Claims

Obligation to provide

Even if claims are not required to obtain a filing date (A80 EPC together with R40 EPC), the application must ultimately contain claims (A78(1) c) EPC).

More details are available in the article « Requirements related to filing« .

Two-part formulation

Claims must contain (R43(1) EPC), where appropriate:

  • a preamble (characteristic whose combination is part of the prior art);
  • a characterizing part (other characteristics) introduced by the expression « characterized in » or « characterized by« .

In certain situations, this two-part formulation may not be suitable:

  • if the invention lies in a combination of characteristics of equal importance (Guidelines F-IV 2.3 i);
  • if a chemical process is modified, but without adding anything to it (e.g. omission of a substance or substitution) (Guidelines F-IV 2.3 ii);
  • if the invention lies in multiple modifications of a complex system of characteristics (Guidelines F-IV 2.3 iii);
  • if the claimed product is a new chemical product (Guidelines F-IV 2.3);
  • if the only relevant prior art is an A54(3) EPC document (Guidelines F-IV 2.3.1).

Reference to another claim

It may happen that one wishes to draft as follows: « Device cooperating with the device of claim 1 ».

This formulation is quite possible (T1194/97 and Guidelines F-IV 3.8).

One claim per type

See the article on « Unity of invention and claim categories« .

Terminology used

Only the terms, formulas, signs, or symbols generally accepted in the technical field in question must be used (R49(10) EPC).

This terminology must be uniform throughout the application (R49(11) EPC).

Reference to the description and drawings

It is not possible to make, in the claims, references to the description or to the drawings (R43(6) EPC), except in cases of absolute necessity.

According to case law, absolute necessity may exist when, without reference to the figures, the claim would be less clear or less concise (T986/97, T94/12) or when it would be impossible to express the relevant technical content using words (T893/99, 3.1).

The demonstration of this necessity is the responsibility of the applicant (T150/82 and Guidelines F-IV 4.17).

Interpretation of claims

Certain decisions (T860/93) accept interpreting certain unclear terms of the claim (see below) using definitions provided by the description.

However, some decisions do not follow this approach (which seems more reasonable to me):

  • T1129/97:
    • if A69 EPC allows interpreting the claim in the light of the description, this principle applies only to the scope of the claims and not to their clarity (Guidelines F-IV 4.2);
  • T454/89:
    • claims must be clear in themselves;
  • T49/99:
    • the description cannot be used to clarify the claims.

Claims should be given their broadest technically reasonable interpretation for a skilled reader (T2764/19) by positively seeking to understand the meaning of the claims (T10/22) while excluding interpretations that would not make technical sense or would not be logical.

The decision T367/20 clarifies that Article 69(1) EPC and its interpretative protocol also apply to the examination of Article 123(2) EPC. Thus, claims must be interpreted in their context, including the description and figures, by a person skilled in the art. Only the technically sensible interpretation should be retained, in accordance with decisions T3097/19, T450/20, and T556/02.

Product features in a process claim are not assimilable to ‘product-by-process’ type features and directly limit the scope of the process without requiring analysis of their impact on the process steps (T1761/19).

Cascading claims must be interpreted strictly to avoid an undue extension of the scope of the patent (T664/20, opposing T999/10).

Consistency with the description

The described embodiments must cover all the features of the claims, without divergence in the definition of the invention, to ensure a precise determination of the scope of protection. This requirement aims to ensure legal certainty and a unambiguous interpretation of the protected subject matter, avoiding inconsistencies such as embodiments incompatible with the claims or partial definitions of the invention (T3097/19).

Essential features

All the essential features of an invention must be found in the independent claims (R43(3) EPC, T32/82, Guidelines F-IV 4.5).

But beware of the meaning of « essential »!

Indeed, an essential feature is not a feature necessary for the functioning of the claimed object (otherwise, for a car claim, one would have to mention its wheels, the camshaft, the tank, etc.).

An essential feature is a feature « necessary to obtain the technical effect underlying the solution to the technical problem addressed by the application » (Guidelines F-IV 4.5.2): therefore, it necessarily contributes to solving the technical problem.

If a feature is presented as essential, there is a strong presumption, even if the applicant can provide evidence to the contrary (the description must then be amended, Guidelines F-IV 4.3 ii).

For example, « the proportion must be 30%, otherwise the result is difficult to achieve » presents an essential feature (T977/94).

The mode of administration of a compound may constitute an essential feature in a patent claim, even in the absence of an explicit therapeutic indication. This feature is considered distinctive if it is necessary to achieve the desired technical effect (T295/22, Guidelines G-VI 6.1.2).

Definition using parameters

Principle

One may be tempted to define a device by its characteristics or physical structure (e.g., « Powder with a particle size of less than 50 micrometers« ).

These formulations are acceptable (T94/82 or T29/05) if this parameter can be clearly and reliably determined by objective methods commonly used in the state of the art (Guidelines F-IV 4.11).

Thus, it is better to specify the determination method used unless (Guidelines F-IV 4.18):

  • the determination method is too long for a claim;
  • the person skilled in the art knows without difficulty the method to use;
  • all known methods give the same result.

Insufficiency of disclosure?

It should be noted that inaccuracies regarding the measurement of a parameter or the existence of multiple measurement methods do not necessarily lead to insufficiency of disclosure (T608/07, T1768/15).

Nevertheless, in a case where the parameter is crucial for solving the problem underlying the invention, the measurement method must provide consistent values so that the person skilled in the art knows, when reproducing the invention, whether what they produce solves the problem or not (T815/07, T1305/15, T59/18).

Reference signs

The claims must contain references to the drawings where possible (R43(7) EPC). These references are placed in parentheses and do not constitute a limitation.

No text should be added to these references (e.g., « (13) » and not « (see 13) »), otherwise it falls outside the scope of R43(7) EPC and it is unclear whether the added text constitutes a limitation.

Adding a disclaimer

Principle

A « disclaimer » is understood as a modification made to a claim that introduces a « negative » technical feature into the claim, which normally excludes specific embodiments or areas from a general feature (G1/03, point 2 of the reasons).

A disclaimer may be allowed if it aims to (G1/03) :

  • restore novelty over prior art under A54(3) EPC73 and A54(4) EPC73 (thus today A54(3) EPC only) ;
  • restore novelty over an accidental disclosure under A54(2) EPC73 (i.e., if unrelated to the claimed invention and so remote from it that the person skilled in the art would never have taken it into consideration) (G1/03, point 2.3.4 of the reasons) ;
  • exclude subject matter excluded from patentability under A52 EPC73 to A57 EPC73 for non-technical reasons (G1/03, point 2.4.3 of the reasons, indeed, and especially for the PCT, knowledge of all exclusions can be complex for the applicant).

If a disclaimer is relevant to the assessment of inventive step or sufficiency of disclosure, then it is contrary to A123(2) EPC73 (G1/03, point 2.6.1 of the reasons or T1821/10)

Clarity and not removing « more than necessary »

A disclaimer must not remove more than necessary while remaining clear and concise (G1/03).

It may happen that it is very difficult not to remove more than necessary while remaining clear (e.g., a prior art example from which one wants to distinguish is very complex and refers to various scientific documents).

For T2130/11, the condition set by the Enlarged Board must be applied taking into account its objective (i.e., not to allow arbitrary reshaping of claims (G1/03, point 3).

Therefore, it is possible to remove a little more than necessary if (T2130/11) :

  • this is necessary to satisfy A84 EPC and
  • this does not lead to an arbitrary reshaping of the claims.

Example of a disclaimer that does not exclude more than necessary

Let us imagine that we have three claims as follows:

  1. Product A
  2. Product according to claim 1 further comprising B
  3. Product according to claim 1 or 2 further comprising C.

In the event of an accidental disclosure of « a », which is a specific case of A, it may be desirable to make a disclaimer, but be careful, as the following claims would not be correct:

  1. Product A excluding a
  2. Product according to claim 1 further comprising B
  3. Product according to claim 1 or 2 further comprising C.

Indeed, claims 2 and 3 would have the object a excluded without it being necessary. Therefore, it should be written as:

  1. Product A excluding a
  2. Product according to claim 1 A further comprising B
  3. Product according to claim 1 or 2 A further comprising C, or product A further comprising B and C.

Analysis of the sufficiency of description

Furthermore, it is necessary to consider the patentability conditions following the introduction of the disclaimer: if the object of the limited claim was not achievable at the filing date, this disclaimer will not be acceptable (e.g., a method for culturing human stem cells « not obtained by using destroyed human embryos » knowing that at the filing date, stem cells were all obtained by destroying embryos, T1441/13).

Support of the claims

Principle

Article 84 EPC states:

The claims […] must […] be based on the description.

Purpose of this requirement

It would seem that this requirement is actually twofold (Guidelines F-IV 6.1):

  • each claim must be based on the description (i.e., literal support in the description);
  • the scope of the claims must be justified by the content of the description and the drawings, as well as by its technical contribution (T409/91).

Example of non-support

We can have cases where an objection of « non-support » can be raised: if the examples given in the description are too limited and do not allow explaining the scope of the claims.

Difference and similarity with sufficiency of description

This last requirement would therefore in reality be of the same kind as A83 EPC but concerning another part of the application (T409/91, i.e. the claims and not the description).

However, in the context of insufficiency of the description, we rather look at whether the described embodiment can be implemented.

Thus, we rather have a schema of this type:

Thus, we see quite quickly that it is often possible to transform an objection under A83 EPC into an objection under A84 EPC, whereas the reverse is rarer.

Clarity of the claims

Principle

Legal basis

A84 EPC states:

The claims […] shall be clear and concise […].

This requirement applies to all claims.

Purpose of this requirement: determination of the limit of the protection of the claims

The claims must allow the person skilled in the art to sufficiently determine the limits of the scope of the claim without undue effort (in particular, an undue effort would be the implementation of a large number of experiments to determine the many parameters of the claim: sizes, angles, types of materials, etc. T754/13).

Thus, the requirement of clarity is only met if the public can clearly distinguish the objects covered by the claim from those that are not (T129/13 or T754/13).

Why do I voluntarily insist on this aspect?

Because in my opinion, clarity objections are among the most misunderstood objections (dear Examiners, if you are reading me, I send you my regards…):

  • a clarity objection cannot be raised because « we do not know how such a step is carried out »: this could be an objection under A83 EPC but certainly not under A84 EPC (in any case, not under the clarity of A84 EPC);
  • a clarity objection cannot be raised because « we do not know if these two objects are the same or not » (e.g., case where we have a formulation of the type « an object » and later « an object »): this could be an objection under A52 EPC (because it broadens the scope of the claims) but certainly not under A84 EPC;
  • etc.

In short, let’s be careful… clarity objections aim to prevent the scope of the claims from being unclear (note: broad does not mean unclear).

Clarity in itself and technical clarity

There may be cases where the claims are « linguistically » clear.

However, if two features are each clear but not technically consistent with each other, then their combination is not clear (T935/14).

Conciseness

It may happen that certain formulations of the claims are redundant.

Functional features

If this is the case, the requirement for conciseness will not be met (T1296/19).

Functional features are only acceptable if (T68/85 or T2067/12):

  • the invention cannot be defined otherwise without unduly reducing its scope and
  • the feature provides the person skilled in the art with sufficiently clear instructions so that they can put it into practice without undue effort.

Regarding this last point, a functional feature is only acceptable if a person skilled in the art is able to determine without difficulty the means to be implemented to achieve this function (Guidelines F-IV 2.1 and Guidelines F-IV 6.5).

« A means for fixing two wooden boards » is a good example of a functional feature since one can quite easily imagine how to fix these boards (e.g., nails, screws, glues, etc.).

Features whose meaning depends on the time of interpretation

It may happen that a claim contains features whose meaning and scope depend on the time at which the interpretation is made.

This is the case, for example, for a formulation such as « any other potentially pandemic emerging strain » (T1702/15).

In this hypothesis, the claim will not be clear.

Use of the description to clarify?

For clarity issues, the description cannot be used as an aid to clarify: the fact that unclear terms are clearly defined in the description does not make the claims clear in themselves (T1129/97).

Formulations considered « unclear »

Terms with a relative meaning

Relative terms such as « fine », « wide », « large », « solid », etc. should be avoided (Guidelines F-IV 4.6), unless:

  • these terms have a well-defined meaning in the technical field of the invention (e.g., « high frequencies » for an amplifier);
  • these terms have been defined in the application.

The decision T977/94 accepted « thin » and « thick » in a claim, as they were defined in relation to each other in the claim.

Position terms: « front », « rear », « lateral », etc.

Position terms most often make claims unclear because the position of the claimed object is then unknown (T1261/11).

Terms generating ambiguity

Terms such as « substantially », « approximately », « about », etc. turn precise notions into ambiguous ones (e.g., « parallel » versus « substantially parallel », see T1265/13).

In rare cases, these terms may be accepted if it is possible to delimit the invention in an unambiguous manner with respect to the prior art (Guidelines F-IV 4.7).

Term indicating « possibilities »

Terms such as « preferably », « for example », « such as » or « in particular » often introduce ambiguities about the exact scope of the claims.

Most often, these expressions do not have a limiting character (Guidelines F-IV 4.9).

Trademarks

There is no certainty as to the stability of the product or the characteristic targeted by the trademark (Guidelines F-IV 4.8). Thus, how can one be certain that this product or characteristic will not be modified during the validity period of the patent?

A trademark may be exceptionally accepted in a claim:

  • if it is unavoidable, and
  • if it is generally recognized as having a precise meaning.

In any case, a trademark must be indicated as such (Guidelines F-II 4.14).

Sought-after result

Principle

In theory, a claim that defines the invention by the result/goal sought should be considered as lacking clarity (Guidelines F-IV 4.10 e.g., by simply mentioning the underlying technical problem).

However, these formulations may be acceptable if (T68/85):

  • if the invention can only be defined as such or
  • if it is not possible to define it more precisely otherwise without unduly limiting the scope of the claims, and if the result can be verified using the methods presented in the description, or known to the person skilled in the art, and not requiring too much experimentation.

In any case, if the sought-after result is precisely the one that motivated the application, a clarity issue may be raised if the claim does not contain all the other essential characteristics for obtaining this result (T809/12).

The example of the ashtray

For example, this may be the case if one seeks to protect an ashtray that automatically extinguishes a cigarette thanks to its shape and dimensions as clearly indicated in the description (Guidelines F-IV 4.10).

The shape and dimensions of the ashtray may vary considerably in a manner that is difficult to define (Guidelines F-IV 4.10).

To the extent that the construction and shape of the ashtray are specified as clearly as possible in the claim and allow the person skilled in the art to determine the necessary dimensions using reasonable tests, the proportions can be defined therein in relation to the expected result (Guidelines F-IV 4.10).

Differences with functional features

In some cases, it may be difficult to differentiate a claim expressed in a functional manner (a practice authorized by the Guidelines F-IV 6.5) and result claims.

For example:

  • « a means for detecting the end of travel » could be considered a functional feature by an Examiner;
  • « a sensor for detecting an end of travel » could be considered a result claim by an Examiner.

Simply put, a functional feature is not a result claim if a person skilled in the art is able to determine without difficulty the means to be implemented to achieve this result (Guidelines F-IV 2.1 and Guidelines F-IV 6.5).

Term « in »

A claim containing the term « in » may lack clarity regarding its actual scope (Guidelines F-IV 4.15).

Indeed, in the expression « Cylinder head in an engine », it is often unclear whether it is claimed (Guidelines F-IV 4.15) :

  • a cylinder head adapted to be mounted in an engine ;
  • an engine comprising a cylinder head.

Negative limitations

For some obscure reason, the EPO does not particularly like negative formulations in claims (Guidelines F-IV 4.20).

However, this does not mean that this type of formulation is prohibited, but that Examiners prefer, if possible, a positive claim of features (Guidelines F-IV 4.20) :

Negative limitations, such as disclaimers, are only permitted if the addition of positive features in the claim does not allow for a clearer and more concise definition of the object that is still capable of being protected (cf. G 1/03 and T4/80) or would unduly limit the scope of the claim (cf. T1050/93).

Regarding the interpretation of claims containing a negative feature, the broadest scope should be given by retaining the narrowest possible technical definition of the excluded element (T1553/19).

Term « Useful for »

The term « useful for » is quite different from « for » or « adapted for ».

Indeed, the utility here seems to go beyond the simple adaptation of the product to a given use.

Therefore, this vague formulation is not clear (T1170/16).