Standard phrases for English communication in national patent examination

Standard phrases for English communication in national patent examination

Forfatter: Inger Sofie Næsgaard Gyldig fra: 11.10.2018 Revisjon: 1.2
Godkjent av: Camilla Hammer Hopland Revisjonsfrist: 11.10.2019 ID: 5052

Standard phrases for English communication in national patent examination

Reference to Patents Act, Patent Regulations and Examination Guidelines

Novelty - Nyhet

Inventive step - Oppfinnelseshøyde

Patentability - Patenterbarhet

Non-unity - Uenhetlighet

Clarity and support – Klarhet og støtte

Clarity and conciseness – Klarhet/bestemt angivelse og tydelighet

Amendments - Endringer

Other formal issues – Andre formelle mangler

Incomplete search – Ufullstendig/delvis gransking

Reference to Patents Act, Patent Regulations and Examination Guidelines

Norsk Engelsk

Patentloven patentloven (patl.) § 2 Patents Act Norwegian Patents Act, Section 2,

andre ledd. second paragraph.

Patentforskriften patentforskriften (pf.) § Patent Regulations Regulations to the Norwegian Patents

xx nummer y. Act (Patent Regulations), Section xx
no. y.
Regulations to the Norwegian Patents
Act (Patent Regulations), Chapter xx.
Betalingsforskriften forskrift om betalinger Regulation on Fees Regulation Relating to Payments etc.
mv. til Patentstyret og to the Norwegian Industrial Property
Klagenemnda for Office and the Board of Appeal for
industrielle rettigheter Industrial Property Rights (Regulation
(KFIR) § 38 nummer 2. on Fees), Section 38 no. 2.

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 Standard phrases for English communication in national patent examination
Patentretningslinjene patentretningslinjene Examination Guidelines «patentretningslinjene (pr.) del C, kap.
(pr.) del C, kap. II, (*) II, punkt 3.2.1.»
punkt 3.2.1
Examination Guidelines, part C,
Det forkortes andre Chapter II, 3.2.1 (in Norwegian only).
gang man viser til pr.
til:
pr. del C, kap. II, punkt
3.2.1 Det forkortes andre gang man viser til
pr. til:
«pr. del C, kap. II, punkt 3.2.1.»
Examination Guidelines, part C,
Chapter II, 3.2.1.

* Ved henvisning til patentretningslinjene i engelsktekstet brev må saksbehandler forklare tydelig i brevet hva henvisningen
gjelder, da pr. kun foreligger på norsk.
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Novelty - Nyhet
Lack of novelty The present application does not meet the criteria of patentability, because the
subject matter of claim ... is not new in the sense of the Norwegian Patents Act,
Section 2, first paragraph.

Claim … is not novel and therefore does not comply with the Norwegian Patents
Act, Section 2, first paragraph.

The subject matter of claim ... is not new in the sense of the Norwegian Patents
Act, Section 2, first paragraph, and the criteria of patentability are therefore not met.

Document Dx discloses [insert description]. Claim … is therefore not novel. (Repeat

clause for other documents as necessary)

Document Dx discloses the additional features [insert description]. Claim … is

therefore not novel.

The features added by dependent claim … are also disclosed in document Dx, for
example [insert description]. [Repeat as necessary for other documents]. Claim …
is therefore not novel

Novelty is complied with Claim… is novel and therefore complies with the Norwegian Patents Act, Section 2,
first paragraph.

Document D1 is considered to represent the closest prior art. Document D1

discloses [insert description]. However, none of the cited documents discloses
[insert description]. Claim … is therefore novel.

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Inventive step - Oppfinnelseshøyde

Lack of inventive step Claim… does not involve an inventive step and therefore does not comply with the
Norwegian Patents Act, Section 2, first paragraph.

Given the novelty objection above, claim [same claim not showing novelty] does not
involve an inventive step.

Document D1 discloses …
Document D2 discloses …
[Insert description to explain lack of inventive step]. It would have been obvious to a
person skilled in the art to arrive at the matter defined in claim … by combining the
teachings of documents D1 and D2.
EITHER: Based on what is previously known from documents … and … we
consider claim … not to involve an inventive step.
OR: Based on what is previously known from document … in combination with
document … we consider claim … not to involve an inventive step.

The present application does not meet the criteria of patentability, because the
subject matter of claim ... does not involve an inventive step in the sense of the
Norwegian Patents Act, Section 2, first paragraph.

The subject matter of claim ... does not involve an inventive step in the sense of the
Norwegian Patents Act, Section 2, first paragraph, and the criteria of patentability
are therefore not met.

The solution proposed in claim ... of the present application cannot be considered
to involve an inventive step. See Norwegian Patents Act, Section 2, first paragraph,
... [insert reasons]

Combination of features Feature ... is described in document ... [insert first document] as providing the
known from two documents same advantages as described in the present application. The skilled person would
therefore regard it as a normal / design option to include this feature in the ...
described in ... [insert second document] in order to solve the problem posed

Combination of all claimed In view of the discussion above, the skilled person would regard it a normal design
features is obvious procedure to combine all the features set out in claim ...

Mere choice among obvious The feature ... is merely one of several straightforward possibilities from which the
possibilities skilled person would select, in accordance with the circumstances, without the
exercise of inventive skill, in order to solve the problem posed.
“Bonus effect” When a skilled person solves a known problem with known means, an unexpected
technical effect is considered to be a “bonus effect” which does not justify patent
protection

Replacing a feature by an It is generally known to the person skilled in the art that the feature ... is an
equivalent equivalent to the feature ... of... [insert document] and can be interchanged with
that feature where the circumstances make it desirable.

Features known from a However, these features have already been employed for the same purpose in a
combination of two documents for similar ... (see ... [insert document and references applying to this document]). It
similar purpose and effect would be obvious to the person skilled in the art, namely when the same result is to
be achieved, to apply these features with corresponding effect to a ... according to
... [insert document], thereby arriving at a/an ... according to claim ...

Alleged commercial advantage The alleged commercial advantage cannot support the case for inventive step, since
it has not been demonstrated that such commercial advantage is directly derivable
from the technical features of the invention claimed in claim ...

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Long-felt need
New use of known material
Obvious selection
Omission of feature is obvious
Dependent claims also appear
not inventive
Dependent claim relates to a
slight constructional change
Feature of a dependent claim is
known
Inventive step is complied with
Particular combination of features
is new and inventive
Dependent claims meet
requirements of patentability
Problem-solution-approach
Identification of closest prior art
The closest prior art shows...
Difference with respect to the
closest prior art
Standard phrases for English communication in national patent examination
The applicant has submitted that in the period between the publication of the cited
prior art ... [insert document] and the application a solution to the problem to which
the present invention relates was continually being sought, and that this long-felt
need is satisfied by the invention. The required means for satisfying this need were,
however, available only shortly before the date of filing of the application.
The invention of claim ... consists merely in a new use of material ..., which
material is known from ... [insert first document]. This use, however, does not
involve more than employment of properties of the material already known from ...
[insert second document and references applying to this document]. Hence, no
inventive step is present in the subject matter of claim ...
The subject matter of claim ... consists in the selection of a ... from the range of ...
described in ... [insert document]. Such a selection can only be regarded as
inventive, if the ... presents un¬expected effects or properties in relation to the rest
of the range. However, no such effect or property is indicated in the application.
Hence, no inventive step is present in the subject matter of claim ...
The ... according to claim ... differs from that known from ... [insert document] only
in that the feature ... has been omitted. Apart from the obviously and consequently
simpler design of the... the only result of the omission of feature... is that the effect
related to ... is no longer present in the ... according to claim... Such a
simplification does not involve an inventive step. See Norwegian Patents Act,
Section 2, first paragraph.
Dependent claim ... does not appear to contain any additional features which, in
combination with the features of any claim to which it refers, meet the requirements
of novelty and/or inventive step. The reasons are as follows: ... [insert reasons]
In claim ... a slight constructional change in the ... of claim ... is defined which
comes within the scope of the customary practice followed by persons skilled in
the art, especially as the advantages thus achieved can readily be foreseen.
Consequently, the subject matter of claim ... lacks an inventive step.
The feature of dependent claim ... has already been employed for the same
purpose in a similar ... (see [insert first document and references applying to this
document]). It would therefore be obvious to the person skilled in the art to apply
this feature with corresponding effect to a/an ... according to [insert second
document], thus arriving at a/an ... according to claim ...
Claim… involves an inventive step and therefore complies with the Norwegian
Patents Act, Section 2, first paragraph.
[Insert description of feature] is not obvious to a person skilled in the art from the
cited documents, when taken individually or in any combination. Claim … therefore
involves an inventive step.
The solution to this problem proposed in claim ... of the present application is
considered to involve an inventive step for the following reasons: ...
The combination of the features of dependent claim(s) ... is neither known from, nor
rendered obvious by, the available prior art. ... [insert reasons].
Claim ... is dependent on claim ... and as such also meets the requirements of
novelty and inventive step.
Document D1 is considered to be the closest prior art and discloses [insert
description].
... [insert document] is regarded as being the prior art closest to the subject-matter
of claim ..., and discloses ... [insert also references applying to this document].
The subject matter of claim ... therefore differs from this known ... in that ...
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... [insert document], which is considered to represent the most relevant state of
the art, discloses ... [insert also references applying to this document] from which
the subject-matter of claim ... differs in that ...

The prior art has been identified as [insert document] and discloses ... [insert
references applying to this document]. It follows that the technical feature of claim
... makes a contribution over the prior art.

The problem to be solved The problem to be solved by the present invention may therefore be regarded as ...

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Patentability - Patenterbarhet
Patentability in case of medical
use type claims
Assessment of novelty and
inventive step of medical use
type claims
Subject matter excluded from
patent grant
Subject matter not regarded as
inventions
Non-patentability
Scientific theory
Mathematical method
Plant variety
Animal variety
Essentially biological process for
the production of plants
Essentially biological process for
the production of animals
Schemes, rules and methods for
performing mental acts
Schemes, rules and methods for
playing games
Schemes, rules and methods for
doing business
Method for the treatment of the
human or animal body by surgery
Method for the treatment of the
human or animal body by therapy
Diagnostic method practised on the
human or animal body
Presentation of information
Program for computers
Search carried out: diagnostic
method
Standard phrases for English communication in national patent examination
The patentability can be dependent upon the formulation of the claims. We do not
recognise as patentable claims directed to the use of a compound in medical
treatment, but may allow claims directed to a product, in particular substances or
compositions, for use in a first or further medical treatment.
Patentability, in particular novelty and inventive step, of claim ... has been
assessed on the basis of a purpose-limited product claim taking into account the
alleged effects of the compound/composition.
Claims ... relate to subject matter which is excluded from patent grant according
to the Norwegian Patents Act, Section 1, sixth paragraph, first sentence.
Claim ... comprises a feature which is considered to be covered by the provisions
of the Norwegian Patents Act, Section 1, second paragraph, no. 3.
Scientific theory, ref. Norwegian Patents Act, Section 1, second paragraph, no.1.
Mathematical theory, ref. Norwegian Patents Act, Section 1, second paragraph,
no.1.
Plant variety, ref. Norwegian patents Act, Section 1, fourth paragraph, first
sentence.
Animal variety, ref. Norwegian Patents Act, Section 1, fourth paragraph, first
sentence.
Essentially biological process for the production of plants, ref. Norwegian Patents
Act, Section 1, fifth paragraph, first and second sentence.
Essentially biological process for the production of animals, ref. Norwegian
Patents Act, Section 1, fifth paragraph, first and second sentence.
Scheme, rules and method for performing mental acts, ref. Norwegian Patents
Act, Section 1, second paragraph, no. 3.
Scheme, rules and method for playing games, ref. Norwegian Patents Act,
Section 1, second paragraph, no.3.
Scheme, rules and method for doing business, ref. Norwegian Patents Act,
Section 1, second paragraph, no. 3.
Method for treatment of the human or animal body by surgery, ref. Norwegian
Patents Act, Section 1, sixth paragraph, first sentence.
Method for treatment of the human or animal body by therapy, ref. Norwegian
Patents Act, Section 1, sixth paragraph, first sentence.
Diagnostic method practised on the human or animal body, ref. Norwegian
Patents Act, Section 1, sixth paragraph, first sentence.
Presentation of information, ref. Norwegian Patents Act, Section 1, second
paragraph, no. 4.
Program for computers, ref. Norwegian Patents Act, Section 1, second
paragraph, no. 3.
Although claim ... is directed to a diagnostic method practised on the
human/animal body, a complete search has been carried out.
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Search carried out: treatment of Although claim ... is directed to a method of treatment of the human/animal body,
the human or animal body the search has been carried out and based on the alleged effects of the
compound/composition.

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Non-unity - Uenhetlighet
No technical relationship
No single general inventive
concept
Lack of corresponding technical
effect as well
Claims not linked by
corresponding special technical
features, no single general
inventive concept
Standard phrases for English communication in national patent examination
There is no technical relationship between the inventions, see Regulations to the
Norwegian Patents Act (Patent Regulations), Section 8, and therefore the
application does not satisfy Norwegian Patents Act, Section 10, which states
that an application cannot comprise a plurality of independent inventions.
The application does not meet the requirements of unity of invention as there are
... inventions covered by the claims indicated as follows: [insert list of non-unity
subjects] The reasons for which the inventions are not so linked as to form a
single general inventive concept, as required by the Norwegian Patents Act,
Section 10, are as follows: …
Also, examining the possible correspondence by technical effect, one finds that
the technical effect of the first invention is ...
and that the technical effect of the second invention is ...
This appears to show lack of corresponding technical effect as well.
Consequently, neither the objective problem underlying the subjects of the
claimed inventions, nor their solutions defined by the special technical features
allow a relationship to be established between the said inventions, which involves
a single general inventive concept.
In conclusion, the groups of claims are not linked by common or corresponding
special technical features and define ... different inventions not linked by a single
general inventive concept.
The application hence does not meet the requirements of unity of invention as
defined in the Norwegian Patents Act, Section 10 and Regulations to the
Norwegian Patents Act (Patent Regulations), Section 8.
The subject matter of independent claim ... is already known/not inventive (see
the grounds for this objection). The requisite unity of invention (Norwegian
Patents Act, Section 10) therefore no longer exists, as a technical relationship
involving one or more of the same or corresponding special technical features in
the sense of Regulations to the Norwegian Patents Act (Patent Regulations),
Section 8, does not exist between the subject matter of the following groups of
dependent claims: ...
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Clarity and support - Klarhet og støtte
Description
Claims
Essential feature of the
invention not in the claims
Element in claim missing from the
description
Operative range of claim outside
that of description
Claims not supported by the
description: broad scope
Claims not supported by the
description: definition in terms of
function
Claim excessively broad without
solving problem
Standard phrases for English communication in national patent examination
The description does not comply with the Norwegian Patents Act, Section 8,
second paragraph, third sentence.
The description does not disclose the invention in a manner sufficiently clear and
complete to be carried out by a person skilled in the art. [Add explanation]
Claim … does not comply with the Norwegian Patents Act, Section 8, second
paragraph, first sentence.
The description indicates [describe missing essential feature(s)] on page(s) … to
be an essential feature of the invention. This feature is not recited in claim(s) …
The description indicates on page(s) … that [describe missing essential feature(s)]
materially affects the way the invention works, and is therefore essential. This
feature is not recited in claim(s) ….
Claim … is not fully supported by the description. Specifically (describe missing
element) is not present in the description.
The feature of claim ..., that ..., is not referred to in the description. Claim ... is
therefore not supported by the description as required by the Norwegian Patents
Act, Section 8, second paragraph, third sentence.
Claim … describes a range which is out of the operative range disclosed in the
description on page(s) … [Add explanation].
Claim ... is not supported by the description as required by the Norwegian Patents
Act, Section 8, second paragraph, third sentence, as its scope is broader than
justified by the description and drawings. ... [insert reasons]
Claim ... broadly defines the feature ... in terms of its function: ...
However, the description and drawings (see ...) convey the impression that this
function can only be carried out in a particular way, namely by ..., and no
alternative means are envisaged.
Hence, claim ... is not supported by the description as required by the Norwegian
Patents Act, Section 8, second paragraph, third sentence.
Claim … includes a broad statement that includes all possible means without
qualification for solving the problem facing the inventor. This claim therefore merely
re states the problem or the desired result.
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Clarity and conciseness – Klarhet/bestemt angivelse og tydelighet
Lack of conciseness
Lack of clarity
Functional features in
apparatus claim
Statements in the description
rendering the scope of the
claims unclear (spirit of the
invention)
Result to be achieved
Use of vague and indefinite
terms
Subject matter does not fall
within scope of the claims
Unclear functional features
Use of relative terms
Standard phrases for English communication in national patent examination
Claims … are not concise. The claims are identical or are so close in content that
these claims address the same subject matter.
Although claims ... have been drafted as separate independent claims, they appear
to relate effectively to the same subject matter and to differ from each other only
with regard to the definition of the subject matter for which protection is sought
and/or in respect of the terminology used for the features of that subject matter. The
aforementioned claims therefore lack conciseness and as such do not meet the
requirements of the Norwegian Patents Act, Section 8, second paragraph, first
sentence.
Claim … is not clear. The term/expression [describe term/expression] is not clear
from the description.
Claim … is not clear. The term/expression [describe term/expression] is used in
the claim(s) to mean [enter meaning], which does not have a well recognized
meaning in the art.
Claim … is not clear. The term/expression [describe term/expression] is
ambiguous.
The application does not meet the requirements of the Norwegian Patents Act,
Section 8, second paragraph, first sentence, because claim ... is not clear.
As explained below, some of the features in the apparatus claim ... relate to a
method of using the apparatus rather than clearly defining the apparatus in terms of
its technical features. The intended limitations are therefore not clear from this
claim, contrary to the requirements of the Norwegian Patents Act, Section 8,
second paragraph, first sentence.
The /vague and imprecise/ statement in the description on page ... implies that the
subject matter for which protection is sought may be different to that defined by the
claims, thereby resulting in lack of clarity (Norwegian Patents Act, Section 8,
second paragraph, first sentence) when used to interpret them.
Claim ... does not meet the requirements of the Norwegian Patents Act, Section 8,
second paragraph, first sentence, because the matter for which protection is sought
is not clearly defined. The claim attempts to define the subject matter in terms of
the result to be achieved, which merely amounts to a statement of the underlying
problem, without providing the technical features necessary for achieving this result.
The term ... used in claim ... is vague and unclear and leaves the reader in doubt as
to the meaning of the technical feature to which it refers, thereby rendering the
definition of the subject matter of said claim unclear, ref. Norwegian Patents Act,
Section 8, second paragraph, first sentence.
The subject matter described on page(s) ... /and/or/shown in figure(s) ... does not
fall within the scope of the claims. This inconsistency between the claims and the
description leads to doubt concerning the matter for which protection is sought,
thereby rendering the claims unclear, ref. Norwegian Patents Act, Section 8,
second paragraph, first sentence.
Claim ... does not meet the requirements of the Norwegian Patents Act, Section 8,
second paragraph, first sentence, in that the matter for which protection is sought
is not clearly defined. The functional statement ... do not enable the skilled person
to determine which technical features are necessary to perform the stated function.
The relative term ... used in claim ... has no well recognized meaning and leaves
the reader in doubt as to the meaning of the technical feature to which it refers,
thereby rendering the definition of the subject matter of said claim unclear, ref.
Norwegian Patents Act, Section 8, second paragraph, first sentence.
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Essential feature missing in
claim
Registered trade mark used in
claims
Standard phrases for English communication in national patent examination
It is clear from the description on page ... that feature ... is essential to the
definition of the invention.
Since independent claim ... does not contain this feature it does not meet the
requirement following from the Norwegian Patents Act, Section 8, second
paragraph, first sentence, taken in combination with that any independent claim
must contain all the technical features essential to the definition of the invention,
see «patentretningslinjene (pr.) del C, kap. III, punkt 4.4» Examination Guidelines,
part C, Chapter III, 4.4 (in Norwegian only).
The term ... employed in claim ... and appearing to be a registered trade mark has
no precise meaning as it is not internationally accepted as a standard descriptive
term, thereby rendering the definition of the subject matter of this claim unclear, ref.
Norwegian Patents Act, Section 8, second paragraph, first sentence.
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Amendments – Endringer
Added subject-matter
Deletion or modification of
claimed feature(s)
Amended or later filed
sequence listing not accepted
(pf. § 21)
Standard phrases for English communication in national patent examination
The amendment filed with the letter dated ... introduces subject matter which
extends beyond the content of the application as filed, contrary to the Norwegian
Patents Act, Section 13. The amendment concerned is the following: ...
The applicant has replaced/deleted feature ... in claim/s ...
This feature is presented as essential in the disclosure of the invention
/indispensable as such for the function of the invention in the light of the technical
problem it seeks to solve. The replacement/deletion of this feature requires
modification of other features to compensate for this replacement/deletion.
In effect...
The replacement/deletion of this feature introduces subject matter which extends
beyond the content of the application as filed, contrary to the Norwegian Patents
Act, Section 13.
The requirements of Regulations to the Norwegian Patents Act (Patent
Regulations), Section 21, have not been met in respect of the sequence listing
filed as an amendment. See also «patentretningslinjene (pr.) del C, kap. II, punkt
8.7» Examination Guidelines, part C, Chapter II, 8.7 (in Norwegian only).
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Other formal issues – Andre formelle mangler
Relevant prior art not described
in the description
Prior art described but no
document referred to
Description is not in conformity
with the accepted claims
Claim not drafted in two-part
form
Specific features in the
incorrect part of the claim
Claim should be drafted as a
dependent claim
Claim with references to
description/drawings
No reference signs in claims
Inconsistent use of reference
signs
Reference sign in the
description does not appear in
the drawings and vice versa
Standard phrases for English communication in national patent examination
Document Dx … should be identified in the general part of the description and the
relevant background art discussed therein should be briefly discussed to give the
correct background for the invention, ref. Regulations to the Norwegian Patents
Act (Patent Regulations), Section 9. See «patentretningslinjene (pr.) del C, kap.
II, punkt 3.2.1» Examination Guidelines, part C, Chapter II, 3.2.1 (in Norwegian
only).
The description shall mention any background art useful for understanding the
invention and its relationship to prior art, and a reference to the relevant prior art,
at least [skriv inn det/de aktuelle D-nummer] must be inserted into the description
of background art, see Regulations to the Norwegian Patents Act (Patent
Regulations), Section 9 and «patentretningslinjene (pr.) del C, kap. II, punkt
3.2.1» Examination Guidelines, part C, Chapter II, 3.2.1 (in Norwegian only).
A document reflecting the prior art described on page ..., is not identified in the
de¬scription, ref. Regulations to the Norwegian Patents Act (Patent Regulations),
Section 9. See «patentretningslinjene (pr.) del C, kap. II, punkt 3.2.1»
Examination Guidelines, part C, Chapter II, 3.2.1 (in Norwegian only).
The description must be brought into conformity with the accepted claims, ref.
Regulations to the Norwegian Patents Act (Patent Regulations), Section 9. See
«patentretningslinjene, del C, kap. III, punkt 4.3» Examination Guidelines, part C,
Chapter III, 4.3 (in Norwegian only).
Independent claim ... is not in two part form which in the present case would be
appropriate, ref. Regulations to the Norwegian Patents Act (Patent Regulations),
Section 6. See also «patentretningslinjene (pr.) del C, kap. III, punkt 2.2.3»
Examination Guidelines, part C, Chapter III, 2.2.3 (in Norwegian only). Those
features known in prior art should be placed in the preamble and the remaining
features should be included in the characterising part.
In the present case, the following features are known in combination from ...
[insert document(s)] and belong in the preamble of such a claim: ..., ..., ...
Although claim ... is drafted in the two part form, the feature ... is incorrectly
placed in the characterising portion, as it is disclosed in [insert document(s)] in
combination with the features placed in the preamble, ref. Regulations to the
Norwegian Patents Act (Patent Regulation), Section 6.
Claim ... comprises all the features of claim ... and is therefore not appropriately
formulated as a claim dependent on the latter. The claim is therefore not
considered to be clear, ref. Norwegian Patents Act, Section 8, second paragraph,
first sentence.
Claim ... contains a reference to the description and/or the drawings. Such claims
are considered not to be clear, ref. Norwegian Patents Act, Section 8, second
paragraph, first sentence, except when the reference is absolutely necessary,
which is not the case here. See «patentretningslinjene (pr.), del C, kap. II, punkt
4.11» Examination Guidelines, part C, Chapter II, 4.11 (in Norwegian only).
The features of claim ... should be provided with reference signs in parentheses to
increase the intelligibility of the claim. See «patentretningslinjene (pr.) del C, kap.
III, punkt 4.12» Examination Guidelines, part C, Chapter III, 4.12 (in Norwegian
only).
The same feature shall be denoted by the same reference sign throughout the
application, ref. Norwegian Patents Act, Section 8, second paragraph, first
sentence. See «patentretningslinjene (pr.) del C, kap. II, punkt 3.3.2»
Examination Guidelines, part C, Chapter II, 3.3.2 (in Norwegian only). This
requirement is not met in view of the use of reference sign ... [insert reference sign
with reference to the page/figure concerned].
Reference signs not appearing in the description shall not appear in the drawings,
and vice versa. This requirement is not met in view of the reference sign ... [insert
reference sign with reference to the page/figure concerned]
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Incorrect use of units
Units/symbols/formula not
internationally recognized
Terms/signs/symbols not
generally accepted in the art
Inconsistent terminology
Standard phrases for English communication in national patent examination
The unit of weight/measure/temperature employed in claim ... /and/ on page ... is
not additionally expressed in terms of the units stipulated in
«patentretningslinjene (pr.) del C, kap. II, punkt 3.4.4» Examination Guidelines,
part C, Chapter II, 3.4.4 (in Norwegian only). Values must be expressed in
acknowledged international units.
The unit/symbol/formula ... employed in claim .. /and on page ... is not recognised
in international practice /generally used, contrary to the requirements. See
«patentretningslinjene (pr.) del C, kap. II, punkt 3.4.4» Examination Guidelines,
part C, Chapter II, 3.4.4 (in Norwegian only).
The technical term / sign / symbol ... employed in claim ... /and on page ... is not
generally accepted in the art. See «patentretningslinjene (pr.) del C, kap. II, punkt
3.4.4» Examination Guidelines, part C, Chapter II, 3.4.4 (in Norwegian only).
The terminology and the signs shall be consistent throughout the application, ref.
Norwegian Patents Act, Section 8, second paragraph, first sentence. This
requirement is not met in view of the use of the expressions ... for the same
feature (see ...).
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Incomplete search – Ufullstendig/delvis gransking
Many independent claims with
no clear distinction.
Incomplete search:
many alternatives within one claim;
unsupported claim
unclear claim with Markush
formula and functional definition
statements of desired data
reach-through claims with support
by examples
Standard phrases for English communication in national patent examination
The present application contains ... claims, of which ... are independent. There is
no clear distinction between the independent claims because of overlapping
scope. There are many claims, and it is particularly burdensome for a person
skilled in the art to establish the subject matter for which protection is sought. The
claims as a whole are not in compliance with the provisions of clarity and
conciseness of the Norwegian Patents Act, Section 8, second paragraph, first
sentence.
The non compliance with the substantive provisions is to such an extent that a
meaningful search of the claimed subject matter, in the whole scope of the claim,
could not be carried out.
The extent of the search was consequently limited to claim ... which appears to
comprise a reasonable definition of what is understood to be the invention for
which protection is sought.
Present claim ... relates to an extremely large number of possible
compounds/products/apparatus/methods. Support and disclosure in the sense of
the Norwegian Patents Act, Section 8, second paragraph, first and third sentence
is to be found, however, only for a very small proportion of the
compounds/products/apparatus/methods claimed, see ... [indicate passages from
the description that disclose the supported portion of the claim].
The search of claim ... was restricted to those claimed
compounds/products/apparatus/methods which appear to be supported and a
generalisation of their structural formulae, ...
The starting products of the method claimed in claim ... are compounds... The
starting compounds are not clearly defined because... This would require an
equally unquantifiable and thus unreasonable amount of experimentation,
imposing a severe and undue burden on all those wishing to ascertain the scope
of the claim, which is not in compliance with the clarity requirement of the
Norwegian Patents Act, Section 8, second paragraph, first sentence.
The extent of the search was consequently limited to the clearly defined examples
in the description and a generalisation of their structural formulae, ...
[indicate clearly the precise extent of generalisation searched].
Present claim ... relates to a/an compound/product/apparatus/method which has
a given desired property or effect, namely... However, the description does not
provide support and disclosure in the sense of the Norwegian Patents Act,
Section 8, second paragraph, first and third sentence for any such
compound/product/apparatus/method having the said property or effect and there
is no common general knowledge of this kind available to the person skilled in the
art.
The search of claim ... was consequently restricted to the specifically disclosed
compound/product/apparatus/method having the desired property or effect, see
description page ... and to the broad concept of a/an
compound/product/apparatus/method having the desired property or effect.
Present claim ... encompasses compounds defined only by their desired function,
contrary to the requirements of clarity of the Norwegian Patents Act, Section 8,
second paragraph, first sentence, because the result to be achieved type of
definition does not allow the scope of the claim to be ascertained.
The search of claim ... was consequently restricted to compounds ... and , if the
compounds have a significant structural moiety in common a generalisation of this
common structure which should be derivable from the application
[clearly indicate the precise extent of generalisation searched].
20/21

Incomplete search: parametric
definitions.
Incomplete search: novelty
overflow: There are cases where a
claim, although clear, is drafted in
such a way that the examiner
retrieves so many documents
pertinent to the novelty of that
claim, that to cite them all is not
feasible (overflow). In such cases,
it is not meaningful to cite all of
them, since it is clear that such
claims can not be maintained in
later examination proceedings. The
search may therefore be
incomplete. The applicant will have
to limit his application to a
dependent claim or other preferred
embodiments present elsewhere in
the application.
No search:
reach-through claims without
support
Standard phrases for English communication in national patent examination
Present claim ... relates to a product defined by reference to the following unusual
parameter:
The use of this unusual parameter in the present context is considered to lead to
a lack of clarity because the claim does not clearly identify the products
encompassed by it, as the parameter cannot be clearly and reliably determined
by indications in the description or by objective procedures usual in the art. This
makes it impossible to compare the claim(s) to the prior art. As a result, the
application does not comply with the requirement of clarity under the Norwegian
Patents Act, Section 8, second paragraph, first sentence.
[where appropriate, remarks may be added concerning lack of support and/or
disclosure (Norwegian Patents Act, section 8, second paragraph, first sentence
and/or third sentence), where no clear instructions are given in the description to
prepare products having the desired parameter values].
The search of claim ... was restricted to the examples clearly defined in, and
supported and disclosed by the description, see ...
The initial phase of the search revealed a very large number of documents relevant
to the issue of novelty. So many documents were retrieved that it is impossible to
determine which parts of the claim ... may be said to define subject matter for
which protection might legitimately be sought, ref. Norwegian Patents Act,
Section 8, second paragraph, first sentence.
The search of claim ... was restricted to: ...
There is no reasonable basis in the application that clearly indicates a subject
matter which might be expected to form the subject of the claims later in the
procedure, thus no search was deemed possible.
[Insert here some explanations as to why it was not possible to find such
indication, e.g. explaining that the description does not only contain a single
embodiment but so many embodiments that in view of the drafting of the claims
an expected fall back position could not be determined]
Present claim ... encompasses compounds defined only by their desired function,
contrary to the requirements of clarity of the Norwegian Patents Act, Section 8,
second paragraph, first sentence, because the result to be achieved type of
definition does not allow the scope of the claim to be ascertained.
The non compliance with the substantive provisions is to such an extent that no
meaningful search of claim ... could be carried out.
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