F-IV - claims Flashcards
- General
The application must contain “one or more claims”.
Art. 78(1)(c)
These must:
(i)
“define the matter for which protection is sought”;
(ii)
“be clear and concise”; and
(iii)
“be supported by the description”.
Art. 84
Since the extent of the protection conferred by a European patent or application is determined by the claims (interpreted with the help of the description and the drawings), clarity of the claims is of the utmost importance (see also F‑IV, 4).
- Form and content of claims
2.1 Technical features
The claims must be drafted in terms of the “technical features of the invention”. This means that claims must not contain any statements relating, for example, to commercial advantages or other matters not related to “carrying out” the invention, but statements of purpose are allowed if they assist in defining the invention.
It is not necessary that every feature is expressed in terms of a structural limitation. Functional features may be included provided that a skilled person would have no difficulty in providing some means of performing this function without exercising inventive skill (see F‑IV, 6.5). For the specific case of a functional definition of a pathological condition, see F‑IV, 4.21.
Claims to the use of the invention, in the sense of the technical application thereof, are allowable.
2.2 Two-part form
Rule 43(1)(a) and (b) define the two-part form which a claim must have “wherever appropriate”.
The first part or “preamble” needs to contain a statement indicating “the designation of the subject-matter of the invention”, i.e. the general technical class of apparatus, process, 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 requirement to state prior-art features in the first part of the claim is applicable only to independent claims and not to dependent claims (see F‑IV, 3.4). It is clear from the wording of Rule 43 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 “characterising portion” needs to state the features which the invention adds to the prior art, i.e. the technical features for which, in combination with the features stated in the first part, protection is sought.
If a single document in the state of the art according to Art. 54(2), 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 division will 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 preamble and the characterising part could be made in more than one way without inaccuracy, applicants must not be pressed, unless there are very substantial reasons, to adopt a different division of the features from that which they have chosen, if their version is not incorrect. If the applicant insists on including more features in the preamble than can be derived from the closest available prior art, this is accepted.
If no other prior art is available, this first part of the claim could be used to raise an objection on the ground of lack of inventive step (see G‑VII, 5.1, last paragraph).
2.3 Two-part form unsuitable
Subject to what is stated in F‑IV, 2.3.2, final sentence, applicants are required to follow the above two-part formulation in their independent claim or claims, where, for example, it is clear that their invention resides in a distinct improvement in an old combination of parts or steps. However, as is indicated by Rule 43, 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 inventive step 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 interrelationships.
In examples (i) and (ii), the Rule 43 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 Rule 43 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.
2.3.1 No two-part form
There is a special instance in which the Rule 43 form of claim is avoided. This is when the only relevant prior art is another European patent application falling within the terms of Art. 54(3). Such prior art must however be clearly acknowledged in the description (see F‑II, 4.3, penultimate paragraph, and F‑II, 4.4).
2.3.2 Two-part form “wherever appropriate”
When examining whether or not a claim is to be put in the form provided for in Rule 43(1), second sentence, it is important to assess whether this form is “appropriate”. In this respect the purpose of the two-part form is to allow the skilled person to see clearly which features necessary for the definition of the claimed subject-matter are, in combination, part of the prior art. If this is sufficiently clear from the indication of prior art made in the description, to meet the requirement of Rule 42(1)(b), the two-part form is not insisted upon.
2.4 Formulae and tables
The claims, as well as the description, may contain chemical or mathematical formulae but not drawings (see the decision of the President dated 25 November 2022, OJ EPO 2022, A113, Art. 2(8)). 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 this decision, the division does not object to the use of tables in claims where this form is convenient.
- Kinds of claim
3.1 Categories
The EPC refers to different “categories” of claim (“products, process, apparatus or use”). 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 a person’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, G‑II, 4.2 and G‑II, 5.4).
Rule 43(2) in combination with Rule 44(1) should be construed as permitting the inclusion of any one of the following combinations of claims of different categories in the same application:
(i)
in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of said product and an independent claim for a use of said product; or
(ii)
in addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out said process; or
(iii)
in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of said product and an independent claim for an apparatus or means specifically designed for carrying out said process.
Rule 43(2)
However, while a single set of independent claims according to any one of the combinations (i), (ii) or (iii) above is always permissible, a plurality of such sets of independent claims in one European patent application can only be allowed if the specific circumstances defined in Rule 43(2)(a) to Rule 43(2)(c) apply and the requirements of Art. 82 and Art. 84 are met. The proliferation of independent claims arising out of a combined effect of this kind may therefore be allowed only by way of an exception.
Art. 82
If the subject-matter of a European patent is a process, the protection conferred by the patent extends to the products directly obtained by such a process.
3.2 Number of independent claims
According to Rule 43(2), as applicable to all European patent applications, the number of independent claims is limited to one independent claim in each category.
Exceptions from this rule can only be admitted in the specific circumstances defined in sub-paragraphs (a), (b) or (c) of this rule, provided the requirement of Art. 82 with regard to unity is met (see F‑V).
The following are examples of typical situations falling within the scope of the exceptions from the principle of one independent claim per category:
(i)
Examples of a plurality of interrelated products (Rule 43(2)(a))
–
plug and socket
–
transmitter – receiver
–
intermediate(s) and final chemical product
–
gene – gene construct – host – protein – medicament
For the purpose of Rule 43(2)(a), the term “interrelated” is interpreted to mean “different objects that complement each other or work together”. In addition, Rule 43(2)(a) can be interpreted as covering apparatus claims, since the term “products” is considered to include apparatuses. Likewise, it may include systems, sub-systems and sub-units of such systems, as long as these entities are interrelated. Interrelated methods claims may also fall under the exception of Rule 43(2)(a).
(ii)
Examples of a plurality of different inventive uses of a product or apparatus (Rule 43(2)(b))
–
claims directed to further medical uses when a first medical use is known (see G‑II, 4.2)
–
claims directed to the use of compound X for multiple purposes, e.g. for cosmetically fortifying hair and for promoting hair growth
(iii)
Examples of alternative solutions to a particular problem (Rule 43(2)(c))
–
a group of chemical compounds
–
two or more processes for the manufacture of such compounds
(iv)
Examples of allowable claim types
–
Claims directed to multiple methods involving a novel and inventive polypeptide P, e.g. an enzyme that controls a specific step in the synthesis of a compound:
a method for manufacturing the polypeptide P,
a method for manufacturing the compound by using either the isolated polypeptide or host cells expressing said polypeptide,
a method for selecting a host cell based on whether or not it expresses the polypeptide of the invention.
–
A data sending method for sending a data packet between a plurality of devices coupled to a bus;
a data receiving method for receiving a data packet between a plurality of devices coupled to a bus.
–
Methods of operating a data-processing system comprising steps A, B, … – a data-processing apparatus/system comprising means for carrying out said method – a computer program [product] adapted to perform said method – a computer-readable storage medium/data carrier comprising said program;
Note however that when several independent claims are directed to equivalent embodiments that are not sufficiently different (e.g. computer program adapted to perform said method, optionally carried on an electric carrier signal – computer program comprising software code adapted to perform method steps A, B …), the exceptions under Rule 43(2) usually do not apply.
For the purpose of Rule 43(2)(c), the term “alternative solutions” can be interpreted as “different or mutually exclusive possibilities”. Moreover, if it is possible to cover alternative solutions by a single claim, the applicant should do so. For example, overlaps and similarities in the features of the independent claims of the same category are an indication that it would be appropriate to replace such claims with a single independent claim, e.g. by selecting a common wording for the essential features (see F‑IV, 4.5).
3.3 Objection under Rule 43(2) or Rule 137(5)
Where an unjustified plurality of independent claims in the same category persists after the search (see B‑VIII, 4.1 and B‑VIII, 4.2) in the application under examination, an objection is raised under Rule 43(2). If no Rule 62a(1) invitation was sent at the search stage, the examining division can still raise an objection under Rule 43(2). If the application is a Euro-PCT application not subject to the preparation of a supplementary European search report (see B‑II, 4.3.1), an objection under Rule 43(2) may also arise in examination.
When an objection under Rule 43(2) arises, the applicant is invited to amend the claims appropriately. If the search was restricted in accordance with Rule 62a, and the examining division upholds the objection under Rule 43(2) despite possible counter-arguments provided by the applicant in response to the invitation under Rule 62a(1) (see B‑VIII, 4.2.2) or to the search opinion under Rule 70a (see B‑X, 8), the claims must be amended in such a way as to result in the removal of all subject-matter excluded from the search (Rule 62a(2)) and the description amended accordingly (see H‑II, 5).
If in reply to the reasoned objection (raised or confirmed in a communication from the examining division) the additional independent claims are maintained and no convincing arguments are presented that one of the situations referred to in sub-paragraphs (a) to (c) of Rule 43(2) applies, the application may be refused under Art. 97(2).
If the application is amended to provide a set of claims complying with Rule 43(2), but containing one or more claims directed to subject-matter excluded from the search in accordance with Rule 62a(1), an objection under Rule 137(5) arises and such amendments may not be admitted (see also H‑IV, 4 and H‑IV, 4.1.1). However, before such a decision can be taken, it will be necessary to allow the applicant to comment according to Art. 113(1) on the underlying issue of whether or not the claims in respect of which the invitation under Rule 62a(1) was sent did in fact comply with Rule 43(2).
The burden of proof concerning an objection under Rule 43(2) is initially shifted onto the applicant, i.e. it is up to the applicant to argue convincingly why additional independent claims can be maintained. For example, the mere statement that the number of claims is the minimum necessary to provide the overall scope of protection which the applicant seeks is not a convincing argument (see T 56/01, Reasons 5).
Where the application also lacks unity of invention, the division may raise an objection under either Rule 43(2) or Art. 82 or under both. The applicant cannot contest which of these objections has priority.
3.4 Independent and dependent claims
All 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” is construed broadly as meaning any more specific disclosure of the invention than that set out in the independent claim or claims.
Rule 43(3) and
(4)
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 features of which it includes (see, however, F‑IV, 3.8 for claims in different categories). Since a dependent claim does not by itself define all the characterising features of the subject-matter which it claims, expressions such as “characterised in that” or “characterised 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 by referring 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.
It sometimes occurs that an independent claim refers explicitly to alternative solutions and that these alternatives are also claimed separately in dependent claims. Such claims may seem redundant, but may be important for applicants in some national procedures if they wish to restrict their claims.
Rule 43(4)
The division objects to such claims only if they detract from the clarity of the claims as a whole.
A dependent claim referring explicitly to independent claims in two categories as alternatives cannot be objected to on this ground alone. For example, if the invention relates to both a composition and a use of that composition, it is possible for a claim specifying further features of the composition to be made dependent on both the independent claim for the composition and the independent claim for its use.
Art. 84
Objections are, however, raised to this type of claim dependency if it leads to a lack of clarity.
3.5 Arrangement of claims
All dependent claims referring back to a single previous claim and those referring back to several previous claims 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 division objects if the arrangement of claims is such as to create obscurity in the definition of the subject-matter to be protected. In general, however, when the corresponding independent claim is allowable, the division does not concern itself unduly with the subject-matter of dependent claims, provided it 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 also F‑IV, 3.8).
3.6 Subject-matter of a dependent claim
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 characterising portion but also of the preamble.
3.7 Alternatives in a claim
A claim, whether independent or dependent, may refer to alternatives, provided that the number and presentation of alternatives in a single claim does not make the claim obscure or difficult to construe and provided that the claim meets the requirements of unity (see also F‑V, 3.2.1 and 3.2). In the case of a claim defining (chemical or non-chemical) alternatives, i.e. a so-called “Markush grouping”, unity of invention is considered to be present if the alternatives are of a similar nature and can fairly be substituted for one another (see F‑V, 3.2.5).
3.8 Independent claims containing a reference to another claim or to features from a claim of another category
A claim containing a reference to another claim is not necessarily a dependent claim as defined in Rule 43(4). One example of this is a claim referring to a claim of a 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 F‑IV, 3.2(i), a claim to the one part referring to the other co-operating part (e.g. “plug for co-operation with the socket of claim 1 …”) is not a dependent claim. In all these examples, the division carefully considers 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. Indeed, objections on the grounds of lack of clarity and failure to state the technical features (Rule 43(1)) apply to a claim which simply says “Apparatus for carrying out the process of claim 1”. Since the change of category already makes the claim independent, the applicant is required to set out clearly in the claim the essential features of the apparatus.
The same is true for a claim which says “Method for using an apparatus according to claim 1”. The method claim, formulated as a use claim, lacks the steps that are carried out in order to use the apparatus (see F‑IV, 4.16) and is therefore not clear.
For claims directed to computer-implemented inventions, in which independent claims often comprise references to other independent claims, see F‑IV, 3.9.
The subject-matter of a claim in one category may also to some extent be defined in terms of features from another category; therefore an apparatus may be defined in terms of functions it is able to perform, provided the structure is made sufficiently clear; or a process may be defined in terms of essential structural features of the apparatus for carrying it out; or an element of an apparatus may be defined in terms of how it is made. However, in the wording of these claims and in the assessment of the claimed subject-matter, a clear distinction must be maintained between product claims (for a device, apparatus or system) and process claims (for a process, activity or use). For example, a claim for an apparatus cannot normally be limited only by the manner in which the apparatus is used; for this reason, a claim which simply reads “Apparatus Z, when used for carrying out process Y” is also objected to on the grounds of lack of clarity and failure to state the technical features (Rule 43(1)).
No separate examination for the novelty and inventive step of a process claim for producing a product is necessary, provided that:
–
all features of the product as defined in the product claim inevitably (see also G‑VII, 14) result from the claimed process (see F‑IV, 4.5 and T 169/88), and
–
the product claim is patentable.
This also applies in the case of a claim for the use of a product, when the product is patentable and is used with its features as claimed (see T 642/94). In all other instances, the patentability of the claim referred to does not necessarily imply the patentability of the independent claim containing the reference. If the process, product and/or use claims have different effective dates (see F‑VI, 1 and 2), a separate examination may still be necessary in view of intermediate documents (see also G‑VII, 14).
3.9 Claims directed to computer-implemented inventions
The expression “computer-implemented inventions” (CII) covers claims which involve computers, computer networks or other programmable apparatus, whereby at least one feature is realised by means of a program.
Claims directed to CII should define all the features which are essential for the technical effect of the process which the computer program is intended to carry out when it is run (see F‑IV, 4.5.2, last sentence). An objection under Art. 84 may arise if the claims contain program listings. Short excerpts from programs may be accepted in the description (see F‑II, 4.12).
In the following three sections, a distinction is made between three situations. The practice defined in F‑IV, 3.9.1 is confined to inventions in which all the method steps can be carried out by generic data processing means. F‑IV, 3.9.2, on the other hand, relates to inventions in which at least one method step defines the use of specific data processing means or other technical devices. Inventions that are realised in a distributed computing environment are discussed in F‑IV, 3.9.3.
3.9.1 Cases where all method steps can be fully implemented by generic data processing means
A common type of CII relates to subject-matter where all the method steps can fully be carried out by computer program instructions running on means which, in the context of the invention, provide generic data processing functions. Such means can, for example, be embedded in a personal computer, smartphone, printer etc. In such inventions, although different claim structures are possible, the set of claims usually starts with a method claim. Further claims in other categories with subject-matter corresponding to that of the method may be included to obtain complete protection of the invention. If the invention concerns software which can be loaded into memory, transmitted over a network or distributed on a data carrier, a claim to a computer program [product] may also be present in addition to a computer-implemented method. The category of a computer program [product] claim is distinguished from that of a corresponding computer-implemented method (T 424/03 and G 3/08). The following non-exhaustive list comprises examples of acceptable claim formulations (T 410/96, T 1173/97 and T 2140/08) in such a set of claims:
(i)
Method claim (claim 1)
–
A computer-implemented method comprising steps A, B, …
–
A method carried out by a computer comprising steps A, B, …
(ii)
Apparatus/device/system claim (claim 2)
–
A data processing apparatus/device/system comprising means for carrying out [the steps of] the method of claim 1.
–
A data processing apparatus/device/system comprising means for carrying out step A, means for carrying out step B, …
–
A data processing apparatus/device/system comprising a processor adapted to/configured to perform [the steps of] the method of claim 1.
(iii)
Computer program [product] claim (claim 3)
–
A computer program [product] comprising instructions which, when the program is executed by a computer, cause the computer to carry out [the steps of] the method of claim 1.
–
A computer program [product] comprising instructions which, when the program is executed by a computer, cause the computer to carry out steps A, B, ….
(iv)
Computer-readable [storage] medium/data carrier claim (claim 4)
–
A computer-readable [storage] medium comprising instructions which, when executed by a computer, cause the computer to carry out [the steps of] the method of claim 1.
–
A computer-readable [storage] medium comprising instructions which, when executed by a computer, cause the computer to carry out steps A, B, …
–
A computer-readable data carrier having stored thereon the computer program [product] of claim 3.
–
A data carrier signal carrying the computer program [product] of claim 3.
In formulation (ii) above, apparatus features of the means-plus-function type (“means for …”) are interpreted as means adapted to carry out the respective steps/functions, rather than merely means suitable for carrying them out (T 410/96). There is no particular preference of wording among “comprising means for”, “adapted to”, “configured to” or equivalents. In this way, novelty is conferred over an unprogrammed data processing apparatus or a data processing apparatus programmed to perform a different function.
An objection under Rule 43(2) is not raised if the claim set comprises one claim from each of the above formulations (i)-(iv). In these cases, an invitation under Rule 62a(1) is therefore not sent at the search stage since the requirements of Rule 43(2) are fulfilled.
However, an objection under Rule 43(2) may be raised if more than one claim is present from a heading (i)-(iv), for example if there are two or more computer program [product] claims which cannot be considered as falling under one of the exceptions of Rule 43(2) (F‑IV, 3.2).
When assessing the novelty and inventive step of a set of claims as defined above (formulations (i)-(iv)), the division usually starts with the method claim. If the subject-matter of the method claim is considered novel and inventive, the subject-matter of the other claims in a set formulated in accordance with the headings above will normally be novel and inventive as well, provided they comprise the features corresponding to all those which assure the patentability of the method.
Claims related to CII which are formulated differently to those in the formulations (i)-(iv) defined above are assessed on a case-by-case basis in view of the requirements of clarity, novelty and inventive step (see also F‑IV, 3.9.2).
For example, when the invention is realised in a distributed computing environment or involves interrelated products, it may be necessary to refer to the specific features of the different entities and to define how they interact to ensure the presence of all essential features, rather than making a mere reference to another claim as in the above formulations (ii)-(iv). In such cases, further independent claims to interrelated products and their corresponding methods may also be allowable under Rule 43(2)(a) (F‑IV, 3.2 and F‑IV, 3.9.3).
Similarly, if user interaction is required, an objection under Art. 84 may arise if it is not possible to determine from the claim which steps are carried out by the user.
Furthermore, a claim to a computer-implemented data structure in addition to formulations (i)-(iv) may be allowable under Rule 43(2) if it is defined by its own technical features, e.g. by a well-defined structure as in T 858/02, possibly with references to the corresponding method or system in which it is used. However, a computer-implemented data structure does not necessarily comprise features of the process by which it is generated. It is not necessarily restricted by a method in which it is used, either. Therefore, a claim to a computer-implemented data structure usually cannot be defined merely by reference to a method or as an outcome of a process. For further information on data structures, see G‑II, 3.6.3.
For the assessment of inventive step for claims comprising features related to exclusions under Art. 52(2), as is often the case with CII, see G‑VII, 5.4.
3.9.2 Cases where method steps define additional devices and/or specific data processing means
Where a method claim includes steps defined as being carried out by devices other than generic data processing means, a corresponding device and/or computer program claim may need more than a mere reference to the method claim as in formulations (i)-(iv) in F‑IV, 3.9.1 to fulfil the requirements of Art. 84 (see also F‑IV, 3.8). Furthermore, if not all the features of the method claim are reflected in claims in other categories referring to the method, said claims in other categories have to be construed and examined separately with respect to novelty and inventive step.
In particular in applied fields such as medical devices, measuring, optics, electro-mechanics or industrial production processes, method claims frequently involve steps of manipulating or interacting with technical physical entities by using computer control. These method steps may not always be fully performed by the computer and the method claim may recite specific technical means for carrying out some of the steps. In such a case, defining a computer program claim as in F‑IV, 3.9.1(iii) will normally lead to an objection under Art. 84 if the step carried out by the specific technical means cannot be carried out by a generic data processing means (see Example 1 below). An objection under Art. 84 may also arise if the claims do not define which steps are carried out by the data processor or by the additional devices involved, as well as their interactions. The same applies if specific data processing means (e.g. a particular parallel computer architecture) are required as opposed to the generic data processing means described in F‑IV, 3.9.1.
On the other hand, if the method claim defines the further processing, by generic computational means, of data received from specific technical means, such as sensors, it is not necessary that the computer or computer program claims referring to the method comprise those specific technical means. In this case the specific technical means recited in the method are not required for carrying out the method steps and formulations as in F‑IV, 3.9.1 may be appropriate (see Example 2 below).
Finally, as is the case for any essential feature, if the specific technical means are essential for defining the invention, they have to be present in all the independent claims. Whether or not a feature is essential is decided according to the principles defined in F‑IV, 4.5 and subsections, taking due account of implicit features (F‑IV, 4.5.4).
Example 1
- A method of determining oxygen saturation in blood in a pulse oximeter, comprising:
–
receiving in an electromagnetic detector first and second electromagnetic radiation signals from a blood-perfused tissue portion corresponding to two different wavelengths of light;
–
normalising said electromagnetic signals according to steps A, B and C to provide normalised electromagnetic signals;
–
determining oxygen saturation based on said normalised electromagnetic signals according to steps D and E.
- A pulse oximeter having an electromagnetic detector and means adapted to execute the steps of the method of claim 1.
- A computer program [product] comprising instructions to cause the device of claim 2 to execute the steps of the method of claim 1.
- A computer-readable medium having stored thereon the computer program of claim 3.
Remarks: In this example, the method claim comprises a step which is defined as being executed by specific technical means (the electromagnetic detector in a pulse oximeter). A computer program claim making reference only to the method would lack clarity because such a program could not be executed e.g. on a general-purpose computer which does not have a pulse oximeter with an electromagnetic detector. Therefore, the computer program claim should be defined as being executed on the pulse oximeter with an electromagnetic detector (by referring to the device of claim 2) rather than only referring to the method claim 1.
Example 2
- A computer-implemented method of determining oxygen saturation in blood, comprising:
–
receiving data representing first and second electromagnetic radiation signals acquired by an electromagnetic detector from a blood-perfused tissue portion corresponding to two different wavelengths of light;
–
normalising the data representing said electromagnetic signals according to steps A, B and C to provide normalised data;
–
determining oxygen saturation based on said normalised data according to steps D and E.
- A data processing apparatus comprising means for carrying out the method of claim 1.
- A computer program [product] comprising instructions which, when the program is executed by a computer, cause the computer to carry out the method of claim 1.
- A computer-readable medium having stored thereon the computer program [product] of claim 3.
Remarks: In this example the invention lies in the further processing of acquired data for determining the oxygen saturation in blood. The data can be received for example from a data file storing data previously acquired by the electromagnetic detector. Such a method can therefore be carried out by generic data processing means, for example in the form of a desktop computer. It does not specify the electromagnetic detector as a required feature for receiving the input data. Hence, the device claim defined by reference to the method claim does not need to include the pulse oximeter or an electromagnetic detector either. Furthermore, the computer program claim can be executed on a general-purpose computer and not on a specific device in contrast to the case in Example 1. As a result, the formulations as in F‑IV, 3.9.1 are appropriate for claims 2-4 of Example 2.
3.9.3 Cases where the invention is realised in a distributed computing environment
Another common type of CII is realised in a distributed computing environment. Examples are a networked client (e.g. a smartphone) and server system, accessing storage or processing resources of a computer cloud, devices in a peer-to-peer network performing file sharing, an augmented reality environment with head mounted displays, autonomous vehicles interacting over an ad hoc network or maintaining a distributed ledger using a blockchain.
For such distributed CIIs, the claim set may comprise claims directed to each entity of the distributed system and/or to the overall system and the corresponding methods. Such a claim set may be allowable under Rule 43(2)(a) (F‑IV, 3.2). Each independent claim must nevertheless fulfil the requirements for patentability, in particular the requirements of Art. 54, Art. 56 and Art. 84. For example, if the invention lies in the implementation of a computer cloud using virtual machines enabling adaptation to workload changes by allocating resources in an automatic manner, a client device accessing the resources of the cloud may already be known in the art. The claim set must also fulfil the requirements of unity.
It may be necessary to refer to the specific features of the different entities and to define how they interact to ensure the presence of all essential features. When referring to the interaction between the different entities, particular care must be taken that the claim is clear. In some situations, it may be necessary to limit the claim to the combination of the entities (see F‑IV, 4.14). If the distribution of the steps of a method across the involved entities is essential to the invention, it will be necessary to define which method step is carried out by which entity in order to fulfil the requirements of Art. 84. Otherwise, this may be left undefined in generic CII claims (see F‑IV, 3.9.1).
Some considerations relating to these requirements are illustrated with the help of the following examples. Other formulations (F‑IV, 3.9.1) than the ones given in the examples can also be part of the claim set but have been omitted for reasons of brevity.
Example
- A transmitter device comprising means for encoding data by performing steps A and B and means to transmit the encoded data to a receiver device.
- A receiver device comprising means for receiving encoded data from a transmitter device and means for decoding the data by performing steps C and D.
- A system comprising a transmitter device according to claim 1 and a receiver device according to claim 2.
- A computer program [product] comprising instructions which, when the program is executed by a first computer, cause the first computer to encode data by performing steps A and B and to transmit the encoded data to a second computer.
- A computer program [product] comprising instructions which, when the program is executed by a second computer, cause the second computer to receive encoded data from a first computer and decode the received data by performing steps C and D.
Remarks: The problem addressed by the invention is the transmission of data over a network. The transmitter device encodes the data using an algorithm comprising steps A and B and the receiver device performs the complementary function of decoding the data using an algorithm comprising steps C and D. The requirements of Rule 43(2) are fulfilled since the devices of claims 1 and 2 are interrelated in that they interact to perform the invention and solve the stated problem. Novelty and inventive step have to be assessed for each independent claim individually. For example, if encoding according to steps A and B enables encoding to a known coding format in a more efficient way, and decoding according to steps C and D is conventional, it may be that only claims 1 and 3 are new and inventive.
- Clarity and interpretation of claims
4.1 Clarity
The requirement that the claims must be clear applies to individual claims, i.e. to independent and dependent claims alike, 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. Therefore, the meaning of the terms of a claim must, as far as possible, be clear for the person skilled in the art from the wording of the claim alone (see also F‑IV, 4.2). In view of the differences in the scope of protection which may be attached to the various categories of claims, the division must ensure that the wording of a claim leaves no doubt as to its category.
Where it is found that the claims lack clarity under Art. 84, this may have led to the issuing of a partial European or supplementary European search report under Rule 63 (see B‑VIII, 3.1 and 3.2). In such cases, in the absence of appropriate amendment and/or convincing arguments from the applicant as to why the invitation under Rule 63(1) was not justified, an objection under Rule 63(3) will also arise (see H‑II, 5).
4.2 Interpretation
Each claim must 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 division will, so far as possible, require the claim to be amended whereby the meaning is clear from the wording of the claim alone. This is important because it is only the claims of the European patent, not the description, which will be published in all the official languages of the EPO. The claim must 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. Art. 69 and its Protocol do not provide a basis for excluding what is literally covered by the terms of the claims (see T 223/05).
4.3 Inconsistencies
Any inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought and therefore render the claim unclear or unsupported under Art. 84, second sentence, or, alternatively, render the claim objectionable under Art. 84, first sentence. 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 thus 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. See also paragraph (iii) below.
(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 does not meet the requirements of Art. 84, because Art. 84, first sentence, when read in conjunction with Rule 43(1) and (3), has to be interpreted as meaning not only that an independent claim must be comprehensible from a technical point of view but also that it must clearly define the subject-matter of the invention, that is to say indicate all the essential features thereof (see T 32/82). If, in response to this objection, the applicants show convincingly, e.g. by means of additional documents or other evidence, that the feature is in fact not essential, they 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 division therefore does not suggest that a claim be broadened by the omission of apparently inessential features;
(iii)
Part of the description and/or drawings is inconsistent with the subject-matter for which protection is sought
According to Art. 84, second sentence, the claims must be supported by the description. This means that there must not be inconsistency between the claims and the description. Parts of the description that give the skilled person the impression that they disclose ways to carry out the invention but are not encompassed by the wording of the claims are inconsistent (or contradictory) with the claims. Such inconsistencies may be present in the application as originally filed or may result from amending the claims to such an extent that they are no longer consistent with the description or drawings.
For example, an inconsistency may exist due to the presence of an alternative feature which has a broader or different meaning than a feature of the independent claim. Further, an inconsistency arises if the embodiment comprises a feature which is demonstrably incompatible with an independent claim.
Examples:
–
the independent claim defines a feature as being made of “purely substance X”, whereas the description defines it as being made of a blend of substances “X and Y”;
–
the independent claim defines the feature of an article comprising nicotine-free liquid material, whereas the description states that the liquid material may contain nicotine.
However, it is not an inconsistency when an embodiment comprises further features which are not claimed as dependent claims as long as the combination of the features in the embodiment is encompassed by the subject-matter of an independent claim. Similarly, it is not an inconsistency when an embodiment fails to explicitly mention one or more features of an independent claim as long as they are present by reference to another embodiment or implicit.
Example: Where the claim comprises features A, B and C taken in combination, the passages dealing individually with how each of A, B and C are realised are normally understood as describing the refinements of the combination defined in the claim unless there are indications to the contrary. The passages which describe only the realisation of feature A, for example by introducing features A1-A3 and discussing their advantages, but which can be interpreted as meant for being combined with the other features of the claim, would not need an amendment caused by the limitation of the claim from B to B2 unless one of A1-A3 is incompatible with B2. On the other hand, any passage explicitly referring to a sub-combination of the claimed features (e.g. only A or A+B) as being the invention is inconsistent with the claim.
For borderline cases where there is doubt as to whether an embodiment is consistent with the claims, the benefit of the doubt is given to the applicant.
The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought. See paragraph (i) above for the case where an inconsistency can be removed by broadening the claims.
Example: Independent claim defines a vehicle with a broad feature of a “motor”, together with other features. The description and the drawings comprise Embodiment 1, in which the vehicle has an electric motor, and Embodiment 2, in which the vehicle has a combustion engine. During the prosecution, in order to fulfil the requirements of inventive step, the independent claim is amended to specify a vehicle employing an electric motor since the combination of claimed features using a combustion engine was anticipated by the prior art. Embodiment 2 is no longer consistent with the independent claim, unless it can be inferred from this embodiment that the combustion engine is used in combination with the electric motor. This inconsistency must be rectified either by removing Embodiment 2 from the description and drawings or by marking Embodiment 2 as not being covered by the claimed subject-matter (e.g. “Embodiment 2 is not covered by the subject-matter of the claims” or similar wording).
An inconsistency between the description and the claims cannot be removed by introducing at the beginning of the description a generic statement such as “embodiments not falling under the scope of the appended claims are to be considered merely as examples suitable for understanding the invention” without indicating which parts of the description are no longer covered. To remove the inconsistency, such a statement has to refer to specific embodiments (e.g. “Embodiments X and Y are not encompassed by the wording of the claims but are considered as useful for understanding the invention”).
The terms “disclosure”, “example”, “aspect” or similar, on their own, do not necessarily imply that what follows is not encompassed by an independent claim. Unambiguous expressions have to be adopted to mark an inconsistent embodiment (e.g. by adding “not encompassed by the wording of the claims”, “not according to the claimed invention” or “outside the subject-matter of the claims”) instead of merely replacing the terms “embodiment” or “invention” by one of the aforementioned terms.
As long as the resulting text of the description does not present conflicting information to the reader, an inconsistent embodiment may also be remedied by ensuring that it is not referred to as being “according to the invention” throughout the description and by complementing the reference to it with an explicit statement to the effect that it is retained due to being useful for understanding the invention (e.g. “embodiment useful for understanding the invention”, “comparative example from background art”.
Subject-matter in the description regarded as an exception to patentability under Art. 53 needs to be excised, reworded such that it does not fall under the exceptions to patentability or prominently marked as not being according to the claimed invention (see G‑II, 4.2 for adaptation of the description for methods of treatment of the human and animal body, G‑II, 5.3 for adaptation of the description for the use of human embryonic stem cells and G‑II, 5.4 for adaptation of the description for plant and animals).
Moreover, features required by the independent claims may not be described in the description as being optional using wording such as “preferably”, “may” or “optionally”. The description must be amended to remove such terms if they make a mandatory feature of an independent claim appear as being optional.
When inviting the applicant to amend the description, the division provides examples of embodiments inconsistent with the independent claims and brief reasons why. If the inconsistency concerns describing a mandatory feature of an independent claim as optional, the division provides an example passage.
See also H‑V, 2 for the allowability of amendments to the description.
An inconsistency between the description/drawings and the claims may frequently occur when, after a limitation of the claims following an invitation under Rule 62a(1) or Rule 63(1), the subject-matter excluded from the search is still present in the description. Unless the initial objection was not justified, such subject-matter is objected to under Art. 84 (inconsistency between the claims and the description).
Furthermore, an inconsistency between the description/drawings and the claims will occur when, after a non-unity objection (Rule 64 or Rule 164), the claims have been limited to only one of the originally claimed inventions: the embodiments and/or examples of the non-claimed inventions must be either deleted or clearly indicated as not being covered by the claims.
4.4 General statements, “spirit of the invention”, claim-like clauses (not for paper A)
General statements in the description which imply that the extent of protection may be expanded in some vague and not precisely defined way are not allowed. In particular, any statement which refers to the extent of protection being expanded to cover the “spirit of the invention” or “all equivalents” of the claims must be deleted.
Statements that refer to the extent of protection covering the “scope of the claims” or the invention being “defined in the claims” are allowed. This does not preclude the removal of inconsistencies (F‑IV, 4.3).
Analogously, in the case where the claims are directed to a combination of features, any statement that 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 must be deleted.
Finally, claim-like clauses must also be deleted or amended to avoid claim-like language prior to grant since they otherwise may lead to unclarity on the subject-matter for which protection is sought.
“Claim-like” clauses are clauses present in the description which despite not being identified as a claim, appear as such and usually comprise an independent clause followed by a number of clauses referring to previous clauses. These claim-like clauses are usually found at the end of the description and/or in the form of numbered paragraphs, particularly in divisional or Euro-PCT applications, where the original set of claims from the parent or PCT application is appended to the description.
4.5 Essential features
