15/10/2012
Article 84 of the European Patent Convention has always required that the claims of a patent application be clear. However, ‘The Raising The Bar’ initiative of The European Patent Office (EPO) has given examiners new cause to focus on clarity requirements.
The EPO are now raising objections increasingly to the clarity of terms used in patent claims, and such objections are often raised before novelty and inventiveness have been considered. Furthermore, this is now happening in all technical fields, with objections being raised by examiners in all branches of the EPO. The EPO also appear less inclined than in the past to allow reference to the description of the patent application, to help define terms used in the claims. Instead they require the precise language used in the description to be written into the claims – which may result in claims having a much narrower scope of protection than originally intended.
The easiest way to argue against a clarity objection is to show that the term is clear! This is possible where the term is commonly used in the technical field, and often demonstrated showing the use of the term in a text book (or equivalent electronic source). However, this can be difficult if the term is one that is generally used and understood by the applicant, but not by others. This approach will also not work where the term is used by others with a different meaning.
Thesaurus Or Dictionary?
There are times where the description can give particular meaning to words used in the claims. In the past, it has often been possible to point to an example given in the description that falls within the intended meaning of the term used in the claim. This could then be used to demonstrate that the term would be understood by someone reading the whole application. In view of this, it has been considered that the description provides a thesaurus for words used in the claims. Increasingly however, the EPO consider that an example only supports a definition of a term that corresponds exactly to the specific example. Perhaps it is now better to say that the description is a dictionary for words used in the claim – giving a limited and precise definition of terms used in the claims that the examiner considers otherwise unclear.
The result of this is that we often encounter clarity objections, in response to which the only option is to amend the claims by including the exact language used in a specific example given in the description. Anything broader is objected to as being unsupported or as adding subject matter. This is often too narrow for valuable protection.
It is therefore best to try and draw upon terms that are used commonly in the technical field rather than ones that are used only in-house. It would also be beneficial to give many examples, rather than a single example, of what should fall within terms of claims to avoid having to unnecessarily restrict claims because the examiner considers your words unclear.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
