Claims, Clarity, and Protection

Claims

Filing Obligation

Although claims are not mandatory to secure a filing date (A80 EPC together with R40 EPC), the application must ultimately include claims (A78(1)(c) EPC).

Further details are available in the article « Filing Requirements« .

Two-Part Formulation

Where appropriate, claims must include (R43(1) EPC):

• a preamble (features whose combination forms part of the prior art);
• a characterizing portion (additional features) 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 features of equal importance (Guidelines F-IV 2.3 i);
• if a chemical process is modified without any addition (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 features (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 a document under A54(3) EPC (Guidelines F-IV 2.3.1).

Reference to Another Claim

It may be desirable to draft a claim as follows: « Device cooperating with the device of claim 1 ».

This formulation is entirely permissible (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 terms, formulas, signs, or technical symbols generally accepted in the relevant field should be used (R49(10) EPC).

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

Reference to the description and drawings

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

According to case law, absolute necessity may exist where, 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 using words (T893/99, 3.1).

The burden of demonstrating this necessity lies with the applicant (T150/82 and Guidelines F-IV 4.17).

Interpretation of claims

Certain decisions (T860/93) accept interpreting unclear terms in the claim (see below) with the aid of definitions provided in the description.

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

• T1129/97:
  • while A69 EPC allows interpreting the claim in 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.

The claims should be given their broadest technically reasonable interpretation for the skilled person (T2764/19), by positively seeking to understand the meaning of the claims (T10/22), while excluding interpretations that would lack technical sense or logical consistency.

Essential features

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

However, be careful with the meaning of « essential »!

Indeed, an essential feature is not a feature necessary for the operation of the claimed subject matter (otherwise, for a claim to a car, it would be necessary to mention its wheels, camshaft, fuel tank, etc.).

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

If a feature is presented as essential, there is a strong presumption, although the applicant may 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 product is difficult to obtain » presents an essential feature (T977/94).

Definition by means of parameters

Principle

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

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

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

• The determination method is too lengthy for a claim;
• The person skilled in the art knows without difficulty which method to use;
• All known methods yield the same result.

Insufficient disclosure?

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

Nevertheless, in cases where the parameter is crucial for solving the underlying problem of 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

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

Care should be taken not to add text to these references (e.g., « (13) » and not « (screw 13) »), as this would fall outside the scope of R43(7) EPC and it would not be clear whether the added text constitutes a limitation.

Addition of a disclaimer

Principle

A « disclaimer » refers to an amendment made to a claim that introduces a negative technical feature, which typically excludes particular embodiments or specific fields from a general feature (G1/03, point 2 of the reasons).

A disclaimer may be allowable if it is intended to (G1/03):

• restore novelty in view of prior art under A54(3) EPC73 and A54(4) EPC73 (thus now only A54(3) EPC);
• restore novelty in view of an accidental disclosure under A54(2) EPC73 (i.e., if unrelated to the claimed invention and so remote that the person skilled in the art would never have taken it into consideration) (G1/03, point 2.3.4 of the reasons); and
• exclude subject-matter that falls under an exception to patentability under A52 EPC73 to A57 EPC73 for non-technical reasons (G1/03, point 2.4.3 of the reasons, as indeed, particularly for PCT, knowledge of all exclusions may 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., an example from the prior art from which one wishes to distinguish is highly complex and references various scientific documents).

In T2130/11, the condition set by the Enlarged Board must be applied while considering its purpose (i.e., not to provide an opportunity for arbitrarily redrafting claims (G1/03, point 3).

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

• it is necessary to comply with A84 EPC and
• it does not result in an arbitrary redrafting of the claims.

Example of a disclaimer not removing more than necessary

Let us imagine three claims as follows:

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

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

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

Indeed, claims 2 and 3 would have the subject matter « a » removed without this being necessary. It is therefore necessary to write:

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

Analysis of sufficiency of disclosure

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

Support for the claims

Principle

EPC Article 84 provides:

The claims [… ] shall [… ] be supported by the description.

Purpose of this requirement

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

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

Example of lack of support

There may be cases where an objection of « lack of support » can be raised: if the examples given in the description are too limited and do not allow the scope of the claims to be explained.

Difference and similarity with sufficiency of disclosure

This latter requirement would therefore actually be of the same nature as EPC Article 83 but concerning another part of the application (T409/91, i.e., the claims and not the description).

However, in the context of insufficiency of disclosure, we rather examine whether the described embodiment can be carried out.

Thus, we rather have a scheme of this type:

Thus, we quickly see that it is often possible to transform an EPC Article 83 objection into an EPC Article 84 objection, whereas the reverse is rarer.

Clarity of the claims

Principle

Legal Basis

Article 84 EPC provides:

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

This requirement applies to all claims.

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

The claims must enable the person skilled in the art to sufficiently determine the limits of the scope of the claim without undue effort (in particular, conducting a large number of experiments to determine the numerous parameters of the claim—such as sizes, angles, types of materials, etc.—would constitute undue effort: T754/13).

Thus, the clarity requirement is only met if the public can clearly distinguish between subject-matter covered by the claim and that which is not (T129/13 or T754/13).

Why do I deliberately emphasize this aspect?

Because, in my view, clarity objections are among the most misunderstood objections (dear Examiners, if you are reading this, sending you a virtual hug…):

• A clarity objection cannot be raised because « we do not know how a particular step is performed« : this could be an objection under Article 83 EPC but certainly not under Article 84 EPC (at least not under the clarity requirement of Article 84 EPC);
• A clarity objection cannot be raised because « we do not know whether these two objects are the same or not » (e.g., where the wording is « an object » followed later by « an object« ) : this could be an objection under Article 52 EPC (as it broadens the scope of the claims) but certainly not under Article 84 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 per se and technical clarity

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

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

Conciseness

It may happen that certain claim formulations are redundant.

Functional features

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

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

• the invention cannot otherwise be defined without unduly limiting its scope, and
• the feature provides the person skilled in the art with sufficiently clear instructions to enable its implementation without undue effort.

Regarding the latter point, a functional feature is only acceptable if the person skilled in the art can readily determine the means to be used to achieve that function (Guidelines F-IV 2.1 and Guidelines F-IV 6.5).

« A means for fastening two wooden boards » is a good example of a functional feature since one can easily imagine how to fasten such boards (e.g., nails, screws, adhesives, etc.).

Features whose meaning depends on the time of interpretation

A claim may contain features whose meaning and scope depend on the time at which the interpretation is made.

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

In such a case, 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 per se (T1129/97).

Formulations considered « unclear »

Terms with a relative meaning

Relative terms such as « thin », « 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 these were defined in relation to each other within the claim.

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

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

Terms introducing vagueness

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

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

Terms indicating « possibilities »

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

Most often, these expressions have no limiting character (Guidelines F-IV 4.9).

Trademarks

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

A trademark may exceptionally be accepted in a claim:

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

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

Desired result

Principle

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

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

• if the invention can only be defined in this way, or
• if it is not otherwise possible to define it more precisely without unduly limiting the scope of the claims, and if the result can be verified by the methods presented in the description or known to a person skilled in the art, without requiring excessive experimentation.

In any case, if the desired result is precisely what motivated the filing, a clarity issue may be raised if the claim does not include all other essential features required to achieve that result (T809/12).

The ashtray example

For example, this may be the case if one seeks to protect an ashtray that automatically extinguishes a cigarette due 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 enable a person skilled in the art to determine the necessary dimensions through reasonable testing, the proportions may be defined 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 functional terms (a practice permitted under Guidelines F-IV 6.5) from result-based claims.

For example:

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

Simply put, a functional feature is not a result-based claim if a person skilled in the art can readily determine the means to be implemented to achieve that 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 the following is being claimed (Guidelines F-IV 4.15):

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

Negative limitations

For an unclear reason, the EPO does not particularly favor negative formulations in claims (Guidelines F-IV 4.20).

However, this does not mean that such formulations are prohibited, but rather that Examiners prefer, where 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 to the claim does not allow the subject-matter that may still be protected to be defined in a clearer and more concise manner (see G 1/03 and T4/80) or would unduly limit the scope of the claim (see T1050/93).

Term « Useful for »

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

Indeed, the utility here appears to go beyond the mere adaptation of the product to a given use.

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