Chapter VI: Substantive Examination Procedure
This chapter sets out the general procedure for substantive examination, together with guidance on particular matters where necessary. It does not provide detailed instructions on matters of internal administration
1. The start of the substantive examination

Sec.48.1 Sec.44 R.803

1.1     In order that substantive examination of a patent application can begin, the applicant is required to file a written request for examination according to Sec.48.1 within six months from the publication of the application (Sec.44) and to pay the required fees.

If the request is not filed and/or the fees are not paid within the six months following publication, the application is deemed withdrawn.
Sec.48.2, R.803.1 1.2     A withdrawal of the request for examination is irrevocable. Although the examination will be not be carried out any further, the fees will not be refunded.

Sec.42 Sec.43

 1.3     Formality examination (Sec.42), classification and search (Sec.43) and substantive examination will not always be carried out by the same examiner. After the request for substantive examination has been received, the file relating to the application is passed to the examining division competent for the substantive examination of the application.
R.906 1.4     The file will normally be assigned to the examiner responsible for the examination of applications in the technical field in which the particular application has been classified (R.906). Irrespective of the classification, it may sometimes be more efficient to assign applications having different classifications to the same examiner. For instance, closely related applications, or parent and divisional applications could be allocated to the same examiner. The applications will be taken up for examination in the order in which they have been filed, or in which the applicant’s responses have been filed.
1.5     The substantive examiner is entrusted to carry out all the work up to the point of a decision to grant a patent or refuse the application, under the supervision of his superior. This means that this examiner is entrusted to act on behalf of the Office in all communications with the applicant up to that point, but he will in general confer informally with his supervisors at any time if a special point of doubt or difficulty arises (see VI, 7.1 here below). Where reference is made in this part of the guidelines to the "examiner", this normally means the examiner entrusted with the work in this way, and it should be understood that this examiner is always acting in the name of the Office.

  
2. Examination procedure in general
2.1     The purpose of the examination is to ensure that the application and the invention to which it relates, meet the requirements set out in the relevant Sections of the IP-Code and in the IRR so that a patent can be granted. The prime task of the examiner is to deal with the substantive requirements; the criteria by which an examiner shall judge whether they have been met, are dealt with in detail, in so far as appears necessary, in the other chapters of this part of the guidelines. Some of the formal requirements may be dealt with by administrative staff, such as recording, monitoring time limits and payment of fees etc.
R.907(a) 2.2     The examiner's first step is to study the description, drawings (if any) and the claims of the application. In carrying out his task, the examiner will have in the file the documents making up the application and a history of the proceedings up to the start of the substantive examination.  In particular, this examination file will include the request for examination, description, drawings (if any) and the claims as originally filed; any amendments proposed to date; the search report with the applicant's comments (if any), and references to or copies of any cited documents; formality examination reports, priority documents together with any translations etc.
It is usually a good practice to read the claims first, since unclear passages stand out more clearly if the claims are read without first reading the description. The next step is to understand the invention by studying the description, the drawings (if any) and the claims (at least once again) of the application. While reading the application, the examiner should identify unclear, inconsistent, and wrong statements. Then the claims should be read again to check that they are consistent with the description and not too broad in scope (i.e. properly supported by the description). After that the prior art should be read and the claims examined for patent ability.
Sec.24.2 2.3     When the examiner has studied and understood the claims (including any amended claims), he should also make a search for any additional conflicting Philippine applications falling within the area defined by Sec.24.2 (see VI, 8.4 here below).
R.910 Applications cited as prior art under Sec.24.1 must have been published. Unpublished, withdrawn or forfeited applications may not be cited.

Sec.39 R.612

 2.3a      In the case of foreign applications, the applicant will be requested, as often as appropriate, to provide information on the status of any foreign application relating to the same invention within a specified period. Copies of the documents cited in foreign search reports may be requested. In the case of relevant citations in other languages than English, the examiner may request the submission of a corresponding patent (family member) in English.
R.612.2 Non-compliance with such requests has the effect that the application will be considered withdrawn.

R.907(b) R.908   R.909    R.912

 2.4     Taking into account the documents (if any) cited in the search report and any further documents found as the result of the search referred to in VI, 2.3 here above, and taking account also of any amendments that may have been proposed, or comments made, by the applicant, the examiner should identify any requirements of the IP code and IRR which, in his opinion, the application does not satisfy. He will then write to the applicant giving reasons for any objections he raises and inviting the applicant within a specified period to file his observations or submit amendments. When the applicant has replied with or without amendment, the examiner will re-examine the application.
2.4a    The examiner may base his objections on documents cited in the foreign search reports and on the contents in foreign examination reports or decisions. If such foreign examination reports or decisions are negative and also apply to the claims as filed in the Philippines, the examiner may raise prima facie objection referring to these reports/decisions. Provided certain claims (in English) have been granted after substantive examination in a foreign country, the examiner can save time by checking these for their compliance with the IP-code and the IRR, and – if positive – suggest to the applicant to amend his Philippine patent application accordingly.

Sec.51  R.912    R.913(a) R.913(b)

 2.5     At the re-examination stage, the examiner should be guided by the over-riding principle that a final position (grant or refusal) should be reached in as few actions as possible, and he should control the procedure with this always in mind. The process of communicating with the applicant described in VI, 2.4 here above shall be repeated as often as necessary. Nevertheless, if it is clear that the applicant is not making any real effort to deal with the examiner's objections, either by amendments or by counter-arguments, then even at the re-examination stage the examiner should bring the application before his supervisor, who may approve the refusal of the application. In any event, at some stage, the examiner will make a short written recommendation to his supervisor either that the application should be refused or that a patent should be granted thereon. If the application is to be refused (final rejection, Sec.51), a written reasoned decision will be prepared by the examiner entrusted with the examination of the application. In preparing the decision, the examiner must take care to abide by the general principle that the decision must be based on grounds or evidence on which the applicant has had the opportunity to comment (R.913(b)).

R.909   R.913 R.1302 R.917 R.1305

However, according to R.909, R.913, R.1302, a second adverse action by the examiner on the same grounds may already be considered as final by the applicant for the purpose of appeal.

The applicant may appeal against a final rejection or decision of refusal. If the examiner considers in the light of the applicant's statement, that the appeal is admissible and well-founded, or if the rejected claims have been cancelled (R.913), or if any other objected deficiencies have been removed (R.917), he should rectify its decision accordingly after receipt of the restricted claims or the appellant’s brief according to R.1305.

R.1307 - R.1311

 Otherwise, the appeal will be considered by the Director of patents and possibly higher instances as foreseen in R.1307 to 1311. If a decision to refuse a patent is reversed on appeal, the application may be referred back to the examiner for further examination. In such a case, the further examination will normally be entrusted to the examiner who performed the original examination. The examiner is bound by the decision of the Director or any higher instance.
2.6     If the examiner considers that a patent should be granted, he will first inform the applicant, by the means of a Notice of Allowability, of the claims which are allowed. Prosecution on the merits is closed with the issuance of this Notice. Further fees (inter alia the publication fee) will have to be paid by the applicant within a specified time period. Once the requirements referred to in this Notice are fulfilled, a Philippine patent is granted. For further details of the granting procedure, see VI, 15 here below.
2.7     Reference is made to the Part 9 of the IRR, where the rules relating to substantive examination are set out. The stages of this procedure are considered in more detail in the following sections.
  
3. The first stage of examination 
3.1     Following the publication of the application and prior to the substantive examiner's first communication with the applicant, the latter may file comments on the search report and amendments to the description, claims or drawings. These amendments may be submitted to avoid possible objections of lack of novelty or lack of inventive step in view of the citations listed in the search report; or to meet any objections that might have lead to a partial or incomplete search report  (i.e. at least some claims did not permit of a meaningful search), or they may be suggested for some other reason, e.g. to remedy some obscurity which the applicant himself has noted in the original documents.
These amendments will of course only be considered provided a request for substantive examination has been filed according to Sec.48.1.
3.2     Such amendments being voluntarily made by the applicant, the applicant is not restricted to amendment necessary to remedy a defect in his application. It does not, however, mean that the applicant is free to amend in any way he chooses. Any amendment must satisfy the following conditions: 

(i)                  It must not add subject-matter to the content of the application as filed (see VI, 5.3 to 5.8b here below); and

(ii)        It must not itself cause the application as amended to be objectionable under the IP-code, e.g. the amendment must not introduce obscurity (Sec.36.1).

If the amendments do not meet these conditions, the applicant should be told that the amended application cannot be allowed. Apart from the amendments referred to above, which are allowed under Sec.49, the applicant may correct obvious errors (see VI, 5.9 here below).

R.907   R.908

 

 3.3     The examiner's first substantive examination action should, as a general rule, cover all objections to the application (but see VI, 3.6 here below). These objections may relate to formal matters (e.g. failure to comply with one or more of the requirements specified in R.407, 415 or 416), to substantive matters (e.g. the subject-matter of the application is not patentable), or to both.
Substantive matters should normally be set out first. The letter should be drafted in such a manner as to facilitate re-examination of the amended application and, in particular, to avoid the need for extensive re-reading (see VI, 4.2 here below).
The question of unity of invention (Sec.38) should be addressed as early as possible. Concerning the assessment of unity and the procedure to follow in case of lacking unity, reference is made to Sec.38.2, to R.604 to R.611 and to III, 7.
R.909(b) 3.4 For each objection the letter should indicate the part of the application which is deficient and the requirement of the IP code or the IRR which is not met, either by referring to specific Sections or Rules, or by other clear indication; it should also give the reason for any objection where this is not immediately apparent. For example, where prior art is cited and only part of a cited document is relevant, the particular passage relied upon should be identified. If the cited prior art is such as to demonstrate lack of novelty or inventive step in the independent claim or claims, and if consequently there is lack of unity between dependent claims, the applicant should be warned of this situation (see VI, 5.2(i) here below).

R.907(b) R911    R.929

 

3.5     The letter should include an invitation to the applicant to file his observations, to correct any deficiencies and, if necessary, to submit amendments to the description, claims and drawings. It must also state the period within which the applicant must reply. Failure to reply in due time will cause the application to be deemed withdrawn.

3.6     It is emphasised that the first sentence of VI, 3.3 here above only sets out the general rule. There may be cases in which the application is generally deficient. In these cases the examiner should not carry out a detailed examination (R.908), but should send a letter to the applicant informing him of this fact, mentioning the major deficiencies and saying that further examination is deferred until these have been removed by amendment; the letter should specify a period within which the deficiencies must be removed. There may be other cases in which, although a meaningful examination is possible, a fundamental objection arises, e.g. it is clear that certain claims lack novelty and that the statement of claim will have to be drastically recast, or there are substantial amendments which are not allowable for one of the reasons stated in VI, 3.2 here above. In such cases it may be more appropriate to deal with this objection before making a detailed examination; if, e.g. the claims need re-casting, it may be pointless to raise objections to the clarity of some dependent claims as a consequence. However, if there are other major objections these should be dealt with. Generally the examiner should at the first examination stage seek to make the maximum impact with the broad aim of bringing matters to a conclusion (grant or refusal, as the case may be), without any undue delay (R.908).

3.7     When making the full examination, the examiner should concentrate on trying to understand what contribution the invention as defined in the claims adds to the known art. This should normally be sufficiently clear from the application as filed (R.407(1)c)). If it is not, the applicant should be required to elucidate the matter (see II, 4.5); but the examiner should not raise an objection of this kind unless he is convinced it is necessary, since to do so might result in the applicant introducing additional subject-matter and thus offending against the proviso of Sec.49 (see VI, 5.3 to 5.8b here below).
3.8     Although the examiner must bear in mind all the requirements of the IP-code and the IRR, the requirements which are most likely to require attention in the majority of cases are sufficiency of disclosure (see II, 4); clarity, especially of the independent claims (see III, 4); novelty (see IV, 5); and inventive step (see IV, 9).
3.9     The examiner should not require or suggest amendments merely because he thinks they will improve the wording of the claims. A pedantic approach is undesirable; what is important is that the meaning of the claims should be clear.
3.10    It must be emphasised that it is not part of the duty of an examiner to require the applicant to amend the application in a particular way to meet an objection, since the drafting of the application is the applicant's responsibility and he should be free to amend in any way he chooses provided that the amendment removes the deficiency and otherwise satisfies the requirements of the IP-code and the IRR. However, it may sometimes be useful if the examiner suggests at least in general terms an acceptable form of amendment, but if he does so he should make it clear that the suggestion is merely for the assistance of the applicant and that other forms of amendment will be considered.
R.911 3.11     After the action of the examiner, if the same be adverse in any respect, the applicant, if he persists in his application for a patent, must reply thereto and may request re-examination or reconsideration, with or without amendment.

In order to be entitled to re-examination or reconsideration, the applicant must make a request therefore in writing, and he must distinctly and specifically point out the supposed errors in the examiner’s action. The applicant must respond to every ground of objection and rejection in the prior examiner’s action (except that request may be made that objections or requirements as to form, not necessary to further consideration of the claims, be held in abeyance until a claim is allowed), and the applicant’s action must appear throughout to be a bona fide attempt to advance the case to grant. The mere allegation that the examiner has erred will not be received as a proper reason for such re-examination or reconsideration. In amending an application in response to a rejection, the applicant must clearly point out the patentable inventiveness and novelty which he thinks the claims present, in view of the state of the art disclosed by the references cited or the objections made.  He must also show how the amendments avoid such references or objections. To avoid objections under the proviso of Sec.49, he should indicate and upon which passages of the application as filed the amendments are based.
  
4. Further stages of examination
General procedure
R.912 4.1     Following the examiner's first letter and the applicant's reply, the examiner re-examines the application taking into account observations or amendments made by the applicant.
4.2     The examiner should apply the same standard of examination in relation to matters of substance at all stages in the processing of an application. However, after the first examination stage, he will not normally need to completely re-read the amended application if he has drafted his first letter in a comprehensive way (see VI, 3.4 here above), but should concentrate on the amendments themselves and any related passages, and on the deficiencies noted in the letter.

4.3     In most cases, the applicant will have made a bona fide attempt (see R.911(b)) to deal with the examiner's objections. There are then two possibilities to consider. The first is that the examiner, having taken account of the observations of the applicant, considers that there is little prospect of progress towards grant and that the application should be refused (Sec.51). In such a case, the examiner should not as a rule refuse immediately but should warn the applicant, e.g. by a short further written action, that the application will be refused unless he can produce further more convincing arguments or makes appropriate amendments within a specified time limit. The second and more usual possibility, however, is that the re-examination shows that there is good prospect of bringing the procedure to a positive conclusion in the form of a grant. In these latter cases, if there are still objections that require to be met, the examiner will issue a further written action pointing out the remaining deficiencies of the application.

If this re-examination, however, shows that the applicant has not made any real effort to deal with these objections, the examiner should consider recommending the application be refused immediately. However, this would be an exceptional case.
4.4     If the matters are such that the applicant is likely to require time to consider them, it will probably be preferable to deal with them by means of a written action. If, however, there seems to be confusion about points in dispute, e.g. if the applicant seems to have misunderstood the examiner's argument, or if the applicant's own argument is not clear, then it may expedite matters if the examiner proposes an interview (to be requested by the applicant, see VI, 6 here below). On the other hand, if the matters to be resolved are minor, or can quickly and easily be explained and dealt with, then they might be settled more expeditiously by a short written action.
Discussion with the applicant or his representative at an interview is more fully considered in VI, 6.
4.5     Similar considerations apply to later stages of re-examination except that, having regard to the principle stated in VI, 2.5 here above, the greater the number of actions which have already taken place, the greater is the likelihood that the most appropriate action is a final rejection or refusal under Sec.51.
4.5a    Where the final decision is to refuse the application, care should be taken that the decision does not offend against R.913(b), 2nd sentence.
Examination of amendments
4.6     Any amendment must satisfy the conditions listed in VI, 3.2 here above. When it was effected must also be established. After publication of the search report and before receipt of the first communication from the substantive examiner, the applicant may, of his own volition, amend the description, claims and drawings, provided a valid request for substantive examination has already been made.
R.911(c) 4.7     After receipt of the first communication from the examiner, the applicant may amend the description, claims and drawings provided that the amendment is filed at the same time as his reply.
R.912(b)

With his reply to the second communication from the substantive examiner the applicant may amend again, but any amendment will ordinarily need to be restricted to overcoming the objections raised by the examiner. Other types of amendments will require the consent of the examiner. Giving the examiner this discretion is intended to ensure that the examination procedure is brought to a conclusion in as few actions as possible (see VI, 2.5 here above).

If an amendment is allowed, subsequent proceedings are based on the Description, claims and drawings as amended. Consent to an amendment does not necessarily imply that the application as amended is free from any objection under the IP-code and/or IRR. Distinctions should be drawn between different types of amendments:

Amendments remedying a deficiency in response to the preceding communication must always be allowed, provided they do not give rise to some new deficiency. Amendments limiting a claim already considered allowable should normally be allowed, as too should those improving the clarity of the description or claims in a manner clearly desirable.
A further factor is the amount of alteration to the application documents involved. Extensive reworking of the description or claims may be a proper response to highly relevant further prior art of which the applicant has only just become aware (e.g. either through further citation by the examiner or through knowledge obtained from another source). Regarding less extensive amendments, the examiner should adopt a reasonable approach, trying to balance fairness to the applicant against the need to avoid unnecessary delay and excessive and unjustified additional work for the Office.
Any subsequent request to withdraw an amendment is itself a request for further amendment; thus, if this subsequent request occurs after the second communication from the examiner, it will be allowed only if the examiner consents. In exercising his discretion, the examiner should bear in mind the length of the proceedings to date and whether the applicant has already had sufficient opportunity for amendments. He should refuse in particular amendments reintroducing deficiencies previously pointed out to and removed by the applicant.
In deleting subject-matter from an application the applicant should avoid any statement which could be interpreted as abandonment of that subject-matter. Otherwise this subject-matter cannot be reinstated.
4.8     Any request by an applicant to replace the text of the application on whose basis a patent could be granted, with one that has been extensively revised should be refused, unless the applicant gives good reasons for proposing the changes only at this stage in the proceedings. This applies particularly in cases where the examiner has indicated that a version of the claims proposed by the applicant is grantable and that the applicant has only to bring the description into line with that version.
4.9     The Notice of Allowability closes the prosecution on the merits and does not constitute an opportunity for the applicant to call into question the outcome of the earlier procedure (see VI, 15 here below for procedure upon grant). At this stage of the proceedings the substantive examination has already been completed and the applicant has had the opportunity to amend the application and therefore normally only minor amendments which do not appreciably delay the preparations for grant of the patent will be allowed.
4.10     Once the decision to grant has been taken, further amendments or corrections to the granted patent, can only be requested on the basis of Sec.57, 58 or 59.
4.11     Paragraph 4.9 above do not prevent the examiner from resuming the proceedings of his own motion where he becomes aware of circumstances which are such as to render non-patentable the subject-matter claimed. Such circumstances may be brought to the examiner’s attention by the applicant or following observations by third parties under Sec.47 and can be considered up to the moment the final decision to grant is taken. In the resumed proceedings, substantive amendments to resolve this problem are possible.

R.912(b) R.927

 

 4.12     If a request for amendment is to be refused under R.912(b), the applicant must first be sent a communication giving the reasons for refusing the amendment. The applicant may then make a petition according to R.927. In the case of a situation as described in e.g. VI, 4.9, the applicant should be invited at the same time to request grant of the patent on the basis of the preceding acceptable version of the documents. If the applicant maintains his request for the amendment, the application must be refused under Sec.51 since, in these circumstances, there is no text of the application which has been agreed by the applicant and allowed by the examiner.
4.13     Reference is made to the IRR, R.911,912,916-927 concerning the provisions relating to amendments of the application documents.
  
5. Amendments
Making the amendments

Sec.49, Proviso R.916,  R.919

 5.1 An applicant may amend the patent application during examination, provided that such an amendment does not include new matter outside of the scope of the disclosure contained in the application as filed.
R.918 The description, claims and drawings must be amended and revised when required, to correct inaccuracies of description and definition or unnecessary prolixity, and to secure correspondence between the claims, the description and the drawings.

R.920          to R.926

 The formal considerations relating to the technique of making amendments are set out in R.920 to 926.
Allowability of amendments

5.2     Amendments can consist of addition, replacement or deletion of features originally present in the claims, the drawings or the description. Legally, the question of allowability of amendments is a question of whether the application as so amended is allowable. An amended application must of course satisfy all the requirements of the IP Code and the IRR including, in particular, inventive step and the other matters listed in VI, 3.8 here above (see also VI, 3.2 here above). Also, however, especially when the claims have been substantially limited, the examiner should bear in mind that the following questions may require special consideration at the amendment stage:

        (i)                  Unity of invention:

Do the amended claims still satisfy the requirements of Sec.38.1? If the documents cited in the search report seem to reveal lack of novelty or inventive step in the concept common to all the claims as filed, but the amended claims do not necessitate further search, the examiner should consider carefully whether objection to lack of unity is justified at this stage of the proceedings (see III, 7). If, however, the amended claims lack a common inventive concept and a further search is necessary, objection should be raised.

       (i)                  Changing to unsearched subject-matter:

If amended claims are directed to subject-matter which has not been searched (e.g. because it only appeared in the description and the examiner did not find it appropriate to extend the main search to this subject-matter), and which does not combine with the originally claimed and searched invention or group of inventions to form a single general inventive concept, such amendments are not admissible. This applies particularly when this unsearched subject-matter alone is now claimed.
Applicants should bear in mind that the examining procedure should be brought to a conclusion in as few actions as possible, thus the examiner may not allow further amendments (R.912, 2nd sentence, R.927). See also VI, 4.7 here above).
It is important also to ensure that no amendment adds to the content of the application as filed and thus offends against the proviso in Sec.49 as explained in the following paragraphs.
Additional subject-matter

Sec.49, proviso R.916   R.919

 

 5.3     There is normally no objection to an applicant introducing, by amendment, further information regarding prior art which is relevant; indeed this may be required by the examiner (see II, 4.4 and 4.18). Nor will the straight-forward clarification of an obscurity, or the resolution of an inconsistency, be objected to (e.g. under Sec.36.1, clarity or under R.918). When, however, the applicant seeks to amend the description (other than references to the prior art), the drawings, or the claims in such a way that subject-matter which extends beyond the content of the application as filed is thereby introduced, the application as so amended cannot be allowed.
5.4     An amendment should be regarded as introducing subject-matter which extends beyond the content of the application as filed, and therefore unallowable, if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art. At least where the amendment is by way of addition, the test corresponds to the test for novelty given in IV, 7.2.
Under Sec.49 and R.919 it does not appear to be permissible to add to an application matter present only in the priority document for that application. For correction of errors see VI, 5.9 here below.
5.5     For example, if an application related to a rubber composition comprising several ingredients and the applicant seeks to introduce the information that a further ingredient might be added, then this amendment should normally be objected to as offending against  the proviso in Sec.49. Likewise, in an application which described and claimed apparatus "mounted on resilient supports", without disclosing any particular kind of resilient support, objection should be raised if the applicant seeks to add the specific information that the supports are, or could be, e.g. helical springs (see, however, VI, 5.6 here below).

5.6     If, however, the applicant can show convincingly that the subject-matter in question would, in the context of the invention, be so well-known to the person skilled in the art that its introduction could be regarded as an obvious clarification, the amendment may be permitted. For example, in the matter of the rubber composition referred to in VI, 5.5 here above, if the applicant were able to show that the further ingredient which he sought to introduce was, say, a well-known additive normally used in rubber compositions of that kind as an aid to mixing and that its omission would generally be questioned, then its mention would be allowable on the grounds that it merely clarified the description and introduced nothing not already known to the skilled person; however, if the introduction of this additive brought about some special effects not originally disclosed, an amendment mentioning this should not be allowed. Similarly in the above-mentioned case of the resilient supports, if the applicant were able to demonstrate that the drawings, as interpreted by the skilled person, showed helical springs, or that the skilled person would only consider helical springs for the mounting in question, the specific mention of helical springs would be allowable.

5.6a     Where a technical feature was clearly disclosed in the original application but its effect was not mentioned or not mentioned fully, yet it can be deduced without difficulty by a person skilled in the art from the application as filed, subsequent clarification of that effect in the description does not contravene the proviso of Sec.49.
5.7     Amendment by the introduction of further examples should always be looked at very carefully in the light of the general considerations outlined in paragraphs VI, 5.3 to 5.6a here above, and will not, in general, be admissible. The same applies to the introduction of statements of new (i.e. previously not mentioned) effects of the invention such as new technical advantages: for example, if the invention as originally presented related to a process for cleaning woollen clothing consisting of treating the clothing with a particular fluid, the applicant should not be allowed to introduce later into the description a statement that the process also has the advantage of protecting the clothing against moth damage.
5.7a    Under certain circumstances, however, later filed examples or new effects, even if not allowed into the application, may nevertheless be taken into account by the examiner as evidence in support of the patentability of the claimed invention. For instance, an additional example may be accepted as evidence that the invention can be readily applied, on the basis of the information given in the originally filed application, over the whole field claimed (see III, 6.4). Similarly a new effect (e.g. the one mentioned in VI, 5.7 here above) may be considered as evidence in support of inventive step, provided that this new effect is implied by or at least related to an effect disclosed in the originally filed application (see IV, 9.10).
5.7b    Any supplementary technical information submitted after the filing date of the application which cannot be incorporated in the application documents as such will be added to the part of the file which is open to public inspection under Sec.44.2. From the date at which the information is added to the open part of the file, it forms part of the state of the art within the meaning of Sec.24.1.

5.7c    Care must also be taken to ensure that any amendment to, or subsequent insertion of, a statement of the technical problem solved by the invention meets the proviso of Sec.49. For example it may happen that following restriction of the claims to meet an objection of lack of inventive step, it is desired to revise the stated problem (R.407(c)) mentioned in the description to emphasise an effect attainable by the thus restricted invention but not by the prior art. It must be remembered that such revision is only permissible if the effect emphasised is one deducible by a person skilled in the art without difficulty from the application as filed (see VI, 5.6a and 5.7 here above).

5.7d    Features which are not disclosed in the description of the invention as originally filed but which are only described in a cross-referenced document which is identified in such description are prima facie not within the content of the application as filed for the purpose of the proviso of Sec.49. It is only under particular conditions that such features can be introduced by way of amendment into the claims of an application. For, example such an amendment would not contravene Sec.49 if the description of the invention as filed leaves no doubt to a skilled reader that protection is or may be sought for such features, that such features contribute to solving the technical problem underlying the invention, that such features at least implicitly clearly belong to the description of the invention contained in the application as filed and thus to the content of the application as filed, and that such features are precisely defined and identifiable within the disclosure of the reference document.

5.8    Alteration or excision of the text, as well as the addition of further text, may introduce fresh subject-matter. For instance, suppose an invention related to a multi-layer laminated panel, and the description included several examples of different layered arrangements, one of these having an outer layer of polyethylene; amendment of this example either to alter the outer layer to polypropylene, or to omit this layer altogether would not normally be allowable. In each case the specific panel disclosed by the amendment example would be quite different from that originally disclosed and hence the amendment would introduce fresh subject-matter and therefore be unallowable.
5.8a    The replacement or removal of a feature from a claim may, for example, not contravene the proviso of Sec.49 provided the skilled person would directly and unambiguously recognise that the feature was not explained as essential in the disclosure, it is not, as such, indispensable for the function of the invention in the light of the technical problem it serves to solve, and the replacement or removal requires no real modification of other features to compensate for the change. In case of replacement by another feature: the replacing feature must of course find  support in the original application documents, so as not to contravene the proviso of Sec.49.
5.8b    However, when the extent of a claim is to be limited because of a coincidental overlap between the prior art and the claimed subject-matter, and the claim's remaining subject-matter cannot be defined more clearly and concisely by positive features, this specific prior art may be excluded by means of a disclaimer.
Correction of errors
5.9    Correction of errors in the application documents is a special case involving an amendment, therefore the requirements of the proviso of Sec.49 apply likewise.
Where the mistake is in the description, claims or drawings, the correction must be obvious in the sense that it is immediately evident (at least once attention is directed to the matter):

        (i)                  that an error has occurred; and

        (ii)                what the correction should be.

Regarding (i), the incorrect information must be objectively recognisable for a skilled person using common general knowledge from the originally filed application documents (description, claims and drawings) taken by themselves.
Regarding (ii), the correction should be within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the originally filed application documents. Evidence of what was common general knowledge on the date of filing may be furnished in any suitable form.
Such a correction is of a strictly declaratory nature and establishes what a skilled person, using common general knowledge, would already derive on the date of filing from the parts of a patent application, seen as a whole, relating to the disclosure.
Requests for correction can only be considered until the decision to grant a patent or to refuse the application has been taken. Concerning correction of errors in a granted patent, reference is made to Sec.57 and Sec.58.
  
6. Discussion with the applicant
6.1     In this section the term "applicant" is intended to mean "representative" where he has appointed one. Where the applicant has appointed a representative, the communication should be with that representative.

6.2     According to the IRR, Final Provisions, Sections 1(a)(b), all business with the Office shall be transacted in writing. Actions will be based exclusively on the written record, and no attention will be paid to any alleged oral promise, stipulation or understanding. Unless otherwise provided, the personal attendance of applicants and other persons at the Office is unnecessary. Their business can be transacted by correspondence.

R.905

 

R.928

 6.3     As regards information on any specific technical or scientific matter pending final action by the Bureau, the applicant may, upon request and upon the payment of a fee, request in writing a conference with the examiner, specifying the query he would want to propound to the examiner. The examiner has the discretion to grant the request or to choose to reply to the query in writing. Interviews for the discussion of pending applications shall not be held prior to the first written official action thereon.
6.4     The circumstances in which it may be appropriate for the examiner accept the request for an interview rather than send a further written action are considered in VI, 4.4 here above. If the applicant requests an interview the request should be granted unless the examiner believes that no useful purpose would be served by such a discussion.
R.928 6.5      When an interview is requested, the matters for discussion should be clearly stated. When granting the request and making the necessary arrangements, the examiner should record the particulars and briefly indicate the matters to be discussed.  The interview shall take place within the premises of the Bureau during regular working hours as specified by the examiner.
6.6     Solely the examiner dealing with the application will normally conduct the interview. It should always be made clear to the applicant that any agreement reached must ultimately be subject to the approval of the examiner’s superior.
R.928 6.7     The interview is not a procedure as formal as a hearing before the legal division; it shall nevertheless always be reduced to writing and signed by both the examiner and the applicant immediately after the interview. Such writing shall form part of the records of the Bureau.
6.8     The recording of the interview depends upon the nature of the matters under discussion. Where the interview is concerned with the clarification of obscurities, the resolution of uncertainties, or putting the application in order by clearing up a number of minor points it will usually be sufficient if the examiner makes a note on the file of the matters discussed and the conclusions reached, or amendments agreed. If, however, the interview is concerned with resolving weightier matters, such as questions of novelty, inventive step, or whether the amendment introduces fresh subject-matter, then a fuller note of the matters discussed should be made in the file.
6.9     The records of interviews should always indicate whether the next action is due to come from the applicant or the examiner. Pending time limits may be extended.
6.10     If a fresh objection of substance is raised at an interview and no amendment to meet it is agreed at the time, the objection must be confirmed by a letter giving the applicant a fresh period within which he may reply if he so wishes. Otherwise time limits may not be altered as a result of an interview.
   
7. Work within the examining divisions
7.1     As stated in VI, 1.4 here above, the examiner may seek the advice of other members of the examining division, such as his assistant division chief or division chief, if necessary, at any stage in the examination. Any action processed by the examiner will be checked by his superior(s).  With ongoing examination, a point will be reached when it becomes appropriate for the examiner to refer the case formally to his superior. This will arise if he considers that a final action is appropriate, i.e. if it the application is in order to proceed to grant; or, at the other extreme, if there seems no possibility of amendment which would overcome his objections, or if the applicant has made no serious attempt to meet these objections and it therefore appears that the application must be refused. Between these extremes there are other circumstances in which reference to the superiors is approp