5.5.4.12 Appended claims

Date Published

There are three types of claims:

  • Independent claims stand on their own and do not refer to any other claim;
  • Appended claims make explicit reference to one or more other claims; and
  • Dependent claims are a subset of appended claims where all the features of the parent claim(s) are incorporated into the appended claim.

Examples of wording indicating an appended claim are:

  • ‘As claimed in any of the preceding claims’;
  • ‘According to any of the preceding claims’;
  • ‘As defined in any of the preceding claims’;
  • ‘Of claim 1’;
  • ‘According to any one or more of the preceding claims’; and
  • ‘As claimed in claims 1–4 of the preceding claims’.

Recent court cases on construction do not use the term ‘dependent‘ as the basis of construction. The approach of the courts is to determine the scope of the claim from the words that are used. ‘Dependent‘ is a label that can then be applied after the claims have been construed.

Scope of appended claims

There is no requirement under Australian law that appended claims narrow the scope of earlier claims, even though this is often the case (Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag (2008) FCAFC 121 at paragraph 47).

Usually, all the features of the parent claim(s) are included in the appended claim, however, this does not always apply. Examiners need to consider which aspects of the parent claim(s) are imported into the appended claim. In particular, appropriate weight should be given to the preamble or subject clause of the claim.

Claims That Import All Aspects of Parent Claim

Examples of claims that import all the aspects of parent claims are:

Example 1

Claim 1. A lifting device comprising A and B.

Claim 2. A lifting device as claimed in claim 1, wherein A is (as further defined).

Claim 2 imports all of the aspects of claim 1, that is, B is present as defined in claim 1.

Example 2

Claim 1. A kit comprising A and B when used in the treatment of disease Y.

Claim 2. The kit of claim 1 further comprising C.

Claim 2 imports all of the aspects of claim 1, that is, the kit comprising A and B and the ‘when used‘ limitation.

Example 3

Claim 1. Compound of formula X prepared by process A.

Claim 2. Compound of formula X according to claim 1 wherein R = H.

Claim 2 imports all of the aspects of claim 1, that is, the compound of formula X and the manner in which it was prepared.

In these examples, claim 2 has the same preamble or subject clause (that is, lifting device, kit, or compound) as the claim to which it is appended. The use of a common preamble or subject clause indicates that all of the elements of the earlier claim are imported, unless there is something indicating otherwise.

Claims That Do Not Import All Aspects of Parent Claim

A different preamble or subject clause is likely to indicate a partial dependency. This needs careful consideration. Examples of claims that do not import all aspects of the parent claim are:

Example 4

Claim 1. The use of compound X to treat disorder A.

Claim 2. Compound X of claim 1 wherein …

Claim 2 is considered to be a claim to the compound per se, without any use limitation. The different preamble or subject clause makes this clear.

Example 5

Claims 1 to 3 are directed to a process using a titanium catalyst.

Claim 4 is ‘A process as claimed in any one of claims 1 to 3, wherein the catalyst is not present‘.

Claim 4 is appended to any one of claims 1 to 3, but excludes the catalyst.

Example 6

Claim 1. An apparatus comprising features A and B.

Claim 2. A device for use in the apparatus claimed in claim 1.

The appended claim uses the words ‘for‘ or ‘for use‘ in relation to an earlier claim. This means that the features of the device of claim 2 have a functional capability consistent with being used in the apparatus of claim 1 but does not import any of the features of claim 1 as integers of the notionally dependent claim. 

For more about the construction of ‘for‘ and ‘for use‘ claims, see 5.5.4.7 ‘For use in‘, ‘When used‘, etc.

Example 7

Claim 1 consists of features A and B, and the dependent claim is directed to just one of those features per se, for example, ‘Feature B as claimed in claim 1, wherein ...‘.

Example 8

Where an appended claim further defines a feature (X) that is identified as optional in the corresponding parent claim, care should be taken in determining whether or not the appended claim is limited to the inclusion of X. Such determination should take into account the facts of the case and the apparent intent of the appended claim.

When determining optional features, terms such as ‘particularly‘ or ‘specifically‘ may indicate more specific characterisation of a feature, rather than being optional.

Note: Novelty issues may arise and need to be considered where the circumstances in examples 4 to 8 occur. Examiners will need to take these into account when formulating any search strategy.

Special considerations in chemical technologies

Sometimes, particularly in chemical technologies, an appended claim includes examples that are outside the scope of the claim to which it is appended.

Example 9

An independent claim is amended to remove some functional groups in order to avoid prior art and the appended claim still includes specific examples that have those functional groups.

The appended claim will be taken as broadening the scope of the monopoly to include the additional examples. The issues of novelty and inventive step relating to the additional examples will need to be considered.

Since the scope of the appended claim can be determined, a clarity objection should not be taken.

Example 10

Claim 1

A compound of the following formula:

R-X

wherein X is hydroxyl, amino or thiol; and R is methyl or ethyl.

Claim 4

A compound according to Claim 1 which is methanol, methanethiol or nitromethane.

In this case, nitromethane does not fall within the scope of the formula defined in parent claim 1. A clarity objection would not be taken, however, it would be necessary to consider whether nitromethane is novel and inventive.