Claims

Filing Requirement

Although claims are not mandatory to secure a filing date (L612-2 CPI), the application must ultimately include claims, particularly for the search (R612-3 CPI, 2°).

Two-Part Formulation

Claims must include (R612-17 CPI), where applicable:

  • a preamble (features whose combination forms part of the prior art);
  • a characterizing portion (additional features) introduced by the expression « characterized in that » or « characterized by« .

In certain situations, this two-part formulation may not be suitable (R612-17 CPI):

Technical Features

Claims must set forth the technical features that define the invention (R612-16 CPI).

Thus, a claim may not (INPI Examination Guidelines, I-C IV-1.1):

  • be non-limiting (e.g., « may use any material« );
  • merely list properties without stating how they are achieved.

Negative Features

Although a claim normally contains only positive features, it is possible to explicitly exclude a given element (INPI Examination Guidelines, I-C IV-1.1) by means of its technical features.

This drafting of a claim is reserved for cases where the subject matter cannot be defined more clearly and concisely by positive features (INPI Examination Guidelines, I-C IV-1.1).

Reference to Another Claim

It is entirely possible to refer to a given claim in a claim of another type (e.g., « device obtained by the method of claim x ») (INPI Examination Guidelines, I-C IV-1.1).

Reference to the Description and Drawings

References to the description or drawings may not be made in the claims (R612-16 CPI), except where absolutely necessary.

Terminology Used

Only terms, formulas, signs, or technical symbols generally accepted in the relevant field may be used (Decree of September 19, 1979 on filing procedures, Article 4).

This terminology must be uniform throughout the application (Decree of September 19, 1979 on filing procedures, Article 5).

Interpretation of Claims

The description and drawings may be used to interpret the claims (L613-2 CPI).

In our view, a clear distinction should be made between:

  • the interpretation of claims to understand the scope of protection;
  • the use of the description to resolve clarity issues in the claims.

The latter case (i.e., using the description to resolve clarity issues in the claims) should not be permissible.

Essential Features

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

Reference Signs

Claims must include references to the drawings where possible (Decree of September 19, 1979 on filing procedures, Article 11). These references are placed in parentheses and do not constitute a limitation.

Support

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

Although literal support is not required (Paris Court of Appeal, 4th Chamber, Section B, December 9, 2005), the features of the claims must be mentioned in the description.

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

Clarity of Claims

The Principle

Article L612-6 CPI provides:

The claims define the subject matter for which protection is sought. They must be clear and concise and be based on the description.

This requirement applies to all claims.

Determining the Scope of Claim Protection

The claims must enable a person skilled in the art to sufficiently determine the limits of the claim’s scope without undue effort (in particular, undue effort would include conducting a large number of experiments to determine the numerous parameters of the claim: sizes, angles, types of materials, etc.).