IP5 Offices
Preparing an IP5-Compatible Patent Application: Incorporation By Reference in the Written Description
The patent laws of the “IP5”1 countries have set forth explicit patent disclosure requirements, that require the specification of every patent application to disclose the invention clearly and completely so that a person skilled in the art can practice the invention. In the previous article, we explored the differences in the application parts and the ordering of the application in the IP5 countries. In this article, we will explore incorporation by reference into the written description in the IP5 countries. In certain circumstances, applicants may wish to save time, cost, or space by incorporating the content of a separate document into their specification to supplement the application’s specification. This incorporation by reference seeks to supplement the explicit disclosure provided in the application. The IP5 countries differ on their view of whether such incorporation is permitted and the formalities required to ensure the material is effectively incorporated into the description.
United States
The U.S. Patent and Trademark Office (USPTO) allows applicants to incorporate materials into the specification of a nonprovisional (utility) application by reference. 37 C.F.R. § 1.57. An incorporation by reference must be set forth in the specification and it must (1) express a clear intent to incorporate by reference by using the root words “incoporat(e)” and “reference;” and (2) clearly identify the referenced patent application or publication. 37 C.F.R. § 1.57(c). The nature of the material that the applicant seeks to incorporate into the specification determines whether the applicant may rely on the disclosure of patent or nonpatent publications.
If the material to be incorporated is “essential material,” such incorporation is limited to content disclosed in a U.S. patent application or U.S. patent application publication that does not itself incorporate such essential materials by reference. 37 C.F.R. § 1.57(d). “Essential material” is defined as material that is necessary to:
(1) provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out the invention as required by 35 U.S.C. § 112(a);
(2) describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by 35 U.S.C. § 112(b); or
(3) describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. § 112(f).
In contrast, if the material to be incorporated is “nonessential material,” the applicant may incorporate material disclosed in U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or nonpatent publications. 37 C.F.R. § 1.57(e). The rules do not allow incorporation by reference by hyperlink or any other form of browser–executable form. 37 C.F.R. § 1.57(e).
Korea
The Korean Intellectual Property Office has stated in its reservations to PCT Rule 20.8(a)-(b) that incorporation by reference is not allowed. While this PCT Rule pertains to incorporation of missing parts from a previous application, KIPO’s reservations likely apply in the same fashion to incorporation into the specification. This is because KIPO’s reservations are based on Articles 42 and 27 of the Patent Act, which, as we explored in the previous article, provides the contents of the application and prohibit the addition of new matter.
EPO
A European patent specification should, with regard to the essential features of the invention, be self-contained, i.e., capable of being understood without reference to any other document (EPO Guidelines F-III, 8). Accordingly, EPO examiners generally require that the phrase “incorporated by reference,” or similar, be deleted wherever it appears in a patent specification.
If the subject matter contained in the reference document is essential for carrying out the invention from a sufficiency perspective, the phrase should be deleted, and the relevant subject matter of the reference document should instead be explicitly introduced into the specification, so that the application meets the requirements of sufficiency. However, the introduction of the relevant subject-matter from the reference document is subject to restrictions. In particular, the description of the invention as originally filed must leave no doubt to a skilled reader that:
- protection is or may be sought for the features that are to be imported;
- such features contribute to solving the technical problem underlying the invention;
- 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
- such features are precisely defined and identifiable within the disclosure of the reference document.
If the above conditions are met, the introduction of the relevant subject matter is allowable. If these conditions are not met, however, the introduction of the relevant subject matter may constitute added subject-matter under Article 123(2) EPC. The Search Division will request the applicant to furnish the document referred to, in order to be able to carry out a meaningful search.
Japan
Incorporation by reference to the description, however, is not allowed in Japan. Under Japanese Patent Law, sufficient description requirements may not be met by incorporation by reference.
Any technical materials that are indispensable for meeting the requirement of sufficient disclosure must be recited explicitly in the description; it may not be incorporated by reference.
1 The five IP offices (IP5) consist of the U.S. Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO).
