Knight, R (on the application of) v HM Comptroller-General of Patents, Trade Marks & Designs

Article 11 of the Patent Co-operation Treaty requires a receiving office to decide whether the application contains a part which, on its face, appears to be a claim or claims. The inquiry is limited, but it is not confined to examining labels or form in isolation. The office may consider the request form, check list and physical presentation of the documents, together with the application sufficiently to answer the facial-appearance question. It must not conduct a detailed substantive analysis or search for material that could be converted into claims. An abstract, expressly identified as such, cannot also serve as claims. Where the documents and check list reasonably indicate that the claims are missing, the application cannot receive the original international filing date.

The applicant filed a PCT application through the UK Patent Office as receiving office. The check list stated that the application included six sheets of description, two sheets of claims, one sheet of abstract and two sheets of drawings. Only 12 sheets were filed, and the intended claims were absent.

The applicant argued that a numbered list within the description, or alternatively the text headed “Abstract”, appeared on its face to be claims. The Deputy Director rejected both arguments and concluded that the application did not satisfy Article 11(1)(iii)(e) PCT. The central issue on judicial review was whether that decision involved an error of law or irrationality.

1. The application was dismissed. The Deputy Director had correctly concluded that the application did not contain a part which, on its face, appeared to be a claim or claims, and therefore could not be accorded the filing date of 3 February 2006.
2. Article 11 requires a receiving office to perform a limited facial inquiry. It must examine the application sufficiently to determine whether the essential elements are present, but it is not required to decide whether the requirements of Articles 5 and 6 are substantively satisfied. It must not analyse the documents in detail to identify material which might be turned into claims.
3. The check list forms part of the application and must be considered. It is not necessarily determinative. Here, however, the check list identified six sheets of description, two sheets of claims and one sheet of abstract, while the filed documents contained six sheets headed “Description”, one sheet headed “Abstract” and no separate claims. That made the reasonable inference that the two claim sheets had not been filed.
4. The numbered list in the description did not displace that inference. It appeared within the body of the description, was not headed “Claims”, did not begin on a new sheet and described the benefits of the invention. The Deputy Director’s conclusion was neither legally erroneous nor irrational.
5. The page headed “Abstract” could not also be treated as claims. Article 3 distinguishes the abstract from the claims, and the check list separately identified the claims and abstract. The formal structure of the text could not overcome its express identification as an abstract.

The judgment itself records the Deputy Director’s written decision of 5 May 2006, which rejected the applicant’s arguments. The High Court dismissed the judicial review claim and upheld that decision.