on its face, there is nothing here which appears to be a claim.
23. I do not accept the submission that the Patent Office must dig further to find something which will be capable of performing the function of a claim.
24. Miss Clark goes further. She points out that Art.3 PCT requires the international application to comply with the prescribed physical requirements, meaning the requirements set out in the regulations. Further, that Article provides that the international applications:
"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.
25. When the receiving Office determines whether the international application contains a part, which on the face of it appears to be a claim or claims, it is entitled to look at the request form, including the check list. If it did so here it would be reassured that the claims were contained on two separate sheets. Those sheets were not filed. That is a reason why there is nothing which appears to be the claim.
26. I accept that submission. The contents of the request form are a factor, not necessarily determinative, which should be taken into account when deciding whether the provisions of Art.11(3)(i) have been complied with."
The decision of the Deputy Director
"9. Mr Davis acknowledged in the main that the check should go to form and not substance, although he did run an alternative argument based on the substance of the abstract that was included. I will come back to that later. But he was able to make some serious points concerning the form of the "numbered list" I mentioned above, that appears on pages 5 and 6. In doing so, he referred to what in my Penife decision I called physical cues for the presence of claims, based on standard drafting practice, which might be used by non-technical staff in looking for claims. I said that such cues may be:
- Claims are distinguishable from the description, usually by being placed after the description and starting on a new sheet
- They have a heading such as Claims
- They are in numbered paragraphs in the manner of a list, each paragraph comprising a single sentence
10. Mr Davis said that the numbered list here displayed several of these cues: most importantly (and in distinction from the situation in Penife):
- The list is distinguishable from the description in that it is at the end, and might be considered therefore to follow the description proper: crucially it is not "embedded" within it (as in Penife). The list does not admittedly start on a new sheet, but that can be remedied.
- There is not a conventional claims heading to the list, but the phrase "Thus the present invention permits" is a heading of sorts that introduces something different, even if not explicitly claims.
- The paragraphs are certainly numbered, and comprise single sentences.
11. At this point Mr Davis was tempted (understandably) into matters of substance by saying that item 1 of the numbered list was a technical feature that might well form the subject of a claim.
12. Mr Davis also took head on another difficult point for him, which was that the check list would seem to show that two pages bearing claims were missing. Mr Davis argued that the check list should be taken to indicate an intention only. I assume this argument implies that the documents as filed might be differently constituted from what is shown in the check list; so if the documents are two pages short according to the check list, that should not be conclusive that claims are not present. I do not think this view squares fully with what Laddie J. said about the Receiving Office looking at the check list (paragraphs 25 and 26 of the reported judgment). Miss Clark (for the Comptroller) had submitted that if it did so,
"…it would be reassured that the claims were contained on two separate sheets. Those sheets were not filed. That is a reason why there is nothing that appears to be the claim."
I accept that submission. The contents of the request form are a factor, not necessarily determinative, which should be taken into account when deciding whether the provisions of Art.11(3)(i) have been complied with.
13. So the check list is not determinative; and one can imagine situations where there are discrepancies between the list and what is filed that can be reconciled without assuming that pages are missing. But where, as here, the check list indicates six pages of description (and the checker finds a unitary body of text of six pages that looks like a description), and the check list indicates one page of abstract (and the checker finds one page with text headed Abstract), and the only discrepancy is that two pages, additional in number to those found by the checker, intended as claims, are not to be found, then the first and obvious conclusion is that the pages have not been filed, and therefore, that the claims intended to be on them have also not been filed.
14. Because of this explanation the checker would not have been put on guard to check the description for something distinguishable as claims. But if, to give the applicant the benefit here, we allow the checker to look into the body of six pages identified by the check list as constituting the description, to find the missing claims, we do not find any indication or cues that are strong enough to disturb the initial view that the claims are missing. Certainly, we find a numbered list that starts halfway down the penultimate page of this body of text, but there are insufficient cues here to identify these as claims. On the contrary, the list is included within the series of pages identified in the check list as description; the list follows on without a page break or other physical division from the preceding text; and (perhaps most importantly) it nowhere mentions the word "claim" or labels the list clearly to a non-technical checker as claims. These factors do not give the checker any justification to suppose that the list should be split off and regarded as a set of claims, in contradiction to what the check list seems to indicate. The list spanning pages 5 and 6 was therefore in my view correctly categorised throughout by the Receiving Officer as description, and not claims."
"15. Mr Davis argued in the alternative that the text labelled Abstract had the correct structure for a claim and should be admitted as such. I cannot accept this because the text on that page is identified as Abstract, and as I said in Penife a body of text cannot be expected to serve two functions when convenient. It is a simple matter of labelling. Such analysis also requires something of an appreciation of the substance of the Abstract, which might be more than the checker should do.
16. Mr Davis also raised a human rights point concerning the deprivation of property that possible loss of this international application might involve. I appreciate that the penalty for an oversight in omitting claims is severe under the provisions of the PCT, but I and the UK Patent Office are bound in this matter by the clear terms of the PCT, which is an international obligation. I also have some doubts that the failure to launch an application in the first place should be regarded as a deprivation of property under Article 1 to the First Protocol to the European Convention on Human Rights. "
The claim for judicial review