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Manual
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MANUAL FOR SUBSTANTIVE EXAMINATION PROCEDURE
CHAPTER III:
THE CLAIMS
(See ANNEX to CHAPTER III, 7)
Sec.32.1 (d) |
1.General
1.1
The application must contain "one or more claims". |
R.400
Sec.36.1 |
1.2 These must:
(i) "define the matter for which protection is
sought";
(ii) "be clear and concise";
(iii) "be supported by the description". |
Sec. 75 |
1.3 Since the terms of the
claims determine the extent of the protection conferred by a Philippine
patent or application, clarity of claim is of the utmost importance.
The claims do not, however, stand in isolation and are not to be
interpreted in a strictly literal sense. For a full understanding of how
claims should be interpreted it is necessary to refer to Sec.75 (see
also III, 4.1 – 4.3 here below), which specifies |
Sec.75.1 |
- that the extent of
protection conferred by the patent shall be determined by the claims,
which are to be interpreted in the light of the description and drawings, and |
Sec.75.2 |
- that, for the purpose of determining the extent of protection conferred
by the patent, due account shall be taken of elements which are equivalent
to the elements expressed in the claims, so that a claim shall be
considered to cover not only all the elements as expressed therein, but
also equivalents.
A generally accepted
approach is to interpret the claims having regard to the description and
any drawings in such a way that fair protection to the patentee for his
contribution to the art is combined with a reasonable degree of certainty
for third parties. Thus the area of protection should not, in one extreme
be interpreted as that defined by the strict literal meaning of the
wording of the claims with the description and drawings being used only to
resolve any ambiguity in the claims, nor in the other extreme, as what
might be deduced from the description and drawings by a person skilled in
the art, with the claims serving only as guide. |
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2.Form and content of claims
|
R.416(a) |
2.1 The claims must be drafted in terms of the
"technical features of the invention". This means that claims
should not contain any statements relating, for example, to commercial
advantages or other non-technical matters, but statements of purpose
should be allowed if they assist indefining
the invention. It is not necessary that every feature should be expressed
in terms of a structural limitation. Functional limitations may be included
provided that a person skilled in the art
would have no difficulty in providing some means of performing this
function without exercising inventive skill. Claims to the use of the
invention in the sense of the technical application thereof are allowable. |
R.416(a)(b) |
2.2
Rule 416 (a) and (b) defines
the two-part form which a claim should adopt “wherever appropriate”.
The first part or preamble should contain a statement indicating "the
designation of the subject-matter of the invention" i.e. the category
or general technical class of apparatus, product, process, use etc., to
which the invention relates, followed by a statement of
"those technical features which are necessary for the
definition of the claimed subject-matter but which, in combination, are
part of the prior art". This statement of prior art features is
applicable only to independent claims and not to dependent claims (see
III, 3.5 here below). It is clear from the wording of R.416 that it is
necessary only to refer to those prior art features which are relevant to
the invention. For example, if the invention relates to a photographic
camera but the inventive step relates entirely to the shutter, it would be
sufficient for the first part of the claim to read: "A photographic
camera including a focal plane shutter" and there is no need to refer
also to the other known features of a camera such as the lens and view-finder. The second part or "characterizing
portion" should state the "technical features which, in
combination with the features stated in sub-paragraph (a) (the first
part), it is desired to protect" i.e. the features which the
invention adds to the prior art. If a single document in the state of the
art according to Sec. 24.1, e.g. cited in the search report, reveals that
one or more features in the second part of the claim were already known in
combination with all the features in the first part of the claim and in
that combination have the same effect as they have in the full combination
according to the invention, the examiner should require that such feature
or features be transferred to the first part. Where however a claim
relates to a novel combination, and where the division of the features of
the claim between the prior art part and the characterizing part could be
made in more than one way without inaccuracy, the applicant should not be
pressed, unless there are very substantial reasons, to adopt a different
division of the features from that which he has chosen, if his version is
not incorrect.
2.3
Subject to what is stated in paragraph 2.3b here below, final
sentence, the applicant should be required to follow the above two-part
formulation in his independent claim or claims, where, for example, it is
clear that his invention resides in a distinct improvement of an old
combination of parts or steps. However as is indicated by R.416, this form
need be used only in “appropriate” cases. The nature of the invention
may be such that this form of claim is unsuitable, e.g. because it would
give a distorted or misleading picture of the invention or the prior art.
Examples of the kind of invention which may require a different
presentation are:
(i) the combination of known integers of equal status, the inventivestep lying solely in the combination;
(ii) the modification of, as distinct from addition to, a known chemical
process e.g. by omitting one substance or substituting one substance for
another; and
(iii) a complex system of functionally interrelated parts, the inventive
step concerning changes in several of these or in their
inter-relationships.
In
examples (i) and (ii) the two-part R.416 form of claim may be artificial
and inappropriate, whilst in example (iii) it might lead to an
inordinately lengthy and involved claim. Another example in which the
two-part R.416 form of claim may be inappropriate is where the invention
is a new chemical compound or group of compounds. It is likely also that
other cases will arise in which the applicant is able to adduce convincing
reasons for formulating the claim in a different form. |
Sec.24.2 |
2.3a
There is also another special instance in which the two-part R.416 form of claim should be avoided. This is when the only
relevant prior art is another Philippine
patent application falling within the terms of Sec. 24.2. Such prior
art should however be clearly acknowledged in the description (see II,
4.3). |
Sec.
24.2
R.407.1(b) |
2.3b
When determining whether or not a claim is to be put in the form provided by R.416,
second sentence, it is important to assess whether this form is
"appropriate". In this respect, it should be borne in mind that
the purpose of the two-part form of claim is to allow the reader to see
clearly which features necessary for the definition of the claimed subject
matter are, in combination, part of the closest
prior art. If this is sufficiently clear from the indication of prior
art made in the description, to meet the requirement of R.407.1(b), the
two-part form of claim should not be insisted upon (see II, 4.3). |
R.418(d) |
The
claims, as well as the description, "may contain chemical or
mathematical formulas" but not drawings. "The claims may contain
tables" but "only if their subject-matter makes the use of
tables desirable". In view of the use of the word
"desirable" in R.418(d), the examiner performing substantive
examination should not object to the use of tables in claims where this
form is convenient. |
R.418(e) |
Physical
values shall be expressed in the units recognized in international
practice, wherever appropriate in terms of the metric system using system
international (SI) units. Any data not meeting this requirement must also
be expressed in the units recognized in international practice. For
mathematical formula, the symbols in general use shall be employed. For
chemical formula the symbols, atomic weights and molecular formula in
general use shall be employed. In general,
use should be made of the technical terms, signs and symbols generally
accepted in the field in question. |
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3.
Kinds of claim – Categories
|
|
Categories |
Sec.21
R.201 |
3.1
Sec.21 of the IP-code defines a patentable invention as “any
technical solution of a problem in any field of human activity which is
new, involves an inventive step and is industrially applicable”. It may
be, or may relate to, a product, or process, or an improvement of any of
the foregoing. The IRR classify inventions according to the following
types (“statutory classes of inventions”, R.201):
a)
a useful machine;
b)
a product;
c)
or process or an improvement of any of the foregoing;
d)
microorganism; and
e)
non-biological and microbiological processes. |
R.415(b) |
Inventions
may be claimed using different "categories" of claims, i.e.
"products, process, apparatus or use" claims. For many
inventions, claims in more than one category are needed for full
protection. In fact, there are only two basic kinds of claim, viz, claims
to a physical entity (product, apparatus) and claims to an activity
(process, use). The first basic kind of claim ("product claim")
includes a substance or compositions (e.g. chemical compound or a mixture
of compounds) as well as any physical entity (e.g. object, article,
apparatus, machine, or system of co-operating apparatus) which is produced
by man's technical skill. Examples are: "a steering mechanism
incorporating an automatic feed-back circuit...” "a woven garment
comprising...” "an insecticide consisting of X, Y, Z"; or
"a communication system comprising a plurality of transmitting and
receiving stations". The second basic kind of claim ("process
claim") is applicable to all kinds of activities in which the use of
some material product for effecting the process is implied; the activity
may be exercised upon material products, upon energy, upon other processes
(as in control processes) or upon living things (see however IV, 3.4 and
4.3).
3.2
In addition an applicant may sometimes wish to have claims which,
although worded differently, really fall within the same category and
apparently have effectively the same scope. The examiner should bear in
mind that the presence of such different claims might assist an applicant
in obtaining full protection for his invention. Consequently, while an
examiner should not allow an unnecessary proliferation of independent
claims (see III, 5 concerning conciseness here below), he should not adopt
an over-academic or rigid approach to the presence of a number of claims
which are differently worded but apparently of similar effect.
3.3 Subject to the conditions for unity
of invention being satisfied (see III, 7 here below), R.415(b) states that
an application may contain more than one independent claims in the same
category "where it is not appropriate, having regard to the
subject-matter of the application, to cover this subject-matter by a
single claim”. This means that the examiner may allow two or more
independent claims in the same category in appropriate cases
provided that there is a unifying inventive concept (Sec.38) and
that the claims as a whole satisfy the requirement of Sec. 36
that they should be concise (see III, 5.1 here below). In applying
this principle the examiner should have regard to the remarks made in III,
3.2 here above concerning claims of apparently similar scope. However,
there are other circumstances where it may not be appropriate to cover the
subject-matter of an invention by a single independent claim in a
particular category, for example, where the invention relates to an
improvement in two separate but inter-related articles which may be sold
separately, but each carry out the same inventive idea, such as an
electric plug and socket or transmitter and receiver. As another example,
for an invention concerned with electrical bridge-rectifier circuits it
might be necessary to include separate independent claims to a
single-phase and poly-phase arrangements incorporating such circuits since
the number of circuits needed per phase is different in the two
arrangements. Justification for two independent claims in the
product-category may also be present in the case of an invention residing
in a part of a more complex apparatus where the various parts thereof are
separately manufactured, and the part and the whole apparatus may be sold
separately (e.g. an incandescent body for a lamp, and the lamp provided
with such a body). Further examples are where the invention resides in a
group of new chemical compounds and there are a number of processes for
the manufacture of such compounds.
|
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Independent
and dependent claims |
R415(b)(c) |
3.4All applications will contain one or more
"independent" claims directed to the essential features
of the invention. Any such claim may be followed by one or more claims
concerning "particular embodiments" of that invention. It is
evident that any claim relating to a particular embodiment must
effectively include also the essential features of the invention, and
hence must include all the features of at least one independent claim.
The
term "particular embodiment" should be construed broadly as
meaning any more specific disclosure of the invention than that set out in
the main claim or claims. |
R.415(c) |
3.5
Any claim which includes all the features of any other claim is
termed a "dependent” claim. Such a claim must contain, if possible
at the beginning, a reference to the other claim, all of whose features it
includes (See, however, III, 3.7a here below for claims in different
categories).
Since
a dependent claim does not by itself define all the characterizing
features of the subject matter which it claims, expressions such as "characterized
in that" or "characterized by" are not necessary in such a
claim
but are nevertheless
permissible. A claim defining further particulars of an invention may
include all the features of another dependent claim and should then refer
back to that claim. Also, in some cases a dependent claim may define a
particular feature or features which may appropriately be added to more
than one previous claim (independent or dependent). It follows that there
are several possibilities: a dependent claim may refer back to one or more
independent claims, to one or more dependent claims, or to both
independent and dependent claims.
3.5a
According to R.415(c), any dependent claim which refers to more
than one other claim (“multiple dependent claim”) shall refer to such
other claims in the alternative only.
A multiple dependent claim shall not serve as a basis for any other
multiple dependent claim. Claims
in dependent form shall be construed to include all the limitations of the
claims incorporated by reference into the dependent claim.
A multiple dependent claim shall be construed to incorporate by
reference all the limitations of each of the particular claims in relation
to which it is being considered.
3.6
All dependent claims, however referred back, must be grouped
together to the extent and in the most appropriate way possible. The
arrangement must therefore be one
which enables the association of related claims to be readily determined
and their meaning in association to be readily construed. The examiner
should object if the arrangement of claims is such as to create obscurity
(Sec.36.1) in the definition of the subject-matter
to be protected. In general, however, when the corresponding
independent claim is allowable, the examiner should not concern himself
unduly with the subject-matter of dependent claims, provided he is
satisfied that they are truly dependent and thus in no way extend the
scope of protection of the invention defined in the corresponding
independent claim (See III, 3.7a here below). |
R.416(a)(b) |
3.6a If the two-part form is used for the independent claim(s),
dependent claims may relate to further details of features not only of the
characterizing portion but also of the preamble.
3.7
A claim, whether independent or dependent, can refer to
alternatives provided those alternatives are of a similar nature and can
fairly be substituted one for another and provided also that the number
and presentation of alternatives in a single claim does not
make the claim obscure or difficult to construe (See also III, 7.4
here below).
3.7a
A claim may also contain a reference to another claim even if it is
not a dependent claim as defined in R.415(c). One example of this is a
claim referring to a claim of different category (e.g. "Apparatus for
carrying
out the process of claim 1", or "Process for the manufacture
of the product of claim 1"). Similarly, in a situation like the
plug and socket example of III, 3.3 here above, a claim to the one part
referring to the other co-operating part (e.g. "plug for cooperation
with the socket of claim 1") is not a dependent claim.
References
from one claim to another may also occur where alternative features which
may be substituted for one another are claimed in separate claims. Thus
there may be a first independent claim 1 for a machine including, inter
alia, a feature X followed by further claims for alternatives such as
"A machine according to claim 1 modified in that feature X is
replaced by feature Y". In all these examples, the examiner should
carefully consider the extent to which the claim containing the reference
necessarily involves the features of the claim referred to and the extent
to which it does not. In the case of a claim for a process which results
in the product of a product claim or a claim for the use of that product,
if the product claim is patentable then no separate examination for the
obviousness of the process or use claim is necessary (See IV, 9.5a). In
all other instances, the patentability of the claim referred to does not
necessarily imply the patentability of the independent claim containing
the reference. |
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4.
Clarity and interpretation of claims |
Sec.36.1 |
4.1 The
requirement that each claim shall be clear applies to individual claims
and also to the claims as a whole. The clarity of the claims is of the
utmost importance in view of their function in defining the matter for
which protection is sought. In view of the differences in the scope of
protection (Sec.75) which may be attached to the various categories of
claims, the examiner should ensure that the wording of a claim leaves no
doubt as to its category
(process, apparatus, product, use).
4.2 Each
claim should be read giving the words the meaning and scope which they
normally have in the relevant art, unless in particular cases the
description gives the words a special meaning, by explicit definition or
otherwise. Moreover, if such a special meaning applies, the examiner
should, so far as possible, require the claim to be amended whereby the
meaning is clear from the wording of the claim alone. The claim should
also be read with an attempt to make technical sense out of it. Such a
reading may involve a departure from the strict literal meaning of the
wording of the claims. |
R.418(f) |
The terminologies used in the claims and the
description have to be consistent with each other. |
Sec.75 Sec.36.1 R.415(d) R.918 |
4.3 Any
inconsistency between the description and the claims should be avoided if
having regard to Sec. 75, it may throw doubt on the extent of protection
and therefore render the
claim unclear (Sec.36.1). Such inconsistency can be of the following
kinds:
(i) Simple verbal inconsistency.
For example, there is a
statement in the description which suggests that the invention is limited
to a particular feature but the claims are not so limited; also, the
description places no particular emphasis on this feature and there is no
reason for believing that the feature is essential for the performance of
the invention. In such a case the inconsistency can be removed either by
broadening the description or by limiting the claims. Similarly, if the
claims are more limited than the description, the claims may be broadened
or the description may be limited.
(ii) Inconsistency regarding apparently essential features.
For example, it may appear, either from general technical
knowledge or from what is stated or implied in the description, that a
certain described technical feature not mentioned in an independent claim
is essential to the performance of the invention, or in other words is
necessary for the solution of the problem to which the invention relates.
In such a case the claim is unclear (Sec. 36.1), because an independent
claim must not only be comprehensible from a technical point of view but
it must also define clearly the object of the invention, that is to say
indicate all the essential features thereof. If, in response to this
objection, the applicant shows convincingly, e.g. by means of additional
documents or other evidence, that the feature is not in fact essential, he
may be allowed to retain the unamended claim and, where necessary, to
amend the description instead. The opposite situation in which an
independent claim includes features which do not Seem essential for the
performance of the invention is not objectionable. This is a matter of the
applicant 's choice. The examiner should therefore not suggest that a
claim be broadened by the omission of apparently inessential features.
(iii) Part of the subject-matter of the description and/or
drawings is not covered by the claims.
For example, the claims all specify an electric circuit
employing semi-conductor devices but one of the embodiments in the
description and drawings employs electronic tubes instead. In such a case,
the inconsistency can normally be removed either by broadening the claims
(assuming that the description and drawings as a whole provide adequate
support for such broadening) or by removing the "excess"
subject-matter from the description and
drawings. However if examples in the description and/or drawings
which are not covered by the claims, are presented, not as embodiments of
the invention, but as background art or examples which are useful for
understanding the invention, the retention of these examples may be
allowed.
4.3a General
statements in the description which imply that the extent of protection
may be expanded in some vague and not precisely defined way should be
objected to. In particular, objection
should be raised toany statement which refers
to the extent of protection being expanded to cover the "spirit"
of the invention; objection should likewise be raised, in the case where
the claims are directed to a combination of features, to any statement
which Seems to imply that protection is nevertheless sought not only for
the combination as a whole but also for individual features or
sub-combinations thereof. |
R.415(a)(b) R.416(a) |
4.4
An independent claim should specify clearly all of the essential
features needed to define the invention except in so far as such features
are implied by the generic terms used, e.g. a claim to a
"bicycle" does not need to mention the presence of wheels. If a
claim is to a process for producing the product of the invention,
then the process as claimed should be one which, when carried out in a
manner which would Seem reasonable to a person skilled in the art,
necessarily has as its end result that particular product;
otherwise there is an internal inconsistency and therefore lack of
clarity in the claim. In the case of a product claim, if the product is of
a well-known kind and the invention lies in modifying it in certain
respects, it is sufficient if the claim clearly identifies the product
and specifies what is modified and in what way. Similar
considerations apply to claims for apparatus.
Where patentability depends
on a technical effect, the claim must be so drafted as to include all the
technical features of the invention which are necessary for obtaining this
technical effect and therefore essential.
4.5 Relative or similar term such as
"thin", "wide" or "strong" in a claim may
render the scope of the claim vague and uncertain and should not in
general be used. However, if the term has a well-recognized meaning in the
particular art, e.g. "high-frequency" in relation to an
amplifier, and this is the meaning intended
its use is permissible. Where the term has no well-recognized meaning
it should be replaced by a more precise wording found elsewhere in the
original disclosure. Where there is no basis in the disclosure for a clear
definition, and the term is not essential having regard to the
invention, it should normally be retained in the claim, because to
excise it would generally lead to an extension of the subject-matter
beyond the content of the application as filed - in contravention of the
proviso in Sec. 49. However an unclear term cannot be allowed in a claim
if the term is essential
having regard to the invention. Equally, an unclear term cannot be used by
the applicant to distinguish his invention from the prior art.
4.5a Particular attention is required whenever the word
"about" or similar terms such as "approximately" are
used. Such a word may be applied, for example, to a particular value (e.g.
"about 200°C") or to a range (e.g. "about x to about
y"). In each case, the examiner should use his judgment as to
whether the meaning is sufficiently clear in the context of the
application read as a whole. However, the word can only be permitted if
its presence does not prevent the invention from being unambiguously
distinguished from the prior art with respect to novelty and inventive
step.
4.5b The use of trade marks,
trade names, proper names and
similar expressions in claims should not be allowed unless their use is
unavoidable; they may be allowed exceptionally if they are generally
recognized as having a
precise meaning (See also II, 4.16 and 4.17). They may be used
exceptionally if their use is unavoidable and they are generally
recognized as having a precise meaning.
4.6 Expressions, like "preferably", "for
example", "such as" or "more particularly" should
be looked at carefully to ensure that they do not introduce ambiguity.
Expressions of this kind have no limiting effect on the scope of a claim;
that is to say, the feature following any such expression is to be
regarded as entirely optional.
4.7
The monopoly defined by the claims must be as precise as the
invention allows. As a general rule, claims which attempt to define the
invention or a feature thereof by a result to be achieved should not be
allowed, in particular if they only amount to claiming the underlying
technical problem. However,
they may be allowed if the invention either can only be defined in such
terms or cannot otherwise be defined more precisely without unduly
restricting the scope of the claims and if the result is one which can be
directly and positively verified by tests or procedures adequately
specified in the description and involving nothing more than trial and
error or known to the person skilled in the art and which do not require
undue experimentation. For example, the invention may relate to an ashtray
in which a smouldering cigarette end will be automatically extinguished
due to the shape and relative dimensions of the ashtray. The latter may
vary considerably in a manner difficult to define whilst still providing
the desired effect (for functional features See III, 2.1 and 6.5). So long
as the claim specifies the construction and shape of the ashtray as
clearly as possible, it may define the relative dimensions by reference to
the result to be achieved, provided that the specification includes
adequate directions to enable the reader to determine the required
dimensions by routine test procedures not involving ingenuity. However
claims of this kind are generally undesirable and should be allowed only
when the invention does not admit of precise definition independently of
the result achieved. Any claim which includes a subordinate clause
prefaced by words such as “so that” or “the arrangement being such
that” requires special consideration from this point of view.
4.7a Where the invention relates to a product, e.g. a chemical
compound, it may be defined
in a claim in various ways, viz., by its chemical formula, as a product of
a process (if no clearer definition is possible) or exceptionally by its
parameters.
Parameters are
characteristic values, which may be values of directly measurable
properties (e.g. the melting point of a substance, the flexural strength
of a steel, the resistance of an electrical conductor) or may be defined
as more or less complicated mathematical combinations of several variables
in the form of formulae.
Characterisation of a
product, i.e. a chemical compound, solely by its parameters should, as a
general rule, not be allowed. It may however be allowable in those cases
where the invention cannot be adequately defined in any other way, i.e.
independently of the result to be achieved,
provided that those parameters are usual in the art and can be
clearly and reliably determined either by indications in the description
or by objective procedures which are usual in the art. This can arise, e
g. in the case of macromolecular chains. The same applies to a process
related feature which is defined by parameters.
Whether the methods of and
the means for measuring the parameters need also to be in the claims is
treated in III, 4.10 here below.
Cases in which unusual
parameters or a non-accessible apparatus
for measuring the parameter(s) are employed should be closely examined, as
they might disguise lack of novelty (See IV, 7.5).
4.7b Claims for products defined in terms of a process of
manufacture are admissible only if the products as such fulfil the
requirements for patentability, i.e. inter alia that they are new and
inventive. A product is not rendered novel merely by the fact that it is
produced by means of a new process. A claim defining a product in terms of
a process is to be construed as a claim to the product as such and the
claim should preferably take the form "Product X obtainable by
process Y", or any wording equivalent thereto, rather than
"Product X obtained by process Y". |
Sec.78 |
Concerning the protection
afforded by process claims See Sec.78.
4.8 If a claim commences with such words as:
"Apparatus for carrying out the process etc" this must be
construed as meaning merely apparatus suitable for carrying out the
process. Apparatus which otherwise possessed all of the features specified
in the claims, but which would be unsuitable for the stated purpose, or
which would require modification to enable it to be so used, should not
normally be considered as anticipating the claim. Similar considerations
apply to a claim for a product for a particular use. For example, if a
claim refers to a "mould for molten steel", this implies certain
limitations for the mould. Therefore a plastic ice cube tray with a
melting point much lower than that of steel would not come within the
claim. Or for example if a claim refers to "A hook for a construction
site crane" this implies e.g. particular dimensions and strength in
the hook. Therefore a “fish-hook for catching small fish” could never
anticipate the claim, but a hook having the necessary dimensions and
strength and possessing all the other features specified in the claim
would deprive the claim of novelty whether it was stated to be for use in
a crane or not. Similarly, a claim to a substance or composition for a
particular use should be construed
as meaning a substance or composition which is in fact suitable for the
stated use; a known product which prima facie is the same as the substance
or composition defined in the claim, but which is in a form which wouldrender it unsuitable for
the stated use, would not
deprive the claim of novelty, but if the known product is in a form in
which it is in fact suitable for the stated use, though it has never been
described for that use, it would deprive the claim of novelty. |
Sec.22.3 |
An exception to this
general principle of interpretation is provided by Sec. 22.3 which allows
a claim to a known product (substance) or composition where the claim is
to a known product (substance) or composition for use in a surgical,
therapeutic or diagnostic method, provided that its use in any such method
is not comprised in or rendered obvious by the prior art.
4.8a Where a claim in respect of a physical
entity (product, apparatus) Seeks to define the invention by reference to
features relating to the entity's use, a lack of clarity can result. This
is particularly the case where the claim not only defines the entity
itself but also specifies its relationship to a second entity which is not
part of the claimed entity (for example, a cylinder head for an engine,
where the former is defined by features of its location in the latter).
Before considering a restriction to the combination of the two entities,
it should always be remembered that the applicant is normally entitled to
independent protection of the first entity per se, even if it was
initially defined by its relationship to the second entity. Since the
first entity can often be produced and marketed independently of the
second entity, it will usually be possible to obtain independent
protection by wording the claims appropriately (for example, by
substituting "connectable" for "connected"). If it is
not possible to give a clear definition of the first entity per se, then
the claim should be directed to a combination of the first and second
entities (for example, "engine with a cylinder head" or
"engine comprising a cylinder head").
It may also be allowable to
define the dimensions and/or shape of a first entity in an independent
claim by general reference to the dimensions and/or corresponding shape of
a second entity which is not part of the claimed first entity but is
related to it through use. This particularly applies where the size of the
second entity is in some way standardised (for example, in the case of a
mounting bracket for a vehicle number-plate, where the bracket frame and
fixing elements are defined in relation to the outer shape of the
number-plate). However, references to second entities which cannot be Seen
as subject to standardisation may also be sufficiently clear in cases
where the skilled person would have little difficulty in inferring the
resultant restriction of the scope of protection for the first entity (for
example, in the case of a covering sheet for an agricultural round bale,
where the length and breadth of the covering sheet and how it is folded
are defined by reference to the bale's circumference, width and diameter).
It is neither necessary for such claims to contain the exact dimensions of
the second entity, nor do they have to refer to a combination of the first
and second entities. Specifying the length, width and/or height of the
first entity without reference to the second would lead to an unwarranted
restriction of the scope of protection.
4.8b
To avoid ambiguity, particular care should be exercised when
assessing claims which employ the word "in" to define a
relationship between different physical entities (product, apparatus), or
between entities and activities (process, use), or between different
activities. Examples of claims worded in this way include the following:
(i)
cylinder head in a four-stroke engine
(ii) In a telephone apparatus with an automatic dialer, dial tone detector and
feature controller, the dial tone detector comprising
(iii) In a process using an electrode feeding means of an arc-welding
apparatus, a method for controlling the arc welding current and voltage
comprising the following steps:
(iv) In
a process/system/apparatus the improvement consists of:
In examples (i) to (iii)
the emphasis is on the fully functioning sub-units (cylinder head, dial
tone detector, method for controlling the arc welding current and voltage)
rather than the complete unit within which the sub-unit is contained
(four-stroke engine, telephone, process). This can make it unclear whether
the protection sought is limited to the sub-unit per se, or whether the
unit as a whole is to be protected. For the sake of clarity, claims of
this kind should be directed either to "a unit with (or comprising) a
sub-unit" (e.g., "four-stroke engine with a cylinder
head"), or to the sub-unit per se, specifying its purpose (for
example, "cylinder head for a four-stroke engine"). The latter
course may be followed only at the applicant's express wish and only if
there is a basis for it in the application as filed, in accordance with
the proviso of Sec.49.
With claims of the type
indicated by example (iv), the use of the word "in" sometimes
makes it unclear whether protection is sought for the improvement only or
for all the features defined in the claim. Here, too, it is essential to
ensure that the wording is clear.
However, claims such as
"use of a substance as an anticorrosive ingredient in a paint or
lacquer composition" are acceptable on the basis of second
non-medical use (See IV, 7.6, second paragraph). |
R.415(b) |
4.9 For the purposes of examination, a
"use" claim of a form such as "the use of substance X as an
insecticide" should be regarded as equivalent to a
"process" claim of the form "a process of killing insects
using substance X". Thus a claim of the form indicated should not be
interpreted as directed to the substance X recognisable (e.g. by further
additives) as intended for use of an insecticide. Similarly, a claim for
"the use of a transistor in an amplifying circuit" would be
equivalent to a process claim for the process of amplifying using a
circuit containing the transistor and should not be interpreted as being
directed to "an amplifying circuit in which the transistor is
used", nor to "the process of using the transistor in building
such a circuit".
4.9a
A
claim to an apparatus or substance “when used in” a particular process
should be construed as a claim confined to the use of the apparatus or
substance in such a process, and its novelty is therefore destroyed
only by a disclosure to such use. Preferably, the claims wording should
be amended to read “Use of the apparatus/substance for/in (process
features)”. If the apparatus or substance per se is known to be old,
this fact should be acknowledged in the description in order to ensure
that the nature of the invention in its proper perspective. |
R.415(d) |
4.10
The claims must not, in respect of the technical features of the
invention, rely on references to the description or drawings "except
where absolutely necessary". In particular they must not normally
rely on such references as "as described in
part of the description", or "as illustrated in Figure
2 of the drawings", or substantially as described and illustrated in
the accompanying drawings”. A claim containing the latter phrase is
known as an omnibus claim. The emphatic wording of the excepting clause
precluding such references should be noted. The onus is upon the applicant
to show that it is "absolutely necessary" to rely on reference
to the description or drawings in appropriate cases. An example of an
allowable exception would be that in which the invention involved some
peculiar shape, illustrated in the drawings, but which could not be
readily defined either in words or by a simple mathematical formula.
Another special case is that in which the invention relates to chemical
products some of whose features can be defined only by means of graphs or
diagrams.
A further special case is
where the invention is characterized by parameters. Provided that the
conditions for defining the invention in this way are met (See III, 4.7a
here above), then the definition of the invention should appear completely
in the claim itself whenever this is reasonably practicable. In principle
the method of measurement is necessary for the unambiguous definition of
the parameter. The method of and means for measurement of the parameter
values need not be in the claims when:
(a)
the description of the method is so long that its inclusion would
make the claim unclear through lack of conciseness or difficult to
understand; in that case the claim should include a reference to the
description, in accordance with R.415(d),
(b)
a person skilled in the art would know which method to employ, e.g.
because there is only one method, or because a particular method is
commonly used, or
(c)
all known methods yield the same result (within the limits of
measurement accuracy).]
In all other cases the
method of and means for measurement should beincluded in the claims as
the claims shall define the matter for which protection is sought Sec.
36.1 |
R.416(c)
R.413(b) R.414.13 |
4.11 The use of references in the claims to features of the
drawings is not prohibited. On the contrary, if there are drawings, and
the technical features of the claims would be rendered more intelligible
by relating these features to the corresponding features of the drawings
(e.g. where a complete machine has been illustrated), then this should
preferably be done by placing the appropriate reference signs in
parentheses after the features
in the claims. This should be done in both parts of claims having the
two-part form specified in
R.416(a)(b). These reference signs are not, normally construed as limiting
the scope of a claim, but merely act as aids to an easier understanding of
the claimed invention.
However, the use of
reference signs is however not always necessary in order to meet the
requirements of Sec. 36. If the absence of reference signs makes it very
difficult to relate a claim to the particular description, it is often
possible to amend the wording of the claim as an alternative to
inserting reference signs therein. Another acceptable alternative
is to put the reference signs in a corresponding statement of invention in
the description.
If text is added to reference signs in parentheses in the
claims, lack of clarity can arise Sec. 36.1. Expressions such as
"securing means (screw 13, nail 14)" or "valve assembly
(valve seat 23, valve element 27, valve seat 28)" are not reference
signs in the sense of R.416(c) but are special features, to which the last
sentence of R.416(c) is not applicable. Consequently it is unclear whether
the features added to the reference signs are limiting or not.
Accordingly, such bracketed features are generally not permissible.
However, additional references to those figures where particular reference
signs are to be found, such as "(13 - Figure 3; 14 - Figure 4)",
are unobjectionable. |
R.416(c) |
A lack of clarity can also
arise with bracketed expressions that do not include reference signs, e.g.
"(concrete) moulded brick". In contrast, bracketed expressions
with a generally accepted meaning are admissible, e.g. "(meth)acrylate"
which is known as an abbreviation for "acrylate and methacrylate".
The use of brackets in chemical or mathematical formulae is also
unobjectionable.
4.12 Generally, the subject-matter of a claim is
defined by means of positive features. However, the extent of a claim may
be limited by means of a "disclaimer"; in other words, an
element clearly defined by technical features may be expressly excluded
from the protection claimed, for example in order to meet the requirement
of novelty (over a document belonging to a different technical field), or
to exclude technically impossible or insufficiently disclosed
subject-matterA disclaimer may be used only when the claim's remaining
subject-matter cannot be defined more clearly and concisely by means of
positive features. A disclaimer is generally a way of trying to preserve
the patentability of a generic claim by excluding from its scope one or
more particular examples in the
prior art. There is no standard wording or phrase in the description or
claims for a disclaimer. A specific prior art may be excluded by a
disclaimer even in the absence of support for the excluded matter in the
original application documents. However, care should be taken that the
wording of the disclaimer does not infringe the proviso of Sec. 49. For
example, a disclaimer should not be accepted in case that the disclosure
of a document belonging to the same technical field as the invention is to
be excluded, and the inventive step for the remaining subject-matter is
argued on the basis of an exclusion not originally disclosed in the
application under examination.
4.13 "Comprising" vs.
"consisting"
While
in everyday language the word "comprise" may have both the
meaning "include", "contain" or "comprehend"
and "consist of", in drafting patent claims legal certainty
normally requires it to be interpreted by the broader meaning
"include", "contain" or "comprehend". On the
other hand, if a claim for a chemical compound refers to it as
"consisting of components A, B and C" by their proportions
expressed in percentages, the presence of any additional component is
excluded and therefore the percentages should add up to 100%. |
Sec.36.1 |
5. Conciseness, number of claims
5.1 The
requirement that “each claim shall be concise” refers to the claims in
their entirety as well as to the individual claims. The number of claims
must be considered in relation to the nature of the invention the
applicant Seeks to protect. Undue repetition of wording, e.g. between one
claim and another, should be avoided by the use of the dependent form.
Regarding independent claims in the same category See III, 3.3 here above.
As for dependent claims, while there is no objection to a reasonable
number of such claims directed to particular preferred features of the
invention, the examiner should object to a multiplicity of claims of a
trivial nature. |
Sec.36.1 |
6. Support in description
6.1
Each claim must be supported by the description. This means that
there must be a basis in the description for the subject-matter of every
claim and that the scope of the claims must not be broader than is
justified by the extent of the description and drawings.
6.2
Most claims are generalisations from one or more particular
examples. The extent of generalisation permissible is a matter which the
examiner must judge in each particular case in the light of the relevant
prior art. Thus an invention which opens up a whole new field is entitled
to more generality in the claims than one which is concerned with
advances in a known
technology. A fair statement of claim is one which is not so broad that it
goes beyond the invention nor yet so narrow as to deprive the applicant of
a just reward for the disclosure of his invention. The applicant should be
allowed to cover all obvious modifications, equivalents to and uses of
that which he has described; after the date of filing, however, he should
be allowed to do so only if this does not introduce subject-matter which
goes beyond the disclosure of the initial application, i.e.
does not contravene the proviso of Sec. 49. In particular, if it is
reasonable to predict that all the variants covered by the claims have the
properties or uses the applicant ascribes to them in the description he
should be allowed to draw his claims accordingly. |
Sec.35.1
Sec.36.1 |
6.3
However, claims are sometimes speculative, in that their scope
extends beyond the description to embrace possibilities not yet explored
by the applicant, the effects of which cannot be readily predetermined or
assessed and the description gives merely an indication of the full
breadth of scope of the invention but no, or inadequate, directions of how
to put it into practice. In this case the examiner may object that the
invention in this respect is not sufficiently disclosed (Sec.35.1) and
that, consequently such claims are not supported by description
(Sec.36.1).
For instance, a claim in
generic form, i.e. relating to a whole class e.g. of products or machines,
may be acceptable even if of broad scope, if there is a fair support in
the description, and there is no reason to suppose that the invention
cannot be worked through the whole of the field claimed. Where the
information given appears insufficient to enable the person with ordinary
skill in the art to extend the teaching of the description to parts of the
field claimed, but not explicitly described by using routine methods of experimentation or analysis, the examiner should require the
applicant to satisfy him that the invention
can in fact be readily applied, on the basis of the information
given, over the whole field claimed or, failing this, to restrict the
claim to accord with the description.
As a general rule, a claim
should be regarded as supported by the description unless exceptionally
there are well-founded reasons for believing that the skilled person would
be unable, on the basis of the information given in the application as
filed, to extend the particular
teaching of the description to the whole of the field claimed by using
routine methods of experimentation or analysis. Support must however be of
a technical character; vague statements or assertions having no technical
content provide no basis.
The examiner should raise
an objection, or require further evidence, only if he has strong,
well-founded reasons for believing that the description as filed provides
inadequate support for that claim. It follows that in other cases the
applicant should be given the benefit of the doubt. Where
objection is raised, the
reasons should preferably be supported specifically by a published
document.
6.4 The question of support is illustrated by
the following examples:
(a)
A broad claim for “a process for influencing substances by
high-frequency electrical energy” may not be adequately supported by the
disclosure of a single example of such an influence (e. g. removing dust
from a gas) nor of influences on a single substance.
(b)
A claim relates to a process for treating all kinds of "plant Seedlings" by subjecting them to a controlled cold shock of such
duration and intensity that the specified results would follow, whereas
the description discloses the process applied to one kind of plant only.
Since it is well known that plants vary widely in their properties, there
are well-founded reasons for believing that the process is not applicable
to all plant Seedlings. Unless the applicant can provide convincing
evidence that the process is nevertheless generally applicable, he must
restrict his claim to the particular kind of plant referred to in the
description. A mere assertion that the process is applicable to all plant Seedlings is not sufficient.
Such a claim might thus
only be permissible if it clearly emanates from the description that the
conditions set forth in relation to that plant applied to other plants
generally; but otherwise the claim would not be adequately supported
unless the description gave a sufficient range of examples, relating to
different kind of plants, to enable a horticulturist to deduce how the
process should be applied to virtually any plant.
(c)
A claim relates to a specified method of treating "synthetic
resin mouldings" to obtain certain changes in physical
characteristics. All the examples described relate to thermoplastic resins
and the method is such as to appear inappropriate to thermosetting resins.
Unless the applicant can
provide evidence that the method is nevertheless applicable to
thermosetting resins, he must restrict his claim to thermoplastic resins.
It should be noted that,
although an objection of lack of support is an objection under Sec.36.1,
it can often, as in the above examples, also be considered as an objection
of insufficient disclosure of the invention under Sec.35, the objection
being that the disclosure is insufficient to enable the skilled person to
carry out the "invention" over the whole of the broad field
claimed (although sufficient in respect of a narrow
"invention"). Whether the objection is raised as lack of support
or as insufficiency is unimportant in examination proceedings; but it is
important in cancellation proceedings since there only the latter ground
is available (-> Sec.61.1).
6.5 A claim may broadly define a feature in
terms of its function, even
where only one example of
the feature has been given in the description,
if the skilled reader would
appreciate that other means could be used for the same function (See also
III, 2.1 here above). For example, "terminal position detecting
means" in a claim might be supported by a single example comprising a
limit switch, it being obvious to the skilled person that e.g. a
photoelectric cell or a strain gauge could be used instead. In general,
however, if the entire contents of the application are such as to convey
the impression that a function is to be carried out in a particular way,
with no intimation that alternative means are envisaged, and a claim is
formulated in such a way as to embrace other means, or all means, of
performing the function, then objection arises. Furthermore, it may not be
sufficient if the description merely states in vague terms that other
means may be adopted, if it is not reasonably clear what they might be or
how they might be used.
6.6 Where certain subject-matter is clearly disclosed
in a claim of the application as filed, but is not mentioned anywhere in
the description, it is permissible to amend the description so that it
includes this subject-matter. Where the claim is dependent, it may suffice
if it is mentioned in the description that the claim sets out a particular
embodiment of the invention (See II, 4.5)]. |
|
7.
Unity of invention
Independent
claims |
Sec. 38.1
R.604(a) |
7.1 The Philippine application must
"relate to one invention only, or to a group of inventions forming
a single general inventive concept". The second of these
alternatives, i.e. the single-concept linked group, may give rise to a
plurality of independent claims in the same category (as in the examples
given in III, 3.3 here above), but the more usual case is a plurality of
independent claims in different categories.
The following guidelines,
and in particular R.605, are consistent with internationally harmonised
unity of invention practices of many patent offices.
Concerning examples for the
assessment of unity, reference is made to III, Annex 1 and to VII, 4. |
R.605(a)
R.605(b) |
7.2 R.605(a) indicates how
one determines whether or not the requirement of Sec. 38.1 is fulfilled
when more than one invention appears to be present. The link or “single
general inventive concept” between the inventions required by Sec.38.1
must be a technical relationship which finds expression in the claims in
terms of the same or corresponding special technical features. The
expression "special technical features" means, in any one claim,
the particular technical feature or features that define a contribution
that the claimed invention.considered as a whole makes
over the prior art. Once the special technical features of each invention
have been identified, one must determine whether or not there is a
technical relationship between the inventions and, furthermore, whether or
not this relationship involves these special technical features. Moreover,
it is not necessary that the special technical features in each invention
be the same. R.605(a) makes it clear that the required relationship may be
found between corresponding technical features. An example of this
correspondence might be the following: In one claim the special technical
feature which provides resilience might be a metal spring, whereas in
another claim the special technical feature which provides resilience
might be a block of rubber. |
R.605(c) |
A plurality of independent
claims in different categories may constitute a group of inventions so
linked as to form a single general inventive concept. |
R.605(d)
R.415(b) |
In particular, the
inclusion of any one of the following combinations of claims of different
categories in the same application is permissible:
(1) in addition to an independent claim for a given product, an
independent claim for a process specially adapted for the manufacture of
the said product, and an independent claim for a use of the said product,
or
(2) in addition to an independent claim for a given process, an
independent claim for an apparatus or means specifically designed for
carrying out the said process, or
(3) in addition to an independent claim for a given product, an
independent claim for a process specially adapted for the manufacture of
the said product and an independent claim for an apparatus or means
specifically designed for carrying out the said process.
It should be noted that a
"product" need not be a substance or composition but can be any
physical thing resulting from man's technical skill. It can be, for
example, a device, a machine or an assembly or a system.
Example (a):
1. Flame-retarding agent X,
2. Method of preparation of X
3. Use of X to treat a textile fabric.
Example (b)
1. Method of making a cable by twisting the cores together in a
particular way.
2. Apparatus particularly designed to twist the cores in the
particular way (of claim 1).
Sub-combinations of these
groups of claims are also possible such as, for example, product and
process, product and use and process and apparatus. Evidently these may be
admitted within the framework of unity of invention.
However, while a single set
of independent claims according to any one of the combinations (1), (2) or
(3) above is always permissible, an examiner is not obliged to accept a
plurality of such sets which could arise by additionally applying the
provisions of R.415(b). The proliferation of claims arising out of a
combined effect of this kind should be allowed only exceptionally.
7.3 It is essential that a single general inventive
concept link the claims in the various categories. The presence in each
claim of expressions such as "specially adapted" or
"specifically designed" does not necessarily imply that a single
general inventive concept is present.
The requirement that the
process be specially adapted for the manufacture of the product is
fulfilled if the claimed process inherently results in the claimed
product. The expression "specially adapted" does not imply that
the product could not also be manufactured by a different process. It also
does not imply that a similar process of manufacture could not also be
used for the manufacture of other products.
The requirement that the
apparatus or means be specifically designed for carrying out the process
is fulfilled if the apparatus or means is suitable for carrying out the
process and if there is a technical relationship as defined in R.605(a)
between the claimed apparatus or means and the claimed process. It is not
sufficient for unity that the apparatus or means is merely capable of
being used in carrying out the process. However, the expression
"specifically designed" does not exclude that the apparatus or
means could also be used for carrying out another process, or that the
process could also be carried out using an alternative apparatus or means.
7.3a Unity of invention should be considered to be present
in the context of intermediate and final products where:
(i) the intermediate and final products have the same essential structural
element, i.e. their basic chemical structures are the same or, their
chemical structures are technically closely interrelated, the intermediate
incorporating an essential structural element into the final product, and
(ii) the intermediate and final products are technically interrelated, this
meaning that the final product is manufactured directly
(iii) from the intermediate or is separated from it by a small
number of intermediates
all containing the same essential
structural element.
Unity of invention may also
be present between intermediate and final products of which the structures
are not known - for example, as between an intermediate having a known
structure and a final product with unknown structure or as between an
intermediate of unknown structure and a final product of unknown
structure. In such cases, there should be sufficient evidence to lead one
to conclude that the intermediate and final products are technically
closely interrelated as, for example, when the intermediate contains the
same essential element as the final product or incorporates an essential
element into the final product.
Different intermediate
products used in different processes for the preparation of the final
product may be claimed provided that they have the same essential
structural element. The intermediate and final products should not be
separated, in the process leading from one to the other, by an
intermediate which is not new. Where different intermediates for different
structural parts of the final product are claimed, unity should not be
regarded as being present between the intermediates. If the intermediate
and final products are families of compounds, each intermediate compound
should correspond to a compound claimed in the family of the final
products. However, some of the final products may have no corresponding
compound in the family of the intermediate products so that the two
families need not be absolutely congruent.
The mere fact that, besides
the ability to be used to produce final products, the intermediates also
exhibit other possible effects or activities should not prejudice unity of
invention. |
R.605(b) |
7.4 Alternative forms of an invention may be claimed
either in a plurality of independent claims (as indicated in III, 7.1 here
above) or in a single claim (but See III, 3.7 here above). In the latter
case the presence of the two alternatives as independent forms may not be
immediately apparent. In either case, however, the same criteria should be
applied in deciding whether or not there is unity of invention, and lack
of unity of invention may then also exist within a single claim.
7.4a Where a single claim
defines (chemical or non-chemical) alternatives, i.e. a so-called "Markush
grouping", unity of invention should be considered to be present when
the alternatives are of a similar nature (See III, 3.7 here above).
A "Markush claim"
can be considered as a shortened formulation of a claim which claims
"A compound selected from the group of compounds consisting of.", wherein a very large number of compounds would then be
specified. It is a generic formulation of chemical compounds each having a
common basic structure plus variable substituents, the substituents having
a common property or activity.
An example of such a
Markush claim is:
A
composition comprising a copper compound and a dimerised thiourea
derivative of Formula:
wherein
the two substituents R, which may be the same or different, are each
independently selected from a substituted or unsubstituted alkyl group
having 1 to 18 carbon atoms, a substituted or unsubstituted cycloalkyl
group having 3 to 18 carbon atoms, a substituted or unsubstituted aralkyl
group having 7 to 30 carbon atoms, a substituted or unsubstituted aryl
group having 6 to 30 carbon atoms, a substituted or unsubstituted acyl
group having 2 to 20 carbon atoms, a substituted or unsubstituted alkenyl
group having 2 to 20 carbon atoms, and a substituted or unsubstituted
alkoxycarbonyl group having 2 to 20 carbon atoms; and B denotes
substituted or unsubstituted benzene ring, a naphthalene ring, or a
biphenyl ring; the molar ratio of dimerised thiourea derivative to copper
compound being from 8:2 to 1:2.
When the Markush grouping
is for alternatives of chemical compounds, they should be regarded as
being of a similar nature where:
(i) all alternatives have a common property or activity, and
(ii) a common structure is present, i.e. a significant structural element is
shared by all of the alternatives, or all alternatives belong to a
recognized class of chemical compounds in the art to which the invention
pertains.
A "significant structural element is shared by all of the
alternatives" where the compounds share a common chemical structure
which occupies a large portion of their structures, or in case the
compounds have in common only a small portion of their structures, the
commonly shared structure constitutes a structurally distinctive portion
in view of existing prior art. The structural element may be a single
component or a combination of individual components linked together. The
alternatives belong to a "recognized class of chemical
compounds" if there is an expectation from the knowledge in the art
that members of the class
will behave in the same way in the context of the claimed invention, i.e.
that each member could be substituted one for the other, with the
expectation that the same intended result would be achieved. If it can be
shown that at least one Markush alternative is not novel, unity of
invention should be reconsidered.
7.5
Objection of lack of unity does not normally arise because a claim
contains a number of individual features whether presenting a technical
interrelationship (combination) or not (juxtaposition)
7.6
Lack of unity may be directly evident a priori, i.e. before
considering the claims in relation to the prior art or may only become
apparent a posteriori, i.e. after taking the prior art into consideration
- e.g. a document within the state of the art as defined in Sec. 24.1
shows that there is lack of novelty or inventive step in a main claim thus
leaving two or more
independent claims without a common inventive concept. |
Sec.38.3 |
7.7 Although lack of unity may arise a posteriori as
well as a priori, it should be remembered that lack of unity is not a
ground of cancellation in later proceedings. Therefore, although the
objection should certainly be made and amendment insisted upon in clear
cases, it should neither be raised nor persisted in on the basis of a
narrow, literal or academic approach. This is particularly so where the
possible lack of unity does not necessitate a further search. There should
be a broad, practical consideration of the degree of
interdependence of the alternatives presented, in relation to the
state of the art as revealed by the search report. If the common matter of
the independent claims is well-known, and the remaining subject-matter of
each claim differs from that of the others without there being any
unifying novel concept common to all, then clearly there is lack of unity.
If, on the other hand, there is a common concept or principle which is
novel and inventive then objection of lack of unity does not arise. For
determining what is allowable between these two extremes, rigid rules
cannot be given and each case should be considered on its merits, the
benefit of any doubt being given to the applicant. For the particular case
of claims for a known
substance for a number of distinct medical uses, See IV, 4.2.
Dependent claims
7.8 No objection on account of lack of unity a priori
is justified in respect of a dependent claim and the claim from which it
depends only because the general concept they have in common is the
subject-matter of the independent claim, which is also contained in the
dependent claim.
For example, suppose claim
1 claims a turbine rotor blade shaped in a specified inventive manner,
while claim 2 is for a "turbine rotor blade as claimed in claim 1 and
produced from alloy Z". The common general concept linking the
dependent with the independent claim is "turbine rotor blade shaped
in a specified manner", irrespective of whether the alloy Z is novel
and inventive or not.
As another example, suppose
that a main claim defines a process for the preparation of a Product A
starting from a product B and the second claim reads: Process according to
claim 1 characterized by producing B by a reaction using the
product C. In this case, too, no objection arises
under Sec.38.1, whether or
not the process for preparation of B from C is novel and inventive, since
claim 2 contains all the features of claim 1. The subject matter of claim
2 therefore falls within claim 1.
Hence, there is no question
of plurality of invention when one claim is within the scope of another,
even though the additional matter in the narrower claim would have been
capable of being claimed as further invention.
Where, however, a claim is
presented as dependent on another, but in fact states that one or more
features of the other claim are omitted or are replaced by other features,
there is the possibility of lack of unity of invention. Likewise when
alternatives are specified in a single claim, the claim should be
notionally rewritten as a series of independent claims which then can be
assessed for unity of invention in the usual way.
If the independent claim
appears to be not patentable, then the question whether there is still an
inventive link between all the claims dependent on that claim needs to be
carefully considered (See III, 7.7 here above, non-unity "a
posteriori"). It may be that the "special technical
features" of one claim dependent on this non-patentable independent
claim are not present in the same or corresponding form in an other claim
dependent on that claim.
7.9 Concerning the procedure to be followed in
case of lacking unity, reference is made to Sec.38.2 and R.606 to 611.
7.10 The Bureau may raise objections under Sec.38 during the
stage preceding publication (e.g. upon search) or during the subsequent
substantive examination. |
R.417 |
8. Calculation of claims fees
The claims incurring fees
are calculated in accordance with R.417. |
ANNEX to CHAPTER III, 7
Guidance for the assessment of unity
1. General
An application should
relate to one invention only. The reason for this is that an applicant
should file a separate application for each invention, and pay
corresponding fees for each application. If he includes more than one
invention in an application he might avoid the fee payment.
2. Two approaches for examining unity of invention: chanroblesvirtualawlibrary
There are two ways of examining for unity of invention. The
first method is called the "common subject-matter approach", and is the
traditional method used, and the second method, for purpose of
explanation, is here called the "Rule 605 approach", and is relatively
new. This rule says that unity of invention exists only if there is
technical relationship between the claimed inventions and they involve
one or more of the same or corresponding special technical features."
The above two methods should give the same result, but nevertheless both are explained below.
2.1 The Rule 605 approach comprises the following steps:cralaw:red
Step 1:cralaw:red
Compare the subject-matter of the first invention (1st
independent claim) with the relevant prior art to determine which are
the "special technical feature(s)" defining the contribution the
invention, considered as a whole, makes over the prior art. This means
identify those features that make the claim novel and inventive. chanroblesvirtualawlibrary
Step 2:cralaw:red
Compare the "special technical features" of the
first invention identified in step 1 with the subject-matter of the
second invention (2nd independent claim), and determine whether or not
one or more of the same or corresponding special technical features are
present, i.e. do the two claims contain the same features that are
novel and inventive. If they do, there is a technical relationship
among the two inventions.
Step 3:cralaw:red
Conclude that there is a single general inventive concept if
such technical relationship is present. If on the other hand, no such
technical relationship exists, conclude that there is no single general
inventive concept, and, consequently, that unity of invention is
lacking. chanroblesvirtualawlibrary
Step 4:cralaw:red
Repeat the above for the remaining independent claims.
2.2 The "common subject-matter approach" chanroblesvirtualawlibrary
The "common subject-matter" of two inventions (claims) is
the technical features which are common to the two inventions (claims).
In certain cases, two apparently different technical features may have
a common technical effect, which contributes to the "common
subject-matter".
The "common subject-matter approach" involves the following steps:cralaw:red
(i) identify the common subject-matter (CSM) of the
independent claims. Thus if claim 1 has the features a, b, c, d, e, and
f, and claim 10 has the features a, b, d, e, g, and h, the common
subject-matter comprises a, b, d, and e;chanroblesvirtualawlibrary
(ii) compare this CSM with the disclosure of the
closest prior art document to determine whether or not it is known
(and, possibly, also whether or not it is obvious) and
(iii) decide that there is no single inventive concept
between the independent claims, if said CSM is known (or obvious, and
vice versa).
3. "A priori" and "a posteriori" lack of unity
A lack of unity "a priori" is based on general
knowledge of the skilled person, whereas "a posteriori" is based on
knowledge from a particular prior art document.
To illustrate these terms in more detail, consider the following set of claims:cralaw:red
1. A telephone
2. A telephone having a cradle switch
3. A telephone having a dial
4. A telephone having a rotary dial
5. A telephone having a pushbutton dial
Suppose that an application contains all of these claims.
They are all linked by a single general concept i.e. a telephone. If
the telephone is new and involves an inventive step, then these claims
form a group of linked inventions and are free from an objection of
non-unity.
If the telephone is not new or lacks an inventive step,
Claim 1 would not be allowable, for lack of novelty. Claims 2 to 5 are
then no longer linked by a single general inventive concept.
Consequently, an objection of non-unity would arise, it being assumed
that both the cradle switch and a dial themselves are inventive. chanroblesvirtualawlibrary
If the claims had been in the form:cralaw:red
1. A telephone
2. A cradle switch
3. A dial
4. A rotary dial
5. A pushbutton dial, chanroblesvirtualawlibrary
It would have been clear from the start that there was
non-unity. The second example indicates what is meant by "a priori". In
the first example however, it was necessary to know whether the concept
of a telephone was or was not new and inventive before one could decide
as to the unity, so that here the case of "a posteriori" arose. This is
the much more common case. chanroblesvirtualawlibrary
4. Claim containing alternatives (see III, 3.7).
Non-unity can sometimes arise where there appears to be only one claim, for example:cralaw:red
A thermoplastic moulding composition which comprises a
polyphenylene etherstyrene resin composition (A); and as a conductive
material, aluminium flakes (B), a combination of aluminium flakes (B)
with carbon fibres (C) or conductive carbon black (D), or a combination
of carbon fibres (C) and conductive carbon black (D), or carbon fibres
(C), in an amount sufficient to make the composition shielding against
electromagnetic interference when moulded.
It must be first recognised that this claim should be regarded as not one but five independent claims, i.e.:cralaw:red
1. A + B
2. A + B + C
3. A + B + D
4. A + C + D
5. A + C
If the combination of A with any conductive material is
known, then at first sight (a priori) there is non-unity. It must
nevertheless be considered whether the known combination is such as to
make the composition shielding against electromagnetic interference
when moulded. It must also be considered whether, having regard to the
problem to be solved, the materials B (aluminium flakes) and C (carbon
fibres) have something in common which makes these materials
particularly suitable for use in combination with the particular resin
composition A. Finally it should also be considered whether, having
regard to the state of the art, any of the combinations involves an
inventive step. It would be wrong to raise only a non-unity objection
if some of the combinations did not involve an inventive step. chanroblesvirtualawlibrary
5. Independent claims for related articles
Having dealt with a few examples of claims which sometimes
looked alike but nevertheless exhibited non-unity, it may be
instructive to look at some claims which do not look at all alike but
which do exhibit unity. chanroblesvirtualawlibrary
1. A transmitter including carrier-frequency-hopping
generating means (16) for generating as an output a distinct sequence
of carrier frequencies (f(t)), modulating means (12,14,18) responsive
to both a message signal and the distinct sequence of carrier
frequencies for modulating the message signal to produce as an output
of the transmitter a carrier-frequency-hopped single sideband signal,
characterised in that the distinct sequence of carrier frequencies is
generated in response to an assignment code (c(t)) received from a
remote receiver and representative of the distinct sequence of carrier
frequencies. chanroblesvirtualawlibrary
2. A receiver including carrier-frequency-hopping
generating means (24) for generating as an output a distinct sequence
of carrier frequencies related to a received carrier-frequencyhopped
single sideband signal, and demodulating means (22,26,28) responsive to
both the received carrier-frequencyhopped single sideband signal and
the distinct sequence of carrier frequencies for demodulating the
received carrier-frequency-hopped single sideband signal to produce as
an output of the receiver the message signal related thereto, and
characterised by means (24) for generating for transmission an
assignment code (c(t)) representative of the distinct sequence of
carrier frequencies. chanroblesvirtualawlibrary
In this case a single general inventive concept can be
recognised in the transmission of an assignment code representative of
the distinct sequence of carrier frequencies. These claims are an
example of independent claims in the same category.
6. Claims in different categories
Independent claims
See examples a) and b) in Chapter III, 7.1 – 7.2
7. “Markush” claims
The assessment of unity in case of Markush claims is dealt with under Chapter III, 7.4a chanroblesvirtualawlibrary
8. Different medical uses of a known substance chanroblesvirtualawlibrary
If an application discloses different medical uses of a known
substance, and the uses are new, then independent claims for the
substance having the different uses may be claimed. There is no lack of
unity since the unifying concept is the first medical use of the
substance, which is novel and inventive.
9. Further examples
Further examples concerning the assessment of unity can be found in Chapter VII, 4 (Unity of invention).
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