Claims and clarity

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Chapter 1. Claims

Section 1.1. Supply obligation

Even though claims are not required to obtain a filing date (L612-2 CPI), the application must contain claims, and in particular for research (R612-3 CPI, 2 °).

Section 1.2. Two-part formulation

The claims must contain (R612-17 CPI), 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 (R612-17 CPI):

Section 1.3. Technical characteristics

The claims must present the technical characteristics which define the invention (R612-16 CPI).

Thus, a claim can not (INPI Examination Guidelines, IC IV-1.1):

  • to be non-limiting (like "able to use any material");
  • simply list properties without stating how one gets them.

Section 1.4. Negative characteristics

Even though a claim normally contains only positive features, it is possible to clearly exclude a given element (INPI Examination Guidelines, IC IV-1.1) using its technical characteristics.

This claim writing is reserved for cases where the object can not be defined more clearly and concisely by positive characteristics (INPI Examination Guidelines, IC IV-1.1).

Section 1.5. Reference to another claim

It is quite possible to refer to a given claim in a claim of another type (eg "device obtained by the method of claim x") (INPI Examination Guidelines, IC IV-1.1).

Section 1.6. Reference to description and drawings

It is not possible in the claims to make references to the description or drawings (R612-16 CPI), unless absolutely necessary.

Section 1.7. Terminology used

Only the terms, formulas, signs, or technical symbols generally accepted in the field under consideration must be used (Order of 19 September 1979 concerning the filing modalities, Article 4).

This terminology must be uniform throughout the application (Order of 19 September 1979 relating to the filing modalities, Article 5).

Section 1.8. Interpretation of claims

The description and drawings make it possible to interpret the claims (L613-2 CPI).

In our opinion, it is important to distinguish:

  • the interpretation of claims to understand the scope of protection;
  • the use of the description to overcome problems of clarity of the claims.

The second case (ie the use of the description to address issues of clarity of the claims) should not be possible.

Section 1.9. Essential features

All essential features of an invention must be contained in the independent claims (R612-18 CPI).

Section 1.10. Reference signs

The claims must contain references to drawings where possible (Order of 19 September 1979 relating to the conditions of filing, Article 11). These references are enclosed in parentheses and do not constitute a limitation.

Section 1.11. Support

In France, it is essential that the claims are supported by the description (L612-6 CPI).

Even if a literal medium is not necessary (Court of Appeal of Paris, 4th ch., Sect. B, December 9, 2005), the claims must have their characteristics mentioned in the description.

If this is not the case, the INPI will ask you to correct the description via a hardware error correction (R612-36 CPI): a fee will be payable.

Chapter 2. Clarity of the claims

Section 2.1. The principle

Article L612-6 CPI has:

The claims define the purpose of the protection requested. They must be clear and concise and based on the description.

This requirement applies to all claims.

Section 2.2. 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.).

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