Claims, clarity and protection

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Chapter 1. Claims

Section 1.1. Supply obligation

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

More details are available in the article "Filing requirements” .

Section 1.2. Two-part formulation

The claims must contain (R43 (1) EPC), If it's happened :

  • a preamble (a feature whose combination is part of the state of the art);
  • characterizing part (other characteristics) introduced by the expression "characterized in" or "characterized by” .

It is possible in some situations that this two-part formulation is not suitable:

Section 1.3. Reference to another claim

It may happen that one wishes to write as follows: "Device cooperating with the device of claim 1".

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

Section 1.4. One claim per type

See the article on "Unity of invention and categories of claim” .

Section 1.5. Terminology used

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

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

Section 1.6. Reference to description and drawings

It is not possible in the claims to make references to the description or drawings (R43 (6) EPC), unless absolutely necessary.

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

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

Section 1.7. Interpretation of claims

Some decisions (T860 / 93) agree to interpret some unclear terms of the claim (see below) using the definition given by the description.

However, some decisions do not go in this direction:

  • T1129 / 97 :
    • if theA69 EPC interpretation of the claim in the light of the description, this principle applies only to the scope claims and not for his clarity (F-IV Guidelines 4.2);
  • T454 / 89 :
    • the claims must be clear in themselves;
  • T49 / 99 :
    • the description does not make the claims clear.

Section 1.8. Essential features

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

But beware of the meaning of "essential"!

Indeed, an essential characteristic is not a characteristic necessary for the operation of the claimed object (otherwise, for a car claim, mention should be made of its wheels, the camshaft, the tank, etc.).

An essential characteristic is a characteristic "necessary to obtain the technical effect underlying the solution to the technical problem that is the subject of the” (Directives F-IV 4.5.2): therefore it necessarily participates in the resolution of the technical problem.

If a characteristic is presented as essential, there is a strong presumption, even if the plaintiff can prove otherwise (the description must then be modified, Directives F-IV 4.3 ii).

For example, "the proportion must 30%, otherwise obtaining is difficult "presents an essential characteristic (T977 / 94).

Section 1.9. Definition using parameters

1.9.1. Principle

One may be tempted to define a device by its characteristics or its physical structure (eg "Powder with a granularity of less than 50 micrometers“).

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

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

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

1.9.2. Insufficient description?

It should be noted that inaccuracies in the measurement of a parameter or the existence of several measurement methods do not necessarily lead to a lack of description (T608 / 07T1768 / 15).

Nevertheless, in a case where the parameter is crucial to solve the problem underlying the invention, the measurement method must give coherent values so that the person skilled in the art knows, when reproducing the invention. if what it produces solves the problem or not (T815 / 07, T1305 / 15).

Section 1.10. Reference signs

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

You should not add text to these references (eg "(13)" and not "(13)"), otherwise it is outside the scope of the R43 (7) EPC and it is unclear whether this added text is a limitation.

Section 1.11. Adding a disclaimer

1.11.1. Principle

A "disclaimer" means an amendment to a claim that has the effect of introducing into the claim a "negative" technical characteristic, which normally excludes from a general characteristic of the embodiments or particular domains (G1 / 03point 2 of the reasons).

A disclaimer may be admitted if it is intended toG1 / 03):

  • restore novelty in relation to a state of the art A54 (3) CBE73 and A54 (4) CBE73 (so today A54 (3) EPC only);
  • restore novelty versus a fortuitous disclosure A54 (2) CBE73 (ie, so foreign to the claimed invention and so remote from it that the person skilled in the art would never have considered it) (G1 / 03point 2.3.4 of the reasons); and
  • exclude an object that falls under an exception to patentability under A52 CBE73 at A57 CBE73 for non-technical reasons (G1 / 03, point 2.4.3 of the reasons, indeed, and in particular for the PCT, the knowledge of all the exclusions can be complex for the applicant).

If a disclaimer is relevant to the assessment of the inventive step or the sufficiency of the statement, then it is contrary toA123 (2) CBE73 (G1 / 03, point 2.6.1 of the grounds or T1821 / 10)

1.11.2. Clarity and non-entrenchment "more than is necessary"

A disclaimer should not take away more than is necessary while remaining clear and concise (G1 / 03).

It may be very difficult to not remove more than necessary while remaining clear (eg an example of the prior art that one wants to stand out is very complex and refers to various scientific documents).

For the T2130 / 11, the condition laid down by the Grand Chamber must be applied taking into account its objective (ie not giving the opportunity to arbitrarily reshape its claims (G1 / 03point 3).

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

  • this is necessary to satisfy theA84 CBE and
  • this does not lead to an arbitrary reworking of the claims.

1.11.3. Disclaimer example does not subtract more than necessary

Imagine that you have three claims as follows:

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

In case of accidental disclosure of "a" which is a special case of A, it may be desirable to disclose, but be careful, as the following claims would not be correct:

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

Indeed, claims 2 and 3 would be removed the object a without it being necessary. So you have to write:

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

1.11.4. Sufficiency Analysis Description

In addition, it is necessary to look at the conditions of patentability following the introduction of the disclaimer: if the object of the limited claim was not feasible at the filing date, this disclaimer will not be acceptable (eg method of cultivation of human stem cells "not being obtained using destroyed human embryos"Knowing that at the time of filing the stem cells were all obtained by means of embryo destruction, T1441 / 13).

1.11.5. Claims must be based on the description

TheA84 CBE has:

Claims must [...] be based on the description.

It seems that this requirement is actually double (Guidelines F-IV 6.1):

  • each claim must be based on the description (ie 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).

This latter requirement would therefore in fact be of the same kind as theA83 CBE but concerning another part of the application (T409 / 91, ie the claims and not the description).

Chapter 2. Clarity of the claims

Section 2.1. The principle

2.1.1. The legal basis

TheA84 CBE has:

The claims [...] must be clear and concise [...].

This requirement applies to all claims.

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

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

Thus, the requirement of clarity is fulfilled only 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, the objections of clarity are among the most misunderstood objections (Friend Examiners, if you read me, I kiss you ...):

  • an objection of clarity can not be raised because "we do not know how such a step is performed": This could be an objection according to theA83 CBE but certainly not according to theA84 CBE (in any case not according to the clarity of theA84 CBE) ;
  • an objection of clarity can not be raised because "we do not know if these two objects are the same or not"(Eg where we have a formulation of type"an object"Then further"an object"): This could be an objection according to theA52 CBE (as this increases the scope of the claims) but certainly not according to theA84 CBE ;
  • etc.

In short, be careful ... the objections of clarity aim to prevent the scope of claims from being blurred (note: broad does not mean blurry).

Section 2.2. Functional features

Functional characteristics are acceptable that (T68 / 85 or T2067 / 12) :

  • if we can not otherwise define the invention without unduly reducing its scope and
  • if the characteristic gives the person skilled in the art instructions clear enough that he can put it into practice without undue effort.

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

A means of fixing two wooden planks” est un bon exemple de caractéristique fonctionnel puisqu’on imagine assez bien comment fixer ces planches (ex. clous, vis, colles, etc.).

Section 2.3. Using the description to clarify?

For the sake of clarity, the description can not be used to clarify: the fact that unclear terms are clearly defined in the description does not make the claims clear in itself (T1129 / 97).

Section 2.4. Formulations considered "unclear"

2.4.1. Terms having a relative meaning

Relative terms like "end", "broad", "fat", "solid", etc. should be avoided (Directives F-IV 4.6), unless :

  • these terms have a well-defined meaning in the technical field of the invention (eg "high frequencies" for an amplifier);
  • these terms have been defined in the application.

decision T977 / 94 accepted "thin" and "thick" in a claim, as these were so defined with respect to each other in the claim.

2.4.2. Position terms: "forward", "backward", "lateral", etc.

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

2.4.3. Terms generating a blur

Terms like "substantially", "approximately", "about", etc. render precise notions in fuzzy terms (eg "parallel" versus "substantially parallel", ex. T1265 / 13).

In rare cases, these terms may be accepted if it is possible to delimit the invention unambiguously compared to the state of the art (Guidelines F-IV 4.7).

2.4.4. Term indicating "possibilities"

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

In most cases, these expressions are not limiting (Directives F-IV 4.9).

2.4.5. brands

There is no certainty as to the "stability" of the product or the characteristic referred to by the mark (F-IV Guidelines 4.8). Thus, how can we be certain that this product or feature will not be modified during the term of the patent?

A mark may be exceptionally accepted in a claim:

  • if it is unavoidable, and
  • if it is generally recognized to them a precise meaning.

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

2.4.6. Result sought

1) Principle

In theory, a claim which defines the invention by the result / purpose sought should be considered as unclear (Directives F-IV 4.10 ex. by simply mentioning the underlying technical problem).

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

  • if the invention can only be defined thereby, or
  • if it is not possible otherwise to define it more precisely without unduly limiting the scope of the claims, and if the result can be verified by means of the methods presented in the description, or known to those skilled in the art, and not requiring not too many experiments.

In any case, if the result sought is precisely the one that motivated the request, a problem of clarity may be raised if the claim does not contain all the other essential characteristics to obtain this result (T809 / 12).

2) The example of the ashtray

For example, this can be the case if we try to protect an ashtray that automatically extinguishes a cigarette thanks to its shape and dimensions as is clearly indicated in the description (Directives F-IV 4.10).

The shape and dimensions of the ashtray can vary considerably in a way that is difficult to define (Directives 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 a person skilled in the art to determine the necessary dimensions by means of reasonable tests, the proportions may be defined in relation thereto. expected result (Directives F-IV 4.10).

3) Differences with functional characteristics

It may be difficult in some cases to differentiate a functionally expressed claim (a practice allowed by Directives F-IV 6.5) and the claims of results.

For example :

  • end-of-stroke detection means"Could be considered a functional feature by an Examiner;
  • a sensor to detect a limit switch"Could be considered as a result claim by an Examiner.

To put it simply, a functional feature is not a claim of result, if a person skilled in the art is able to determine without difficulty the means to be used to arrive at this result (Directives F-IV 2.1 and Directives F-IV 6.5).

2.4.7. Term "in"

A claim with the word "in" may be unclear as to the actual scope of the claim (Directives F-IV 4.15).

Indeed, in the expression "cylinder head in an engine", it is often unclear if it is claimed (Directives F-IV 4.15):

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

2.4.8. Negative limitations

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

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

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

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