Claims under the European Patent Convention
Encyclopedia
Article 84 of the European Patent Convention
(EPC) defines the function of the claims under the European Patent Convention, the function being to define the matter, i.e. the invention, for which patent
protection is sought. This legal provision also imposes that the claim
s must be clear, concise as well as supported by the description of the European patent application
or patent. The form and content of the claims are defined in Article 84, and supplemented by the .
The wording of Article 84 is as follows:
or could infringe a patent or not, so as in turn to be able to make the most informed economic decisions as possible (such as taking a license, designing around, refraining from entering a market, etc.).
document. The characterizing part includes the other features, i.e., those not known in the prior art document used to draft the claim in a two-part form. The two-part form required by Rule 43(1) should be complied with "wherever appropriate". This manner of claiming an invention is also prescribed, in a similar manner, in the Patent Cooperation Treaty
, namely in .
.
New Rule 62a EPC, which entered into force on April 1, 2010, provides the opportunity for the EPO to invite the applicant to comply with Rule 43(2) before the search is carried out. This was not foreseen under the former regulations. Under the new rules, if the claims as filed in a European patent application contain a plurality of independent claims in the same claim category and if the EPO considers in that case that the claims therefore do not comply with Rule 43(2) EPC, the EPO may "invite the applicant to indicate, within a period of two months, the claims complying with Rule 43, paragraph 2, on the basis of which the search is to be carried out." "If the applicant fails to provide such an indication in due time, the search shall be carried out on the basis of the first claim in each category". A Rule 62a EPC objection may however be contested by the applicant in its reply to the search division or, later, before the examining division. If the search division finds that its initial objection was not justified in view of the applicant's arguments, the search will then be carried out on an unlimited basis. The examining division may also override the assessment of the search division. Otherwise, the claims will have to be restricted, during examination, to the subject-matter searched.
This amendment to the Implementing Regulations of the EPC is part of the so-called "raising the bar" initiative, with the claimed aim "to improve the quality of incoming patent applications and streamline the grant procedure
".
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC) defines the function of the claims under the European Patent Convention, the function being to define the matter, i.e. the invention, for which patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
protection is sought. This legal provision also imposes that the claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s must be clear, concise as well as supported by the description of the European patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
or patent. The form and content of the claims are defined in Article 84, and supplemented by the .
The wording of Article 84 is as follows:
Rationale
Article 84 EPC in combination with require that the claims must be clear (i.e., for instance the claim wording cannot be obscure) and must define the matter for which protection is sought in terms of the technical features of the invention. The rationale behind this requirement is to ensure that the public is not left in any doubt as to which subject-matter is covered by a particular patent and which is not. The clarity requirement therefore plays an important role in providing legal certainty for third parties to determine whether they are infringingPatent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
or could infringe a patent or not, so as in turn to be able to make the most informed economic decisions as possible (such as taking a license, designing around, refraining from entering a market, etc.).
Clarity
According to the established case law of the EPO boards of appeal, the claims must be clear "in themselves when being read with the normal skills, but not including any knowledge derived from the description of the patent application ...". In other words, the wording of a claim must be clear in itself.Rule 43(1) EPC
notably imposes that an independent claim should be drafted in a two-part form, including a preamble and a characterizing part. The preamble includes all the features of the claim that in combination are known in a prior artPrior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
document. The characterizing part includes the other features, i.e., those not known in the prior art document used to draft the claim in a two-part form. The two-part form required by Rule 43(1) should be complied with "wherever appropriate". This manner of claiming an invention is also prescribed, in a similar manner, in the Patent Cooperation Treaty
Patent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
, namely in .
Rule 43(2) EPC
Pursuant to , a plurality of independent claims in the same claim category are only allowable in exceptional circumstances, listed in Rule 43(2)(a), (b) and (c). Decision T 263/05 of the Boards of Appeal of the EPO held that Rule 43(2) was not applicable in opposition proceedingsOpposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
.
New Rule 62a EPC, which entered into force on April 1, 2010, provides the opportunity for the EPO to invite the applicant to comply with Rule 43(2) before the search is carried out. This was not foreseen under the former regulations. Under the new rules, if the claims as filed in a European patent application contain a plurality of independent claims in the same claim category and if the EPO considers in that case that the claims therefore do not comply with Rule 43(2) EPC, the EPO may "invite the applicant to indicate, within a period of two months, the claims complying with Rule 43, paragraph 2, on the basis of which the search is to be carried out." "If the applicant fails to provide such an indication in due time, the search shall be carried out on the basis of the first claim in each category". A Rule 62a EPC objection may however be contested by the applicant in its reply to the search division or, later, before the examining division. If the search division finds that its initial objection was not justified in view of the applicant's arguments, the search will then be carried out on an unlimited basis. The examining division may also override the assessment of the search division. Otherwise, the claims will have to be restricted, during examination, to the subject-matter searched.
This amendment to the Implementing Regulations of the EPC is part of the so-called "raising the bar" initiative, with the claimed aim "to improve the quality of incoming patent applications and streamline the grant procedure
Grant procedure before the European Patent Office
The grant procedure before the European Patent Office is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the...
".