Patent Claims Formal requirements and allowable amendments 2005Jaroslav Potuznik Examination as to formal requirements (compliance with Articles 42 to 52) is performed according Art. 54, upon the filing. Nevertheless, any discussions or argument with applicant before publishing is not useful. During substantive examination according Art. 62, in view of found state of art, clarity of the claims is to be newly checked. 1
Requirements of Art. 47 Law No 551 Clarity Supporting in the description Art. 9 Regulation requirements as to form Clarity and supporting in the description are prescribed by Art. 47: The claim (s) shall define the elements of the invention for which protection is sought. Each claim shall be explicit and concise. The claim(s) shall be based on the application. The claim(s) may not extent beyond the subject matter of the invention as specified in the description. Form: No references to the description and drawings. Reference numerals. Dependent claims (reference at the beginning, in appropriate order). Two parts form. 2
When are the claims clear? When Average skilled person is able to understand undoubtedly the scope of protection and Examiner is able to compare the subject, for which the protection is sought, with the state of art and The scope of protection is that one, which has been (reasonably) wanted In determining the extent of protection, as in the assessment of patentability, the terms of the claims are to be interpreted in the way that the skilled person would understand them according to the contents of the patent specification as a whole, taking into account the solution objectively disclosed therein. Having regard to the overall technical context, the skilled person may even find that the extent of protection diverges from the literal wording of the patent. In sense of Art. 62 par. 6, the Institute shall conduct examination by keeping it restricted to the contents of the claim(s). It is why the clarity of the claims must be definitely assured. Narrowing of the claims cant be required based on lack of clarity, only substantive objection is reason for restricting of the scope of protection. If the scope of protection is not justified by what was invented, the defect is not the lack of clarity! 3
Logical Structure of the Claim(s) Basic categories Two-parts form Combinations of more independents claims Form of dependent claims There are three types of possible inventions: a product, a process and an use. Product by Process (rarely in present subclasses IPC). In fact, overlapping between these types of claims exists. A product often is not solely defined by its physical embodiment (structure) and vice versa process is sometimes defined by the materials used or structure obtained. The choice of the category may by partially given by Applicants need (commercial interests). Two-parts form only if is clear, what should contain the first part (if the examiner has no idea, mustn t insist on dividing). Combinations of independent claims unity of the invention (fibre-bulb-light). Dependent claims clear to refer back (to which claims). Reference must be if possible at the beginning. Formula characterised in that is not necessary! 4
Possible sources of unclearness Deficiencies explicitly mentioned in the Regulation : invention cannot be defined as a desired objective to be attained, and in an independent claim all the principle features of the invention must be stated. Other often occurring faults : vague terms, unrealisable combinations,. Notice, that INVENTION cannot be defined as an objective. Specific feature of the invention, defined by the objective (or by the parameter, characteristic, function), is clear if the skilled person knows how to realize it technically. Notice, that principle features may be inherently present in the title (e.g. it is no needed to mention explicitly the belt and rolls if the transporter conveyer is described with new safety guard). There is no list of forbidden terms. For example about 5 to about 10 mm thick is not clear, while about 7,5 mm may be accepted (provided that the limits are not critical). Unrealisable combinations often occur with mixtures (adhesive consisting of 20 to 80 % component A and 20 to 60 % component B). 5
Claims shall be based on the description It is to be distinguished insufficient disclosure and lack of supporting the claims by the description. the former deficiency is not removable without moving of priority the latter may be remedied provided that the claims are clear Sufficiency is more than a mere formal requirement. The term insufficiency is to be used where the breadth of the claims is not justified by the disclosure. 6
Examination and remedying of the deficiencies Request for amendments must be well reasoned Notice that the provisions of Regulation are not obligatory (Art. 47 third paragraph) The amendments must not expand out of the contents of the application as originally filed the clarity of the claims must be carefully examined the amendments made by the applicant must be based on the application as filed even narrowing the claim may not be allowable Drafting of the claims is responsibility of the applicant. The examiner should be helpful (mustn t construe unclearness ). The examiner should be aware of possibly way of remedying the defects. 7
Advanced Reading of the Claims Inventions defined by parameters (*) Selection inventions (**) Equivalents (***) Closed vs. open definition Disclaimer (****) Parameter (character) as a characterising feature is possible provided that scope of protection is sharply limited. It must be clear how the parameter obtain. Specific type of inventions falls to the scope of protection of another patent. It mustn t be arbitrarily chosen. It must be clear, what is the new effect. With novelty assessing, pure equivalents may be novelty destroying. Consisting of vs. comprising. By means of additional disclaimer may be saved novelty, no inventiveness. 8
Message The claims should be written as a kind of a legal text The claims must be read like a skilled person would Be careful when requiring and accepting amendments Claim is not only technical but also legal text: claim should be written so that everybody (even a lawyer) understand, what may be prohibited by the holder of the patent. Claims must be read and understood by the way that the skilled person would understand them according to the contents of the patent specification as a whole, taking into account the solution objectively disclosed therein. An objective assessment of the meaning of the terms of the patent claims requires the average knowledge and skills in relevant field of art. Require only necessary amendments and allow if are undoubtedly ameliorating. 9
Example for thinking over TR9802521T2 Analogous EP0918698B1 proceeding see Epoline 10