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14.01.2

The Code of Practice (the first part of which can be found below) identifies best practice points for patent applicants and agents, which if followed widely will lead to savings and efficiencies in the Office, and consequently to better service and better value. Examiners and other Office officials may on occasion draw the Code to the attention of the applicant or agent, and may ask for it to be complied with before the case is processed further if that would be more efficient.

14.01.3

However, it is not to be expected that best practice can always be adhered to. The Office has no right to demand compliance with the Code of Practice because the Code is advisory only and has no legal force.

14.01.4

If an application does not comply with one of the points of the Code of Practice then this does not necessarily justify an objection under the Patents Act or Rules. For example, an application having more than one independent claim in one category would not comply with code point 1e, but this would not usually justify an objection under s.14(5)(b). When drawing attention to non-compliance with the Code of Practice, examiners should therefore make it clear whether they are also raising a formal objection under the Act or Rules.

Drafting and filing patent applications

This part of the Code of Practice for applicants and agents relates to the drafting and filing of patent applications under the Patents Act 1977. The quality of the application that is received by the Office determines in large part the effort that has to be expended during the statutory search and examination, in putting the application in a state to be granted, and is thus a central factor for the Code. The Code does not seek to eliminate the need for search and examination, but rather to optimise drafting towards UK law and practice and to avoid formulations that are clearly problematic for the UK search and examination. When drafting specifications for filing at this Office the aim should therefore be to adhere to the Code points below.

This part of the Code also deals with presentational and procedural matters that have to be checked by the Office after the initial filing. The Office tries to keep red tape to a minimum, but some formalities are necessary for the system to work properly. There is substantial scope for efficiency savings if the best practices set out in this Code are known and followed

The claims as filed should be structured to have:

• a) One independent claim defining all the technical features essential to the invention or inventive concept. Inessential or optional features should not be included in this claim; consequently terms such as preferably, for example, or more particularly should not be included, as the feature being introduced by such terms does not restrict the scope of the claim in any way. The independent claim should include sufficient details of interrelationship, operation or utility of the essential features to enable the scope of the claim to be determined (see 14.110.1); and

• b) dependent claims incorporating all the features of the independent claim and characterised by additional non-essential features (see 14.134).

In addition:

• c) further independent claims are only justified where the inventive concept covers more than one category, e.g. apparatus, use, process, product (see 14.159 to 14.168), complementary versions within one category, e.g. plug and socket, transmitter and receiver, which work only together (see 14.161), or distinct medical uses of a substance or composition (see 14.162).

Therefore claims as filed should not, where it might have been avoided, contain:

• d) multiple unrelated inventions that would clearly give rise to a plurality objection (see 14.157.1)

• e) multiple independent claims in any one category, even if only one inventive concept is present (see 14.110.1 and 14.140)

• f) claims of a total number or complexity not justified by the nature of the invention (see 14.110.1 and 14.140)

• g) claims which are in principle unsearchable by reason of the number of alternatives embraced, or the choice of characterising parameters or desiderata (see 14.110 and 14.133)

• h) dependent claims that are not fully limited by the terms of the preceding independent claim, e.g. dependent claims which omit, modify or substitute a feature of an independent claim (see 14.134)

If these points are not met on filing, suitable claim amendments should be filed if the search examiner requests them to enable search (see 17.94.9 and 17.108) Amendments may be required by the substantive examiner before examining such claims (see 18.43.1 and 18.39).

The above points also apply at the entry into the UK national phase of international applications under the Patent Cooperation Treaty.