MODULE 3: PATENTABILITY: FORMAL

REQUIREMENTS (PATENT APPLICATION)

Study Note: This module should take approximately 2 hours to study.

Learning outcomes:

After completing this module, you should be able to:

1. describe patentable subject matter and the formal requirements of patent protection;

2. describe the main procedural steps for filing a patent application;

3. list the most important parts of patent application;

4. explain the functions of the different parts of patent application;

5. describe, in general terms, what a patent application looks like;

6. explain the use of the International Patent Classification (IPC) code for searching patents
and WIPO’s role in harmonizing patent classification and information search, internationally;

7. describe the harmonizing effort under the Cooperative Patent Classification (CPC);

8. find the patent application procedure in various countries and learn about the types of
examination conducted; and

9. retrieve a patent application using a patent number.

DL 170 Essentials of Patents – Module 3 page 1 / 21

INTRODUCTION

In Module 1, you learned that a patent is the territorial right granted by the State to a right holder to
exclude others from commercially exploiting the invention within that State for a limited period, in
return for the disclosure of the invention, so that others may gain the benefit from the invention.
This means that patents reward the right holder by giving a territorial right over an invention
claimed to be contributing to enriching technological knowledge shared among the public. In other
words, the patent right should not be put around knowledge which is already in the public domain,
or which belongs to someone else. It should only cover the area that is genuinely new and would
not have existed without a significant inventive contribution by the inventor.

In this module, we will briefly describe the formal requirements of patent protection, the main
procedural steps for filing a patent application and the main parts of a patent application.

1. Patent applications

For centuries, in many countries, patent rights arose as the result of a positive decision to grant a
patent by the State. In order for this positive decision to take hold, countries have been applying
some form of examination and check, so that the claims for patent protection are valid and
legitimate. It should be emphasized that there are several legal and statutory principles that apply
to patent applications before they become granted patents.

1.1 A brief discussion on patentable subject matter

First, in order to be eligible for patent protection, the invention must fall within ‘patentable’ subject
matter. Secondly, not every new product or research outcome qualifies as an automatic ‘invention.’
The first international treaty that spelt out these requirements is the Trade Related Aspects of
Intellectual Property (TRIPS Agreement). The TRIPS Agreement sets the minimum set of rules that
countries should take into consideration in their administration and protection of intellectual
property. Article 27 of the TRIPS Agreement describes ‘patentable subject matter’. However, prior
to the adoption of the TRIPS Agreement, the principles of the patentability tests have been already
common to almost all national patent laws in some form and have been applied to patent law
during over centuries, with a view to limit the patents to those kinds of inventions which have the
potential of introducing a tangible benefit to society. As a result, not all ‘inventions’ are patentable.

In order to be eligible for patent protection, an invention must fall within the scope of patentable
subject matter. Patentable subject matter is established by statute and is usually defined in terms
of exceptions to patentability, the general rule being that patent protection shall be available for
inventions in all fields of technology.

While patent laws lay down the principles rather than providing prescriptions for each case,
advance in technology, for example, continues to open the door for many types of new inventions
that were not thought of many years ago, when the patent law was enacted.

Countries are free to determine what an invention is, as the TRIPS Agreement offers no definition,
and they are free to exclude from patent protection certain kind of inventions. The most common
examples included in national legislations are:

- discoveries of materials or substances already existing in nature;

- scientific theories or mathematical methods;
- plants and animals other than microorganisms, and essentially biological processes for the
production of plants and animals, other than non-biological and microbiological processes;
- schemes, rules or methods for doing business, performing purely, mental acts or playing
games;
- methods of treatment for humans or animals, or diagnostic methods practiced on humans
or animals (but not products for use in such methods).

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In addition, Article 27.2 of the TRIPS Agreement further specifies Members may exclude from
patent protection, inventions the commercial exploitation of which would contravene public order or
morality.

‘Members may exclude from patentability inventions, the prevention within their territory of
the commercial exploitation of which is necessary to protect ordre public or morality,
including to protect human, animal or plant life or health or to avoid serious prejudice to the
environment, provided that such exclusion is not made merely because the exploitation is
prohibited by their law.’

For example, a country could decide that, even though a new method of suppressing oxygen from
the environment has been devised for certain use and it was new, involved an inventive step and
was useful under its patent laws, it would still not grant patent protection to that invention. There
may be policy concerns that certain inventions, such as highly dangerous products (to humanity),
could disturb the ‘ordre public’. In such cases, legislators might consider that public policy
consideration of excluding those inventions from patentable subject matter could outweigh the
benefits of patent protection in these areas.

1.2 Patentability

Regarding patentability of inventions (Art. 27.1 of the TRIPS Agreement), the patent law of most
countries includes three basic criteria for determining whether a claimed invention is eligible for a
patent. These criteria will be covered in in detail in a later module. Briefly, the TRIPS Agreement
states that an invention must be:

(a) New (or ‘novel’) - An invention is novel if nothing identical previously existed. Questions like
how your invention differs from what already exists or in what ways might it be unique
define its novelty 1;

(b) Involve an inventive step (is 'not obvious') - Inventive Step measures the degree to which
an invention differs from the totality of previous knowledge, and the degree to which an
invention could not have been anticipated from that knowledge. At the time the invention
was conceived, why might your invention not have been obvious to people reasonably
skilled in the technical field?

The level of inventiveness required to render an invention patentable may be a function of

then invention applied to the particular field. In some cases, the inventive part of an
invention (the part that renders the invention patentable) is simply identifying the problem,
even if the solution is obvious once the problem has been identified; and

(c) Capable of industrial application (or have 'utility' or be ‘useful’) - An invention must be
capable of being used for an industrial or business purpose beyond a mere theoretical
phenomenon or be useful.

In addition, most countries require that the disclosure of the invention in the patent application
meet certain standards. Here below is a brief description of the technical disclosure requirements.

1.3 Technical disclosure of the invention

The disclosure of the inventions to the public is one of the most important aspects of patentability.
Essentially, States grant the right holder a patent right only if the invention is sufficiently disclosed
in the application claiming patent grant. In return for this right, the applicant must disclose the
invention in a patent application in a manner sufficiently clear and complete for the invention to be
carried out by a person skilled in the art without undue burden and without needing inventive skill.

1If you wish to learn more about how to search for relevant documents for assessing the novelty of a patent
application, please visit WIPO Academy’s website for a course on Patent Information Search.

DL 170 Essentials of Patents – Module 3 page 3 / 21

Patent rights are granted to the right holder to encourage research, development and innovation in
the field of technology. To that end, the technical information about the invention should be
disclosed and disseminated to other inventors, researchers, and engineers. This technical
disclosure, which is a description of how the new technology can be put into practice, should be
made to the relevant patent offices as part of the patent application. Once a patent is granted, its
technical contents, among other information, are made available to the public. In many countries,
the contents of a patent application are also published after 18 months from filing the application.
Information on filed applications, granted patents as well as legal status of patent applications and
patents are increasingly put in public electronic databases, and it is now possible to directly access
much of this data on the internet 2.

Self-Assessment Question

SAQ 1: Can you give two examples of the types of things that are not usually patentable?
Which international treaty has served as source of guidance regarding the issue of
patentable subject matter?

Type your answer here:

Model Answer SAQ 1:

Patentable subject matter is established by statute under the national law of a country and is
usually defined in terms of exceptions to patentability. The Trade-Related Aspects of Intellectual
Property (TRIPS Agreement) has identified the minimum requirements for the consideration of
patentable subject matter. Subject matter which may be excluded from patentability in many
countries includes:

- discoveries of materials or substances already existing in nature

- scientific theories or mathematical methods;
- plants and animals other than microorganisms, and essentially biological processes for the
production of plants and animals, other than non-biological and microbiological processes;
- schemes, rules or methods, for doing business, performing purely, mental acts of playing games;
- methods of treatment for humans or animals, or diagnostic methods practiced on humans or
animals (but not products for use in such methods)
- inventions the exploitation of which would contravene public order or morality

2For example,
https://worldwide.espacenet.com/
https://www.wipo.int/patentscope/en/
http://patft.uspto.gov/

DL 170 Essentials of Patents – Module 3 page 4 / 21

 Self-Assessment Question
SAQ 2: Can you list three characteristics of an invention that the inventor must make sure
of in order to seek patent protection for his invention?

Type your answer here:

Model Answer SAQ 2:

An invention must be:

-new (or ‘novel’);
-involve an inventive step ('not obvious'); and
-capable of industrial application (or have 'utility’ or be ‘useful’).

DL 170 Essentials of Patents – Module 3 page 5 / 21

2. The different parts of a patent application

The patent application usually consists of a request, a description, a claim or claims, an

abstract and one or more drawings, if necessary, for the understanding of the invention. In some
countries, the patent application must also contain declarations as to the legal grounds of the
applicant’s entitlement.

• The request contains the expression that a patent is sought and a number of details, such as
the title of the invention, the name and address of the applicant, indication of the inventor(s),
the details of the representative, if any, and the like;

• The description contains the detailed description of the invention and must have the
prescribed contents which must be presented in order;

• The claims define the matter for which protection is sought and determine the scope of the
patent. Substance that is disclosed in the description but not contained in the claims becomes
part of the public domain. As a general rule, each claim must be clear and concise, must be
supported by the description and presented in the prescribed manner;

• The abstract merely serves the purpose of technical information; in particular, it will not be
taken into account for the purpose of interpreting the claims.

• one or more drawings (if necessary, for the understanding of the invention).

Self-Assessment Question
SAQ 3: What are the main areas of a patent application?

Type your answer here:

Model Answer SAQ 3:

The main step in applying for patent are to file a document consisting of a request, a description,
a claim or claims, an abstract and one or more drawings, if necessary. In some countries, the
patent application must also contain declarations as to the legal grounds of the applicant’s
entitlement.

DL 170 Essentials of Patents – Module 3 page 6 / 21

3. Procedure for filing a patent

The first step in obtaining a patent is to file a patent application with a Patent Office. One needs to
be familiar with both technology and law in order to draft a patent application properly and to
proceed with the application before the responsible Office. Therefore, although in certain cases it is
possible to file a patent application without the help of a patent attorney, it is highly advisable to
consult a professional not only for drafting the application, but also for the investigation before the
Patent Office. Some countries require that persons who do not have a domicile in that country be
represented by a local patent attorney authorized to practice before the Office.

It is of utmost importance not to disclose the invention to the public prior to the filing of the
patent application, since in many countries such a disclosure may destroy the novelty of
the invention.

Once an application has been received, the patent Office generally takes a series of steps prior to
granting the patent. There are three main activities, namely,

-a formality examination,
-a substantive examination, and the
-grant and publication of the patent.

In each of these areas of activity, the normal procedure is for a dialogue to be carried out, mainly in
writing, between an examiner in the Patent Office and the applicant. The patent attorney acts as a
go-between in the sense that he receives communications from the Patent Office, advises the
applicant as to the appropriate course of action, takes the applicant’s instructions, and responds
accordingly to the Patent Office’s communications.

3.1 The formality examination: This consists of checking whether the application contains all the
relevant information from the formality point of view and whether any other necessary documents
must be submitted. The formalities include applicable fee, and proper documentation of the
application. The applicant is given the opportunity to correct any defects identified during the
formality examination, and if such defects are not corrected within a specific time, the Patent Office
rejects the application.

3.2 The substantive examination: The aim of this is to ensure that the application satisfies the
conditions of patentability, such as novelty, inventive step and industrial applicability, before
granting a patent. The applicant is given an opportunity to remove any objections raised during the
substantive examination, including issues relating to patentable subject matter and sufficient
disclosure. Not all Patent Offices carry out a substantive examination. Patent Offices in a number
of countries grant patents on the basis of the formality examination and the compliance with certain
requirements, for example, that the claimed invention is not excluded from patentable subject
matter. Under such a system, the actual validity of the patent and whether it meets the
requirements of patentability are only verified by the courts in case of dispute.

Depending on the examination procedures provided in the applicable law, a search will be
conducted with a view to determining the prior art which may be relevant to the determination of
the patentability of the claimed invention. In general, “Prior art” in patent law refers to any
information made available to the public anywhere in the world in any form, such as written form,
oral presentation or use, before the filing date or the priority date of the patent application. The
"priority date" of a patent application is the filing date of the earliest application containing the same
invention (often filed in another country), based on which priority is claimed in accordance with
Article 4 of the Paris Convention. The prior art search is done either separately from and prior to, or
at the same time as, the substantive examination. In conducting the search, the Patent Office
typically checks its documentation collection to ascertain whether any documents describing a
solution which is the same as or similar to that described in the application exist. The collection of

DL 170 Essentials of Patents – Module 3 page 7 / 21

patent documents is primarily arranged in codes for search purposes according to the specific
areas of technology such as the one identified by the International Patent Classification (IPC). (See
below, figure 1, under Publication and Classification Code). Using these codes, the patent
examiner may search existing patent documents in the relevant databases. These patent
documents may be supplemented by articles from technical journals and other so-called non-
patent documents. This is a total collection of documents is usually referred to as ‘the search file’.
The search itself will first cover all directly relevant technical fields and may then have to be
extended to analogous fields, but the need for such extension must be judged by the examiner in
each individual case.

A very brief visual organization is provided to you at the end of this section so you may further
examine the International Patent Classification (IPC) method, which can also be found at
http://www.wipo.int/classifications/ipc/en/index.html.

The purpose of the IPC is to classify technology in a uniform way to make it easier to search patent
documents using the IPC system of classification. As noted above, a key part of the patent process
is a prior art search of published documents to find out if an invention satisfies the legal tests for
patenting such as novelty and inventive step. Without the IPC, searching for prior art would be
complex and the results of searches would be unreliable.

3.3 The grant of a patent on the application: When the examination process has reached a
conclusion favorable to the applicant, and in countries where the pre-grant opposition system is
provided, if no opposition has been filed or any opposition has been unsuccessful, the Patent
Office will grant a patent. The details of the patent are entered into the patent register, and a
certificate of grant is issued to the applicant. Further, the Patent Office publishes the patent for
public inspection. In a number of countries, in order to ensure the earlier dissemination of the
technical information contained in patent applications, patent applications are published 18 months
after the filing date (or the “priority date”). In addition, once a patent has been granted, many
countries require periodic payment of fees in order to retain the validity of the patent during its
whole term. These are known as annuities or maintenance fees and it is important to keep in mind
that lack of payment can result in loss of patent protection.

Activity 1:

At this stage of your study, please consult the website or contact the national patent office
responsible for patent applications in your country. Inquire and describe which kinds of
examinations are applied when a patent application is filed in your country. The list of
patent offices’ websites at http://www.wipo.int/directory/en/urls.jsp is not exhaustive but
could be useful to you during this assignment.

Submit your findings to your lecturer.

DL 170 Essentials of Patents – Module 3 page 8 / 21

The International Patent Classification (IPC)

http://www.wipo.int/classifications/ipc/en/index.html

The Strasbourg Agreement of 1971 (see http://www.wipo.int/treaties/en/classification/strasbourg/)

concerning the International Patent Classification provides for a common classification for patents
for invention including published patent applications, utility models and utility certificates. The
International Patent Classification (IPC) is a hierarchical system, which divides all technology areas
into a range of sections, classes, subclasses, and groups. This system is indispensable for the
retrieval of patent documents in the prior art search for determining the novelty and inventive step
of an invention or determining the state of the art in a particular area of technology. The
Classification is periodically revised in order to improve the system, to take account of technical
development, and to ensure a more user-friendly and accessible patent classification and search
tool for specialists and non-specialists alike. Between 1968 and 2006, the IPC was revised roughly
every five years, and, after each revision, a new edition was published. The eighth edition of the
IPC entered into force on January 1, 2006. Since 2006, the IPC has been revised more frequently
and each edition (called also version) is indicated by the year and month of its entry into force.
Since 2010, the IPC is revised once a year and each new version enters into force on January 1.
The current (version 2019) edition has entered into force on January 1, 2019.

The organization of the Sections of technology and the Sub-sections are a good source of
information for anyone applying for a patent, whether at the national or international level, and is
required to determine whether their invention is new or is owned or claimed by someone else.

Eight Sections of Technology that combine and categorize all technology:

SECTION A — HUMAN NECESSITIES

SECTION B — PERFORMING OPERATIONS; TRANSPORTING

SECTION C — CHEMISTRY; METALLURGY

SECTION D — TEXTILES; PAPER

SECTION E — FIXED CONSTRUCTIONS

SECTION F — MECHANICAL ENGINEERING; LIGHTING; HEATING; WEAPONS; BLASTING

SECTION G — PHYSICS

SECTION H — ELECTRICITY

Please visit http://www.wipo.int/classifications/fulltext/new_ipc/ipcen.html

Introduction to Cooperative Patent Classification (CPC)

Since October 2010, the EPO and the USPTO have worked jointly to develop the Cooperative
Patent Classification (CPC). The CPC is a patent classification system, an outcome of joint efforts
of the USPTO and the EPO, where the Offices have agreed to harmonize their existing
classification systems (ECLA and USPC, respectively) and migrate towards a common CPC
system. The common classification system will not only lead to more efficient prior art searches but
also enhance efficiency through work-sharing initiatives aimed at reducing unnecessary duplication
of work among patent offices. Adoption of common classification system allows offices to use
resources optimally because both offices are responsible for maintaining the classification system.

DL 170 Essentials of Patents – Module 3 page 9 / 21

The Cooperative Patent Classification (CPC) system came into force on 1 January 2013. Since
then, the EPO started classifying its documentation using the CPC instead of ECLA. Following a
transition period, the USPTO also classifies patent documents using the CPC. Both the EPO and
the USPTO will continue to classify in the IPC 3.

The CPC is based on the European classification system ECLA (which itself is based on the
International Patent Classification (IPC) used by many patent offices worldwide) and incorporates
the best practices of both offices. It includes some 250 000 symbols, making it the most refined
scheme available for classifying inventions. The CPC also includes an additional "Y" section, which
is related to specific technologies of particular public interest, such as renewable energy and smart
grids.

CPC symbols keep the same digits after the "/" as their parent IPC symbol. The symbols consist of
only numeric characters after the forward slash. If a group is specific to the CPC (and thus does
not exist in the IPC), additional digits are appended. There can be a maximum of six digits after the
"/".

Please visit http://www.cooperativepatentclassification.org/index.html

Example 1:

A farmer who has been using a certain fertilizing method for the excellent agricultural products she
has been producing and selling to your local shop has some questions. She would like your advice
on whether she could patent a special fertilizer that she has been working on. She has improved
the size and volume of his agricultural yields. The first thing you should advise the farmer about is
the need for secrecy about his method until you find out more information. As her advisor, you
might need to sign a confidentiality agreement with her if she has shared the details with you.

The first action you could take could be if her potentially new method is already known or if a
similar method exists on the market. For this, you could search in the public database of WIPO for
patents (http://www.wipo.int/pctdb/en/). In addition to using general key words which might result in
your finding of patent documents with little relevance to your search, you could do a specific search
under Agricultural- Human Necessities category of the IPC. This will help you further specify the
‘Class’, ‘Subclass’ and ‘Main Group’ under the IPC. On the PCT Patent Search database, you may
type A 01C-15/00 or A 01C-21/00 in the area that is provided for Int. Class (International
Classification). This would result in patent documents that have been filed under this category. If
the farmer’s method is new, you may wish to advise her to keep the information secret until she
applies for patent protection with the relevant office.

Section A – human necessities

Subsection - Agriculture
Class A01 agriculture; forestry; animal husbandry; hunting; trapping; fishing
Subclass A01C planting; sowing; fertilizing
Main group 15/00 Fertilizer distributors
Main group 21/00 Methods of fertilizing

3 https://www.uspto.gov/patents-application-process/patent-search/classification-standards-and-development

DL 170 Essentials of Patents – Module 3 page 10 / 21

4. Filing date

As indicated in Module 2, the filing date of a patent is very important in the general scheme of
things. The filing date (or priority date) is particularly important with respect to the determination of
relevant prior art for evaluating novelty and inventive step of the claimed invention. Before a
formality examination, the application is checked to ensure that all the requirements necessary to
accord the application a filing date have been satisfied. This is a fundamental check since, if a filing
date is not established, the application will be treated as if it had not been filed, and it proceeds no
further.

The filing date constitutes the date from which certain actions are calculated, such as the term of
the patent, and, where applicable, it becomes the priority date of any subsequent application, even
if filed in another country. Under the Paris Convention for the Protection of Industrial Property, if
you file a patent application in one of the Member States of the Paris Convention, it is possible to
‘claim priority’ in other Member States, based on your first application, if you file a subsequent
patent application (or applications) in these countries for the same invention within 12 months from
the first filing (see http://www.wipo.int/treaties/en/text.jsp?file_id=288514#P83_6610). The relevant
provision of the Paris Convention is incorporated into the TRIPS Agreement. Consequently,
Members of the WTO should also respect the right of priority. This right is often described as
‘Convention priority.

For example, if your first patent application was filed in your country on January 5, 2017, you would
have twelve months from that date to file applications containing the same invention in every other
country in order to enjoy the right of priority. If the subsequent application(s) validly claims the
priority based on your first application, the filing date of your first application, that is, January 5,
2017, is called the “priority date” of the subsequent application(s). The effect of claiming priority is
that any subsequent filing will not be invalidated by reason of any acts occurred between the
priority date and the filing date of the subsequent application. For example, imagine the case
where your competitor published, after the filing date of your first application but before the filing
date of your subsequent application, a newsletter that describes the same invention that you
claimed in your subsequent application. If you did not claim priority, your subsequent application
would be refused on the ground of lack of novelty, because your invention claimed in the
subsequent application has already been published before the filing date of the subsequent
application. However, if you claimed the priority based on your first application, the subsequent
application cannot be refused because of the newsletter of the competitor. The terms “filing date”
and “priority date” should be clearly distinguished. Using the above example, assuming that the
subsequent application is filed in another country on December 20, 2017, which is within the 12-
month priority period, the filing date of the subsequent application is December 20, 2017, while its
priority date is January 5, 2017.

The filing date is often the date on which the Patent Office has received at least certain elements of
a complete patent application. The Patent Law Treaty (PLT) provides that at least the following
minimal elements of the application must be submitted to the Patent Office in order to obtain a
filing date: an express or implicit indication to the effect that the elements are intended to be a
patent application; indications allowing the identity of the applicant to be established or allowing the
applicant to be contacted by the Office; and a part which on the face of it appears to be a
description. While the Patent Office may accord a filing date if the applicant submits the minimum
elements required in the applicable law, it is recommended that a complete patent application be
filed at the first instance, since amendment of a patent application after the filing date is
permissible only under the certain conditions.

The applicant may comply with the other requirements of a complete application at a later time
within certain limits, without losing the filing date.

DL 170 Essentials of Patents – Module 3 page 11 / 21

 5. Sample patent applications (national and regional patent office applications)

5.1 Example of a national patent application (figure 1) (source: USPTO Database)

Patent
application
publication
number
Title of the
invention

Inventor

Date of
Assignee (a publication
person to whom
the inventor or
applicant
assigned the
right to a patent)

Filing date and

the number of
this application
for this patent

Data on earlier
applications
based on which
the priority is
claimed International Patent
Classification (IPC)
code and US
classification of the
patent application’s
subject matter, to assist
in searching prior art

DL 170 Essentials of Patents – Module 3 page 12 / 21

 5.2 Example of a national patent application (figure 2)
http://worldwide.espacenet.com/advancedSearch?locale=en_EP
https://worldwide.espacenet.com/publicationDetails/originalDocument?CC=GB&NR=256685
9A&KC=A&FT=D&ND=3&date=20190327&DB=EPODOC&locale=en_EP (patent publication
number GB2566859)
Patent
publication
number

Date and
number of the
application for Date of
this patent publication

Data on earlier
applications
which may International
give earlier Classification
priority Code (IPC)

Applicant
Data on
international
application and
Inventor publication

Title of the
invention

DL 170 Essentials of Patents – Module 3 page 13 / 21

 5. 3 Example of regional patent (figure 3)
http://www.oapi.int/Ressources/memoire/18651.pdf

Patent
publication International
number Classification
Code (IPC)

Date and
number of the
application for
Applicant
this patent

Data on earlier
applications
which may Inventors
give earlier
priority

Date of
publication

Title of the
invention

DL 170 Essentials of Patents – Module 3 page 14 / 21

5. 4 Example of regional patent application (figure 4)
https://worldwide.espacenet.com/publicationDetails/originalDocument?CC=EP&NR=343447
4A1&KC=A1&FT=D&ND=3&date=20190130&DB=EPODOC&locale=en_EP (patent application
number EP3434474)

Date of
publication Patent
publication
number
Date and
number of the
application for International
this patent Classification
Code (IPC)

Data on earlier
applications Inventor
which may
give earlier
priority

Applicant

Title of the
invention

DL 170 Essentials of Patents – Module 3 page 15 / 21

 5.5 Example of PCT application (Figure 5)
http://www.wipo.int/pctdb/en/ (patent publication number WO2019/057956)
https://patentscope.wipo.int/search/docs2/pct/WO2019057956/pdf/lB7i7txBuOuCzd73GCoJ_
rU05h1kpDrR2riObwYDq9pBt47hNoW4KYV7exz2GKebG6LuOFvsbZr0CUxvSiA0IzSfTvaPEG
tUMni7xFSUKLSWCNJC3auU-s5hFR1cb6vm?docId=id00000047557367

Date of
publication
Patent
publication
International number
Classification
Code (IPC)

Date and
number of the
application for
this patent

Applicant
Data on earlier
applications
which may
give earlier
Inventors priority

Title of the
invention

DL 170 Essentials of Patents – Module 3 page 16 / 21

 (Continued from figure 5)

In the above five examples, the patent applications provide lists of references to other documents,
and countries in which the specific patent protection is sought by the applicant. The claims found in
the patent application WO2019/057956A1 has been provided for you as an example. The claims
under the other three patents are the subject of your next assignment.

DL 170 Essentials of Patents – Module 3 page 17 / 21

If you search and find the full patent applications previously listed, you will not that they are specific
and concise in the area of invention they cover. This is due to the different phases of examination
and substantive scrutiny, by the applicant, the patent Office and third parties, who are
knowledgeable about the type of invention that is claimed. Because of this wealth of information
that is contained in patent applications, they have several uses to the public, to examiners of
patents and to inventors. Patent documents serve as an advertisement of new knowledge, as a
source of prior art information on which new inventions can be determined (for the patent granting
Office), as a basis for licensing agreements (by the applicant or patent owner), as a teaching
material (by the public and educational institutions), as an information source for examining trend
in new technologies, and as a tool to analyze viable areas of commercial investment (by investors)
etc.

It is important to note that, in previous years, patent applications were not available electronically.
In the information age, contents of applications and granted patents as well as information about
legal status of applications and patents are more accessible due to the advancement of on-line
technologies and services. Several on-line companies specialize in the provision of patent search
databases and patent analysis.

Self-Assessment Question
SAQ 4: What is the main reason for searching for patent documents by the patent
examiner?

Type your answer here:

Model Answer SAQ 4:

A patent examiner conducts a search to determine the prior art(s) relevant to the invention
contained in the application under examination. Such relevant prior art(s) are used in determining
whether the invention is meets the patentability criteria such as novelty and inventiveness.

Self-Assessment Question
SAQ 5: What are the main functions of the different parts of a patent application?

Type your answer here:

DL 170 Essentials of Patents – Module 3 page 18 / 21

Model Answer SAQ 5:

The main parts of a patent application are:

• the request, which contains the expression that a patent is sought and a number of details,
such as the title of the invention, the name and address of the applicant, the details of the
representative, if any, and the like;

• the description, which contains the detailed description of the invention and must have the
prescribed contents which must be presented in the prescribed order;

• the claim(s), which defines the matter for which protection is sought and determine the
scope of the patent. Substance that is disclosed in the description but not contained in the
claims becomes part of the public domain. As a rule, each claim must be clear and concise,
must be supported by the description and presented in the prescribed manner;

• the abstract, which merely serves the purpose of technical information; in particular, it will
not be considered for the purpose of interpreting the claims; and

• one or more drawings (if necessary, for the understanding of the invention).

DL 170 Essentials of Patents – Module 3 page 19 / 21

 Summary of Module 3

It is crucially important to refrain from disclosing the invention to the public prior to filing of
the patent application, since such a disclosure may invalidate the novelty of the invention in
many countries.

The first step toward obtaining a patent is to file a patent application with a patent office.
It is important to note that not every invention qualifies for patent protection. An invention must fall
within a patentable subject matter. Subject matter which may be excluded from patentability
includes are:
- discoveries of materials or substances already existing in nature;
- scientific theories or mathematical methods;
- plants and animals other than microorganisms, and essentially biological processes for the
production of plants and animals, other than non-biological and microbiological processes;
- schemes, rules or methods for doing business, performing purely, mental acts or playing
games;
- methods of treatment for humans or animals, or diagnostic methods practiced on humans
or animals (but not products for use in such methods).

Regarding patentability of inventions in all fields of technology, there are three basic criteria for
determining whether a claimed invention is eligible for a patent. The invention must be:
- new (or ‘novel’);
- involve an inventive step (new or is 'not obvious'); and
- capable of industrial application (have 'utility', or be ‘useful’)

States grant the right holder exclusive patent rights, but in return for these rights, the applicant must
disclose the invention in a patent application in a manner sufficiently clear and complete for the
invention to be carried out by a person skilled in the art without undue burden and without
needing inventive skill. This technical disclosure, which is a description of how the new
technology can be put into practice, should be made to the relevant patent offices as part of
the patent application.

Once an application has been received, the patent office generally takes a series of steps
prior to granting the patent. It carries out three main activities, namely:
a. a formality examination;
b. a substantive examination; and
c. the grant and publication of the patent.

It is important for you to know the type of examination the patent office requires both for filing of a
patent application and examining the status of other patents whose subject matter interests you.
This is because not all patent offices carry out a substantive examination. Patent offices in several
countries grant patents on the basis of the formality examination and compliance with certain
requirements; for example, that the claimed invention is not excluded from patentable subject
matter. Under such a system, the courts verify the actual validity of the patent and its compliance
with patentability requirements (its substantive aspect) only in case of dispute.

Some patent offices carry out searches. The objective of the search is to determine the prior art in
the specific field to which the invention relates. The patent office checks its documentation
collection including using the International Patent Classification (IPC) code.

The patent application usually consists of:

a. a request;
b. a description;
c. a claim or claims;
d. an abstract; and
e. one or more drawings (if necessary, for the understanding of the invention)

DL 170 Essentials of Patents – Module 3 page 20 / 21

The patent application must also identify the inventor(s) and the legal grounds of the applicant’s
entitlement.

A regularly updated list of patent office websites and the information found in them is a useful
source of information on the patent application process of patent offices. In the information age,
applications, their relevant procedures and granted patents are more accessible due to the
advancement of on-line technologies and services.

DL 170 Essentials of Patents – Module 3 page 21 / 21