Penife International Ltd, R (on the application of) v HM Comptroller-General of Patents, Trademarks & Designs

Under Patent Co-operation Treaty art 11(1)(iii), the receiving office performs a superficial, formal check. It must identify a part which, on its face, appears to be a claim or claims. It need not investigate whether material embedded in the description could perform the substantive function of a claim. Normal patent drafting practice and the contents of the request form may inform that assessment. A consistory clause embedded in the description remains part of the description and does not itself constitute a claim, even if it substantially repeats the wording expected in the claims.

Penife International Ltd filed a PCT request form and supporting documents at the United Kingdom Patent Office, claiming priority from an earlier British patent application. The filed documents included the request, description and drawings, but omitted the separate sheets containing the claims. The abstract was also omitted, although that omission was immaterial.

The receiving office invited correction under Patent Co-operation Treaty art 11(2). A deputy director decided that the application had not complied with art 11(1)(iii)(e), so the international filing date was the date on which the claims were supplied. The claimant sought judicial review, arguing that a consistory clause in the description could constitute the required claim.

1. The application was dismissed. The receiving office’s function under Patent Co-operation Treaty art 11(1) is largely formal. It must determine whether the application contains a part which, on its face, appears to be a description and a part which, on its face, appears to be a claim or claims. It is not required to test whether the description or claims satisfy their substantive functions under arts 5 and 6. (paras 20–23)
2. The distinction between description and claims is fundamental. The description explains the invention and how it may be carried out, whereas claims identify the matter for which protection is sought. Article 11(3), the Regulations, and the ordinary drafting requirements support the existence of identifiable parts for these different functions. (paras 8–16)
3. Normal drafting features may be considered when deciding whether a filed part appears to be a claim. These include a separate claims section, a heading, and numbered paragraphs in list form. The request form and its checklist may also be taken into account, although they are not necessarily determinative. Here, the checklist indicated that claims were contained on two separate sheets, but those sheets were not filed. (paras 22, 24–26)
4. A consistory clause embedded in the description is not a claim. Its usual purpose is to repeat, as part of the description, concepts contained in the claims. It may indicate what the inventor intends to claim, but it remains part of the description and is not invariably identical to the claims. (paras 17–19, 27–30)
5. Even on the claimant’s proposed substantive approach, the result would be the same. A competent reader would recognise the clause as a consistory clause forming part of the description, not as the omitted claim. The Patent Office therefore correctly treated the claims as absent and the corrected filing date as 2 July 2003. (paras 27–31)